Innovation Law Group, Ltd.v.Ryan E. Alley

Trademark Trial and Appeal Board

May 22, 2015

No. 91202418 (T.T.A.B. May. 22, 2015)

This Opinion is Not a
Precedent of the TTAB

Hearing: May 13, 2015 Mailed: May 22, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Innovation Law Group, Ltd.

v.

Alley
_____

Opposition No. 91202418
_____

Neil D. Greenstein of Techmark for Innovation Law Group, Ltd.

Ryan E. Alley of Ryan Alley Intellectual Property Law for Ryan E. Alley.
_____

Before Bergsman, Shaw and Goodman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Ryan E. Alley (“Applicant”) seeks registration on the Principal Register of the
mark BUILDING ASSETS FROM IDEAS (in standard characters) for “legal
services in intellectual property, including patent, trademark, copyright, and trade
secret procurement, transfer, and enforcement,” in Class 45.1

1 Application Serial No. 85342228 was filed on June 9, 2011, based upon Applicant’s claim
of first use anywhere at least as early as May 26, 2011 and use in commerce since at least
as early as June 2, 2011.
Opposition No. 91202418
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Innovation Law Group, Ltd. (“Opposer”) opposed the registration of Applicant’s
mark on the ground of likelihood of confusion pursuant to Section 2(d) of the
Trademark Act of 1946, 15 U.S.C. § 1052(d), alleging that Applicant’s mark is likely
to cause confusion with its previously registered marks listed below:
1. Registration No. 2090854 for the mark TRANSFORMING IDEAS INTO
BUSINESS ASSETS (typed drawing form) for “legal services relating to intellectual
property law and strategy,” in Class 42;2
2. Registration No. 3129158 for the mark TRANSFORMING IDEAS INTO
BUSINESS ASSETS (standard characters) for the services listed below:
Business consultation in the field of intellectual property
issues, innovation management, corporate formation,
development and launching of new products, processes
and services and transactions involving intellectual
property assets, in Class 35; and
Consultation services in the fields of new product
development, technology transfer, protection and
licensing of intellectual property, and patent and
industrial property licensing, in Class 42;3 and
3. Registration No. 3215068 for the mark INNOVATION LAW GROUP
TRANSFORMING IDEAS INTO BUSINESS ASSETS and design, shown below, for
“business consultation services in the field of business performance and strategy,”
in Class 35.4

2 Registered August 26, 1997; renewed. Prior to November 2, 2003, “standard character”
drawings were known as “typed” drawings. A typed mark is the legal equivalent of a
standard character mark. TMEP § 807.03(i) (January 2015).
3 Registered August 15, 2006; Sections 8 and 15 affidavits accepted and acknowledged.
4 Registered March 6, 2007; Sections 8 and 15 affidavits accepted and acknowledged.
Opposition No. 91202418
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Applicant, in his Answer, denied the salient allegations in the Notice of
Opposition.
I. Preliminary Issues.
A. Stipulation for testimony affidavits or declarations in lieu of depositions.
On October 24, 2013, the parties filed a stipulation to use affidavits or
declarations in lieu of depositions.5 The stipulation was approved in an Order dated
October 31, 2013.6
B. Applicant’s cross-motion to perfect his declarations.
On March 17, 2014, Opposer filed a motion to strike Applicant’s declarations on
the ground that they were not properly verified as being under oath.7 In response,
Applicant moved for leave to properly execute his declarations.8 In an Order dated
June 30, 2014, the Board granted Applicant’s cross-motion for leave to properly
execute his declarations.9 Applicant refiled properly executed declarations on July
15, 2014.10

5 35 TTABVUE. Citations to the record in this opinion are to the TTABVUE docket entry
number and the electronic page number where the document or testimony appears.
6 37 TTABVUE.
7 46 TTABVUE.
8 47 TTABVUE.
9 56 TTABVUE. The Board’s Order and Opposer’s Brief on the case, where Opposer
renewed his objection to the admissibility of Applicant’s declarations crossed in the mail.
For purposes of clarity, the Board reiterates the holding in its June 30, 2014 Order.
10 60 TTABVUE and 61 TTABVUE.
Opposition No. 91202418
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C. Applicant’s motion to resubmit his brief.
On July 15, 2014, one day after filing his brief on the case and one day after the
due date for filing his brief, Applicant filed a request to “re-submit[] its main brief
… to replace the Brief of July 14 containing many errors”11 with a copy of the
corrected brief. Opposer objected to the late filing of the corrected brief on the
ground that Applicant “added additional case law and entirely new arguments.”12
Because the Board decides cases based on the evidence of record, and not
arguments, Applicant’s request to file a corrected brief is granted.
D. Numerous objections lodged by the parties.
The parties have lodged numerous objections. None of the evidence sought to be
excluded is outcome determinative. Moreover, the Board is capable of weighing the
relevance and strength or weakness of the objected-to testimony and evidence,
including any inherent limitations, and this precludes the need to strike the
testimony and evidence. Given these facts, coupled with the number of objections,
we see no compelling reason to discuss the specific objections in detail. As necessary
and appropriate, we will point out any limitations applied to the evidence or
otherwise note that the evidence cannot be relied upon in the manner sought. We
have considered all of the testimony and evidence introduced into the record. In
doing so, we have kept in mind the various objections raised by the parties and we
have accorded whatever probative value the subject testimony and evidence merit.

11 59 TTABVUE 2.
12 66 TTABVUE 7.
Opposition No. 91202418
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II. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the application file for the mark being opposed. The parties
submitted the testimony and evidence listed below:
A. Opposer’s testimony and evidence.
1. Testimony declaration of Diane van Os, the first web master of
Opposer’s website and a former colleague of Opposer’s principal Jacques M. Dulin,
with attached exhibits;13
2. Testimony declaration of Richard W. Parks, a mechanical engineer and
businessman;14
3. Testimony declaration of Robert F. Dennis, an attorney and former
colleague of Jacques M. Dulin, with attached exhibit;15
4. Testimony declaration of Laurel Black, expert witness on marketing in
the field of “corporate identity, brand building, communications and business
collateral,” with attached exhibits;16
5. Testimony declaration of Kirk V. Thomas, a software engineer;17
6. Testimony declaration of Jacques M. Dulin, the owner of Opposer’s
marks, with attached exhibits;18

13 38 TTABVUE 2-10.
14 38 TTABVUE 11-14.
15 38 TTABVUE 15-21.
16 38 TTABVUE 22-27.
17 38 TTABVUE 28-35.
Opposition No. 91202418
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7. Rebuttal testimony declaration of Jacques M. Dulin with attached
exhibits;19 and
8. Rebuttal testimony declaration of Laurel Black.20
B. Applicant’s testimony and evidence.
1. Testimony declaration of Ryan E. Alley proffered to challenge the
testimony declaration of Jacques M. Dulin;21 and
2. Testimony declaration of Ryan E. Alley with attached exhibits.22
III. Standing
Opposer introduced copies of its pleaded registrations showing the current
status and title to the registrations printed from the electronic databases of the
USPTO in the declaration of Jacques M. Dulin.23 Because Opposer has properly
made of record its pleaded registrations, Opposer has established its standing.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.

18 63 TTABVUE 2-55. See paragraph 6 at 63 TTABVUE 5 where Mr. Dulin attested that he
is the owner of the marks in the pleaded registrations. “I adopted and used the mark
‘TRANSFORMING IDEAS INTO BUSINESS ASSETS’ in 1996, promptly applied for
federal registration in connection with IP legal services, and received Federal Trademark
Registration No. 2,090,854 in 1997. I have continuously used that mark - - first as a sole
proprietor and then through Innovation Law Group, Ltd., my professional corporation,
since its first use in 1996 in connection with my IP legal services.”
19 46 TTABVUE 2-18.
20 46 TTABVUE 19-25.
21 60 TTABVUE.
22 43 TTABVUE. Pursuant to the Board’s June 30, 2014 Order noted above, Applicant filed
a properly executed declaration at 61 TTABVUE. In discussing Applicant’s testimony and
evidence, the Board will reference 43 TTABVUE because the exhibits are affixed to that
TTABVUE entry.
23 63 TTABVUE 3-4 and 13-30.
Opposition No. 91202418
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2000); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982).24
IV. Priority
Because Opposer has properly made of record its pleaded registrations, Section
2(d) priority is not an issue in the opposition as to the marks and the services
covered by the pleaded registrations. King Candy Co. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).25
V. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”). These factors, and any
other relevant du Pont factors in the proceeding now before us, will be considered in
this decision.

24 Applicant, in his brief, admitted that Opposer has standing. 59 TTABVUE 8.
25 Applicant, in his brief, admitted that Opposer has priority. 59 TTABVUE 8. Applicant
also stipulated that Opposer has priority. 15 TTABVUE 2.
Opposition No. 91202418
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We focus our analysis on Registration No. 2090854 for the mark
TRANSFORMING IDEAS INTO BUSINESS ASSETS (typed drawing form) for
“legal services relating to intellectual property law and strategy” because if we do
not find a likelihood of confusion with that mark and its associated services, then
there would be no likelihood of confusion with the marks in the other pleaded
registrations. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010).
A. The similarity or dissimilarity and nature of the services, established, likely-
to-continue channels of trade, and classes of consumers.

Applicant is seeking to register his mark for “legal services in intellectual
property, including patent, trademark, copyright, and trade secret procurement,
transfer, and enforcement.” The description of services in Opposer’s pleaded
registration is “legal services relating to intellectual property law and strategy.” For
purposes of determining likelihood of confusion, the services are identical.
Because the services described in the application and Opposer’s registration are
identical, we must presume that the channels of trade and classes of purchasers are
the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (even though there was no evidence regarding channels of trade and classes of
consumers, the Board was entitled to rely on this legal presumption in determining
likelihood of confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ
721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade
and classes of purchasers are considered to be the same); American Lebanese Syrian
Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022,
Opposition No. 91202418
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1028 (TTAB 2011) (where there are legally identical services, marketing channels of
trade and targeted classes of consumers are the same).
B. The conditions under which and buyers to whom sales are made, i.e.,
“impulse” vs. careful, sophisticated purchasing.

Opposer argues that “because a significant portion of the consumers shopping for
the Parties' respective IP legal services are ordinary people who think they have
invented something, as opposed to sophisticated corporations or in-house counsel,”
the average purchaser is not especially sophisticated in selecting intellectual
property counsel.26 Opposer references the following testimony:
1. Diane van Os Testimony Declaration ¶ 6 - “most consumers of intellectual
property legal services are not sophisticated regarding the legal services industry
and that such consumers are not highly selective in evaluating their lawyer
options.”;27
2. Robert Dennis Testimony Declaration ¶ 13 - “[m]any [IP] clients … are quite
unsophisticated.”;28
3. Jacques M. Dulin Rebuttal Declaration ¶ 8 - listing numerous “examples of
the non-commercial and non-sophisticated client types that fall within providing
‘Legal services in intellectual property, including patent, trademark, copyright, and
trade secret procurement, transfer, and enforcement.’”29

26 Opposer’s Brief, p. 34 (55 TTABVUE 35).
27 38 TTABVUE 4.
28 38 TTABVUE 19.
29 53 TTABVUE 4-5.
Opposition No. 91202418
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Regarding the importance of the tagline, Mr. Dulin provided the testimony
below:
7. … [P]rospective clients frequently make positive
remarks about [Opposer’s] mark, TRANSFORMING
IDEAS INTO BUSINESS ASSETS. For example, clients
have indicated to me that [Opposer’s] mark piques their
interest in what we do, and motivates them to contact us.
We at [Opposer] do not even keep track of all the positive
comments we have received about [Opposer’s] mark, but
we have repeatedly heard that it is a catchy slogan that is
“cool” and communicates the general feeling that we
understand our clients’ needs.30
In essence, Mr. Dulin testified that Opposer’s “catchy slogan that is ‘cool’” generates
initial interest on behalf of potential intellectual property clients. This testimony
arguably supports Opposer’s contention that consumers of intellectual property
legal services do not exercise a high degree of care when selecting counsel as they
are influenced by a “cool” and “catchy” tagline rather than an analytical and logical
approach to selecting counsel.
Applicant argues, to the contrary, that consumers of intellectual property
services exercise a high degree of care when selecting their intellectual property
provider.
For the past three years in my current solo practice and
for over four years with a large IP boutique, I have been
involved with client servicing and development for a
broad range of consumers in all areas of IP, including
patents, trademarks, copyrights, and trade secrets. These
consumers have included completely IP-unaware
individuals and startup companies, small and medium
sized US firms involved with IP only as an enforcement
target, and large international conglomerates seeking

30 53 TTABVUE 4.
Opposition No. 91202418
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maximal IP procurement. From my experience, all
potential and engaged consumers of IP legal services
exercise extreme care in selecting IP legal services
providers, due to the identity-driven nature of
professional legal services, the remarkable cost of IP legal
services, and the highly-commercial nature of IP
involvement.31
To support his argument, Applicant introduced Exhibits 9-18 to his
declaration.32 Those exhibits “are articles and pamphlets from providers, public
interest websites, and bar associations discussing how consumers should select
legal service providers.”33 Presumably, consumers use an Internet search engine to
inquire “how to select an intellectual property attorney,” and the Internet search
engine retrieves one of the proffered articles, or something similar.
Applicant testified that “consumer selection of legal services providers is
extremely identity driven, being most influenced by referrals and in-person
introductions that exchange personal information about the provider and relatively
much less by advertising.”34 According to Applicant, the hiring process generally
includes an initial interview, including information about Applicant’s experience
and expertise, costs, and information regarding how the legal services are provided
and billed.35 On the other hand, Applicant testified that he has “never been

31 Alley Declaration ¶ 12 (43 TTABVUE 8-9).
32 43 TTABVUE 163-197.
33 Alley Declaration ¶ 16 (43 TTABVUE 10).
34 Alley Declaration ¶ 16 (43 TTABVUE 11).
35 Alley Declaration ¶ 17 (43 TTABVUE 11).
Opposition No. 91202418
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identified by or asked about [his] slogan ‘Building Assets from Ideas’ in these
conversations.”36
Laurel Black, Opposer’s expert witness on marketing in the field of “corporate
identity, brand building, communications and business collateral,” testified to the
following distinction between “sophisticated” and “unsophisticated” inventors:
The taglines under consideration here [Applicant’s
BUILDING ASSETS FROM IDEAS and Opposer’s
TRANSFORMING IDEAS INTO BUSINESS ASSETS]
are also distinctive in providing this goal: the
development of the idea into an asset. For unsophisticated
inventors, the taglines crystallize a path to a goal. For
sophisticated inventors, or entrepreneurs and executives
whose responsibility is to protect the Intellectual Property
of a company, the tagline appears concisely expressive,
and therefore shows that the firm understands that the
company needs to convert its IP into assets, exactly what
the prospect seeks.37
With the exception of Mr. Dulin’s testimony about Opposer’s “cool” and “catchy”
tagline, Opposer’s witnesses provide only broad brush conclusions that consumers of
intellectual property law services do not necessarily exercise a high degree of care.
Only Applicant provides any testimony regarding the process those consumers use
to select intellectual property counsel: that is, consumers for intellectual property
services make their purchasing decisions through referrals and interviews.
However, Applicant testified that he is not aware that the tagline or service mark at

36 Alley Declaration ¶ 17 (43 TTABVUE 11-12).
37 Black Declaration ¶ 6 (38 TTABVUE 24). Ms. Black also testified that Applicant’s
testimony is not reliable because it was based on “unsupported and sweeping
generalizations … which are on their face unprovable and self-serving.” Black Rebuttal
Declaration ¶ 6 (53 TTABVUE 21). On the other hand, Ms. Black did not proffer any
opinions on the level of purchasing care exercised by consumers of intellectual property
services of what role the tagline plays in the selection of intellectual property counsel.
Opposition No. 91202418
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issue in this proceeding played any role in the purchasing decision which is contrary
to Mr. Dulin’s testimony that the tagline creates initial interest on behalf of
potential clients.
Based on the nature of the services at issue, we find that purchasers selecting
intellectual property counsel would exercise a high degree of care. For example,
selecting intellectual property counsel is not an everyday purchase; intellectual
property law services involve special laws requiring consultation with experts;
intellectual property law services are expensive; and consumers have a specific
purpose for requiring intellectual property counsel. Nothing in the record is to the
contrary and we do not find Mr. Dulin’s initial interest testimony persuasive. On
the other hand, Applicant’s testimony about the personal referrals and interviews
that characterize the selection of intellectual property counsel rings true, with the
caveat that Applicant was not aware of the service mark at issue playing a role in
the purchasing decision.
We find that the degree of care weighs in favor of finding that there is no
likelihood of confusion.
C. The number and nature of similar marks in use in connection with similar
services.

Applicant argues that he introduced into evidence 67 purported distinct
individuals or organizations using a tagline or phrase similar to the mark in
Opposer’s pleaded registration – TRANSFORMING IDEAS INTO BUSINESS
Opposition No. 91202418
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ASSETS.38 The following table lists the most relevant examples of law firms using
the same or similar marks as taglines:
Website TTABVUE

Hoffmann & Baron, LLP
Transforming Ideas Into Assets
43 TTABVUE 217

Jeff Schell
Transforming Ideas Into Assets
43 TTABVUE 321

The Fletcher Law Firm PLLC
Turning Your Ideas Into Assets
43 TTABVUE 327

Fountainhead Law Group
Transforming Ideas Into Assets
43 TTABVUE 330

FirstPoint IP
Turning Ideas Into Assets
43 TTABVUE 333

Scott Redmond (Patent Agent)
Turning Ideas Into Assets
43 TTABVUE 336

Clock Tower Law Group
Transform Ideas Into Assets39
43 TTABVUE 337

Santangelo Law Offices, P.C.
Turning Ideas Into Assets
43 TTABVUE 354

38 Alley Declaration ¶ 21 (43 TTABVUE 35). We did not consider third-party use from
entities outside of the United States.
39 Mr. Dulin testified that after sending the Clock Tower Law Group a protest letter, that
firm agreed to stop using the tagline “Transform Ideas Into Assets.” 63 TTABVUE 7-8.
Opposition No. 91202418
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Website TTABVUE

Steve Gruber Intellectual Property
Transforming Ideas Into Assets
43 TTABVUE 357

Boston Legal Consultant Group, LLC
Turning Concepts Into Assets
43 TTABVUE 365

Wells St. John
Creating Value From Ideas
43 TTABVUE 377

Greg Osterloth
Securing Patents that Turn Abstract Ideas into Tangible
Assets and Real Revenue
43 TTABVUE 395

AdamsIP, LLC
Ideas Into Assets
43 TTABVUE 396

Bateman IP
Where Innovation Becomes Assets
43 TTABVUE 400

Paul W. Fulbright, PLLC
From Ideas to Profits
43 TTABVUE 403

Emerson Thomson & Bennett, LLC
Ideas Are Valuable
43 TTABVUE 410

Inventa Capital PLC
Turning Innovation To Capital
43 TTABVUE 411

The table below lists examples of law firms using the same or similar terms in
advertising text:
Website TTABVUE
Clever Ventures

We turn ideas into assets. We build and sell innovations
…Creators of seminal disruptive-technologies used by tens …
We create companies and product revolutions.40
43 TTABVUE 334

40 The excerpt from the website was not complete.
Opposition No. 91202418
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Website TTABVUE

The Marbury Law Group, PLLC

Transforming ideas into valuable IP assets in order to gain a
competitive advantage is a hallmark of our practice.
43 TTABVUE 361

Thomas/Horstemeyer

Thomas Horstemeyer, LLP (Thomas/Horstemeyer) is
Atlanta’s IP boutique – the largest Atlanta-based intellectual
property law firm providing services in litigation, patent,
copyright and trademark. … This allows us to specialize and
deliver our clients the singular expertise needed to turn great
ideas into valuable assets.
43 TTABVUE 371

Kelly & Krause, LP

Experience matters. We are intellectual property
practitioners with multiple years of IP law experience on top
of years of industry experience as technologists. We create
value by turning ideas into assets.
43 TTABVUE 373

Law Offices of CR Miles

Having a great idea is one half of the equation. The other half
is CR MILES – a team of experienced, thoughtful intellectual
property attorneys with decades of experience helping some of
America’s top inventors and business owners. CR MILES is
the perfect firm to turn your ideas into assets.
43 TTABVUE 374

Balser & Grell IP Law, LLC

A business identity, reputation, goodwill and brand are all
critical in establishing a competitive edge in today’s
marketplace, and investment in these areas actually equates
to real profits. It is obvious then that the importance of
protecting a business’ trademarks, which operate as the
embodiment of the identity, reputation, goodwill, and brand
attached to the business’ quality goods and services is
constantly increasing. Thus, our trademark practice is one
way that we help turn our clients’ ideas into assets.
43 TTABVUE 375

Opposition No. 91202418
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Website TTABVUE

Bruce Berman, From Ideas To Assets: Investing Wisely In
Intellectual Property. This book is advertised as “a detailed
overview of what intellectual property assets are and how
they work.”
43 TTABVUE 379

Swanson & Bratschun, L.L.C.

We will help you look at your breakthrough engineering or
life science discovery from every standpoint. We will guide
you from idea to asset.
43 TTABVUE 398

Opposer asserts that some of the third-party uses are not trademark use but
fair use of a term used in its primary descriptive sense.41 For example, The Marbury
Law Group, PLLC (Marburylaw.com) uses a similar term in the following manner:
Strategic Intellectual Property Counselling
Transforming ideas into valuable IP assets in order to
gain a competitive advantage is a hallmark of our
practice.42
Likewise, Thomas|Horstemeyer, LLP (tkhr.com) uses a similar term in text, not as
a trademark, as shown below:
Thomas Horstemeyer, LLP (Thomas|Horstemeyer) is
Atlanta’s IP boutique – the largest Atlanta-based
intellectual property law firm providing services in
litigation, patent, copyright and trademark. Our
attorneys practice solely in IP law and have a wide
variety of education and industry experience. This allows
us to specialize – and deliver our clients the singular
expertise to turn great ideas into valuable assets.43
The same with Kelly & Krause, L.P. (Kelly-krause.com):

41 Opposer’s Brief, pp. 36-37 (55 TTABVUE 37-38).
42 43 TTABVUE 360-361.
43 43 TTABVUE 371.
Opposition No. 91202418
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Experience matters. We are intellectual property
practitioners with multiple years of IP law experience on
top of years of industry experience as technologists. We
create value by turning ideas into assets.44
Opposer also asserts that many of the third-party uses are not similar to
Opposer’s mark – TRANSFORMING IDEAS INTO BUSINESS ASSETS45 – citing
the book title FROM IDEAS TO ASSETS: INVESTING WISELY IN INTELLECTUAL
PROPERTY46 and the Emerson Thomas & Bennett, LLC (etblaw.com) webpage
using the registered trademark IDEAS ARE VALUABLE as a tagline.47
The third-party use corroborates what we intuitively knew about the mark in
Opposer’s pleaded registration – TRANSFORMING IDEAS INTO BUSINESS
ASSETS: that is, the mark is highly suggestive. In fact, that is the essence of Laurel
Black’s testimony as set forth below:
5. Both of the marks at issue are word marks as
distinct from logos or composite marks (logos + words),
and both function as branding “taglines,” telling the
prospective client the strategic goals the respective firms
offer, with respect to providing the legal services.
Taglines, also known as slogans, function to provide
prospects with a condensation of the essence of the service
or product offered, so that they can quickly “get” what the
firm can do for them. Such taglines are intended, in
connection with services, to motivate the prospect to make
initial contact, or in the case of an Internet presence, to
click on the “Contact Us” button on the firms’ web page.
Such contact motivation is a key goal of professional
services brand development taglines.

44 43 TTABVUE 373.
45 Opposer’s Brief, p. 37 (55 TTABVUE 38).
46 43 TTABVUE 379.
47 43 TTABVUE 409.
Opposition No. 91202418
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6. In this regard, the Registered mark of the Opposer is
very distinctive in telling a prospect what the Opposer’s
suite of services does for them. It conveys a sense of
process for the prospect, who we know has an idea, yet
who may not have a clear concept of his or her goal. The
taglines under consideration here are also distinctive in
providing this goal: the development of the idea into an
asset. For unsophisticated inventors, the taglines
crystallize a path to a goal. For sophisticated inventors, or
entrepreneurs and executives whose responsibility is to
protect the Intellectual Property of a company, the tagline
appears concisely expressive, and therefore shows that
the firm understands that the company needs to convert
its IP assets, exactly what the prospect seeks. The
insights provided by the tagline also self-evidently serve a
client retention and loyalty-building purpose.48
The facts presented in this case show that there are many third-party users of
marks or taglines that are similar to the mark in Opposer’s pleaded registration in
connection with intellectual property law services. Not surprisingly, the parties
contend that the roles the marks play in their marketing efforts differ. As noted
above by Applicant, he is not aware that the tagline or service mark at issue in this
proceeding plays any role in the purchasing decision.49 On the other hand, as
recounted by Mr. Dulin above, the tagline generated initial interest on the part of
potential clients.
While we find that this factor weighs against finding that there is a likelihood of
confusion, we must keep in mind what the Court of Customs and Patent Appeals,
the predecessor or our primary reviewing court, said in Matsushita Elec. Indus. Co.,

48 38 TTABVUE 23-24.
49 Laurel Black testified that “[t]he insights provided by the tagline also self-evidently serve
a client retention and loyalty-building purpose.” 38 TTABVUE 24. It is not self-evident to
us how the tagline serves those purposes in that the performance of counsel is going to
drive client retention, and loyalty lasts only so long as counsel serves a purpose.
Opposition No. 91202418
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Ltd. v. Nat’l Steel Constr. Co., 442 F.2d 1383, 170 USPQ 98, 99 (CCPA 1971), in
finding likelihood of confusion between uses of NATIONAL in a cancellation
proceeding:
Neither trademarks nor the public are adequately
protected unless decisions in cases of this kind are based
on a realistic appraisal of the likelihood of purchasers or
prospective purchasers being confused as to source
regardless of theoretical “weakness” of a mark.
With that in mind, we turn to the similarity of the marks.
D. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.

We now turn to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. du Pont, 177 USPQ at 567. In a particular
case, “two marks may be found to be confusingly similar if there are sufficient
similarities in terms of sound or visual appearance or connotation.” Kabushiki
Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29 USPQ2d 1317, 1318 (TTAB 1991),
aff’d mem., 979 F.2d 216 (Fed. Cir. 1992) (emphasis in the original; citation
omitted). See also Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1519
(TTAB 2009), citing Krim-Ko Corp. v. The Coca-Cola Co., 390 F.2d 728, 156 USPQ
523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or
sound alone is likely to cause confusion.”).
In comparing the marks, we are mindful that where, as here, the services are
identical, the degree of similarity necessary to find likelihood of confusion need not
be as great as where there is a recognizable disparity between the services. Coach
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Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind, 85 USPQ2d
1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing-Jing
Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
Finally, “[t]he proper test is not a side-by-side comparison of the marks, but
instead ‘whether the marks are sufficiently similar in terms of their commercial
impression’ such that persons who encounter the marks would be likely to assume a
connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 101
USPQ2d at 1721 (citation omitted). See also San Fernando Electric Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972
F.2d 1353 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the
average customer, who retains a general rather than specific impression of the
marks. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago
Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Applicant’s mark is BUILDING ASSETS FROM IDEAS and the mark in
Opposer’s pleaded registration is TRANSFORMING IDEAS INTO BUSINESS
ASSETS. The marks have similar meanings and engender similar commercial
impressions. We find that both marks mean and engender the commercial
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impression that the law firms help their clients develop ideas into assets. See also
the Laurel Black testimony discussed infra.
With respect to the appearance and sound of the marks, we note that the marks
are not identical. Nevertheless, they are similar because they share the words
“Assets” and “Ideas” in taglines that mean the same thing. Trademark law does not
require exact similitude to conclude that two marks are similar. Hercules Inc. v.
Nat’l Starch and Chem. Corp., 223 USPQ 1244, 1246 (TTAB 1984). Thus, the
differences between the marks at issue do not obviate their similarity.
In view of the foregoing, we find that the marks are similar in their entireties in
terms of appearance, sound, meaning and commercial impression.
E. The length of time during and conditions under which there has been
concurrent use without evidence of actual confusion.

The absence of any reported instances of confusion is meaningful only if the
record indicates appreciable and continuous use by Applicant of his mark for a
significant period of time in the same markets as those served by Opposer under its
mark. Citigroup Inc. v. Capital City Bank Group, Inc., 94 USPQ2d 1645, 1660
(TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In other words,
for the absence of actual confusion to be probative, there must have been a
reasonable opportunity for confusion to have occurred. Barbara’s Bakery Inc. v.
Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007) (the probative value of the
absence of actual confusion depends upon there being a significant opportunity for
actual confusion to have occurred); Red Carpet Corp. v. Johnstown American Enters.
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Inc., 7 USPQ2d 1404, 1406-1407 (TTAB 1988); Central Soya Co., Inc. v. North
American Plant Breeders, 212 USPQ 37, 48 (TTAB 1981) (“the absence of actual
confusion over a reasonable period of time might well suggest that the likelihood of
confusion is only a remote possibility with little probability of occurring”).
Applicant began using his mark BUILDING ASSETS FROM IDEAS in May
2011.50 Since Opposer’s testimony period closed December 2, 2013, there have been
two and one-half years of simultaneous use of the parties’ marks without any
reported instances of confusion.
Although Applicant is licensed to practice law in California and Virginia, he has
advertised on the Internet which is national in scope.51 There is no other testimony
or evidence regarding Applicant’s advertising or geographic trading area. On the
other hand, Mr. Dulin, on behalf of Opposer, testified that he has an “active practice
as an IP lawyer based in Washington state, and serve[s] clients primarily in
California, Illinois, Colorado, Pennsylvania, Michigan, Florida, Kansas, Arizona,
and Washington.”52 In addition to Internet advertising, Opposer’s mark has been
advertised on a firm truck in California, Washington, Oregon, Idaho, Utah,
Wyoming and Colorado.53
Because we do not have any evidence regarding the extent of Applicant’s
advertising or the geographic scope of his practice, we cannot make a finding as to

50 43 TTABVUE 5.
51 43 TTABVUE 4 and 6.
52 39 TTABVUE 10 and 53 TTABVUE 2.
53 39 TTABVUE 9.
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whether after two and one-half years of simultaneous use, there has been an
reasonable opportunity of confusion to have occurred. Accordingly, we find that this
du Pont factor is neutral.
F. Balancing the factors.
Despite the fact that the mark in Opposer’s pleaded registration is highly
suggestive and, therefore, entitled to only a narrow scope of protection or exclusivity
of use and the fact that the consumers will exercise a high degree of consumer care
in making their decision to select intellectual property counsel, because the marks
are similar, the services are identical and the presumption that the services move in
the same channels of trade and are sold to the same classes of consumers, we find
that Applicant’s mark BUILDING ASSETS FROM IDEAS for “legal services in
intellectual property, including patent, trademark, copyright, and trade secret
procurement, transfer, and enforcement” is likely to cause confusion with
TRANSFORMING IDEAS INTO BUSINESS ASSETS for “legal services relating to
intellectual property law and strategy.”
Decision: The opposition is sustained and registration of Applicant’s mark,
BUILDING ASSETS FROM IDEAS, is refused.