Integrated Embedded dba Barr Group

Trademark Trial and Appeal Board

Nov 5, 2015

No. 86141386 (T.T.A.B. Nov. 5, 2015)

This Opinion is
not a
Precedent of the
TTAB

Mailed: November 5, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Integrated Embedded
dba Barr Group
_____

Serial No. 86141386
_____

Steven War of McNeely, Hare & War LLP,
for Integrated Embedded dba Barr Group.
April Roach, Trademark Examining Attorney, Law Office 115,
John Lincoski, Managing Attorney.
_____

Before Seeherman, Bucher and Wellington,
Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:
Integrated Embedded, dba Barr Group, (“Applicant”) has appealed
from the final refusal of the Trademark Examining Attorney to
register the mark BG and design, as shown below, for
Expert witness services in legal matters in
the field of design of computer hardware,
integrated circuits, communications
hardware and software and computer
Serial No. 86141386
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networks for others.” (International Class
45).1

“The mark consists of a box including the right portion of a capital
letter ‘B’ on the left and a portion of the small letter ‘g’ on the right top
corner of the left section of the rectangle box.” Color is not claimed as a
feature of the mark.
The Trademark Examining Attorney refused registration of the
mark for the services in Class 45 on the ground of likelihood of
confusion. Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). The
Examining Attorney’s position is that Applicant’s mark is so similar to
the mark BG in the stylized form shown below, registered for “legal
services,”2 that as used with the expert witness services identified in
Class 45, it is likely to cause confusion or mistake or to deceive.

1 Application Serial No. 86141386, filed December 11, 2013, asserting first
use and first use in commerce on March 9, 2012. The application also
includes “IT training services; Training services in the field of design of
computer hardware, integrated circuits, communications hardware and
software and computer networks for others” in Class 41 and “Engineering
services in the field of design of computer hardware, integrated circuits,
communications hardware and software and computer networks for others”
in Class 42; however, registration was not refused with respect to these
classes and these classes and services are therefore not the subject of this
appeal.
2 Registration No. 3073394, issued March 28, 2006; Section 8 affidavit
accepted; Section 15 affidavit received.
Serial No. 86141386
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We reverse the refusal to register.
Our determination of the issue of likelihood of confusion is based on
an analysis of all of the probative facts in evidence that are relevant to
the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling
Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
Turning first to the du Pont factor of the similarity or dissimilarity
of the services, the Examining Attorney has submitted evidence from
various third-party websites to show that law firms offer both legal
and expert witness services. The following excerpts are representative:
• Spencer Law Firm LLC
Expert Witness । Trust, Estate & Tax Matters (general
heading with logo)
…
Spencer Law Firm LLC in Lancaster, Pennsylvania, is
comprised of legal professionals dedicated to a single goal:
meeting your estate planning and administration needs.
Whether you are an individual needing to develop a
complex estate plan, an attorney requiring an expert
witness to aid in resolving a fiduciary dispute in court or
an accountant searching for legal support to help your
clients realize a strategy to minimize future tax burdens,
Spencer Law Firm LLC ….3

• TollefsenLaw
Business Law and Litigation (general heading)
…

3 www.spencerlawfirm.com, March 20, 2014 Office action, p. 4.
Serial No. 86141386
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We offer business law and litigation services in state and
federal courts of Washington, Oregon and New York,
nationwide fraud investigative services, and national
expert witness services.
…
Expert Witness Services
Tollefsen Law has experienced lawyers who serve as
expert witness on business law, securities law, and
transportation law issues.
John J. Tollefsen
As an independent expert witness, John J. Tollefsen offers
the ability to reduce complex fact situations to
understandable testimony for a judge or jury.4

• FORRY LAW GROUP (general heading)
Civil & Real Estate Attorney
Expert Witness and Testimony
Plaintiff & Defendant Representation (heading)
…
Forry Law Group can provide the necessary analysis,
consultation, representation or expert witness testimony
for mediation, arbitration and trials in a wide variety of
real estate matters and civil action.
Expert Witness (subhead)
Offering professional, effective expert witness testimony
that may enhance your argument relative to your
particular legal case.5

• Law Offices of A. Lavar Taylor
As accomplished attorneys in our respective fields, we are
often asked to provide Expert Witness and Consultation
Services for other attorneys, law firms, and their clients.6

The Health Law Firm (general heading)
Expert Witness Availability (subhead)
Attorneys at The Health Law Firm are also available for
expert witness work. Areas in which our attorneys
perform expert witness testimony include: [followed by a

4 www.tollefsenlaw.com, March 20, 2014 Office action, pp. 7, 8, 11.
5 http://forrylaw.com, March 20, 2014 Office action, p. 18.
6 http://taylorlaw.com, March 20, 2014 Office action, p. 21.
Serial No. 86141386
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listing of areas, e.g., Health Law, Federal Regulations,
Good Samaritan Law]7

• THE KAMBER LAW GROUP
Advancing the Law of Work (general heading)
Expert Witness Services in Social Media (heading)
In addition to representing clients in social media and
related cases, we also provide assistance to lawyers,
judges, and clients who already have counsel. … We also
can provide an expert witness to testify regarding social
media and networking.8

• SWANSON & Bratschun LLC
Expert Witness (heading)
Swanson & Bratschun has assembled a collection of
attorneys with outstanding credentials and a wealth of
experience in patent and trademark prosecution, due
diligence and licensing. This combination leaves our
attorneys well postured to provide competent and credible
expert testimony in these areas of practice. We have
worked with trial counsel as co-counsel and understand
the importance of honestly evaluating facts to determine
our ability to provide forceful and persuasive testimony
that can stand up to rigorous cross-examination.9

The evidence submitted by the Examining Attorney shows that a
law firm may offer both legal services and expert witness services
under the same mark. However, the consumers of expert witness
services, by the nature of such services, are attorneys who would use
such expert witnesses in the preparation and presentation of their
cases. For example, as set forth in the above excerpts, the Spencer Law
Firm characterizes its expert witness services as being directed to

7 www.thehealthlawfirm.com, October 14, 2014 Office action, p. 5.
8 www.kamberlawgroup.com, October 14, 2014 Office action, p. 8.
9 http://sbiplaw.com, October 14, 2014 Office action, p. 19.
Serial No. 86141386
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attorneys: “[w]hether you are … an attorney requiring an expert
witness to aid in resolving a fiduciary dispute in court…”; Swanson &
Bratschun LLC explains with respect to its expert witness services
that “We have worked with trial counsel as co-counsel and understand
the importance of … evaluating facts to determine our ability to
provide … testimony that can stand up to rigorous cross-examination.”
Moreover, the expert witness services offered by Applicant are of a
very specific nature; they are limited to the field of “design of computer
hardware, integrated circuits, communications hardware and software
and computer networks for others.” The evidence of record does not
show that expert witness services in this field are offered by the same
entities that provide legal services; on the contrary, the law firm
webpages indicate that the attorneys who provide expert witness
services do so with respect to their areas of legal expertise, not the
technical expertise involved in computer hardware and software.
Even if we could assume that it is typical for a law firm to provide
both legal services and the specialized expert witness services
identified in Applicant’s application, the only purchasers who are likely
to encounter Applicant’s and the Registrant’s identified services and
who would be consumers thereof would be attorneys who might have
the need for an expert witness in Applicant’s field and also have a need
for legal services (either as co-counsel or for assistance in an area of
Serial No. 86141386
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practice with which they are not completely familiar). This one
common class of consumers must be considered to be careful and
sophisticated purchasers, who would pay attention to trademarks and
notice differences between them.
With respect to the marks, the Examining Attorney points out that
they both consist of the letters BG and contends that the cited mark is
in minimally stylized type. Citing In re Viterra, 671 F.3d 1358, 101
USPQ2d 1905 (Fed. Cir. 2012), the Examining Attorney states that
“when the word portions of marks are identical, the addition of a
design element does not generally overcome the similarity as
consumers often use the wording to refer to the goods and services.”
Brief, 9 TTABVUE 4. Although the statement of law is correct, it is not
directly applicable to the present case, because “the nature of stylized
letter marks is that they partake of both visual and oral indicia, and
both must be weighed in the context in which they occur.” In re
Electrolyte Laboratories Inc., 929 F.2d 645, 16 USPQ2d 1239, 1240
(Fed. Cir. 1990). Applicant’s mark, in particular, “is in the gray region
between pure design marks which cannot be vocalized and word marks
which are clearly intended to be.” Georgia-Pacific Corp. v. Great Plains
Bag Co., 614 F.2d 757, 204 USPQ 697, 699 (CCPA 1980). As a result,
we do not accept the Examining Attorney’s position that the marks
“are nearly identical in sound, connotation, and commercial
Serial No. 86141386
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impression.” Brief, 9 TTABVUE 4. Rather, we think that, in these
particular circumstances, it is appropriate to give greater weight to the
appearance of the marks in our consideration of whether the marks are
similar.
Applicant goes into great detail in delineating the differences in the
marks, e.g., Applicant’s mark has only incomplete letters (“a portion of
an uppercase ‘B’ and a portion of a lower case ‘g,’” reply brief, 10
TTABVUE 2) that are separated from each other; the “G” is in lower
case; and the letters appear in a box; while the cited mark has
complete letters, and the “G” is capitalized.10 Although the test is not
whether the marks can be distinguished when subjected to a side-by-
side comparison, see Midwestern Pet Foods Inc. v. Societe des Produits
Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012), in
this case we consider many of the differences in the marks to be
significant. In particular, the “B” in Applicant’s mark is very
prominent; it is much larger than the lower case letter “G,” taking up
the entire height of the surrounding rectangular background, while the
“G,” because of its size and placement, plays a more subordinate role in

10 Applicant also claims that in the cited mark, “the upper portion of the
capital G passes through the lower circular portion of the capital B.” Brief, 7
TTABVUE 7 (emphasis in original). Apparently Applicant’s comment was
directed to the mark as it was originally registered. However, on December 3,
2011, prior to the filing date of Applicant’s application and therefore prior to
anything that occurred during examination, a Section 7 amendment to the
registration issued to show the mark in the form in which it appears in our
decision.
Serial No. 86141386
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the commercial impression of the mark. Contrasted with this, the
capital “G” in the cited mark is larger than the “B,” being
approximately twice as wide, and therefore the “G” plays a more
prominent role. The result is that the marks are different in
appearance, and this difference causes them to have somewhat
different commercial impressions. Given the care with which
Applicant’s and the Registrant’s services will be chosen by the
attorneys who are the relevant purchasers of both services, we find
that these differences are enough to distinguish the marks.
We also consider the du Pont factor of the extent of potential
confusion and find it to favor Applicant’s position. The potential
consumers for both Applicant’s and the Registrant’s services are rather
limited, consisting of attorneys who would be in need of both legal
services and expert witness services in legal matters in a very specific
field (“computer hardware, integrated circuits, communications
hardware and software and computer networks for others”).
With respect to the remaining du Pont factors for which Applicant
and the Examining Attorney have submitted evidence or argument, we
treat them as neutral, for the following reasons. First, we agree with
Applicant that there is no evidence of fame of the Registrant’s mark.
Second, with respect to the du Pont factor of the number and nature
of similar marks in use on similar goods/services, Applicant has
Serial No. 86141386
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submitted a number of third-party registrations for marks described as
consisting of the letters “B” and “G.” Third-party registrations are not
evidence that the marks shown therein are in use. Further, some of
these special form marks convey significantly different commercial
impressions from Applicant’s mark and the cited mark. Moreover, most
of the registrations are for goods and services that are very different
from those at issue herein. (As noted, the du Pont factor refers to use
on similar goods and services.) For example, Reg. No. 4486252 is for
golf gloves; Reg. No. 4391788 is for restaurant services; Reg. No.
4118643 is for bail bonding. Applicant contends in its brief that “6 are
in the same class” as the cited registration, 7 TTABVUE 10, but the
services are quite different: Reg. No. 3893374 is for computer aided
graphic design; Reg. No. 3034480 is for architectural design services,
interior planning and design services, and building site and building
facilities planning services; Reg. No. 3814849 is for, inter alia,
computer services, namely, maintaining a database pertaining to
aspects of an international energy production and distribution
company and Reg. No. 1887647 is for funeral home services. Two of the
registrations are for goods: Reg. No. 1878202 is for metal fastening
devices, namely, nuts, bolts, studs and threaded rods, and Reg. No.
1030422 is for automotive chemicals, cooling system cleaners and
carburetor cleaners, and automotive lubricants, motor oils, etc. In
Serial No. 86141386
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short, even if these third-party registrations could be treated as
showing use of the marks therein (which they cannot be), they do not
show use of similar marks for similar goods and services, and therefore
do not show that the cited registration is weak. Further, although in
some instances third-party registrations can show the sense in which a
mark is used in ordinary parlance, or that an element common to
marks may have a normally understood and well-recognized
descriptive or suggestive meaning, see Juice Generation, Inc. v. GS
Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015),
that is not the case here, since there are no third-party registrations
for BG marks for similar services. Although we can assume that
Applicant’s mark was derived from the initials of its dba, Barr Group,
and that the cited mark was derived from the initials of the Registrant,
Bracewell & Giuliani, there is nothing in the record to show that “BG”
has a meaning in general for legal services or expert witness services.
Third, although there is no evidence of instances of actual
confusion, we cannot treat this factor as favoring Applicant. As of the
close of examination, there was only a three-year period of
contemporaneous use, and there is insufficient information for us to
conclude that there has been an opportunity for confusion to occur, if it
were likely to occur. Moreover, Applicant’s uncorroborated statements
Serial No. 86141386
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of no known instances of actual confusion are of little evidentiary
value. In re Majestic Distilling Co., 65 USPQ2d at 1205.
Conclusion
Because of the care and sophistication of the purchasers of both
types of services, the specific differences in the marks and their overall
appearance and commercial impression, and the lack of evidence that
expert witness services for the field identified in Applicant’s
application are also offered by entities that offer legal services, we find
that the record does not support a finding of likelihood of confusion.
Decision: The refusal to register Applicant’s mark BG and design
is reversed.