No. 92060029 (T.T.A.B. Apr. 12, 2017)

Jahn & Associates, LLCv.Melvin N.A. Avanzado

Trademark Trial and Appeal BoardApr 12, 2017

No. 92060029 (T.T.A.B. Apr. 12, 2017)

This Opinion is Not a Precedent of the TTAB Mailed: April 12, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Jahn & Associates, LLC v. Melvin N.A. Avanzado ________ Cancellation No. 92060029 _______ Kirstin M. Jahn of Jahn & Associates, LLC for Jahn & Associates, LLC. Melvin N.A. Avanzado of The Avanzado Law Firm for Melvin N.A. Avanzado. _____ Before Zervas, Bergsman and Greenbaum, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: On August 23, 2011, Registration No. 4015965 (hereinafter “the ‘965 registration”) for the standard character mark BIG FIRM EXPERIENCE…SMALL FIRM SERVICE issued on the Principal Register to Melvin N.A. Avanzado (“Respondent”) for “litigation services.” The ‘965 registration is based on an application filed under Cancellation No. 92060029 - 2 - Section 1(a), 15 U.S.C. § 1051(a), on February 1, 2011, and identifies the first use and first use in commerce on March 1, 2008. Jahn & Associates, LLC (“Petitioner”) filed a petition to cancel the ‘965 registration, alleging priority of use of the mark SMALL FIRM BIG EXPERIENCE, ownership of Registration No. 3642830 (hereinafter “the ‘830 registration,” filed November 13, 2008, registered June 23, 2009, and claiming first use and use in commerce on October 31, 2001) for SMALL FIRM, BIG EXPERIENCE1 (in standard character form) for “legal services,” and likelihood of confusion pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Respondent filed an answer to the petition to cancel in which he denied the salient allegations in the petition for cancellation and asserted laches, “estoppel/waiver” and failure to state a claim as affirmative defenses. Because Respondent discusses only laches in its main brief, the affirmative defenses of “estoppel/waiver” and failure to state a claim are deemed waived. See Cerveceria India Inc. v. Cerveceria Centroamericana, S.A., 10 USPQ2d 1064, 1066, n.3 (TTAB 1989), aff'd, 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989) (affirmative defenses waived). The parties have fully briefed the case. Evidentiary Issue Petitioner objects for the first time in its reply brief to Respondent’s submission of evidence downloaded after the close of discovery from the Internet with his notice of reliance because Respondent did not produce the evidence during discovery and did 1 Unlike the pleaded common law mark, the registered mark includes a comma. Cancellation No. 92060029 - 3 - not list this evidence in his pre-trial disclosures.2 Because Petitioner did not raise its objections in its main brief on the case, or even earlier, we deem the objections to be waived. Petitioner cannot wait until its reply brief to raise objections. Such a tactic effectively forecloses Respondent from responding to the objection. Further, TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 707.02(b) (Jan. 2017) makes clear that an objection should be raised in the brief on the case, not the reply brief: [A] procedural objection to a notice of reliance should be raised promptly, preferably by motion to strike if the defect is one that can be cured. However, if the ground for the objection is one that could not be cured even if raised promptly, the adverse party may wait and raise the procedural objection in or with its brief on the case or in an appendix or separate statement of objections attached to the brief. If the objection which is one that could have been cured promptly, and was not timely raised, the objection is deemed to be waived. The Record The record in this case consists of the pleadings and the file of the involved registration. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1). In addition, the record contains the following: - Petitioner’s first notice of reliance and second “confidential” notice of reliance submitting: ● TESS printout of the ‘830 registration showing its “live” status and title in Petitioner, as well as the initial application for registration; ● TESS printout of the ‘965 registration; 2 Petitioner’s reply at 8, 45 TTABVUE 9. Cancellation No. 92060029 - 4 - ● Print out of TESS search results for the term “Small Firm Big Experience”; ● Print out of TESS search results for the term “Big Firm Experience...Small Firm Service”; ● Respondent’s Response to Petitioner’s First Set of Request for Admissions; ● Respondent’s Response to Petitioner’s First and Second Set of Request for Production of Documents and documents provided thereto; and ● Declaration of Kirstin M. Jahn dated March 29, 2016, with exhibits.3 - Respondent’s notice of reliance submitting: ● Registration certificate for the ‘695 registration, the TESS printout for the ‘695 registration and various application papers; ● Registration certificate for the ‘830 registration and various application papers; ● Petition to cancel in the present proceeding; ● Petitioner’s response to Respondent’s first set of requests for admission; ● Petitioner’s responses to Respondent’s first and second set of interrogatories; ● Webpages from Petitioner’s website and the websites of, or pertaining to, other law firms; ● Respondent’s declaration dated May 27, 2016, and exhibits thereto; and ● Declaration of Kelly D. Talcott, Esq. 3 Submitted pursuant to the parties’ stipulation (filed March 29, 2016) to submit trial testimony by affidavit, which the Board approved on April 7, 2016. 23 TTABVUE 1. Cancellation No. 92060029 - 5 - In addition, Respondent submitted copies of correspondence with his notice of reliance. The notice of reliance procedure does not cover the submission of correspondence and hence the correspondence has not been considered. See Calypso Tech. Inc. v. Calypso Capital Mgmt. LP, 100 USPQ2d 1213, 1216 (TTAB 2011) (“A party seeking to make evidence of record by notice of reliance must follow the rules and case law; if material cannot be made of record by notice of reliance it will not be considered even if the adverse party does not specifically object to it, as long as the adverse party does not specifically treat it as of record such that we can say it has been stipulated into the record.”); TBMP § 704.02 et seq. Standing Standing is a threshold issue that must be proven by the plaintiff in every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015); John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). A party has standing to seek cancellation of a registration if the party believes it is likely to be damaged by the registration. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). Petitioner has properly made of record its pleaded registration and shown the registration to be valid and subsisting, and owned by Petitioner. The registration demonstrates that Petitioner possesses a real interest in this proceeding beyond that of a mere intermeddler, and a reasonable basis for its belief of damage. See, e.g., Id. at 1844; Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 Cancellation No. 92060029 - 6 - (CCPA 1982). We find, therefore, that Petitioner has proven its standing to petition for cancellation of Respondent’s registration. Priority A party claiming prior use of a mark may petition to cancel a registration on the basis of such prior use pursuant to Section 14 of the Trademark Act, 15 U.S.C. § 1064. In a cancellation proceeding, to establish priority on a likelihood of confusion claim brought under Section 2(d) of the Trademark Act, a party must prove that, vis-à-vis the other party, it owns “a mark or trade name previously used in the United States … and not abandoned.” Trademark Act § 2(d). A party may establish its own prior proprietary rights in a mark through actual use, use analogous to trademark use, or an earlier constructive use date accorded to the party's own application. See Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009). Petitioner's pleaded registration issued from an application filed on November 13, 2008, before Respondent’s first use of his mark4 and well before the February 1, 2011 filing date of Respondent's underlying application. Petitioner's priority as to the services identified in its pleaded registration therefore is established. Respondent, moreover, does not dispute Petitioner's claim of priority or otherwise address the issue of priority in its trial brief. 4 Respondent states at paragraph 9 of his declaration that “[i]n or about June 2009, I came up with the tag line for The Avanzado Law Firm, ‘Big Firm Experience, Small Firm Service’ and used it in an advertisement for a bar event shortly thereafter.” 34 TTABVUE 129. Additionally, Respondent admitted his first use date set forth in his trademark application is not correct. Ex. 5, Petitioner’s notice of reliance, Respondent’s response to req. for admissions no. 1, 20 TTABVUE 25-26. See also Exh. 14 to Avanzado Decl. (emails from June 2009), 34 TTABVUE 134-146. Cancellation No. 92060029 - 7 - Likelihood of Confusion A presumption of validity attaches to a trademark registration, and the party seeking cancellation must rebut this presumption by a preponderance of the evidence. West Fla. Seafood Inc. v. Jet Rests. Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1662 (Fed. Cir. 1994). Section 14(1) of the Trademark Act provides that a cancellation action may be brought on the ground of likelihood of confusion before a registration is five years old. The petition before us was filed on May 14, 2014, within five years from the date the subject registration issued on August 23, 2011. Our determination under Trademark Act Section 2(d) is based on an analysis of all 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., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods or services, the first two du Pont factors. 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.”). Petitioner bears the burden of proving its claim of likelihood of confusion by a preponderance of the evidence. Cunningham, 55 USPQ2d at 1848. Cancellation No. 92060029 - 8 - We address in turn each of the du Pont factors for which the parties submitted evidence or argument. To the extent that any other du Pont factors for which no evidence was presented may be applicable, we treat them as neutral. Strength of Petitioner’s mark At the outset, we consider the sixth du Pont factor involving the strength of Petitioner’s mark SMALL FIRM, BIG EXPERIENCE because the strength of Petitioner’s mark determines its scope of protection or exclusivity of use. Evidence of use by third parties of similar marks on similar goods is probative of the ultimate inquiry of likelihood of confusion only when such use is so extensive that “customers have become so conditioned by a plethora of such similar marks that customers have been educated to distinguish between different [such] marks on the basis of minute distinctions.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). See also Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675-76 (Fed. Cir. 2015). “[T]he strength of a mark is not a binary factor” and “varies along a spectrum from very strong to very weak.” Juice Generation, 115 USPQ2d at 1675-76 (internal citations omitted). “The weaker [the registrant’s] mark, the closer [a petitioner’s] mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.” Id. at 1676 (internal citations omitted). See also Palm Bay Imps., 73 USPQ2d at 1693 (“Evidence of third-party use Cancellation No. 92060029 - 9 - of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.”). “In determining the strength of a mark, we consider both its inherent strength based on the nature of the mark itself and its commercial strength, based on the marketplace recognition value of the mark.” American Lebanese Syrian Assoc. Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011); (citing Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006) and McCarthy on Trademarks and Unfair Competition § 11:83 (4th ed. 2011) (“The first enquiry focuses on the inherent potential of the term at the time of its first use. The second evaluates the actual customer recognition value of the mark at the time registration is sought or at the time the mark is asserted in litigation to prevent another’s use.”)). Respondent argues that Petitioner’s mark is descriptive.5 Because Petitioner is the owner of a registered mark which is entitled to the presumptions of validity under Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b), and Respondent has not counterclaimed to cancel Petitioner’s mark, Respondent’s allegation is not one we can consider. Respondent also argues that Petitioner’s mark is weak because many law firms use variations of Petitioner’s mark.6 In support, Respondent submitted webpages from law firm websites or from articles regarding law firms,7 stating: 5 Respondent’s brief at 30, 41 TTABVUE 37. 6 Respondent’s brief at 23, 41 TTABVUE 30. 7 Located at Exh. 12 to Respondent’s notice of reliance, 34 TTABVUE 78-125. Cancellation No. 92060029 - 10 - www.kdtalcott.com The Talcott Law Firm PC … “Big Firm Skills, Small Firm Service.” http://ntneighborhoodnews.com “Boss, Arrighi & Hoag: A Small Law Firm With Big Firm Experience.” July 20, 2014 by Matt Wiley http://bollaw.com “BIG FIRM EXPERIENCE, SMALL FIRM TREATMENT.” http://pelosilawgroup.com “[T]he Pelosi Law Group brings big firm expertise to a small firm practice … .” http://richardburtlaw.com “WITH HIS EXTENSIVE KNOWLEDGE, SKILL, AND EXPERIENCE RICHARD BURT PROVIDES THE QUALITY OF A BIG FIRM BUT WITH THE ATTENTIVENESS OF A SMALL FIRM.” http://sorgelawfirm.com Blog post entitled “Large Firm Representation at Small Firm Prices,” posted March 2, 2014. http://www.brackenlegal.com “BRACKEN LAW FIRM, P.L.L.C., was founded to provide “big firm” experience and quality, but with the flexibility, cost-effectiveness and personal attention of a smaller firm.” http://www.browngitt.com “A large firm approach at a small firm price.” http://www.christensenlawgrp.com “GLG brings big firm experience, small firm attention, and cost-effective results to clients in the fields of employment law, insurance coverage, and commercial litigation.” http://www.ehlinelaw.com “Discover the Ehline Law Difference – Small Firm Service, Big Firm Results.” Cancellation No. 92060029 - 11 - http://www.gettmanmills.com “Small Firm Values, Big Firm Resources.” http://www.heltonlawfirm.com “Large Firm Experience Small Firm Values.” http://www.jclaw.com “small firm.BIG VISION.” http://www.kggllc.com “BIG FIRM EXPERIENCE SMALL FIRM ATTENTION.” http://www.maxwellhesse.com “Big Firm Experience, Small Company Service.” http://www.smootpc.com “A small firm with big experience.” http://www.tenagliahunt.com “BIG FIRM EXPERIENCE WITH A PERSONAL TOUCH.” http://www.vhrlaw.com “COMBINING LARGE-FIRM EXPERIENCE WITH SMALL-FIRM ATTENTION.” http://www.viklawgroup.com “Large Firm Experience – Small Firm Attention.” None of these uses are identical to Petitioner’s mark, and none share the combination of the terms “big experience” with “small firm.” Several submissions do not demonstrate use of the terms in Petitioner’s mark as trademarks, and are used informationally or as part of titles. Only smootpc.com uses “big experience,” but does so as part of a paragraph heading in connection with a description of the firm’s founder and principal; none use “big experience” as a mark. “Big firm experience” is used, but, as discussed below, has a different meaning from “big experience.” On balance, we find that Respondent has not established that third-parties use marks Cancellation No. 92060029 - 12 - similar to Petitioner’s mark. In view thereof, and because Petitioner has submitted evidence of its enforcement activities where it ended uses of similar marks by approximately half a dozen lawyers or law firms, we find that Respondent has not demonstrated that Petitioner’s mark is commercially weak. As for the inherent strength of the mark, however, we find the mark suggestive, informing purchasers seeking legal services that Petitioner is a small law firm with some nonspecific level of experience. BIG EXPERIENCE in the context of legal services has no precise meaning, in contrast to BIG FIRM EXPERIENCE, which informs purchasers that Respondent has worked at a “big” law firm, i.e., a law firm with a large number of attorneys. BIG EXPERIENCE suggests “significant experience” or “long experience.” Thus, the evidence of use submitted by Respondent does not show in any meaningful way that SMALL FIRM, BIG EXPERIENCE is commercially weak, but as explained, the mark is inherently suggestive. Sophistication/Conditions Under Which and Buyers to Whom Sales are Made We turn next to fourth du Pont factor involving the degree of care that potential purchasers will exercise in selecting legal counsel because this factor concerns how carefully purchasers will consider the marks at issue. In connection with the fourth du Pont factor, Respondent argues that “[t]he selection of counsel is not a ‘casual’ decision. Potential clients consider the attorney’s skill, experience, education and cost”;8 and points out differences between Petitioner’s and Respondent’s backgrounds 8 Respondent’s brief at 24, 41 TTABVUE 31. Cancellation No. 92060029 - 13 - and locations of their offices. Respondent does not cite to any evidence in the record regarding how individuals or entities seeking an attorney make their decisions on selecting an attorney, or litigation costs. It is preferable for a party to introduce evidence supporting an evidentiary contention. See In re U.S. Tsubaki, Inc., 109 USPQ2d 2002, 2006 (TTAB 2014) (“Moreover, there is no actual proof to support these statements in the record. We have only Applicant's counsel's statements as to how Applicant and its competitors sell chains and sprockets.”). Moreover, there is no characterization in the recitation of services as to the sophistication or degree of care that potential clients will exercise. Accordingly, the Board must consider all potential clients for the recited services, including ordinary consumers who are selecting an attorney for the first time. Board precedent requires our analysis to include “the least sophisticated potential purchasers.” Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014) (quoting Gen. Mills, Inc. v. Fage Dairy Proc. Indus. S.A., 100 USPQ2d 1584, 1600 (TTAB 2011), judgment set aside on other grounds, 2014 WL 343267 (TTAB Jan. 22, 2014)). In this regard, we note the www.ehlinelaw.com website (introduced by Respondent and not by Petitioner) which indicates a lower threshold in initial contact with an attorney, suggesting reduced care: “How Much Money Does Ehline Charge for a Case Evaluation?” “The initial case evaluation you will receive will always be cost free to you. If you have a question right now you can fill out our form right now. The free consultation was designed to help potential new clients like you understand the merits and risks. Explaining the legal process helps to Cancellation No. 92060029 - 14 - put you at ease during this time of tribulation. Knowing your options means choices.” The website also states, “If you are unsure whether you have a case we can counsel you over the phone right now. Let’s set up an attorney client relationship. Make an appointment right now. Agents are standing by in English and in Spanish.” Petitioner, on the other hand, raises initial interest confusion among potential purchasers, stating: Trademarks are key in marketing and advertising ones services and in obtaining a potential consumer’s initial attention or interest. If a client has to jump through 6 or 7 hoops in order to figure out the difference between the exact same services offered in the exact same trade channels using a similar mark, then initial interest confusion is likely. Whether the consumer ultimately chooses Ms. Jahn over Respondent is irrelevant to the initial customer confusion which occurs by having marks which are similar in sight, sound and meaning which draw potential consumers to a particular website.9 The Board has recognized the initial interest confusion theory as a form of likelihood of confusion which is actionable. See HRL Assocs, Inc. v. Weiss Assocs, Inc., 12 USPQ2d 1819 (TTAB 1989), aff'd on other grounds, 902 F.2d 1546, 14 USPQ 2d 1840 (Fed. Cir. 1990) (Board found that the likelihood of initial interest, pre-sale confusion overcame the sophisticated purchaser defense; on appeal, the Federal Circuit expressly avoided reaching the issue of initial interest confusion). See generally J. T. McCarthy, McCarthy on Trademarks and Unfair Competition, § 23:6 (4th ed. 2004). However, a plaintiff has the burden of proof to show by a 9 Petitioner’s reply brief at 5-6, 45 TTABVUE 7-8. Cancellation No. 92060029 - 15 - preponderance of the evidence that it is entitled to prevail on its claim. Initial interest confusion, even when the marks are similar, will not be assumed, but rather must be proven. The record falls short of proving any initial interest confusion; Petitioner’s theory of initial interest confusion is too speculative on which to base a finding of likelihood of confusion in this case. We therefore find on this record that the fourth du Pont factor is neutral. Similarity/Dissimilarity of the Marks We now turn to the first du Pont factor, the similarity of the parties’ marks, and compare the marks in their entireties for similarities and dissimilarities in appearance, sound, connotation and commercial impression. Palm Bay Imps. 73 USPQ2d at 1692. The Federal Circuit has stated that “[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, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). Further, the proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). The average customer includes members of the general public requiring assistance in litigation, including in minor matters. Cancellation No. 92060029 - 16 - Petitioner’s mark is SMALL FIRM, BIG EXPERIENCE and Respondent’s mark is BIG FIRM EXPERIENCE…SMALL FIRM SERVICE. Certainly the marks are similar in that they have many of the same terms in them. Only the term SERVICE in Petitioner’s mark is not in Respondent’s mark. The two elements of each mark, however, are in different positions. SMALL FIRM appears early in Petitioner’s mark but at the end of Respondent’s mark. BIG EXPERIENCE appears at the end of Petitioner’s mark, but BIG FIRM EXPERIENCE appears at the beginning of Respondent’s mark. Because the elements appear in different locations, and, unlike Petitioner’s mark, the term FIRM appears twice in Respondent’s mark and Respondent includes the term SERVICE, we find that there are differences in both sound and appearance of the marks. But more importantly, the meaning of the marks differ, with Petitioner touting a “big experience,” which does not bring to mind “experience in a big firm.”10 In fact, the only third-party website using “big experience” does so without any reference to a large law firm. See http://www.smootpc.com, stating: A small firm with big experience Firm founder and principal Paul J. Smoot brings the experience, knowledge and skill of more than 20 years to his work for each client. Among past clients are former San Francisco Mayor Joseph L. Alioto and Angela Alioto, small companies and their founders who have been wronged, technology companies such as OCZ Technology Group, Inc. and PeerTrainer.com. Recently, after extended litigation against Vinod Khosla and Khosla Ventures, we had their 10 Respondent states that Petitioner’s mark does not “refer to Jahn’s prior law firm experience – Petitioner and Jahn’s website is silent on Jahn’s prior experience. … Instead, the Jahn Mark only conveys that Petitioner’s ‘small firm’ has ‘big experience’ – whatever ‘big experience’ means.” Respondent’s brief at 20 – 21, 41 TTABVUE 27-28. Cancellation No. 92060029 - 17 - counsel of record, Wilson, Sonsini, Goodrich & Rosati disqualified as counsel of record. Mr. Smoot has been nominated and voted Super Lawyer® (http://www.superlawyers.com/) every year from 2008 through 2013. This is a distinction for the Top 5% of attorneys in California. Mr. Smoot has been a member of the Consumer Attorneys of California since 1993 and is a past president of the San Mateo County Trial Lawyers Association and San Mateo County Barristers. The experienced legal advocate has been recognized for his many achievements by both peers and clients. He is BV® Distinguished™ Peer Review Rated (http://www.martindale.com/Products_and_Services/Peer_ Review_Ratings.aspx) by Martindale-Hubbell® for his professionalism and ethics.11 BIG FIRM EXPERIENCE in Respondent’s mark unmistakably informs purchasers that Respondent has had experience in a “big” law firm. Further, SMALL FIRM has a different connotation than SMALL FIRM SERVICE, with SMALL FIRM referencing the size of Petitioner’s firm and SMALL FIRM SERVICE referencing the type of service offered by Respondent. Because of the differences in meanings of “big experience” and “big firm experience,” and “small firm” and “small firm service,” the marks have differences in meanings, which result in different commercial impressions for the marks as a whole. In view thereof, and because the ordering of terms in the respective marks differ, we find that there are more points of dissimilarity than similarity between Petitioner’s and Respondent’s marks considered as a whole. The first du Pont factor therefore weighs against a finding of likelihood of confusion. 11 Respondent’s notice of reliance, Exh. 12, 34 TTABVUE 118. Cancellation No. 92060029 - 18 - Similarity/Dissimilarity of Services, Channels of Trade The second and third du Pont factors assess the similarity or dissimilarity of the parties' goods and services and their established, likely-to-continue trade channels. The recitations of services in the pleaded and involved registrations frame the likelihood of confusion issue. See Cunningham, 55 USPQ2d at 1842. The question of likelihood of confusion must be determined based on an analysis of the mark as applied to the services as identified in each party's registration, regardless of what the record may reveal as to the particular nature of each party's services, the particular channels of trade or the class of purchasers to which sales of the services are directed. See Octocom Sys., Inc. v. Houston Comp. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Respondent’s arguments regarding the nature of the services he actually renders versus those actually rendered by Petitioner are hence irrelevant in the context of the second du Pont factor. The services identified in Respondent’s registration are “litigation services” and Petitioner’s “legal services” necessarily include “litigation services.” The services hence are legally identical. Neither party has any purchaser or trade channel restriction in its identified services. We therefore presume that their services move in the same channels of trade and are available to the same classes of customers for such services. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this presumption); American Lebanese Syrian Assoc. Charities, 101 USPQ2d at 1028. Cancellation No. 92060029 - 19 - Absence of Actual Confusion, Time and Conditions of Concurrent Use Next, regarding the eighth du Pont factor, Respondent asserts that there have been no instances of actual confusion between the parties’ marks despite being used concurrently since 2008.12 The absence of any reported instances of confusion is meaningful only if the record indicates appreciable and continuous use by the parties of their marks for a significant period of time in the same markets. 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); 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”). We are not persuaded that there has been a reasonable opportunity for confusion to have occurred or that there has been promotion of the marks so that there has been an opportunity for confusion to have occurred. The parties’ promotional efforts of their marks seem to have only been through their websites, and Respondent states that he 12 Respondent’s Brief at, 41 TTABVUE 22-23. Cancellation No. 92060029 - 20 - attends networking and business functions on a monthly basis with attorneys, businesspeople and other professions, and hands out his business card which directs recipients to his website.13 The parties practice law in different jurisdictions, and there is no indication that their clients do business nationally or that they have a national client base. There is no information about the volume of their legal services, and the record reflects that Petitioner is a solo practitioner and Respondent appears to currently be a solo practitioner. In view thereof, we find that the du Pont factor regarding an absence of actual confusion is neutral. Absence of fame The fame of the prior mark forms the fifth du Pont factor. Respondent has argued that Petitioner’s mark is not famous. It is settled, however, that marks need not be famous in order to be entitled to protection. See Cunningham, 55 USPQ2d at 1847. Balancing the Factors We have found that the marks are dissimilar, but that the services, trade channels and purchasers are identical. The du Pont factors regarding purchasing conditions and the absence of actual confusion are neutral. Respondent has not persuaded us that Petitioner’s mark is commercially weak, however we find it suggestive. On balance, we find that the differences in the marks, particularly the differences in their meaning, and the suggestiveness of Petitioner’s mark, outweigh the other du Pont factors and confusion is not likely between Petitioner’s and Respondent’s marks. 13 Respondent’s notice of reliance Exh. 13, Avanzado Dec. ¶ 9, 34 TTABVUE 129. Cancellation No. 92060029 - 21 - Laches Because we do not sustain Petitioner’s likelihood of confusion claim, we need not reach Respondent’s affirmative defense of laches. Decision: The petition for cancellation is dismissed.