87727551 (T.T.A.B. Jun. 21, 2019)

Jesse J. Thaler

Trademark Trial and Appeal BoardJun 21, 2019

87727551 (T.T.A.B. Jun. 21, 2019)

Mailed: June 21, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Jesse J. Thaler _____ Serial No. 87727551 _____ Patrick Schweihs of Copymark Law Group, LLC, for Jesse J. Thaler. Alexandra Suarez, Trademark Examining Attorney, Law Office 120, David Miller, Managing Attorney. _____ Before Wellington, Wolfson, and Goodman, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: Jesse J. Thaler (Applicant) seeks registration on the Principal Register of the standard character mark DOC.ONE (“DOC” disclaimed) for: Software as a service (SAAS) services featuring legal software using artificial intelligence for legal document generation, namely, legal contracts from case files and practice management system integration in the legal field which adapt to the user’s workflow and saves commonly used text blocks while correcting inconsistent contract language; Software as a service (SAAS) services using artificial intelligence, namely, hosting software for use by others for use in legal document generation in the legal field, namely, legal contracts from case files, and excluding This Opinion is Not a Precedent of the TTAB Serial No. 87727551 - 2 - business correspondence, namely, statements, bills, letters and invoices in International Class 42.1 The Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the registered mark DOC1 (in typed characters)2 for “computer software system consisting of modules that allow a user to customize and design business correspondence, namely, statements, bills, letters and invoices” in International Class 9.3 After the Examining Attorney made the refusal final, Applicant filed a Request for Reconsideration, amending the services to their present recitation, and appealed the Section 2(d) refusal. The Board suspended the appeal and returned the file to the Examining Attorney, who denied the Request for Reconsideration. Applicant then filed a second “Request for Reconsideration” with the Examining Attorney.4 The Examining Attorney maintained the refusal and returned the file to the Board for resumption of the appeal. For the reasons set forth below, we affirm the refusal to register. 1 Application Serial No. 87727551 was filed on December 20, 2107 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), on the basis of Applicant’s allegation of his bona fide intent to use the mark in commerce. 2 A mark in typed characters is the legal equivalent of a standard character mark. TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 807.03(i) (October 2018). 3 Registration No. 2297371 issued on November 13, 1997; renewed. 4 A second Request for Reconsideration is technically a request for remand, as it occurs after appeal has been instituted. TMEP § 1209.04. A request for remand should be filed with the Board, which has jurisdiction over the application upon the filing of the notice of appeal. TMEP § 1504.02. A request for remand requires a showing of good cause. TMEP § 1209.04. As the request was denied, the failure to forward the filing to the Board to determine whether a showing of good cause had been made is considered harmless error. Serial No. 87727551 - 3 - I. Likelihood of Confusion The determination under Section 2(d) involves an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered, hereinafter referred to as “DuPont factors”); see also In re Majestic Distilling Co., 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 relatedness of the goods or services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); 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 [or services] and differences in the marks.”). We discuss below these and other relevant factors. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (even within DuPont list, only factors that are “relevant and of record” need be considered); In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods.’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). Serial No. 87727551 - 4 - A. The Similarity or Dissimilarity of the Marks Under this factor, we compare Applicant’s mark DOC.ONE and the cited mark DOC1 “in their entireties as to appearance, sound, connotation and commercial impression.” In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting DuPont, 177 USPQ at 567); see also Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). “The 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.” In re i.am.symbolic, llc, 123 USPQ2d at 1748 (internal quotation marks omitted). Further, marks “‘must be considered … in light of the fallibility of memory ….’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. See St. Helena Hosp., 113 USPQ2d at 1085; L’Oreal v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980). Here, the average customer is a business, firm, or individual interested in generating legal contracts and business correspondence, whether by licensing, purchasing computer software directly or using SAAS (software as a service) services to access web-based software. Applicant’s mark is DOC.ONE and the cited mark is DOC1. When Registrant’s mark is verbalized, the numeral “1” will be pronounced as “one.” Thus, the marks are Serial No. 87727551 - 5 - similar in pronunciation because they each start with the term “DOC” and conclude with the term “ONE” or its phonetic equivalent, “1.” While similarity in sound alone may be sufficient to find the marks confusingly similar, In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007), the marks are also similar in appearance, connotation, and overall commercial impression. The term “DOC” in the context of the goods and services at issue here suggests the word “document” or “documentation.” The term “ONE” or “1” may suggest that Registrant’s goods or Applicant’s services are remarkable or extraordinary in some way (as in, “we’re number 1”) or convey “the idea of a singular document,” as posited by the Examining Attorney, 9 TTABVUE 6; nonetheless, to the extent either of these meanings will be perceived by consumers, the terms communicate identical concepts. While it is axiomatic that we must view the marks in their entireties and not dissect them, there is nothing improper in giving more weight to a particular feature of a mark for rational reasons, and the fact that a term is the leading element in a mark is one such rational reason. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). That “DOC” is the leading element in both marks lends prominence to the term and heightens the likelihood of confusion. See, e.g., Palm Bay 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); Wet Seal Inc. v. FD Mgmt. Inc., 82 USPQ2d 1629, 1639 (TTAB 2007); Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). Serial No. 87727551 - 6 - Further, the absence of a space between the terms DOC and 1 in the registered mark does not significantly affect its commercial impression because consumers are still likely to recognize the individual components. See, e.g., In re ING Direct Bancorp, 100 USPQ2d 1681, 1690 (TTAB 2011) (finding “Person2Person Payment” generic despite deletion of spaces); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1025 (TTAB 2009) (finding that DESIGNED TO SELL does not create a distinct commercial impression from DESIGNED2SELL). And while we do not ignore the period in Applicant’s mark, we find it not to be a notable part of the mark. Applicant argues, to the contrary, that the marks are distinguishable because “[c]onsumers would pronounce applicant’s mark as DOC dot or period ONE, which is markedly different from stating DOC ONE.” 7 TTABVUE 6. Applicant’s argument is unpersuasive for two reasons. First, there is no support in the record for Applicant’s assertion that the period will be verbalized. Second, “there is no correct pronunciation of a trademark, and consumers may pronounce a mark differently than intended by the brand owner.” Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 101 USPQ2d at 1912); see also Centraz Industries Inc. v. Spartan Chemical Co. Inc., 77 USPQ2d 1698, 1701 (TTAB 2006) (finding ISHINE likely to be confused with ICE SHINE); Interlego AG v. Abrams/Gentile Entm’t Inc., 63 USPQ2d 1862, 1863 (TTAB 2002) (finding similarity between LEGO and MEGO despite the applicant’s contention that consumers would pronounce MEGO as “me go”). Moreover, even if consumers did pronounce Applicant’s mark DOC DOT ONE, we find that pronunciation still likely to cause confusion with Serial No. 87727551 - 7 - the mark DOC ONE, and when viewed in their entireties, the marks are similar in their overall appearance, pronunciation, connotation and commercial impression. This DuPont factor supports a finding of a likelihood of confusion. B. Relatedness of the Goods and Services, their Trade Channels and Consumers We now consider the DuPont factors addressing the similarity of the goods and services, the channels of trade in which they may be encountered and the purchasers to whom they are marketed. Our determinations under these factors are based on the goods and services as they are identified in the application and the cited registration. See In re Dixie Rests., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods [or services] set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods [or services], the particular channels of trade or the class of purchasers to which sales of the goods [or services] are directed.”). 1. Similarity of Goods and Services The second DuPont factor “considers whether the consuming public may perceive [the respective [goods or] services of the parties] as related enough to cause confusion Serial No. 87727551 - 8 - about the source or origin of the … [goods or] services.” St. Helena Hosp., 113 USPQ2d at 1086 (quoting Hewlett-Packard, 62 USPQ2d at 1004). The cited registration is for a “computer software system consisting of modules that allow a user to customize and design business correspondence, namely, statements, bills, letters and invoices.” Applicant’s SAAS services feature legal software for legal document generation, and hosting software for use by others for use in legal document generation. Although Applicant specifically excludes “business correspondence, namely, statements, bills, letters and invoices,” the goods and services need not directly overlap; a “likelihood of confusion can be found ‘if the respective [goods or services] are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.”’ Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). Moreover, although Applicant’s mark identifies services and Registrant’s mark identifies goods, it is recognized that goods and services may be related. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGG’S (stylized) for retail grocery and general merchandise store services and BIGGS and design for furniture likely to cause confusion); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (STEELCARE INC. and design for refinishing of furniture, office furniture, and machinery and STEELCASE for office furniture and accessories, likely to cause confusion). The Examining Attorney contends that attorneys, law firms and other legal entities utilize software for both legal and business forms and submitted a number of Serial No. 87727551 - 9 - printouts from third-party commercial websites demonstrating that a single entity is likely to provide or feature software that generates legal documents and software that generates invoices, all under the same mark. For example, 1. SMOKEBALL – this website offers “Legal Time & Billing” software that generates timesheets and invoices and as well as “Legal Document Automation” software that contains a “library of over 14,000 legal forms,” some of which are shown by a screen shot posted on the website:5 5 At https://www.smokeball.com/features/legal-time-and-billing-software/, attached to March 29, 2018 Office Action at TSDR 8-9. Serial No. 87727551 - 10 - 2. LEAP – offering case management software for generating legal forms and invoices:6 6 At https://www.leap.us/features/automated-legal-forms/ (document generation and management) and https://www.leap.us/features/legal-billing-software/ (billing), attached to April 30, 2018 Office Action at TSDR 3-4. Serial No. 87727551 - 11 - Serial No. 87727551 - 12 - 3. SPRINGCM – This website offers ways to automate contract management, including contract generation using “clause libraries and advanced version control” and also enables “tasks like invoicing or paying on accounts.”7 7 At https://www.springcm.com/products/contract-management (contract management) and http://www.springcm.com/solutions/finance (invoicing), attached to October 15, 2018 Denial of Request for Reconsideration at TSDR 2-3. Serial No. 87727551 - 13 - The Examining Attorney also made of record six use-based, third-party registrations from the USPTO’s electronic database to show that it is common for a single entity to register the same mark for software for document generation in the legal field and software for billing and invoicing.8 For example, Reg. No. 3988146 is registered for “computer software for legal case management by attorneys and law firms including case data management, tracking tasks to do, time and billing, document generation and case analysis.”9 Reg. No. 3937057 is registered for, inter alia, “computer software for case docketing, diary management, workflow management, document generation, database management, contact management, cost and billing management,” and “computer software for use in case management for use by … lawyers” as well as “computer software for time capture and for use in estimating costs.”10 While third-party registrations are not evidence that the marks shown therein are in commercial use, or that the public is familiar with them, such registrations that individually cover a number of different items and are based on use in commerce may have some probative value to the extent that they serve to suggest that the listed services are of a type which may emanate from a single source. See In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). Applicant argues that legal documents differ from business correspondence: 8 April 30, 3018 Office Action at TSDR 17-38. 9 Reg. No. 3988146 for the mark SUMMARY JUDGMENT issued July 5, 2011; Sections 8 & 15 combined declaration accepted and acknowledged. 10 Reg. No. 3937057 for the mark IKEN issued March 29, 2011; Sections 8 & 15 combined declaration accepted and acknowledged. Serial No. 87727551 - 14 - Applicant’s system uses artificial intelligence for legal contracts which are uniquely distinct from mere customization of “correspondence” which does not have any legal implications. This AI technology further allows corrections to contract language with legal implications. Applicant has also excluded Registrant’s listed services (sic) to further clarify these services (sic) are in no way related. 7 TTABVUE 7. The fact that Applicant specifically excludes “business correspondence” does not change the result. The issue is whether there is a likelihood of confusion as to the source of the goods and services, not whether purchasers would confuse the goods and services. L’Oreal S.A. v. Marcon, 102 USPQ2d at 1439; In re Rexel Inc., 223 USPQ 830 (TTAB 1984). While business correspondence is not the same as legal contracts, the evidence shows that the two types of documents, i.e., invoices or billing statements as well as legal documents may be generated by software provided by a single entity under a single mark. Moreover, the fact that Applicant’s software uses artificial intelligence to aid in the drafting of legal contracts does not sufficiently differentiate the services from Registrant’s software; Registrant’s software may also utilize AI technology and, regardless of the method of generation, both types of software create documents that consumers would expect emanate from a single source. Accordingly, based upon the recitation of services in the application and identification of goods in the registration, and the evidence of record, we find that consumers would believe that the services identified in the application are closely related to the goods identified in the registration. Serial No. 87727551 - 15 - 2. Channels of Trade and Classes of Consumers Applicant argues that the goods and services will not be sold through similar trade channels. Applicant’s mark is specific and limited to the legal field for document generation, and not merely customized business correspondence on bills and letters. … Applicant resubmits that Applicant’s services are readily different in that the proffered Internet evidence lists primarily legal software companies, unlike Registrant’s business correspondence company. 7 TTABVUE 7. Applicant’s argument goes only so far. Although Applicant’s web-based services may service legal entities only, because the cited registration is unrestricted as to trade channels or classes of purchasers, we must presume that Registrant’s software is sold through all normal trade channels, including through the Internet to attorneys, law firms and other legal entities that require business forms. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981) (“Thus, where the goods in a cited registration are broadly described and there are no limitations in the identification of goods as to their nature, type, channels of trade or classes of purchasers, it is presumed that the scope of the registration encompasses all goods of the nature and type described, that the identified goods move in all channels of trade that would be normal for such goods, and that the goods would be purchased by all potential customers.”). If, through these common trade channels, purchasers were to encounter Registrant’s goods and Applicant’s services under the same or similar marks, it would Serial No. 87727551 - 16 - not be unreasonable for them to assume, mistakenly, that they originate from the same source. Accordingly, this DuPont factor favors a finding of likelihood of confusion. 3. Consumer Sophistication Applicant argues that its services are “specific and limited to the legal field for document generation which require additional expertise to generate and thus, users will know the differentiation [between the marks] when seeking such niche services.” 7 TTABVUE 5. There is nothing in the record to show that special expertise is required to understand the nature of SAAS software that generates legal documents. Applicant’s implication that it is necessary to be expert in the law in order to distinguish the marks is unavailing. Even if Applicant’s customers are sophisticated or knowledgeable in a field of law, they may not be sophisticated or knowledgeable in the field of trademarks or immune from source confusion. Stone Lion Capital, 110 USPQ2d at 1163-64; Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Moreover, we must base our decision “on the least sophisticated potential purchasers” at issue, which includes those only peripherally familiar with legal issues who have no special knowledge and would not necessarily exercise heightened care. See Stone Lion Capital, 110 USPQ2d at 1162-63. Furthermore, even if we were to assume that all users of business software and SAAS legal document generation software are sophisticated and careful purchasers, it is settled that even careful purchasers can be confused as to source where similar marks are used on related goods and services. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (citing Carlisle Chemical Works, Inc. v. Hardman & Serial No. 87727551 - 17 - Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)) (“Human memories even of discriminating purchasers … are not infallible.”). We find that there is meaningful overlap between the customers of Applicant and Registrant and that individual consumers of no special sophistication may have occasion to use Applicant’s services and Registrant’s goods under circumstances likely to cause source confusion. Accordingly, this DuPont factor favors a finding of likelihood of confusion. II. Conclusion We have carefully considered all arguments and the evidence of record. We find confusion is likely in view of the overall similarity between Applicant’s mark and Registrant’s mark, particularly because of the high likelihood that they will be pronounced the same, and because they are similar in appearance and connotation, and convey similar commercial impressions. Both marks will be used in connection with similar software and software services and sold through the Internet to the same classes of customers, not all of whom are necessarily sophisticated. Decision: The refusal to register Applicant’s mark under Section 2(d) is affirmed.