Out-of- Court Solutionsv.Out of Court, Inc.

Trademark Trial and Appeal Board

Jan 11, 1999

No. 91100530 (T.T.A.B. Jan. 11, 1999)

Paper No. 29
PTH
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Out-of-Court Solutions
v.
Out of Court, Inc.
_____
Opposition No. 100,530
to application Serial No. 74/644,265
filed on March 10, 1995
_____
David R. Cross of Quarles & Brady for Out of Court
Solutions.
Edward F. McHale of McHale & Slavin for Out of Court, Inc.
______
Before Cissel, Seeherman and Hairston, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Out of Court, Inc. to
register the mark set forth below for “mediation and
Opposition No. 100,530
2
arbitration services.”1
Registration has been opposed by Out-of-Court
Solutions, a California corporation, under Section 2(d) of
the Trademark Act. Opposer alleges that since August 29,
1994 it has used OUT-OF-COURT SOLUTIONS as the trade name
for its mediation and arbitration services; that since
December 20, 1994 it has used OUT-OF-COURT SOLUTIONS alone
and in the form depicted below,

1 Application Serial No. 74/644,265 filed March 10, 1995,
alleging a bona fide intention to use the mark in commerce.
Applicant has disclaimed the right to use the international
prohibition symbol apart from the mark as shown.
Opposition No. 100,530
3
as a service mark to identify its services; and that
applicant’s mark, if used in connection with the identified
services, so resembles opposer’s previously used trade name
and service mark as to be likely to cause confusion.
Applicant, in its answer, denied the salient
allegations in the notice of opposition.
The record consists of the pleadings; the file of the
opposed application; opposer’s notice of reliance on its
Arizona Certificate of Trade Name and an Amendment to its
Articles of Incorporation; the affidavit (with exhibits) of
opposer’s president, R. Oliver Ross, which was submitted
pursuant to the parties’ stipulation; and the testimony
deposition of Mr. Ross. Applicant took no testimony and
offered no other evidence herein. Both parties filed briefs
on the case, but an oral hearing was not requested.
According to Mr. Ross, opposer is in the business of
resolving disputes and litigation. Approximately three-
fourths of opposer’s business is divorce mediation.
However, opposer also conducts business and real estate
mediation. Mr. Ross testified that opposer has used OUT-OF
COURT-SOLUTIONS in connection with its business since about
December 1994. Opposer advertises in the Yellow Pages and
mails brochures concerning its services to therapists and
attorneys in the Phoenix, Arizona area. Opposer receives
referrals from therapists and attorneys and charges an
Opposition No. 100,530
4
hourly rate of between $100.00 and $180.00, depending upon
the type of dispute.
In support of its claim of prior and continuous use of
OUT-OF-COURT SOLUTIONS as a trade name and service mark,
opposer introduced a number of exhibits, including copies of
its Arizona Certificate of Trade Name and Amended Articles
of Incorporation under notice of reliance. In addition, Mr.
Ross avers in his affidavit that opposer has used OUT-OF-
COURT SOLUTIONS as the service mark and name for its company
since the fall of 1994. Accompanying Mr. Ross’ affidavit is
a copy of a brochure which describes opposer’s services.
This brochure bears OUT-OF-COURT SOLUTIONS and design on the
front page as well as OUT-OF-COURT SOLUTIONS per se and OUT-
OF-COURT SOLUTIONS and opposer’s address on the back page.
Copies of these pages are reproduced below:
Opposition No. 100,530
5
In his affidavit, Mr. Ross avers that this brochure has been
used since the fall of 1994 to market opposer’s services.
Also, opposer offered copies of several letters. Two of the
Opposition No. 100,530
6
letters, dated November 25 and November 30, 1994
respectively, bear the designation OUT-OF-COURT SOLUTIONS
per se in the letterhead. Three of the letters, each dated
December 20, 1998, bear the designation OUT-OF-COURT
SOLUTIONS and design in the letterhead and indicate that a
copy of opposer’s brochure is enclosed to the addressee.
Three other letters bear no letterhead, but Mr. Ross
testified that these copies were printed from the computer
on plain paper, and that the actual letters did bear the
designation OUT-OF-COURT SOLUTIONS and design. These
letters are dated January, 3, 1995; February 13, 1995; and
March 20, 1995, respectively. Also, each of these letters
indicates that a copy of opposer’s brochure is enclosed to
the addressee.
The record contains no information about applicant.
Turning first to the issue of priority, applicant
contends that the evidence is unclear as to when opposer
actually began using OUT-OF-COURT SOLUTIONS as a service
mark. In particular, applicant notes that opposer’s Arizona
Certificate of Trade Name recites a first use date of August
29, 1994; that the Amendment to opposer’s Articles of
Incorporation indicates that opposer adopted the name OUT-
OF-COURT SOLUTIONS on October 29, 1994; that opposer, in its
brief, recites a first use date of December 1994; and that
Opposition No. 100,530
7
Mr. Ross testified that the corporation has been a business
entity since January 1995.
Applicant apparently misapprehends what is required of
opposer to establish its priority herein. Opposer must
simply show use of OUT-OF-COURT SOLUTIONS either as a trade
name or service mark prior to March 1995, the filing date of
applicant’s intent-to-use application. The affidavit of
opposer’s president, Mr. Ross, sets forth facts which
establish opposer’s use of OUT-OF-COURT SOLUTIONS both as a
trade name and service mark since the fall of 1994. In
particular, Mr. Ross avers that opposer has used the
brochure, which bears the trade name and service mark OUT-
OF-COURT-SOLUTIONS, since the fall of 1994 to market its
services. This evidence, which is undisputed, is sufficient
to establish opposer’s priority herein.
Further, applicant argues that opposer’s use of
OUT-OF-COURTS SOLUTIONS has been de minimis. Applicant
argues that noticeably absent from opposer’s evidence are
examples of “standard” advertising, i.e., yellow page
listings, print advertisements, and the like. Also,
applicant questions whether certain of the letters submitted
by opposer are “real” evidence of service mark use, since
the letters could also be considered social letters to
friends. In addition, applicant notes that three of the
Opposition No. 100,530
8
letters offered by opposer do not bear OUT-OF-COURT
SOLTUTIONS in the letterhead.
First, opposer is not required to furnish copies of
yellow page advertisements, print advertisements or the like
to establish rights in OUT-OF-COURT SOLUTIONS as a service
mark. Mr. Ross’ affidavit, along with the brochure, are
sufficient for this purpose. Further, Mr. Ross testified
that several letters announcing opposer’s services were sent
to former clients, which may well account for the friendly
tone. In any event, these letters make specific reference
to opposer’s services and indicate that a copy of opposer’s
brochure is enclosed. Thus, these letters are evidence that
opposer distributed copies of the brochure which bears the
mark OUT-OF-COURT SOLUTIONS per se. Finally, Mr. Ross has
adequately explained why copies of three of the letters do
not bear company letterhead. However, even if these three
letters were somehow seen as less persuasive evidence,
opposer’s remaining evidence is more than sufficient to
establish opposer’s rights in the service mark OUT-OF-COURT
SOLUTIONS prior to the filing date of applicant’s intent-to-
use application.
We turn then to the issue of likelihood of confusion.
At the outset, we note that applicant, in its brief on the
case, has conceded that the parties’ services are identical
and that the services are offered in the same channels of
Opposition No. 100,530
9
trade. Thus, if the services were to be offered under the
same or substantially similar marks, confusion as to source
or sponsorship would be likely to occur.
This brings us to a consideration of the marks. In
this case, we find that applicant’s mark OUT OF COURT and
design is substantially similar to opposer’s service mark
OUT-OF-COURT SOLUTIONS in sound, appearance, and commercial
impression. Although the marks must be compared in their
entireties, there is nothing improper in giving more weight
to a particular portion of a mark if it would be remembered
and relied upon to call for the services. In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Thus, where a mark consists of both words and a design, the
words are normally accorded greater weight because they
would be used by persons in referring to the services. In
this case, it is the literal portion of applicant’s mark,
i.e., OUT OF COURT, which would be used by individuals in
referring to the applicant’s services. The design element
is subordinate and less likely to be remembered. Also, the
presence of the word SOLUTIONS in opposer’s mark is
insufficient to distinguish the parties’ marks. In finding
that the parties’ marks are substantially similar, we have
kept in mind the normal fallibility of human memory over
time and the fact that the average person retains a general
Opposition No. 100,530
10
rather than a specific impression of trademarks encountered
in the marketplace.
We note applicant’s contention in its brief on the case
that the phrase OUT OF COURT is “highly descriptive,” and
thus marks which include this phrase are weak and entitled
to a limited scope of protection. Although applicant
offered no support for its contention, we recognize that OUT
OF COURT is suggestive of mediation and arbitration
services. However, this fact does not help to distinguish
the parties’ marks. The words OUT OF COURT, as used in both
marks, convey the same suggestive significance. Moreover,
even weak marks are entitled to protection against the
registration by a subsequent user of a substantially similar
mark for identical services. Given the identity of the
services, the design in applicant’s mark is not enough to
distinguish the parties’ marks. People may well assume that
applicant’s mark OUT OF COURT and design is just a variation
of opposer’s mark OUT-OF-COURT SOLUTIONS.
Also, we recognize that individuals would exercise care
in the selection of mediation and arbitration services.
However, this factor is outweighed by the identity of the
services and the substantial similarity between the marks.
In sum, individuals familiar with OUT-OF-COURT
SOLUTIONS for mediation and arbitration services would be
likely to believe, upon encountering OUT OF COURT and design
Opposition No. 100,530
11
for the identical services, that the services originated
with or were somehow associated with or sponsored by the
same entity. We should add that for the same reasons set
forth above, applicant’s mark is likely to cause confusion
with opposer’s trade name OUT-OF-COURT SOLUTIONS.
Decision: The opposition is sustained.
R. F. Cissel
E. J. Seeherman
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial and
Appeal Board