Peter M. Villari

Trademark Trial and Appeal Board

Aug 29, 2005

No. 76397979 (T.T.A.B. Aug. 29, 2005)

Mailed: August 29, 2005
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Peter M. Villari
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Serial No. 76397979
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Peter M. Villari Esq.

Inga Ervin, Trademark Examining Attorney, Law Office 111
(Craig Taylor, Managing Attorney).
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Before Hairston, Chapman and Zervas, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application has been filed by Peter M. Villari to
register the mark THE I.D.E.A. LAWYERS for “providing
educational services, namely, assisting children with
disabilities and/or developmental delays in obtaining
appropriate private or public education under the state and
Federal laws” in Class 41 and “legal services, namely,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76397979
2
providing assistance to parents with children with
disabilities and/or developmental delays” in Class 42.”1
The trademark examining attorney has refused
registration under Section 2(d) of the Trademark Act on the
ground that applicant’s mark, when applied to applicant’s
identified services, so resembles the previously registered
mark THE IDEA ATTORNEYS for “legal services,”2 as to be
likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
We affirm the refusal of registration only as to the
Class 42 services.
Our determination under Section 2(d) is based on an
analysis of all 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). In
any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the services. Federated Foods,
Inc. v Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976).

1 Application Serial No. 76397979, filed April 18, 2002, alleging
a bona fide intention to use the mark in commerce. The word
LAWYERS is disclaimed apart from the mark as shown.
2 Registration No. 2,493,596 issued September 25, 2001. The word
ATTORNEYS is disclaimed apart from the mark as shown.
Ser No. 76397979
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Turning first to the services, we note that the
examining attorney, in her brief on the case, has focused
her arguments on the relationship between applicant’s
“legal services, namely providing assistance to parents
with children with disabilities and/or developmental
delays” and registrant’s “legal services.”3 The examining
attorney argues that such services are legally identical to
the “legal services” in the cited registration. Applicant,
however, argues that the respective services are not
similar because “[u]pon information, registrant exclusively
provides intellectual property legal services in
association with his or her asserted mark while Applicant
exclusively provides legal services to assist children with
disabilities and/or developmental delays to obtain an
appropriate education in relation to his proposed mark.”
(emphasis in original) (Brief, p. 3). Further, applicant
argues that the channels of trade and customers are
different because its legal practice is based in
Pennsylvania and registrant’s legal practice appears to be
based in Florida.

3 In view of the examining attorney’s failure to discuss the
relationship between applicant’s educational services and
registrant’s legal services, we consider the refusal as to
applicant’s educational services to be withdrawn.
Ser No. 76397979
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Applicant’s argument is not persuasive. It has been
repeatedly held that, when evaluating the issue of
likelihood of confusion in Board proceedings regarding the
registrability of marks, the Board is constrained to
compare the goods and/or services as identified in the
application with the goods and/or services as identified in
the cited registration, rather than what the evidence shows
the goods/and or services to be. See Octocom Systems Inc.
Houston Computer Services, Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1990); and Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, N.A. 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987).
Because registrant has not limited the legal services
identified in the cited registration to any particular
type, we must consider the identification to encompass
legal services of all types, including applicant’s specific
type, i.e., legal services, namely providing assistance to
parents with children with disabilities and/or
developmental delays. Thus, as the examining attorney
correctly observes, applicant’s and registrant’s respective
services are legally identical.
Moreover, there are no restrictions or limitations in
applicant’s or registrant’s respective recitations of
services as to the geographic areas in which such services
Ser No. 76397979
5
are offered. In view thereof, the Board must consider that
the parties’ respective services could be offered and sold
throughout the United States. See Canadian Imperial Bank
v. Wells Fargo Bank, supra; In re Smith and Mehaffey, 31
USPQ2d 1531 (TTAB 1994); and In re Elbaum, 211 USPQ 639
(TTAB 1981).
Therefore, whatever actual differences there may be
between applicant’s services and the geographic area where
such services are marketed and those of registrant, to the
extent that these differences are not reflected in the
respective identifications, they cannot be considered.4
This brings us to a consideration of the marks. The
examining attorney argues that the marks are very similar
because the word “idea” appears in each of the marks and
the words “lawyers” and “attorneys” are interchangeable.
Applicant, on the other hand, argues that the respective
marks are different because “[t]he letters in Applicant’s
proposed mark are separated by periods thus indicating an
acronym, whereas the letters used in registrant’s mark are
not separated by periods thus merely indicating the word

4 We point out that Trademark Rule 2.133(c) provides as follows:
“Geographic limitations will be considered and determined by the
Trademark Trial and Appeal Board only in the context of a
concurrent use proceeding.”
Ser No. 76397979
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“idea.” (Brief, p. 2). Further, applicant argues that the
marks are also very different in connotation and commercial
impression in that I.D.E.A. in applicant’s mark references
the “Individuals with Disabilities Education Act” and IDEA
in registrant’s mark connotes intellectual property.
In determining whether the marks are similar or
dissimilar, the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion
as to the source of the services offered under the
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
Furthermore, although the marks at issue must be
considered in their entireties, it is well-settled that one
feature of a mark may be more significant than another, and
it is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985).

Ser No. 76397979
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In this case, each mark is comprised of the word THE,
followed by I.D.E.A. or IDEA and the generic name of the
services, i.e., LAWYERS or ATTORNEYS. I.D.E.A./IDEA is
suggestive as applied to the respective services, and it
therefore dominates the commercial impression created by
each mark and is entitled to greater weight in our
comparison of the marks. Notwithstanding applicant’s
inclusion of periods in I.D.E.A., the term is very similar
in appearance to IDEA. Also, although some customers of
applicant’s legal services may understand I.D.E.A. to refer
to the Individuals with Disabilities Education Act, there
is no evidence that this would always be the case. On the
contrary, it is plausible that a significant number of
customers of applicant’s services would view I.D.E.A. as a
fanciful version of the word “idea.” In other words,
applicant’s mark would likely be viewed and spoken as “The
Idea Lawyers.” Further, although the words LAWYERS and
ATTORNEYS differ in sound and appearance, they are
identical in terms of meaning.
We find, therefore, that when the marks THE I.D.E.A.
LAWYERS and THE IDEA ATTORNEYS are viewed in their
entireties, they are more similar than dissimilar in sound,
appearance, connotation and commercial impression.
Ser No. 76397979
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Under the circumstances, customers familiar with
registrant’s legal services offered under the mark THE IDEA
ATTORNEYS would be likely to believe, upon encountering
applicant’s mark THE I.D.E.A. LAWYERS for legal services,
namely providing assistance to parents with children with
disabilities and/or developmental delays, that the services
originated with or are somehow associated with or sponsored
by the same source.
Decision: The refusal to register the mark for
applicant’s Class 42 services is affirmed. The application
will proceed with respect to the Class 41 services.