87468607 (T.T.A.B. Jul. 2, 2019)

QuisLex, Inc.

Trademark Trial and Appeal BoardJul 2, 2019

87468607 (T.T.A.B. Jul. 2, 2019)

Mailed: July 2, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re QuisLex, Inc. _____ Serial Nos. 87468607 and 87468614 _____ Peter S. Sloane and Chelsea Russell, of Leason Ellis LLP, for QuisLex, Inc. C. Scott Strickland, Trademark Examining Attorney, Law Office 122, John Lincoski, Managing Attorney. _____ Before Wolfson, Larkin and Hudis, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: QuisLex, Inc. (“Applicant”) seeks registration on the Principal Register of the standard character marks VERDANT and VERDANT ANALYTICS (“ANALYTICS” disclaimed) for services ultimately amended to: Legal invoice review services, namely, reviewing outside law firm invoices on behalf of large companies to ensure consistent adherence to the billing guidelines of their in- house corporate legal departments; legal invoice claims management services, namely, the management of legal invoicing services for corporate legal departments in the nature of analyzing and collecting billing data and providing benchmarking information; none of the services This Opinion is Not a Precedent of the TTAB Serial Nos. 87468607 and 87468614 - 2 - in the foregoing clauses in the nature of providing legal services, in International Class 35.1 The Examining Attorney refused registration of Applicant’s marks under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of confusion with the standard character mark VERDANT LAW (“LAW” disclaimed) for “legal services” in International Class 45.2 After the Examining Attorney made the refusals final, Applicant filed a Request for Reconsideration, 4 TTABVUE, and appealed to this Board. 1 TTABVUE. Following the Examining Attorney’s denial of Applicant’s Request for Reconsideration, the appeal resumed.3 We affirm the refusal to register. I. Evidentiary Objection With its brief, Applicant submitted new evidence in the form of Internet printouts. We sustain the Examining Attorney’s objection to this evidence, and have not considered it. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d) (record should be complete prior to appeal); see also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1203.02(e) (June 2019) (“Exhibits attached to a brief that were not made of record during examination are untimely, and generally will not be 1 Application Serial Nos. 87468607 (VERDANT) and 87468614 (VERDANT ANALYTICS) were filed on May 30, 2017, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intent to use the marks in commerce. 2 Reg. No. 4799583 issued August 25, 2015. 3 Following briefing, the Board remanded the applications to the Examining Attorney to correct an error in the recitation of services in each application. After amendment, the applications were returned to the Board for resumption of the appeal. Serial Nos. 87468607 and 87468614 - 3 - considered.”); cf. In re Procter & Gamble Co., 105 USPQ2d 1119, 1120 (TTAB 2012) (applicant’s discussion in its brief of third-party registrations not considered because the registrations were not properly introduced during the examination process). II. Likelihood of Confusion Our determination of the issue of likelihood of confusion is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Not all of the DuPont factors are relevant to every case, and “only factors of significance to the particular mark need be considered.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (citing In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the relatedness of the goods or services. In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). In addition, we address channels of trade, classes of consumers, and consumer sophistication, and have considered all of the arguments and evidence of record. A. Similarity or Dissimilarity of the Marks in Their Entireties We first consider the DuPont factor of “‘the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.’” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567). The focus is on the recollection of the average purchaser, who normally Serial Nos. 87468607 and 87468614 - 4 - retains a general rather than a specific impression of trademarks. See In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018); Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016). Here, the relevant purchasers are large companies and corporate legal departments seeking audit, review and management of their outside law firms’ invoices. 1. VERDANT (Serial No. 87468607) Applicant’s mark VERDANT is nearly identical in sound, appearance, connotation and overall commercial impression to Registrant’s mark VERDANT LAW. The term VERDANT is the central focus of Registrant’s mark because it is the only arbitrary term in the mark, whereas the term “LAW” is generic for Registrant’s legal services, and has been disclaimed. Although we consider the marks in their entireties, “there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013). “That a particular feature is descriptive or generic with respect to the involved goods or services is one commonly accepted rationale for giving less weight to a portion of a mark.” National Data, 224 USPQ at 751. Moreover, “VERDANT” is the first term in Registrant’s mark and thus it, and not the term LAW, is “most likely to be impressed upon the mind of a purchaser and remembered.” Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 Serial Nos. 87468607 and 87468614 - 5 - (TTAB 1988); see also 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). Although there is no explicit rule that likelihood of confusion automatically applies where one mark contains in part the whole of another mark, the fact that Applicant’s mark is subsumed within Registrant’s mark increases the similarity between the two. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (affirming decision finding applicant’s mark ML similar to registered mark ML MARK LEES); In re United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (finding applicant’s CAREER IMAGE marks similar to registered mark CREST CAREER IMAGES). In United States Shoe, the Board observed that the applicant’s mark “would appear to prospective purchasers to be a shortened form of registrant’s mark.” 229 USPQ at 709. We find the same to be true on the facts of this case. See, e.g., Hunter Indus., Inc. v. The Toro Co., 110 USPQ2d 1651, 1661 (TTAB 2014) (finding “applicant’s mark PRECISION would appear to prospective purchasers to be a shortened form of opposer’s mark PRECISION DISTRIBUTION CONTROL”); see also McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, §7:18 (5th ed. 2019) (“Americans are prone to abbreviate recognized trademarks and to use nicknames”). Applicant argues that the marks are distinguishable because “the two-word mark VERDANT LAW presents the commercial impression of a law firm name while the Serial Nos. 87468607 and 87468614 - 6 - single-word mark VERDANT is more in keeping with the name of a typical service provider.” 7 TTABVUE 9. As the Examining Attorney points out: [A]pplicant presents no evidence to support this conclusory statement. Further, contrary to applicant’s position, the term LAW in VERDANT LAW merely communicates that its services are legal in nature, rather than specifically indicating a law firm. Applicant’s mark, the lone term, VERDANT, is arbitrary with respect to the services and conveys no specific message regarding either those services or the industry in which they are provided. Thus, it is improper to assume that a consumer would immediately understand that VERDANT would not offer legal services of any kind based purely on the reading of its trademark. 11 TTABVUE 9. In short, Applicant’s mark VERDANT is similar to Registrant’s mark VERDANT LAW in sight, sound, meaning and overall commercial impression. The first DuPont factor favors a finding of likelihood of confusion with respect to Applicant’s mark VERDANT. 2. VERDANT ANALYTICS (Serial No. 87468614) Applicant’s mark VERDANT ANALYTICS is similar to Registrant’s mark VERDANT LAW in appearance and pronunciation due to the shared term VERDANT. Moreover, the overall commercial impression of Applicant’s mark is derived from the dominant term VERDANT because, as noted, it is arbitrary in relation to Applicant’s services, and also because it is the first word of the mark. The term ANALYTICS is less significant not only because it is in second position, but also because it merely describes a feature of Applicant’s services, namely, that Applicant provides services in the nature of “analyzing and collecting billing data and providing Serial Nos. 87468607 and 87468614 - 7 - benchmarking information” as part of its legal invoice claims management services. In other words, Applicant conducts analytics, defined as: “the systematic computational analysis of data or statistics.”4 Applicant thus properly disclaimed this term during prosecution in recognition of its descriptive nature. Viewing Applicant’s mark in its entirety, the addition of the descriptive term ANALYTICS does not create a significantly different commercial impression than that conveyed by Registrant’s mark VERDANT LAW. Consumers will focus on the term VERDANT when recalling both Applicant’s mark and the cited mark, and when requesting the respective services. Although consumers will not ignore the additional word in either mark, they are more likely to discount the impact of such wording when encountering the marks under actual marketing conditions. We cannot assume that consumers have the luxury of making side-by-side comparisons between marks, and they must rely instead upon their imperfect recollections. Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255, 259 (TTAB 1980). “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.” Cai, 127 USPQ2d at 1801; see also In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (marks “must be 4 See definition from the ENGLISH OXFORD LIVING DICTIONARIES, attached to September 2, 2017 Office Action (Serial No. 87468614) at TSDR 14. Serial Nos. 87468607 and 87468614 - 8 - considered . . . in light of the fallibility of memory” and “not on the basis of side-by- side comparison.”) (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 685 (CCPA 1977)). Considering the marks in their entireties, we find they are similar in appearance, pronunciation, connotation and overall commercial impression. The first DuPont factor favors a finding of likelihood of confusion with respect to Applicant’s mark VERDANT ANALYTICS as compared to the cited mark VERDANT LAW. B. Similarity of the Services; Channels of Trade; Classes of Consumers We now consider the DuPont factors addressing the similarity of the services, the channels of trade in which they may be encountered and the consumers to whom they are marketed. Our determinations under these factors are based on the services as they are recited in the applications and the cited registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); see also 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). 1. Similarity of Services The cited registration is for “legal services.” Applicant provides legal invoice review services and legal invoice claims management services. Despite Applicant’s specific exclusion of “legal services” from its recitation, the issue is not whether purchasers would confuse the services, but rather whether there is a likelihood of Serial Nos. 87468607 and 87468614 - 9 - confusion as to the source of the services. In re Rexel Inc., 223 USPQ 830, 832 (TTAB 1984). The respective services need not be identical or even competitive in order to support a finding of likelihood of confusion. They need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that the [services] emanate from the same source.” Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). The Examining Attorney submitted a number of printouts from third-party commercial websites demonstrating that companies providing legal services also provide data analytics. Specifically, the evidence shows that firms providing “legal services” also offer, as a separate service, to review legal invoices of their competitors to ensure that their clients are not overcharged for legal services. For example: • Stuart Maue offers legal fee audits and law firm services.5 • Kreiner Burke & Burns is a “boutique law firm that prides itself on our creative and personalized approaches to the legal and business issues facing our clients,” and also offers to “review your legal bills to help you save money.”6 • Wilbraham Lawler & Buba “provides consultation, ligation services and litigations management for all types 5 At http://www.smmj.com/services/legal-audit, attached to Office Action dated September 2, 2017 at p. 19-25 and at http://www.smmj.com/services/law-firm-services, attached to November 1, 2108 Denial of Request for Reconsideration at TSDR 4. 6 At http;//kreinerlawfirm.com/legal_audit and http://kreinerlawfirm.com/about_us, attached to April 11, 2018 Office Action at TSDR 4-5. Serial Nos. 87468607 and 87468614 - 10 - of tort and insurance matters” and also conducts “legal bill review, auditing and guideline compliance.”7 • Knapp Petersen Clarke “prides itself” as a law firm “on its creativity and accessibility in providing a wide range of legal services.” A division of the corporation, KPC Legal Audit Services Inc., “has developed procedures and standards which allow for an efficient and complete analysis of legal billings.” Applicant urges the Board to take judicial notice “that law firms cannot provide financial services.” 7 TTABVUE 9. Not only does the evidence of third-party use suggest otherwise, it demonstrates that providing legal advice and providing advice concerning legal invoicing/billing are related services. Selected web pages from Knapp Petersen Clarke’s website are illustrative:8 7 At http://www.wlbdeflaw.com/practice-areas, attached to April 11, 2018 Office Action at TSDR 3. 8 At http://www.kpclegal.com/practice-areas/, and at http://www.kpclegalcom/kpc-legal- audit/methodology/, attached to November 1, 2018, Denial of Request for Reconsideration at TSDR 2 and 3. Although the legal audit services are apparently rendered by a related company, both practice areas are advertised under the “Knapp Petersen Clarke” banner. Serial Nos. 87468607 and 87468614 - 11 - Serial Nos. 87468607 and 87468614 - 12 - Given the relationship between legal services and legal invoice review illustrated above, Applicant’s services, under its VERDANT and VERDANT ANALYTICS marks, may appear to be a “line extension” from Registrant’s legal services, which law firms historically have provided, into legal invoice review, which the record shows to be an area into which at least some law firms are expanding. Applicant argues that the trade channels and classes of consumers would not overlap because Applicant promotes its services to large corporations and not the general public. Needless to say, Registrant’s services are not so limited and may be offered to large corporations as well as the general public. In the registration context, Serial Nos. 87468607 and 87468614 - 13 - relatedness of the services, their trade channels, and the nature of the consumer classes are factors determined by the services as they are identified in the application and the cited registration. In the absence of any restrictions or limitations in the registration, as is the case here, we must assume the services are offered through all the normal and usual trade channels for such services to all the usual purchasers of such services. Hewlett-Packard, 62 USPQ2d at 1005; cf. Octocom Sys., 16 USPQ2d at 1788 (“[A]n application with an identification of goods having no restriction on trade channels obviously is not narrowed by testimony that the applicant’s use is, in fact, restricted to a particular class of purchasers.”). Here, there is no direct evidence regarding the trade channels of either Applicant or Registrant, and we may infer only that both Applicant and Registrant likely advertise over the Internet as the Examining Attorney’s evidence of related services is by way of Internet printouts. In addition, because there are no restrictions as to consumers in the cited registration, we must assume that Registrant’s services are offered to corporate legal departments. Thus, to the extent there is evidence in the record, it supports a finding that the trade channels and classes of consumers overlap. Given the relatedness of the services, trade channels and purchaser classes, prospective consumers of Applicant’s legal invoice processing services are likely to believe that Applicant’s services originate with Registrant. The second and third DuPont factors weigh in favor of a finding that confusion is likely. C. Sophistication of the Relevant Purchasers Applicant argues that its purchasers are sophisticated and discriminating. “The very nature and expense of the services ensures that the purchasers are Serial Nos. 87468607 and 87468614 - 14 - discriminating in making their purchasing decisions and unlikely to be confused despite any similarity between the marks.” 7 TTABVUE 8. Applicant fails to support its assertion with record evidence and, as noted above, neither the application nor registration contains restrictions as to the price range for the services, specific trade channels to which any marketing activities may be limited, or the types of purchasers who use the services, other than that Applicant’s services are provided to large corporations and to corporate legal departments of any size, which, as noted, may patronize Registrant as well. While legal services may be expensive and the consumers of such services may exercise a degree of care in choosing such services, the fact that some consumers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP § 1207.01(d)(vii); see In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993) (indicating that “even sophisticated purchasers can be confused by very similar marks”); Top Tobacco, LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Moreover, the identifications must be read as offering the services to all normal customers therefor, including the “least sophisticated purchasers,” Stone Lion, 110 USPQ2d at 1163, and our decision must be based on those purchasers. Although there is no record evidence that Applicant’s customers are sophisticated, we recognize that large corporations and corporate legal departments are likely staffed by knowledgeable purchasers who may act with more discrimination, and that legal Serial Nos. 87468607 and 87468614 - 15 - services, legal invoice review services and legal invoice claims management services, by their nature, likely involve the exercise of a heightened degree of care. Thus, the fourth DuPont factor favors a finding of no likelihood of confusion.. III. Summary A likelihood of confusion exists in this case. The marks VERDANT and VERDANT ANALYTICS are quite similar in appearance, pronunciation, connotation, and overall commercial impression to Registrant’s mark VERDANT LAW. The services are related and travel through all normal trade channels for sale to the same classes of consumers, including large corporations and corporate law departments. Although customers for the respective services may exercise a heightened degree of care in their purchases, the high degree of similarity of the marks and the relatedness of the services outweigh this factor. It is likely that prospective consumers familiar with Registrant’s VERDANT LAW legal services, when confronted with Applicant’s marks VERDANT or VERDANT ANALYTICS, would believe that Applicant’s services emanate from, are associated with, or are sponsored by the same company. Decision: The refusal to register Applicant’s marks under Trademark Act Section 2(d) is affirmed.