Richard J. Eisner

Trademark Trial and Appeal Board

Oct 2, 2015

No. 85593854 (T.T.A.B. Oct. 2, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 2, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Richard J. Eisner
_____

Serial No. 85593854
_____

Sarah Silbert of Berliner & Associates,
for Richard J. Eisner.
Deborah Meiners, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
_____

Before Zervas, Kuhlke, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Applicant Richard J. Eisner seeks registration on the Supplemental Register of
the mark 1-888-SU-ABOGADO, in standard characters, for “legal services” in
International Class 45.1 The application includes the following translation
statement: “The English translation of ‘SU ABOGADO’ in the mark is ‘YOUR
LAWYER.’”

1 Application Serial No. 85593854, filed April 10, 2012, based on Applicant’s claim of first
use anywhere and in commerce since at least as early as April 7, 2012; application amended
from the Principal Register to the Supplemental Register on August 29, 2012.
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The Trademark Examining Attorney has refused registration under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as
applied to the services identified in the application, so resembles the following two
standard character marks:
• YOURLAWYER.COM for “legal services, advice and representation of
prospective clients” in International Class 42,2 and
• YOURLAWYER for “legal services” in International Class 453
as to be likely to cause confusion, to cause mistake, or to deceive.
After the Examining Attorney made the refusal final, Applicant appealed. We
affirm the refusal to register.
Our determination under 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. 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

2 Registration No. 3210791, registered on the Principal Register on February 20, 2007;
Section 8 declaration of use accepted April 9, 2012. The owner of this registration is the
Jerrold S. Parker and Herbert L. Waichman Partnership.
3 Registration No. 3510267, registered on the Supplemental Register on September 30,
2008; Section 8 declaration of use accepted August 4, 2014. The current owner of this
registration is Parker Waichman LLP composed of Jerrold S. Parker and Herbert L.
Waichman. Applicant does not dispute that both cited registrations have the same owner.
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the cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”).
We begin by noting that the cited mark YOURLAWYER.COM (“the ’791
Registration”) is registered on the Principal Register, while the cited mark
YOURLAWYER (“the ’267 Registration”) is registered on the Supplemental
Register. It has long been established that a mark registered on the Supplemental
Register can be used as a basis for refusing registration to another mark under
Section 2(d) of the Trademark Act. In re Clorox, 578 F.2d 305, 198 USPQ 337, 340
(CCPA 1978). The same standards are applied to registrations on either register
cited under Section 2(d), although “[t]he level of descriptiveness of a cited mark may
influence the conclusion that confusion is likely or unlikely.” Id. at 341.
We turn now to the similarity of the services and channels of trade, the second
and third du Pont factors, respectively. Applicant’s identified services are “legal
services.” We find that Applicant’s services are identical to those identified in the
’267 Registration and identical in part to those in the ’791 Registration, which are
“legal services, advice and representation of prospective clients.”
Because there are no limitations as to channels of trade or classes of purchasers
in the descriptions of services in the cited registrations, we presume that the
registrant’s services move in all channels of trade normal for such services and are
available to all potential classes of ordinary consumers. 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
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639, 640 (TTAB 1981). Moreover, because the legal services described in the
application and the cited registrations are identical in part, we must presume that
the marketing channels of trade and targeted classes of purchasers are the same.
American Lebanese Syrian Assoc. Charities Inc. v. Child Health Research Inst., 101
USPQ2d 1022, 1028 (TTAB 2011); see also In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal
presumption in determining likelihood of confusion).
Applicant argues that his services and the registrant’s services “are not likely to
be encountered together, side-by-side.”4 Because lawyers “offer their services
through their individual law firms or offices” rather than online or “at a single retail
outlet,”5 Applicant contends, his services and those offered by the registrant are
unlikely to be encountered together in the marketplace.
Applicant’s argument does not address the significance of the fact that the
identified services are identical. Accepting Applicant’s argument that legal services
are not actually sold in the same retail establishments, we nonetheless must
presume that providers of identical legal services compete for the same customers
seeking those services, through all channels normal for those services.6 In our

4 Reply Brief at 8, 27 TTABVUE 12.
5 Appeal Brief at 15, 24 TTABVUE 20.
6 Applicant’s Brief supports this presumption. See id. at 12, 24 TTABVUE 17 (“Typically, a
consumer’s initial contact with a lawyer is not for purchasing the service, but rather for
shopping for it. Before hiring a lawyer, a consumer typically contacts numerous lawyers to
find out what the lawyer can do for him or her, what the lawyer charges and, more
generally, to learn ‘what’s involved.’ An advertisement for legal services, therefore, does not
induce a consumer to purchase the lawyer’s service but, at most, merely to include the
lawyer in the set of lawyers consulted before choosing one.”).
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likelihood of confusion analysis, our findings under the second and third du Pont
factors strongly support a conclusion that confusion is likely.
We turn next to the du Pont likelihood of confusion factor focusing on “the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “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.” Coach
Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721
(Fed. Cir. 2012) (citation omitted).
Because the similarity or dissimilarity of the marks is determined on the marks
in their entireties, our analysis cannot be predicated on dissecting the marks into
their various components; that is, the decision must be based on the entire marks,
not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005,
212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). On the other hand, 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 a
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consideration of the marks in their entireties. In re Nat’l Data, 224 USPQ at 751.
The focus is on the recollection of the average purchaser, who normally retains a
general rather than a specific impression of trademarks. Joel Gott Wines LLC v.
Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013).
When, as here, marks would appear in association with services that are
identical in part, “the degree of similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind, 85
USPQ2d 1104, 1108 (TTAB 2007).
In this case, the cited marks are YOURLAWYER and YOURLAWYER.COM.
Applicant’s mark is 1-888-SU-ABOGADO. To determine similarity of meaning and
connotation, in order to ascertain confusing similarity with English word marks,
foreign words from common languages generally are translated into English under
the doctrine of foreign equivalents.7 Palm Bay Imports Inc., 73 USPQ2d at 1696.
The doctrine of foreign equivalents is not an absolute rule, however, and should be
viewed merely as a guideline. Id. “The doctrine should be applied only when it is

7 Applicant does not dispute that Spanish is a modern language widely spoken in the
United States. The Examining Attorney references evidence from PewResearch.org
demonstrating that Spanish is the most common language spoken in the United States
other than English, but no such evidence is of record. See Examining Attorney’s Brief, 26
TTABVUE 9 n.7; see also Denial of Request for Reconsideration at 45-46, 14 TTABVUE 5-6.
We note that an August 2013 American Community Survey Report issued by the U.S.
Census Bureau states that more than 37 million U.S. residents age five and over spoke
Spanish or Spanish Creole at home in 2011 (from http://www.census.gov/prod/2013pubs/acs-
22.pdf, at p. 3). The Board may take judicial notice of census data. In re Tokutake Indus.
Co., 87 USPQ2d 1697, 1700 n.1 (TTAB 2008). See also In re La Peregrina Ltd., 86 USPQ2d
1645, 1648 (TTAB 2008) (stating “there is no question that Spanish is a common, modern
language”).
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likely that the ordinary American purchaser would ‘stop and translate [the word]
into its English equivalent.’” Id. (quoting In re Pan Tex Hotel Corp., 190 USPQ 109,
110 (TTAB 1976)). The “ordinary American purchaser” includes “all American
purchasers, including those proficient in a non-English language who would
ordinarily be expected to translate words into English.” In re Spirits Int’l N.V., 563
F.3d 1347, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009).
The literal and direct translation of “su abogado” from Spanish to English is
“your lawyer.” Applying the doctrine of foreign equivalents, we find that the English
translation of Applicant’s mark, 1-888-YOUR-LAWYER, has a meaning and
connotation highly similar to both of the cited marks, YOURLAWYER and
YOURLAWYER.COM. As translated, each mark consists of or comprises the terms
“your” and “lawyer” and no other word.8 Although Applicant’s mark leads with the
toll-free telephone prefix 1-888 and one of the cited marks ends with the Internet
generic top-level domain .COM, both are highly descriptive or generic elements of
toll-free phone numbers and website addresses, respectively, that do not identify
source. See, e.g., In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682,
1684 (Fed. Cir. 2009) (noting it was undisputed that “.com” was generic and
affirming decision finding MATTRESS.COM generic for “online retail store services
in the field of mattresses, beds, and bedding”); In re Dial-a-Mattress Operating
Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001) (noting that (888) “is

8 We find that, although the words in the cited marks are presented without a space,
consumers are highly likely to view and verbalize them as “your lawyer” and “your lawyer
dot com,” based on normal English pronunciation. See, e.g., Giersch v. Scripps Networks
Inc., 90 USPQ2d 1020, 1025 (TTAB 2009).
Serial No. 85593854
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devoid of source-indicating significance”); In re Page, 51 USPQ2d 1660, 1664 (TTAB
1999) (stating that the 888 prefix in the mark 888 PATENTS “does not have any
source-identifying significance”). See also Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this
court has noted that the ‘descriptive component of a mark may be given little weight
in reaching a conclusion on likelihood of confusion.’”) (quoting In re Nat’l Data, 224
USPQ at 752).
This is not the end of our inquiry, however. We also must compare the
appearance and sound of Applicant’s untranslated mark with the two cited marks.
Applicant correctly argues that there are several points of distinction in appearance
and sound between his mark and the cited marks.9 Nonetheless, we find that for
these marks, the near-identity in meaning between Applicant’s mark and the cited
marks outweighs the visual and auditory differences, such that the marks create
similar overall commercial impressions. “While the marks are concededly
distinguishable in their appearance and pronunciation, it is our view that the
equivalency in meaning or connotation is sufficient, in this case, to find likelihood of
confusion.” In re American Safety Razor Co., 2 USPQ2d 1459, 1460 (TTAB 1987)
(holding BUENOS DIAS for bar soap, and GOOD MORNING and sun design for
latherless shaving cream, likely to cause confusion). See In re White Swan Ltd., 8
USPQ2d 1534, 1535 (TTAB 1988) (“In appropriate cases, a finding of similarity as
to any one factor (sight, sound or meaning) alone may be sufficient to support a

9 See Appeal Brief at 6, 24 TTABVUE 11, and Reply Brief at 4, 27 TTABVUE 8.
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holding that the marks are confusingly similar.”) (quotation omitted); see also, e.g.,
In re La Peregrina Ltd., 86 USPQ2d 1645, 1649-50 (TTAB 2008) (finding
LA PEREGRINA and PILGRIM to be foreign equivalents with identical meanings,
outweighing the differences in appearance and pronunciation); In re Thomas, 79
USPQ2d 1021, 1025 (TTAB 2006) (finding that MARCHE NOIR for jewelry and
BLACK MARKET MINERALS for retail jewelry and mineral store services, “while
decidedly different in sound and appearance, have the same connotations”); In re
Hub Distrib., Inc., 218 USPQ 284 (TTAB 1983) (holding EL SOL for clothing and
footwear, and SUN and design for footwear, likely to cause confusion).
For all of these reasons, we find Applicant’s mark, considered in its entirety, to
be similar to the cited marks. Therefore, the first du Pont factor also supports a
finding that confusion is likely.
We turn next to the sixth du Pont factor, the number and nature of similar
marks in use for similar services. Applicant argues that the cited marks are not
only conceptually weak but also entitled to only a narrow scope of protection due to
extensive use of other marks incorporating the terms “your” and “lawyer” in
connection with legal services. In support, Applicant identifies the following 12
third-party registrations owned by 11 different entities:10

10 Applicant submitted copies of the registration certificates with his Request for
Reconsideration, Exhibit A to the Declaration of Sarah Silbert. Id. at 21-49, 4 TTABVUE
28-56. Two other registrations submitted by Applicant have expired.
Serial No. 85593854
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Reg. No. Mark Services
4473307 DON’T MAKE YOUR
LAWYER RICH
The provision, via the internet, of
legal information and information
relating to legal affairs
4448582 YOURLAWYERS4LESS Legal services
4307056 YOUR NEIGHBORHOOD
LAWYERS
Legal services
4055834 YOUR BUSINESS, YOUR
LIFE, YOUR LAWYER.
Attorney services; legal services
3985485 I’D LIKE TO BE YOUR
LAWYER
Legal services
3925721 GET GORDON! GET YOUR
LAWYER!
Legal services
3925573 WHO’S YOUR LAWYER? Legal services
3046162 “YOUR LAWYERS, YOUR
NEIGHBORS, YOUR
FRIENDS”
Legal services
3713009 INVEST IN YOUR
BUSINESS, NOT IN YOUR
LAWYER
Legal services
3647240 CALL THE LAWYER
YOUR LAWYER CALLS.
Lawyer referrals; litigation services
3575395 JUDGE YOUR LAWYERS Providing a web site where users can
post ratings, reviews and
recommendations on legal services
2220452 YOUR LAWYER FOR LIFE Professional legal services

The mark in each of these registrations comprises additional verbiage and thus
is distinguishable from both Applicant’s mark and the cited marks, which contain
only the words “your” and “lawyer” (in English or Spanish) alone or with the 1-888
phone prefix or the .com gTLD. These registrations, moreover, are not evidence that
the marks therein have been used at all, let alone used so extensively that
consumers have become sufficiently conditioned by their usage that they can
distinguish between such marks on the basis of minor differences.
Serial No. 85593854
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The probative value of third-party trademarks depends entirely on their usage.
Palm Bay Imports Inc., 73 USPQ2d at 1693. Where, as here, the record includes no
evidence about the extent of use by third-party registrants, the probative value of
this evidence is minimal. Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57
USPQ2d 1557, 1561 (Fed. Cir. 2001). “The existence of [third-party] registrations is
not evidence of what happens in the market place or that customers are familiar
with them nor should the existence on the register of confusingly similar marks aid
an applicant to register another likely to cause confusion, mistake or to deceive.”
AMF Inc. v. American Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269
(CCPA 1973). We also note that one of the registrations is for a web site for users to
rate legal services, which is different from legal services and therefore not relevant
here.
Applicant argues that Internet printouts submitted by the Examining Attorney
identify examples of actual third-party use of toll-free phone numbers and domain
names incorporating the terms “law” or “lawyer” for legal services. These include
www.lemonlaw.com and 1-800-LEMON-LAW,11 as well as 1-800-THELAWYER and
1800THELAWYER.COM.12 Notably, none of the third-party examples include both
“your” and “lawyer,” and, as such, do not serve to limit the scope of protection of the
combined term “YOUR LAWYER.” In addition, the evidence regarding these uses is

11 See Denial of Request for Reconsideration at 21-23, 9 TTABVUE 2-4.
12 Id. at 26. This site also displays the phone number 1-800-ELAbogado.
Serial No. 85593854
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limited,13 and the website printouts of record do not establish how many relevant
customers may have encountered them. In re Thomas, 79 USPQ2d at 1026 (stating
that, “without evidence as to the extent of third-party use, such as how long the
websites have been operational or the extent of public exposure to the sites, the
probative value of this evidence is minimal”). Given the limitations of the record
evidence as to the extent of third-party use, we find the sixth du Pont factor neutral.
We agree with Applicant that the cited marks are highly suggestive. However,
the ’791 Registration is registered on the Principal Register and entitled to a
presumption of validity under Section 7(b) of the Trademark Act; only the ’267
Registration is on the Supplemental Register, an implied admission that the
registered term was descriptive at least at the time of the registrant’s first use of
the term. Perma Ceram Enters. Inc. v. Preco Indus. Ltd., 23 USPQ2d 1134, 1137
n.11 (TTAB 1992). Furthermore, even “weak” marks are entitled to protection from
registration by a subsequent user of a confusingly similar mark for related goods or
services. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 109 (CCPA 1974); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1246
(TTAB 2010). Registration of Applicant’s mark with its nearly identical commercial

13 Applicant also cited two other uses. The first is 1-800-LAWYERS from the website
www.attorneysonlineinc.com/abogado.html, id. at 24-25, 9 TTABVUE 5-6. However, that
website appears to be dedicated not to offering legal services, but rather to marketing to
lawyers the vanity phone numbers 1-800-LAWYERS and 1-800-ABOGADO, as well as 1-
888-LAWYERS and 1-888-ABOGADO, in “a limited number of metro areas throughout the
United States.” The second use is 1-800-YOURLAWYER from the website
www.yourlawyer.com, id. at 33-44, 11 TTABVUE 2 through 14 TTABVUE 4. The latter
uses are by the Parker Waichman LLP law firm, owner of the cited ’267 Registration.
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impression for identical services would intrude into even the circumscribed sphere
of protection for the cited marks.
Finally, we consider Applicant’s arguments under the fourth du Pont factor: the
conditions under which and buyers to whom sales are made, i.e., “impulse” vs.
careful, sophisticated purchasing. Du Pont, 177 USPQ at 567. Applicant argues that
this factor weighs against a likelihood of confusion because “the parties’ legal
services are not the type of services consumers typically purchase on impulse or
without care.”14
Our precedent requires that we base our decision on the least sophisticated
potential purchasers of the identified services. Stone Lion Capital Partners, LP v.
Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014). The
purchasers of legal services are the general public, which necessarily encompasses
consumers with limited experience seeking legal advice. Even if ordinary consumers
exercise care when shopping for legal services, they are not immune from source
confusion where highly similar marks are used in connection with identical services.
See id. at 1163-64; see also In re Research & Trading Corp., 793 F.2d 1276, 230
USPQ 49, 50 (Fed. Cir. 1986). We find the fourth du Pont factor to be neutral.
We have considered all arguments and evidence of record pertaining to the
du Pont likelihood of confusion factors. In sum, we have found that the first du Pont
factor weighs in favor, and the second and third factors weigh strongly in favor, of a
finding that confusion is likely. The fourth and sixth du Pont factors are neutral. To

14 Appeal Brief at 10, 24 TTABVUE 15.
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the extent that any other du Pont factors for which no evidence was presented by
Applicant or the Examining Attorney may be applicable, we also treat them as
neutral. Even if the cited marks are weak, because the marks are highly similar in
meaning and commercial impression and the services are identical and move in the
same channels of trade to the same customers, we find that Applicant’s mark is
likely to cause confusion with the marks in cited Registration Nos. 3210791 and
3510267 when used in association with legal services.
Decision: The refusal to register Applicant’s mark is affirmed.