RLP Ventures, LLCv.Focus Approach, LLCDownload PDFTrademark Trial and Appeal BoardJun 13, 201991228593 (T.T.A.B. Jun. 13, 2019) Copy Citation This Opinion is not a Precedent of the TTAB Mailed: June 13, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ TRADEMARK TRIAL AND APPEAL BOARD _____ RLP Ventures, LLC v. Focus Approach, LLC Opposition No. 91228593 to Application Serial No. 86554989 RLP Ventures, LLC, pro se Opposer. Ellen S. Simpson of Simpson & Simpson PLLC for Applicant, Focus Approach, LLC. _____ Before Wellington, Kuczma and Hightower, Administrative Trademark Judges. Opinion by Kuczma, Administrative Trademark Judge: Focus Approach, LLC (“Applicant”) filed an application to register the mark: Opposition No. 91228593 - 2 - for: Educational services, namely, conducting classes for law school preparation tests in International Class 41.1 RLP Ventures, LLC (“Opposer”) opposes registration of Applicant’s mark on the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Opposer alleges that Applicant’s mark, when used in connection with Applicant’s identified services, so resembles Opposer’s earlier used and registered IRAC2, IRAC CHALLENGE3 and 4 marks in connection with services 1 Application Serial No. 86554989 filed on March 5, 2015, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging September 4, 2014 as the date of first use of the mark and first use of the mark in commerce. The description of the mark states that the mark consists of the wording “LAW SCHOOL” above and separated by a horizontal line from the wording “IRAC” which is above and separated by a horizontal line from the wording “THE FOCUS APPROACH,” all of which is below a triangle in the shape of a peaked roof and above a trapezoid in the shape of a building foundation. “LAW SCHOOL” and “IRAC” are disclaimed. 2 Opposer owns the following registrations for the mark IRAC (in standard characters): Supplemental Registration No. 5033571 for “education services, namely, providing instruction in the fields of legal writing; entertainment in the nature of competitions in the field of legal writing; providing online non-downloadable journals in the field of law” in International Class 41, issued August 30, 2016; Registration No. 5316956 for “all-purpose carrying bags” in International Class 18, issued October 24, 2017; and Registration No. 5456874 for “advertising services, namely, promoting and marketing the goods and services of others through all public communication means; arranging and conducting incentive reward programs to promote the sale of a company’s goods or services” in International Class 35, issued May 1, 2018. 3 Supplemental Registration No. 5038276 for the mark IRAC CHALLENGE (in standard characters and “CHALLENGE” disclaimed) for “education services, namely, providing instruction in the field of legal writing; entertainment in the nature of competitions in the field of legal writing” in International Class 41, issued on September 16, 2016. 4 Registration No. 5082402 for the word and design mark (“IRAC” disclaimed) for “education services, namely, providing instruction in the fields of legal writing; entertainment in the nature of competitions in the field of legal writing; providing online non- downloadable journals in the field of law” in International Class 41, issued on November 15, 2016. The description of the mark states that the mark consists of the wording “IRAC”, preceded by a series of four designs in a quadrant. The design in the upper left quadrant consists of a silhouette of stylized scales of justice. The design in the lower left quadrant consists of a silhouette of four stylized figures, one figure atop a rectangle intersecting with Opposition No. 91228593 - 3 - including education in the field of legal writing, online journals, legal writing competitions and social media, and additional goods and services, as to be likely to cause confusion, mistake or deception in violation of Trademark Act § 2(d). Applicant denies the salient allegations of the Notice of Opposition and asserts affirmative defenses which were not pursued at trial. Accordingly, the affirmative defenses are waived. Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1753 (TTAB 2013), aff’d, 565 Fed. App’x 900 (Fed. Cir. 2014) (mem.); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 801.01 (2018). I. The Record The record includes the pleadings5 and, by operation of Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file history for Applicant’s Application No. 86554989 which is the subject of this proceeding, and the following evidence: Opposer’s submissions: 1. Opposer’s First Notice of Reliance (18 TTABVUE 2-422):6 a stylized polygon shape and three adjacent figures atop three intersecting rectangles. The design in the upper right quadrant consists of a silhouette of stylized triumphal arch. The design in the lower right quadrant consists of a silhouette of a stylized gavel and a silhouette of a stylized sound block. Following the word “IRAC”, in the far upper right, is the design of a stylized word “ME” appearing inside of a rectangle. In the far lower right, is the design of a circle. 5 Opposer’s Exhibits to the Notice of Opposition, including its copies of its trademark applications, are not evidence on behalf of Opposer. See Trademark Rule 2.122(c) and (d), 37 CFR § 2.122(c) and (d), TBMP § 317. 6 Citations to the record are by entry and page number to TTABVUE, the Board’s online docketing information and file database, and to the Trademark Status and Document Retrieval system (TSDR). Opposition No. 91228593 - 4 - - Exhibit A: copies of Registration Nos. 5033571, 5038276, 5082402, 5316956 (18 TTABVUE 11, 17, 22, 45)7; copies of USPTO electronic trademark applications for Serial No. 87405942 (Registration No. 5456874) (18 TTABVUE 47-54); and Serial No. 87405914, which later issued as Registration No. 5683017, however this Registration was not introduced into evidence (18 TTABVUE 55-61)8; - Exhibit B-1: Applicant’s Answers to Opposer’s First Set of Interrogatories (18 TTABVUE 62-78); - Exhibit B-2-A: Applicant’s Answers to Opposer’s First Set of Document Requests (18 TTABVUE 79-98)9; - Exhibit B-2-B (18 TTABVUE 99-298): Documents produced in response to Opposer’s Document Request No. 7, including April 12, 2013 email from Isatfocus@aol.com to victory123@gmail.com, tonyk@aycmedia.com with cc: to ssull100@aol.com and donaldgor manly@gmail.com (18 TTABVUE 100-101); Trademark Search Reports dated December 8, 2014 for Law School IRAC The Focus Approach (18 TTABVUE 102-209) and for Design (18 TTABVUE 210- 298); 7 The copies of these Registrations submitted by Opposer are not admissible as they do not reflect the current status of and title to the Registrations. See Trademark Rule 2.122(d), 37 CFR § 2.122(d); TMBP § 704.03(b)(1)(A). However, Applicant introduced copies of these Registrations showing status and title into evidence in its First Notice of Reliance (see below). 8 In its Trial Brief, Applicant also conceded Opposer’s ownership of Registration No. 5456874 (identified above as Serial No. 87405942) (see Applicant’s First Notice of Reliance) (26 TTABVUE 5). A registration owned by any party to the proceeding may be deemed by the Board to be of record in the proceeding, even though the registration was not properly introduced in accordance with the applicable rules, if the adverse party in its brief, or otherwise, treats the registration as being of record. See Local Trademarks Inc. v. Handy Boys Inc., 16 USPQ2d 1156, 1157 (TTAB 1990) (applicant conceded ownership and validity in trial brief); TBMP § 704.03(b)(1)(A). While Serial No. 87405914 subsequently issued as Registration No. 5683017, neither Opposer nor Applicant submitted that Registration into the record. Thus, it is not in evidence. 9 We usually consider written responses to document requests only to the extent that the respondent has responded that no documents exist. See United Global Media Group, Inc. v. Tseng, 112 USPQ2d 1039, 1044 (TTAB 2014); Trademark Rule 2.120(k)(3)(ii), 37 CFR 2.120(k)(3)(ii). In this case however, Applicant raised no objection and confirmed that the responses to the documents requests, and other Exhibits, were of record. See the Description of the Record Nos. 9 and 13 on p. 2 of Applicant’s Trial Brief (26 TTABVUE 6). Opposition No. 91228593 - 5 - - Exhibit B-2-C: Documents produced in response to Opposer’s Document Request No. 15 (18 TTABVUE 299-302); - Exhibit B-2-D: Documents produced in response to Opposer’s Document Request No. 16 (18 TTABVUE 303-309); - Exhibit B-2-E: Documents produced in response to Opposer’s Document Request No. 17 (18 TTABVUE 310-312); - Exhibit B-2-F: Documents produced in response to Opposer’s Document Request No. 24 (18 TTABVUE 313-315); - Exhibit B-2-G: Documents produced in response to Opposer’s Document Request No. 29 (18 TTABVUE 316-320); - Exhibit B-2-H: Documents produced in response to Opposer’s Document Request No. 33, “ayc Media 2013 Web Site Proposal” (18 TTABVUE 321-330); - Exhibit B-2-I: Documents produced in response to Opposer’s Document Request No. 34, NYS Department of State, Division of Corporations, Focus Approach, LLC (18 TTABVUE 331-335); - Exhibit B-2-J: Documents produced in response to Opposer’s Document Request No. 36, Execution Page to the Operating Agreement of Focus Approach, LLC, Business Certificate (18 TTABVUE 336-339); - Exhibit B-2-K: Documents produced in response to Opposer’s Document Request No. 42 (18 TTABVUE 340-342); - Exhibit B-3: Applicant’s First Supplemental Response to Opposer’s First Set of Document Requests, Document Request No. 29 (18 TTABVUE 343-346); - Exhibit C: Although Exhibit C is entitled “Declaration of Ramona Prioleau” (18 TTABVUE 348), it is actually a copy of Trademark Application Serial No. 86554989 for LAW SCHOOL IRAC THE FOCUS APPROACH & Design (the opposed mark) (18 TTABVUE 347-356); - Exhibit D-1: The Focus Approach Law Review LSAT Program, Schedule of Classes & Events from http://www.focusapproach.ayc demo.com/classes-events/2015/december/ (18 TTABVUE 357-359); Opposition No. 91228593 - 6 - - Exhibit D-2: The Focus Approach Law Review LSAT Program, Schedule of Classes & Events December 2015 from http://www.focus approach.aycdemo.com/classes-events/2015/december/ (18 TTAB- VUE 360-363); - Exhibit D-3: The Focus Approach Law Review LSAT Program, Register for a Course from http://www.focusapproach.aycdemo.com/ cartnew.php?a=registerdetailso . . . (18 TTABVUE 364-366); - Exhibit D-4: The Focus Approach Law Review LSAT Program, Schedule of Classes & Events from http://www.focus approach .com /classes-events/2016/july/focus-approach . . . (18 TTABVUE 367-369); - Exhibit D-5: Florida Coastal School of Law, The Florida Coastal Blog from https://www.fcsl.edu/blog/lsat-prep-program-florida/(18 TTAB- VUE 370-373); - Exhibit D-6: Florida Coastal Channel Program-You Tube from https://www.youtube/watch?v=sllr7F6vJgI (18 TTABVUE 374-377); - Exhibit E-1: The Focus Approach Law Review LSAT Program, Law Enforcement Resources from http://www.focusapproach.com/ps- enforcement-resources.php (18 TTABVUE 378-381); - Exhibit E-2: The Focus Approach Law Review LSAT Program, Law School Resources from https://www.focusapproach.com/ps-resources .php (18 TTABVUE 382-392); - Exhibit F-1: The Focus Approach Law Review LSAT Program, Suggestion Box from https://www.focusapproach.com/cs-suggestion- box.php (18 TTABVUE 393-396); - Exhibit F-2: The Focus Approach Law Review LSAT Program, Join us for a free online class! https://www.focusapproach.com/ registerpreview.php (18 TTABVUE 397-400) Register for a Course https://www.focusapproach.com/cartnew.php?a=registerdetailsonlin e&co . . . (18 TTABVUE 401-402); - Exhibit F-3: Focus Approach-Prospective Students-Testimonials from https://www.focusapproach.com/ps-testimonials.php (18 TTAB- VUE 403-407); Opposition No. 91228593 - 7 - - Exhibit G-1: The Focus Approach Law Review LSAT Program, Locations from https://www.focusapproach.com/ps-locations.php (18 TTABVUE 408-411); - Exhibit G-2: The Focus Approach Law Review LSAT Program, Schedule a Class Visit https://www.focusapproach.com/ps-schedule- visit.php (18 TTABVUE 412-416); and - Exhibit G-3: The Focus Approach Law Review LSAT Program, Register for a Course from https://www.focusapproach.com/cartnew .php?a=registerlive (18 TT-ABVUE 417-422). 2. Declaration of Ramona Prioleau (19 TTABVUE 2-6); 3. Opposer’s Second Notice of Reliance (24 TTABVUE): 1. Copy of page from Black’s Law Dictionary with definition of “IRAC” (8th Edition 2004), page 2430 (Exhibit A) (24 TTABVUE 5-6); 2. Copy of the “Newbie” webpage https://irac.me/level/newbie/ (Exhibit B) (24 TTABVUE 7-8); 3. USPTO electronic records from TSDR for Serial No. 87405914 for IRAC in Class 41 (Exhibit C) (24 TTABVUE 9-11); 4. Copy of the “Terms of Use” webpage https://irac.me/terms-of-use/ (Exhibit D) (24 TTABVUE 12-13); 5. Copy of Opposer’s Facebook webpage https://www.facebook.com/ IRAC-455361957991354/ (Exhibit E) (24 TTABVUE 14-15); 6. Copy of Applicant’s Facebook webpage https://www.facebook.com/ focusapproach/ (Exhibit F) (24 TTABVUE 16-17); 7. Copies of Opposer’s calendar entries from 2013 through 2017 (Exhibit G) (24 TTABVUE 18-48). Applicant’s submissions: A. Applicant’s First Notice of Reliance (20 TTABVUE): 1. Copies of Opposer’s Service Mark Registration No. 5033571 for the mark IRAC, TESS status sheet for Registration No. 5033571 dated Opposition No. 91228593 - 8 - May 3, 2018, and Examiner’s Amendment issued July 14, 2016 (20 TTABVUE 7-13); 2. Copies of Opposer’s Service Mark Registration No. 5038276 for the mark IRAC CHALLENGE, TESS status sheet for Registration No. 5038276 dated May 3, 2018, and Examiner’s Amendment issued July 14, 2016 (20 TTABVUE 14-21); 3. Copies of Service Mark Registration No. 5082402 for the mark , TESS Status Sheet for Registration No. 5082402 dated May 3, 2018, Examiner’s Amendment issued July 14, 2016 (20 TTABVUE 22-29); 4. Copies of January 27, 2018 Office Action issued in connection with Application Serial No. 87405914 for the mark IRAC, TESS sheet for Serial No. 87405914 (20 TTABVUE 30-43)10; 5. Copies of January 27, 2018 Final Office Action issued in connection with Application Serial No. 87405983 for the mark IRAC, TESS sheet for Serial No. 87405983 (20 TTABVUE 44-54)11; B. Applicant’s Second Notice of Reliance (21 TTABVUE): 1. Printout of “Wikipedia-IRAC” webpage found at https://en/Wikiped ia.org/wiki/IRAC (21 TTABVUE 10-15); 2. Printout of “U.S. Legalcom” webpage found at https://definitions .uslegal.com/i/irac (21 TTABVUE 7-9); 3. Columbia Law School: Organizing a Legal Discussion (IRAC, CRAC, ETC.), http://www.law.columbia.edu/sites/default/files/microsites/w riting-center/files/organizing_a_legal_discussion.pdf (21 TTABVUE 16-21); 4. CUNY School of Law: IRAC/CRRACC Format, http://www.law.cuny .edu/legal-writing/students/irac-crracc/irac-crracc-1.html (21 TTAB- VUE 22-23); 10 As noted in n.8, although Serial No. 87405914 subsequently issued as Registration No. 5683017, the Registration was not submitted into the record. 11 Application Serial No. 87405983 (18 TTABVUE 28-44) was abandoned on July 30, 2018. Opposition No. 91228593 - 9 - 5. Western New England University School of Law, Digital Commons: Reflections of IRAC http://digitalcommons.law.wne.edu/cgi/viewcon tent.cgi?article=1117&context=facschol (21 TTABVUE 24-25); 6. Legal Writing Institute, The Second Draft, Bulletin of the Legal Writing Institute v. 10, No.1 November 1995: The Value of IRAC and Point/Counterpoint: Use of IRAC-type Formulas-Desirable or Dangerous? (21 TTABVUE 26-49); 7. New York Law School Review: What is the “R” in “IRAC”? http://www.nylslawreview.com/wp-content/upload/sites/16/2013/11/ 46-3.4.Sinclair-IRAC-article.pdf (21 TTABVUE 50-92). C. Applicant’s Third Notice of Reliance (22 TTABVUE designated CONFIDENTIAL)12 (23 TTABVUE): 1. Opposer’s Responses to Applicant’s Requests for Admissions Nos. 1- 13 (CONFIDENTIAL pursuant to the Board’s Standard Protective Order) (22 TTABVUE 6-9).13 In addition to the foregoing, both Opposer and Applicant submitted trial briefs and Opposer submitted a reply brief. II. Background Opposer, a New York limited liability company, asserts that it is the owner and operator of an educational, competitive, social media and e-commerce platform (referred to as the “IRAC platform”) that is accessible throughout the United States as well as internationally. Opposer has used and registered the IRAC, IRAC 12 Inasmuch as Opposer’s Responses to Applicant’s Requests for Admissions Nos. 1-13 were designated “confidential” pursuant to the Board’s Standard Protective Order (22 TTABVUE 6-9) access is limited only to the Board. 13 An admission to a request to admit may be offered in evidence under Trademark Rule 2.120(k)(3)(i) and made of record by notice of reliance during the testimony period of the offering party. TBMP § 704.10. Thus, Opposer’s admissions in response to Applicant’s Requests for Admission Nos. 1, 3 (with respect to part admitted), 4, 6-7 and 9 are in evidence. Opposition No. 91228593 - 10 - CHALLENGE and marks in commerce in connection with a number of services and goods, including education, legal writing competitions, social media, and e-commerce platforms, advertising services, arranging and conducting incentive reward programs, and all purpose carrying bags, as early as March 2013. Opposer built the IRAC platform, “investing substantial amounts of time and money.”14 According to Opposer, its IRAC platform: allows members of the legal community to demonstrate their mastery of the IRAC methodology while also building a resource that can be used by anyone—lawyers as well as the public. The platform allows users to enroll in asynchronous coursework; participate in competitions; interact with other users as well as purchase merchandise. The platform was and continues to be targeted to lawyers, law schools, law professors, law librarians and law students.15 Applicant is a New York limited liability company located in Pound Ridge, New York. Applicant uses its mark to market its associated LSAT preparation courses through normal channels of trade, namely on Applicant’s website, at trade shows and law school events. Applicant’s services are marketed nationwide to the general public, and specifically to prospective law students.16 As mentioned above, 14 Declaration of Ramona Prioleau (Prioleau Decl.) ¶¶ 4, 5, 8 and 10 (19 TTABVUE 4-5). 15 Trial Brief for Opposer RLP Ventures, LLC (Opposer’s Trial Brief) p. 2 (25 TTABVUE 7); Prioleau Decl. ¶¶ Nos. 4, 5, 7 and 12 (19 TTABVUE 3-5). 16 Opposer’s Notice of Reliance, Applicant’s Answers to Opposer’s First Set of Interrogatories Nos. 2, 7-8 (18 TTABVUE 65-66, 71-72). Opposition No. 91228593 - 11 - Applicant filed the subject application to register its mark on March 5, 2015 for “educational services, namely, conducting classes for law school preparation tests.” III. Standing Standing is a threshold issue that must be proven by the plaintiff in every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010) (citing Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999)). The U.S. Court of Appeals for the Federal Circuit has enunciated a liberal threshold for determining standing, namely that a plaintiff must demonstrate that it possesses a “real interest” in a proceeding beyond that of a mere intermeddler, and “a reasonable basis for his belief of damage.” Empresa Cubana Del Tabaco v. Gen. Cigar, 111 USPQ2d at 1062; Ritchie v. Simpson, 50 USPQ2d at 1025; Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Opposer’s standing is established by its ownership of the registered marks IRAC, IRAC CHALLENGE and which are the subjects of Registration Nos. 5033571, 5038276 and 5082402, and which the record shows to be valid and subsisting.17 Accordingly, Opposer has a real interest in this proceeding and a 17 See Applicant’s First Notice of Reliance including printouts from the Trademark Electronic Search System for Registration Nos. 5033571, 5038276, 5082402. (20 TTABVUE 10, 17, 25). Opposition No. 91228593 - 12 - reasonable basis for its belief that it will be damaged by the registration of Applicant’s mark. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). IV. Priority Because Opposer owns the Registrations identified above, some of which are on the Supplemental Register, its priority is not an issue as to the services and goods identified in those Registrations. Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)).18 V. Acquired Distinctiveness Opposer’s Registration Nos. 5033571 for IRAC, 5038276 for IRAC CHALLENGE and 5082402 for are for marks and services which are most likely to support a likelihood of confusion claim.19 Therefore, if no likelihood of confusion is 18 See Otter Products LLC v. BaseOneLabs LLC, 105 USPQ 2d 1252, 1254-55 (TTAB 2012) (priority not at issue in opposition where pleaded registration of record resides on Supplemental Register). 19 Additionally, although Opposer did not make its Registration Nos. 5316956 (for “all- purpose carrying bags” in International Class 18), 5456874 (for “advertising services, namely, promoting and marketing the goods and services of others through all public communication means; arranging and conducting incentive reward programs to promote the sale of a company’s goods or services” in International Class 35), and 5683017 (for “providing an on- line computer game where users earn points by uploading photos, posting comments, or providing entertainment information related to local attractions and events” in International Class 41), of record, Applicant has not contested Opposer’s ownership of Registration Nos. 5316956 and 5456874, or their status, and identifies them as part of the record. See p. 1 of Applicant’s Trial Brief (26 TTABVUE 5). However, the goods and services covered by these three Registrations are sufficiently different from the services identified in Opposer’s Registration Nos. 5033571, 5038276 and 5082402, and Applicant’s application, that they are not relevant to the determination of likelihood of confusion and are not considered. Opposition No. 91228593 - 13 - found with respect to these marks, no likelihood of confusion will be found with respect to any of Opposer’s other marks. Applicant contends that the dominant literal element of each of the marks, namely, “the acronym IRAC,” is merely descriptive which means that Opposer must demonstrate that its marks have acquired distinctiveness.20 Opposer’s registered word marks IRAC and IRAC CHALLENGE in Registration Nos. 5033571 and 5038276 respectively, are registered on the Supplemental Register. Although registrations on the Supplemental Register remove priority as an issue, they are evidence of nothing more than the fact that the registrations issued on the dates printed thereon. In re Federated Dep’t Stores Inc., 3 USPQ2d 1541, 1543 (TTAB 1987). Thus, they are not entitled to the presumptions of § 7(b) of the Trademark Act. In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 n.9 (Fed. Cir. 2010); McCormick & Co., Inc. v. Summers, 354 F.2d 668, 148 USPQ 272, 276 (CCPA 1966). Nor can they be considered as evidence of a proprietary right in the registered marks. Otter Prods. LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1255-56 (TTAB 2012); Hi-Shear Corp. v. Nat’l Auto. Parts Ass’n, 152 USPQ 341, 344 (TTAB 1966). Marks registered on the Supplemental Register are presumed to be merely descriptive. See Quaker State Oil Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ 361, 363 (CCPA 1972). Thus, Opposer has the burden to prove that the marks in its Supplemental Registrations have acquired distinctiveness. Nazon v. Ghiorse, 119 USPQ2d 1178, 1182 (TTAB 2016); Otter Prods. v. BaseOne Labs, 105 20 Applicant’s Trial Brief p. 15 (26 TTABVUE 19). Opposition No. 91228593 - 14 - USPQ at 1255.21 To establish secondary meaning or “acquired distinctiveness,” Opposer must show that “in the minds of the public, the primary significance of a [service] feature or term is to identify the source of the [service] rather than the [service] itself.” Inwood Labs., Inc. v. Ives Labs., 456 U.S. 844, 214 USPQ 1, 4 n.11 (1982); Qualitex Co. v. Jacobson Prods. Inc., 514 U.S. 159, 34 USPQ2d 1161, 1163 (1995). In determining whether secondary meaning has been acquired, the Board may examine advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, copying of the mark by the opposing party and consumer studies (linking the name to a source). Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1729 (Fed. Cir. 2012); In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005); Cicena Ltd. v. Columbia Telecomms. Group, 900 F.2d 1546, 14 USPQ2d 1401, 1406 (Fed. Cir. 1990). On this list, no single factor is determinative. A showing of secondary meaning need not consider each of these elements. Rather, the determination examines all of the circumstances involving the use of the mark. In re Steelbuilding, 75 USPQ2d at 1424. Considering the evidence, proprietary rights in the wordmarks IRAC and IRAC CHALLENGE have not been established. Opposer introduces Exhibits A, C and D 21 Since priority is not at issue, Opposer need not establish that its marks registered on the Supplemental Register acquired distinctiveness prior to any date on which Applicant obtained rights in its mark. Opposer need only show that its marks now have acquired distinctiveness. This is akin to the situation in which an opposer has a valid registration on the Principal Register that is not the subject of a counterclaim for cancellation; whether the applicant has made prior use of its mark is not relevant, as the registration itself means that priority is not at issue. Nazon v. Ghiorse, 119 USPQ2d at 1182 n.7. Opposition No. 91228593 - 15 - submitted with its Second Notice of Reliance (24 TTABVUE) in support of the distinctiveness of its marks. Exhibit A is the definition of IRAC from Black’s Law Dictionary (24 TTABVUE 6); Exhibit C is a Trademark Status & Document Retrieval printout of its application Serial No. 87405914 for “IRAC” for “providing an on-line computer game where users earn points by uploading photos, posting comments, or providing entertainment information related to local attractions and events” (which has now issued as Registration No. 5683017) (24 TTABVUE 10-11); and Exhibit D appears to be a “Terms of Use” page from Opposer’s website (24 TTABVUE 13). None of these Exhibits, or any other of Opposer’s Exhibits, establish that in the minds of the public, the primary significance of IRAC or IRAC CHALLENGE identifies or describes the source of Opposer’s services rather than the services themselves. Neither does the testimony of Ramona Prioleau, Opposer’s founder, support the distinctiveness of its IRAC and IRAC CHALLENGE marks. Ms. Prioleau testifies that Opposer began using its marks as early as March 2013,22 that on behalf of Opposer she “bootstrapped the platform from the ground up, investing substantial amounts of time and money,”23 that “[t]he Opposer’s web presence has also been accessed by pre-law students, legal assistants /paralegals and members of the general public,”24 and that the platform for the services offered under the Opposer’s mark is 22 Prioleau Decl. ¶ 8 (“Opposer commenced these uses mentioned above as early as March 2013.”) (19 TTABVUE 5). 23 Id. at ¶ 10 (“I, on behalf of the Opposer, bootstrapped the platform from the ground up, investing substantial amounts of time and money.”) (19 TTABVUE 5). 24 Id. at ¶ 13 (“The Opposer’s web presence has also been accessed by pre-law students, legal assistants /paralegals and members of the general public.”) (19 TTABVUE 5). Opposition No. 91228593 - 16 - available to the public at www.irac.me where the Opposer’s mark appears on every page.25 Inasmuch as there is no evidence provided to substantiate how much money was invested, how it was invested, what it was invested in, the impact of such investment, or the number of users viewing its website and their occupations, the testimony is lacking in detail, and does not support a showing of distinctiveness of Opposer’s IRAC and IRAC CHALLENGE marks.26 In view of the lack of evidence supporting the acquired distinctiveness of its IRAC and IRAC CHALLENGE marks, Opposer is limited to its registered mark as the basis of its opposition of Applicant’s mark. VI. Likelihood of Confusion Our determination under Section 2(d) of the Trademark Act is based on an analysis of all of the relevant probative evidence in the record related to a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see also Palm Bay Imports, Inc. v. Veuve Clicquot Pansardin Maison Fondee En 1722, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). In any likelihood of confusion analysis, two key considerations are the similarities between the marks 25 Id. at ¶ 14 (“The platform for the services offered under the Opposer’s Mark is available to the public at www.irac.me (the ‘IRAC’ platform). On the IRAC platform, the Opposer’s Mark appears on every page, including the top of the IRAC platform’s home page.”) (19 TTABVUE 6). 26 Opposer also argues that its marks are distinctive because its “ecosystem has been used and accessed by users outside of the legal community and there have been over 20,000 likes recorded in connection with the Facebook presence associated with the Opposer’s platform and over 1,684 likes recorded in connection with the Twitter presence associated with the Opposer’s ecosystem.” However, no evidence was submitted supporting the number of “likes” and even if there was, it is not likely be sufficient on its own to support the acquired distinctiveness of Opposer’s IRAC and IRAC CHALLENGE marks. Opposition No. 91228593 - 17 - and the similarities between the goods and services. See Federated Foods, Inc., v. Fort Howard 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 and differences in the marks.”). To the extent that any other du Pont factors for which no evidence or argument were presented may nonetheless be applicable, we treat them as neutral. A. Similarity of Services, Channels of Trade and Classes of Purchasers We start with the second du Pont factor, where we look to the parties’ respective services to determine their similarity or dissimilarity. When evaluating the issue of likelihood of confusion, we compare the services of the Opposer with the services as identified in Applicant’s application. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (goods as identified in involved application and registration compared); Octocom Sys. Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). The authority is legion that the question of registrability of Applicant’s mark must be decided on the basis of the identification of services set forth in the application regardless of what the record may reveal as to the particular nature of its services, the particular channels of trade or the class of purchasers to which the sales of goods are directed. See Octocom Systems v. Houston Comput. Servs., 16 USPQ2d at 1787 (citations omitted). Applicant’s identified services are: Opposition No. 91228593 - 18 - Educational services, namely, conducting classes for law school preparation tests; while Opposer’s services27 include: Education services, namely, providing instruction in the fields of legal writing; Entertainment services in the nature of competitions in the field of legal writing; Providing online non-downloadable journals in the field of law. Looking at the respective identifications of services, it is apparent that Applicant’s services are closely related to Opposer’s services. Both parties’ services are directed to educational services in the legal field, specifically, law school preparation tests and legal writing. Persons taking Applicant’s law school preparation test classes are most likely intending to go to law school where they will have the opportunity to perform and study legal writing. The respective services in question 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. v. Triumph Learning, 101 USPQ2d at 1722 (quoting 7- Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). Thus, conducting classes for law school preparation tests and providing instruction in the field of legal writing are directly related to admission into, and coursework during, law school. Turning to the classes of consumers and channels of trade, because there is no limitation as to classes of consumers or trade channels in the description of services in either the application or in Opposer’s pleaded registration, we must presume that 27 These services are found in Opposer’s pleaded Registration No. 5082402. Opposition No. 91228593 - 19 - Opposer’s “providing instruction in the fields of legal writing” and Applicant’s “conducting classes for law school preparation tests” are marketed in all normal trade channels for such services and to all normal classes of purchasers for such services. See Stone Lion Capital Partners v. Lion Capital, 110 USPQ2d at 1162 (“An application with ‘no restriction on trade channels’ cannot be ‘narrowed by testimony that the applicant’s use is, in fact, restricted to a particular class of purchasers.’”) (quoting Octocom Sys. Inc. v. Houston Comput. Servs., 16 USPQ2d at 1788); Coach Servs. v. Triumph Learning, 101 USPQ2d at 1722; Packard Press, Inc. v. Hewlett- Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1357 (Fed. Cir. 2000) (“When the registration does not contain limitations describing a particular channel of trade or class of customer, the goods or services are assumed to travel in all normal channels of trade.”). Opposer “designed [its] platform to be an education, content, competition, social media and e-commerce environment targeted to lawyers, law schools, law professors, law librarians and law students.”28 Applicant’s consumers, i.e., persons who are interested in law school test preparation classes, are most likely intending to go to law school. Once they have been admitted to law school and begin taking law school courses, they are law students who will be studying and engaging in legal writing. Applicant’s consumers who go on to attend law school are part of the same consuming public who are desirous of Opposer’s services. Thus, both marks are likely to be encountered by at least some of the same consumers under circumstances that would 28 Prioleau Decl. ¶ 5 (19 TTABVUE 4). Opposition No. 91228593 - 20 - give rise to the mistaken belief that they originate from the same source or that there is an association between the parties. To the extent that Applicant’s and Opposer’s services will be offered to at least some of the same consumers, the channels of trade and classes of customers overlap. B. Similarity of the Marks We next consider the appearance, sound, connotation and commercial impression of the marks in their entireties. Palm Bay v. Veuve Clicquot, 73 USPQ2d at 1692. The test is whether the marks are sufficiently similar in their entireties such that confusion is likely to result. Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Looking at the marks, the dominant portion of Opposer’s and Applicant’s marks is the term “IRAC.” Applicant’s mark contains the wording IRAC in capital letters that are in a larger font size than the font sizes of the letters of the wording “LAW SCHOOL” and “THE FOCUS APPROACH.” Opposer’s word and design mark (in Registration No. 5082402) shows the wording “IRAC” in capital letters in a larger font size relative to all of the other components of the mark. Thus, the marks of both parties comprise the dominant literal element “IRAC” in bold and large capital letters. While the term “IRAC” has been disclaimed by both parties due to its descriptiveness in the legal area, it contributes to the similarity of the marks when viewed in their entireties. See Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1282 (Fed. Cir. 1984). Opposition No. 91228593 - 21 - Opposer contends that Applicant’s mark is confusingly similar in appearance and overall commercial impression to Opposer’s mark because both marks include the literal dominant element “IRAC.” According to Opposer, when the dominant portion of the respective marks is the same, confusion may be more likely “notwithstanding peripheral differences.” Opposer recognizes that “the evidence demonstrates that the dominant portion of the parties’ marks are identical or substantially similar in appearance, sound, connotation, and commercial impression as required for a finding of likelihood of confusion.”29 While we agree with Opposer that the dominant portions of the parties’ marks, i.e., “IRAC,”30 are identical, we disagree with Opposer’s argument that “[t]he letters IRAC in the Opposer’s Mark are distinctive of its ecosystem and not descriptive of any particular acronym.”31 The evidence of record establishes that “IRAC” is descriptive of Opposer’s and Applicant’s services. A dictionary definition submitted by Opposer defines “IRAC” as: A mnemonic acronym used mostly by law students and their writing instructors, esp. as a method of answering essay questions on law exams. The acronym is commonly said to stand for either (1) issue, rule, application, conclusion, or (2) issue, rule, analysis, conclusion.32 while Applicant submits evidence of similar definitions: 29 Applicant’s Trial Brief p. 15 (26 TTABVUE 19). 30 Opposer’s Trial Brief p. 10 (25 TTABVUE 15). 31 Id. at p. 11 (25 TTABVUE 16). 32 Black’s Law Dictionary (8th ed. 2004) p. 2430, Opposer’s Notice of Reliance Exhibit A (24 TTABVUE 5-6). Opposition No. 91228593 - 22 - IRAC is a mnemonic acronym used mostly by law students, their writing instructors and attorneys, especially as a method of answering legal questions. IRAC stands for issue, rule, application/analysis, and conclusion. It is one way to structure legal analysis. In IRAC, first the issue or legal question is stated, then the applicable law or rule is provided, next the facts are analyzed in the light of the law and finally a conclusion is formed for each issue.33 IRAC is an acronym that generally stands for: Issue, Rule, Application, and Conclusion. It functions as a methodology for legal analysis. The IRAC format is mostly used in hypothetical questions in law school and bar exams.34 Additionally, Applicant cites to legal articles on “IRAC” topics further supporting the descriptive meaning of “IRAC” in legal writing and analysis: Organizing A Legal Discussion (IRAC, CRAC, ETC.)35 . . . legal writing has its own specific structure that lawyers everywhere use in one form or another—and which they expect to see in your written work. Whether they call it IRAC (Issue, Rule, Application, Conclusion), CRAC (Conclusion, Rule, Application, Conclusion), or CREAC (Conclusion, Rule, Explanation, Application, Conclusion), all lawyers write in the same way: by laying out the issue to be discussed, the legal rule relevant to the issue, the analysis of the pertinent facts based on that rule, and the overall conclusion reached. 33 USLegal.com May 3, 2018, Applicant’s Second Notice of Reliance, No. 2 (21 TTABVUE 8). 34 IRAC Wikipedia May 3, 2018, Applicant’s Second Notice of Reliance, No. 1 (21 TTABVUE 10). 35 “Organizing A Legal Discussion (IRAC, CRAC, ETC.),” Columbia Law School Legal Writing Center , Applicant’s Second Notice of Reliance No. 4 (21 TTABVUE 17). Opposition No. 91228593 - 23 - IRAC and CRRACC36 IRAC is the acronym for Issue, Rule, Application, Conclusion. These words represent the stages of the most commonly accepted way to organize a written legal analysis . . . Point/Counterpoint: Use of IRAC-type Formulas— Desirable or Dangerous?37 The Value of IRAC IRAC is a tool many of us use to help students provide structure to legal analysis. Student use this tool not only in writing objective and persuasive memos and briefs, but also in writing answers to examination questions. . . . What is the “R” in “IRAC”?38 . . . . “IRAC” is an acronym for a popular procedure for briefing cases or “synthesizing” sets of cases: “I-R-A-C” for “Issue” (the problem), “Rule” (the rule of the case, or the rule you synthesize from the precedent cases), “Application” (how your case comes under that rule), and “Conclusion” (not, one hopes, “client goes to jail.”) . . . The foregoing establishes that “IRAC” is a well-recognized term in the legal setting describing a way to structure legal analysis and writing.39 Both parties use “IRAC” 36 “IRAC and CRRACC,” Cuny School of Law , Applicant’s Second Notice of Reliance No. 3 (21 TTABVUE 23). 37 “Point/Counterpoint: Use of IRAC-type Formulas—Desirable or Dangerous?,” The Second Draft Bulletin of the Legal Writing Institute, Legal Writing Institute vol. 10, No. 1 November 1995 obtained from , Applicant’s Second Notice of Reliance, No. 5 (21 TTABVUE 25-49). 38 “What is the ‘R’ in ‘IRAC’?,” New York School Law Review, March 20, 2003, vol. 46, pp. 457-498, , Applicant’s Second Notice of Reliance, No. 6 (21 TTABVUE 50-92). 39 Additionally, three excerpts from articles and newswires listed in the Newspapers section of the Trademark Search Report referring to “IRAC” were cited at 4 (18 TTABVUE 198). Opposition No. 91228593 - 24 - descriptively, if not generically, in their website advertising materials.40 Thus, the primary significance that consumers are likely to attribute to “IRAC” as applied to both parties’ services is the same merely descriptive meaning. In further support of the descriptiveness of the term “IRAC,” Applicant notes that Opposer’s Registration Nos. 5033571 for IRAC and 5038276 for IRAC CHALLENGE are registered on the Supplemental Register. It is well settled that registration on the Supplemental Register is prima facie evidence that, at least at the time of registration, the registered mark was merely descriptive. See Otter Prods. v. BaseOneLabs, 105 USPQ2d at 1255 (citing Perma Ceram Enterprises Inc. v. Preco Indus., Ltd., 23 USPQ2d 1134, 1137 n.11 (TTAB 1992) (mark registered on the Supplemental Register constitutes an implied admission that the term is descriptive, at least at the time of registration)). In addition, Opposer disclaimed the exclusive right to use the term “IRAC” in its Registration No. 5082402 for the mark . “[I]t has long been held that the disclaimer of a term constitutes an admission of the merely descriptive nature of that term, as applied to the goods or services in connection with which it is registered, and an acknowledgement of the lack of an exclusive right therein at the time of the disclaimer.” In re DNI Holdings Ltd., 77 USPQ2d 1435, 1442 (TTAB 2005); see also Quaker State Oil Refining v. Quaker Oil, 172 USPQ at 363. Similarly, Applicant was required to disclaim the term “IRAC” in its pending application on the ground that 40 See Opposer’s use of “IRAC” at 18 TTABVUE 53 and 20 TTABVUE 39; and Applicant’s use of “IRAC” at 18 TTABVUE 306, 418-419. Opposition No. 91228593 - 25 - “IRAC” merely describes components of a methodology, i.e., the “IRAC” method utilized in law schools to issue spot, problem solve and analyze test questions.41 In view of the foregoing, “IRAC” as used in Opposer’s mark , and in Applicant’s mark , is merely descriptive of the services provided by Applicant and Opposer. Lastly, in addition to both parties’ marks containing the literal element “IRAC,” with Opposer’s mark also containing the minimized word “ME” in the exclamation mark found at the end of its mark, Opposer contends that its word and design mark includes a triumphal arch as a design element, and the literal and design elements of the Applicant’s mark, , are also arranged in the shape of a triumphal arch.42 On the other hand, Applicant describes its mark as including a depiction of a roof of a building under which the phrase “LAW SCHOOL” is visible, indicating that the building relates to a law school. Underneath “IRAC” appears Applicant’s registered mark THE FOCUS APPROACH. According to Applicant, the “commercial impression of the mark is that Applicant’s LSAT preparation courses, provided to persons 41 June 18, 2015 Office Action TSDR at 5; Applicant Brief p. 13 (26 TTABVUE 17). 42 Opposer’s Trial Brief p. 5 (25 TTABVUE 10); Prioleau Decl. ¶ 11 (19 TTABVUE 5). Additionally, Opposer argues that the literal elements of the Applicant’s mark also includes the wording LAW SCHOOL which is a target market of the Opposer. Id. Opposition No. 91228593 - 26 - seeking to enter law school, utilize the IRAC methodology.”43 Applicant goes on to distinguish Opposer’s mark which also includes “IRAC,” and contains “a rendering of a ‘gavel and sound block,’ the ‘scales of justice,’ a depiction of a lawyer standing at a podium presenting a case to a jury, and a depiction of the outside of a building which appears to be a courthouse, . . .”44 noting that none of the design elements of Opposer’s mark are present in Applicant’s mark. Looking at the marks, they each contain images generally related to a building. Opposer’s mark features a rendering of a traditional government-type building such as a courthouse as one of three additional images relating to courts, trials and justice, while Applicant’s mark features a highly stylized depiction of a building which from the wording in the mark makes it apparent that it represents a law school. Thus, apart from the descriptive term “IRAC,” the marks contain different elements rendering a different overall image. The only similar element in Opposer’s marks and Applicant’s mark is the merely descriptive acronym “IRAC.” VII. Conclusion Applicant’s educational services, namely, conducting classes for law school preparation tests, are related to Opposer’s education services, namely, providing instruction in the fields of legal writing, and it is likely that these services move in the same trade channels to at least some of the same end consumers. 43 Applicant’s Trial Brief p. 17 (26 TTABVUE 21). 44 Id. Opposition No. 91228593 - 27 - Opposer’s mark and Applicant’s mark are similar to the extent they contain the term “IRAC.” However, “IRAC” is descriptive when used in connection with Opposer’s legal writing instruction services and Applicant’s law school test services. Therefore, any similarity in commercial impression is diminished due to the descriptiveness of the term “IRAC” in each mark. Moreover, Opposer has failed to prove that its marks IRAC and IRAC CHALLENGE have acquired distinctiveness; thus, Opposer must rely only on its composite mark to establish a likelihood of confusion. The design portions of Opposer’s and Applicant’s word and design marks are not similar in appearance or meaning resulting in the parties’ marks having overall different commercial impressions. Thus, the overall differences in the marks, particularly the differences in the designs of Opposer’s and Applicant’s marks, together with the descriptiveness of the term “IRAC” found in each mark, are sufficient to avoid any likelihood of confusion despite the fact that the marks are used in connection with related services. Decision: The Opposition under § 2(d) of the Trademark Act is dismissed. Copy with citationCopy as parenthetical citation