Scott Andrew Jeffreyv.Seung Pil Ahn

Trademark Trial and Appeal Board

Apr 12, 2002

No. 91116389 (T.T.A.B. Apr. 12, 2002)

4/12/02
Paper No.
8

DEB

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Scott Andrew Jeffrey
v.
Seung Pil Ahn
_____

Opposition No. 116,389
to application Serial No. 75/489298
filed on May 21, 1998
_____

Michelle R. MacGregor of Cowan Liebowitz & Latman, P.C.
for Scott Andrew Jeffrey.

Seung Pil Ahn, pro se.
______

Before Wendel, Bucher and Holtzman, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Seung Pil Ahn sought to register the term LEGALIZE
IT for “clothing, namely, caps, beanies, t-shirts,
shirts, sweaters, jackets and pants,” in International
Class 25.1 Scott Andrew Jeffrey, a.k.a. “Scotty J.,”

1 Application Serial No. 75/489,298, filed May 21, 1998,
based upon applicant’s allegation of a bona fide intention to
use the mark in commerce.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 113,363
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d.b.a. “Legalize,” filed an opposition to registration of
this term on the ground of priority and likelihood of
confusion under Section 2(d) of the Trademark Act.
As grounds for opposition, opposer has alleged that
he has used his “LEGALIZE and design” mark, as shown
below:
2
in connection with T-shirts and hats (or caps), since
prior to the filing date of applicant’s intent-to-use
application; that opposer is the owner of a trademark
registration for the same “LEGALIZE and design” mark for
“dissemination of advertising for others via an on-line
electronic communications network,” in International
Class 35;3 that opposer is the owner of a registered
collective membership mark LEGALIZE PATRIOT for

2 Opposer’s literature explains that “The Legalize® trademark
represents a sound wave, your own voice saying ‘legalize’… The
Legalize® trademark can also represent Legalize on the
Internet.” We note from the front of opposer’s caps that this
particular design also permits the special form presentation to
be sewn with a single, continuous zigzag of an industrial sewing
machine, and similarly, that the design also permits a single,
continuous neon bulb to represent the mark (see e.g., footnote
7, infra).
3 Reg. No. 2,216,647, issued to Scott Andrew Jeffrey
(opposer herein), a.k.a. Scotty J., on December 15, 1998. While
this record does not make it clear how Mr. Jeffrey is providing
Opposition No. 113,363
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“indicating membership in an organization dedicated to
promoting marijuana legalization and drug policy reform”;4
that the LEGALIZE mark as shown above has been used
extensively on the Internet since 1996 to market
opposer’s goods and services and to promote drug policy
reform; that opposer filed an application to register
LEGALIZE for clothing items, and that the Trademark
Examining Attorney in the LEGALIZE application held up
further prosecution of that application5 based upon the
instant, earlier-filed LEGALIZE IT application; and that
applicant’s mark so resembles opposer’s previously used
and registered marks that, if used on applicant’s goods,
confusion is likely.
In his answer, applicant denied the salient
allegations in the notice of opposition, taking the
position that there is no likelihood of confusion between
the marks. Furthermore, applicant also denied that
opposer has priority of use.
The record includes the pleadings and the trial
testimony deposition of Scott Andrew Jeffrey, with

advertising services for others under this mark (e.g., like an
advertising agency), this issue is not currently before us.
4 Reg. No. 2,351,547, issued to Scott Andrew Jeffrey
(opposer herein), a.k.a. Scotty J., on May 23, 2000.
5 Application Serial No. 75/632,598, filed on February 7,
1999, based upon an allegation of use in commerce by Scott
Andrew Jeffrey since at least as early as April 20, 1997.
Opposition No. 113,363
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exhibits. Other than filing an answer and a response to
opposer’s first request for production of documents and
things, applicant has made no further appearances in this
proceeding. Accordingly, only opposer has filed a brief
in this case. An oral hearing was not requested.
Mr. Scott Andrew Jeffrey testified that the special
form of the mark LEGALIZE, as shown above, has been in
use in connection with T-shirts since April 1997; in
connection with its advertising services since September
1997; in connection with hats or caps since November
1997; in connection with lighters since 1997; and in
connection with bumper stickers since 1998. Mr. Jeffrey
further states that opposer has continuously used his
special form LEGALIZE mark, as shown above, on all of the
listed goods and services since the respective claimed
dates of first use.
The testimony and exhibits show that hundreds-of-
thousands of people have visited opposer’s Web site since
late in 1996, and that opposer’s LEGALIZE and design mark
is used prominently throughout his Web site. Opposer’s
special form LEGALIZE mark is used on each Web page, in
connection with the availability of his newsletters,
announcements of special LEGALIZE activities, as well as
with the sale of shirts, caps, bumper stickers, lighters
Opposition No. 113,363
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and other products. The testimony also shows that
opposer himself has sold T-shirts and caps one at a time
in Central Park or to adolescents and young adults
exiting a large PC trade show. Over the years, he has
also been successful in getting, various merchants in the
Village to stock T-shirts, each having his LEGALIZE mark
emblazoned across it. Opposer has distributed thousands
of 8½” x 11” paper flyers and 3” x 9” bumper stickers
(“End the War on America’s Youth,” “Log On, Tune In,
Speak Out!” and “20 Million Stoners Can’t Be Wrong”) and
many promotional business cards, while recording ever-
growing numbers of hits on his Web site each year. He
and his Legalize organization have appeared in various
forms on the “Hemp 100” list in the High Times magazine
on four different occasions, making it all the way to the
number one spot in April 1999 – according to Scotty J.,
demonstrating that the editors and readers of High Times
magazine considered his the most popular pro-marijuana
enterprise in the nation.6 He and his Legalize
organization and Web site were highlighted in a Time
magazine article on March 16, 1998.7 Although the record

6 According to opposer’s testimony, the Hemp 100 comprises
“… cool stoner websites or phrases or ideas.” Transcript, p. 55)
7 This brief article with accompanying pictures refers to
opposer’s having posted on his Web site a cartoon attempting to
Opposition No. 113,363
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shows that indeed applicant has sold hundreds of shirts
and caps since 1997, his tax returns for the years 1997
to 1999 suggest that the expenses that Mr. Jeffrey has
written off8 on his individual income tax returns far
exceed the income from the sale of these items of
merchandise.
Priority is not in issue in this case. Opposer’s
two claimed registrations are properly of record,9 but
inasmuch as they are for advertising services and a
collective membership mark, it is through opposer’s
testimony deposition that opposer has demonstrated that
he has used his special form LEGALIZE mark in connection
with T-shirts and caps since 1997. These dates are prior
to the May 21, 1998 filing date of applicant’s intent-to-
use application, which is his constructive use date.

parody the well-known Budweiser Frogs. Scotty J’s “Our Bud-Is-
Wiser” Frogs, are croaking “Lee,” “Gull” and “Eyes.” These
frogs seem to be mesmerized by a flashing, green neon “Legalize”
sign atop the near-by tavern at the edge of the swamp. The
article noted that counsel for Anheuser-Busch took issue with
this usage and wrote to opposer that his client may well be
forced to take the necessary legal steps to end this alleged
violation of its trademark rights.
8 His tax write-offs comprised the amalgam of his direct
expenses, equipment depreciation, etc., on behalf of his for-
profit enterprise, and especially for maintaining his Web site
at www.legalize.com.
9 Opposer filed a Notice of Reliance pursuant to Trademark
Rule 2.122(d)(2), dated October 6, 2000, with attached status
and title copies of opposer’s two claimed registrations.
Opposition No. 113,363
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We turn then to the issue of likelihood of
confusion. In the course of rendering this decision, we
have followed the guidance of In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 1362, 177 USPQ 563, 567-
68 (CCPA 1973). This case sets forth the factors which,
if relevant, should be considered in determining
likelihood of confusion. In any likelihood of confusion
analysis, two key considerations are the similarities of
the marks and the relatedness of the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) [“The fundamental inquiry
mandated by Section 2(d) goes to cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”]
Considering first the marks, applicant’s mark
LEGALIZE IT and opposer’s mark LEGALIZE, are similar in
appearance, pronunciation and connotation. The entirety
of opposer’s mark is a single word, “Legalize,”
comprising eight-letters. The identical word,
“Legalize,” is also the initial portion of applicant’s
LEGALIZE IT mark. Visually, this long, eight-letter word
predominates over the “it” portion of the mark that
follows. The three-syllable word “Legalize” sounds very
much the same as the four-syllable term “Legalize it.”
Opposition No. 113,363
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Certainly as to connotation, the strong, imperative verb
“Legalize” demands attention, and even in opposer’s mark,
implies an object (an “it”) of some kind. Accordingly,
we find that in every way, these two marks, in their
entireties, create the same overall commercial
impression.
In finding that the marks are similar, we have kept
in mind the normal fallibility of human memory over time
and the fact that the average consumer retains a general
rather than a specific impression of trademarks
encountered in the marketplace. This is especially the
case given the inexpensive nature of these goods. Thus,
the first du Pont factor weighs against applicant.
Turning next to a consideration of opposer’s goods
and applicant’s goods, we note that applicant and opposer
are both using, or intending to use, their respective
marks on some of the same items of clothing – namely T-
shirts and caps (although variously referred to as
“hats,” opposer’s headwear is a cap having a bill in the
front).
Given the identical nature of the goods, we must
presume that the goods of both parties will move through
identical channels of trade to the same class of
purchasers.
Opposition No. 113,363
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In short, given the fact that the marks of the
parties create the same commercial impression, and the
fact that the goods of the parties are virtually
identical, we find that a likelihood of confusion exists.
Decision: The opposition is sustained.