The Law Firm of Sausser & Spurr, LLC

Trademark Trial and Appeal Board

Sep 30, 2015

No. 85952465 (T.T.A.B. Sep. 30, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: September 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In The Law Firm of Sausser & Spurr, LLC
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Serial No. 85952465
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Alexandra Spurr for The Law Firm of Sausser & Spurr, LLC.

Seth Dennis, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
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Before Cataldo, Shaw, and Goodman,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
Applicant, The Law Firm of Sausser & Spurr, LLC, filed an application to
register on the Principal Register the mark TRADEMARK HELP FOR THE
MODERN WORLD, in standard characters, for “legal services,” in International
Class 45.1
The Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), because of a likelihood of confusion with the
mark in U.S. Registration No. 4409525 for the mark TRADEMARKHELP, also in

1 Application Serial No. 85952465 was filed on June 6, 2013, based on Section 1(a) of the
Trademark Act, with a claim of first use anywhere and use in commerce since of March 24,
2013.
Serial No. 85952465
2
standard characters, for “providing general information in the field of intellectual
property, namely, preparation of applications for trademark registration; trademark
searching services; providing online information in the field of intellectual property,
namely, trademarks and trademark registration,” in international Class 45.2 After
the Examining Attorney made the refusal final, Applicant appealed and requested
reconsideration. The Examining Attorney denied the request for reconsideration
and the appeal was resumed. We affirm the refusal to register.
Analysis
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence relevant to the factors set forth in In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In
re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976).
A. The similarity or dissimilarity and nature of the services described
in the application and registration, channels of trade, and classes of
consumers
We first consider the du Pont factor regarding the similarity or dissimilarity of
the Applicant’s and Registrant’s respective services. In making our determination,
we compare the services as they are identified in the application and registration,

2 Issued October 10, 2013.
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as quoted above. See Packard Press Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56
USPQ2d 1351, 1354 (Fed. Cir. 2000). The respective services need only be “related
in some manner and/or 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., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1722 (Fed. Cir. 2012).
Applicant’s services are “legal services.” Registrant’s services include, inter alia,
“preparation of applications for trademark registration” and “trademark searching
services.” The examining attorney made of record excerpts from the web pages of a
number of intellectual property law firms. These excerpts show that conducting
trademark searches and preparing trademark applications are a regular part of
intellectual property law firm work and, thus, the services are within the scope of
“legal services.” The following examples are representative: 3
• Duanemorris.com – a website for the law firm Duane Morris LLP, offering
a wide variety of legal services including performing trademark searches
and filing trademark applications;
• Glbf.com – a website for the law firm Gardner Linn Burkhart & Flory,
offering trademark application preparation and trademark searches;
• Gerbenlaw.com – a website for the Gerben Law Firm offering trademark
legal services including “trademark search and registration” services, as
well as general information on registering trademarks;
• Harrisonlawofficepc.com – a website for the Harrison Law Office, P.C.
offering trademark searching and the preparation of trademark
applications; and
• Hunzikerlegalservices.com – a website for Hunziker Legal Services
offering intellectual property legal services, including trademark searches
and general information about trademark registration and maintenance.

3 Office Action, August 14, 2014 and March 7, 2015.
Serial No. 85952465
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Based on the foregoing, we find that Registrant’s “preparation of applications for
trademark registration” and “trademark searching services” are subsumed within
Applicant’s “legal services,” and, as such, are legally identical. Furthermore, to the
extent Registrant’s services of “providing online information in the field of
intellectual property, namely, trademarks and trademark registration” may not be
legally identical to Applicant’s services, the record establishes that they are
nevertheless closely related. The web page excerpts also show that these law firms
routinely provide general information relating to intellectual property and
trademarks to prospective consumers.
With regard to the channels of trade, because the services are legally identical or
so closely related, and there are no limitations recited in the identifications of the
application and cited registration, we must presume that they are offered in the
same channels of trade to the same classes of customers. See also Hewlett-Packard
Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
This du Pont factor favors a finding of likelihood of confusion.
B. The similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression
We next consider the marks, comparing them for similarities and dissimilarities
in appearance, sound, connotation and commercial impression. See Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005). We note that our analysis cannot be
predicated on dissecting the marks into their various components; that is, the
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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).
Applicant’s mark is TRADEMARK HELP FOR THE MODERN WORLD in
standard characters. Registrant’s mark is TRADEMARKHELP, also in standard
characters. But for the space between the words TRADEMARK and HELP in
Applicant’s mark, Applicant has adopted Registrant’s mark in its entirety.
Moreover, both marks begin with the words TRADEMARK and HELP which are
pronounced the same inasmuch as the missing space in Registrant’s mark makes no
difference in pronunciation. Purchasers in general are inclined to focus on the first
word or portion in a trademark. Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9
USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is likely
to be impressed upon the mind of a purchaser and remembered”). See Palm Bay, 73
USPQ2d at 1692.
When we view the marks as a whole, as we must, we find that both marks are
similar in connotation and commercial impression in that they both convey the idea
of assistance with trademark matters. Applicant’s addition of the language FOR
THE MODERN WORLD suggests that Applicant’s services will be up to date and
perhaps address contemporary legal issues, but this wording does not distinguish
the connotation or commercial impression of the two marks because Registrant’s
TRADEMARKHELP mark more broadly connotes that the services offered
thereunder will address trademark issues of any type.
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Applicant argues that registrant’s mark TRADEMARKHELP is “descriptive and
practically generic of trademark services, which results in a weak trademark,” and
“it is therefore entitled to a narrower scope of protection.”4 To the extent Applicant’s
argument that the registered mark is “descriptive and practically generic” is an
attack on the validity of the registration, such arguments are not permitted in an ex
parte proceeding. In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531,
1534 (Fed. Cir. 1997). We must accord the cited registration the presumption of
validity provided for in Trademark Act Section 7, 15 U.S.C. § 1057.
In support of registration, Applicant has submitted a number of third party
registrations for marks including the term “help.”5 Applicant argues that its mark is
entitled to registration because “the USPTO has approved and registered marks
that possess the same dominant terms despite the similarity of the goods/services.”6
This argument is unpersuasive. The third-party registrations submitted by
Applicant of purportedly weak but coexisting marks do not compel the finding that
Applicant’s and Registrant’s marks also may coexist. Although many of the marks
share the term “help,” the majority of the marks also have additional terms or
designs to distinguish the marks, or they are registered for differing goods or
services. For example, four of the third-party marks, HELP-U-LEASE, Help-U-Rent
and design, HELP-U-SAVE, and HELP-U-SELL, used in connection with real
estate services, share the term “HELP-U” but nevertheless create different
connotations and commercial impressions, and thus are registrable. Similarly, the

4 Applicant’s Br., p. 8.
5 Applicant’s Response to Office Action, July 22, 2014.
6 Applicant’s Br., p. 8.
Serial No. 85952465
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marks HOMEWORK HELP ON TIME and HOMEWORK HELPLINE, for use in
connection with educational services, share the terms “HOMEWORK” and “HELP”
but nevertheless create different connotations and commercial impressions so as to
allow them to coexist on the register.
In contrast, the only difference between the shared wording in Applicant’s and
Registrant’s marks is the absence of the space between the words “TRADEMARK”
and “HELP” in Registrant’s mark. The missing space is not enough to distinguish
the marks, especially where the services are, in part, legally identical. See In re
Planalytics Inc., 70 USPQ2d 1453 (TTAB 2004) (the absence of the space in
GASBUYER does not create a different meaning or perception of the term). In any
event, it is well settled that each case must be decided on its own facts. See In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if
some prior registrations had some characteristics similar to [Applicant’s]
application, the PTO’s allowance of such prior registrations does not bind the Board
or this court.”).
Finally, even if we were to assume that Registrant’s TRADEMARKHELP mark
is weak, “likelihood of confusion is to be avoided, as much between ‘weak’ marks as
between ‘strong’ marks, or as between a ‘weak’ and ‘strong’ mark.” King Candy Co.
v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974). This
du Pont factor favors a finding of likelihood of confusion.
C. Consumer sophistication
Purchaser sophistication or a high degree of care may tend to minimize
likelihood of confusion. Conversely, impulse purchases of inexpensive items or a low
Serial No. 85952465
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degree of care may tend to have the opposite effect. Palm Bay, 73 USPQ2d at 1695.
Applicant argues that “the sophistication of the consumers of Applicant’s services
reflects a high degree of care in purchasing and as a result likelihood of confusion is
less likely.”7 In support, Applicant submitted an article from the Houston Chronicle
entitled “How Much Does it Cost to Trademark a Business Name?”8 The article
states that “[h]iring an attorney is valuable because an attorney can help make sure
your application is accepted,” and further, that “attorneys will charge somewhere
between $500 and $2000 for assistance with a trademark application.”
We have no doubt that purchasers of legal services exercise more than an
average degree of care, but we do not find that the article demonstrates that
potential consumers of legal services exercise a high degree of care. Additionally,
even if prospective consumers exercise a heightened degree of care in selecting a
trademark attorney, by definition it does not necessarily mean that they are
sophisticated or knowledgeable in the field of trademarks or immune from source
confusion; rather, the opposite may be true. See, e.g., Stone Lion Capital Partners,
LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163-641 (Fed. Cir.
2014) (“[T]he standard of care to be exercised by the reasonably prudent purchaser
will be equal to that of the least sophisticated consumer in the class.”).
In this case, the similarity between Applicant’s mark and Registrant’s mark as
well as the in part identical nature of services outweigh any sophisticated
purchasing decision. See HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819

7 Applicant’s Br., p. 12.
8 Applicant’s Response to Office Action, July 22, 2014, p. 225.
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(TTAB 1989), aff’d, Weiss Assocs., Inc. v. HRL Assocs., Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh
sophisticated purchasers, careful purchasing decision, and expensive goods).
Therefore, we find this factor to be neutral.
D. Balancing the factors
After considering all of the evidence of record, including any evidence not
specifically discussed herein, applicable to the du Pont factors relevant to this case,
we find that Applicant’s mark, TRADEMARK HELP FOR THE MODERN WORLD,
for “legal services” is likely to cause confusion with the cited mark,
TRADEMARKHELP, for “providing general information in the field of intellectual
property, namely, preparation of applications for trademark registration; trademark
searching services; providing online information in the field of intellectual property,
namely, trademarks and trademark registration.”
Decision: The refusal to register is affirmed.