The Trustees of the Steven Laiderman Living Trust, et. al.

Trademark Trial and Appeal Board

May 1, 2019

87192237 (T.T.A.B. May. 1, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 1, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Trustees of the Steven Laiderman Living Trust, et. al.
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Serial No. 87192237

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David H. Chervitz, Esq.,
for The Trustees of the Steven Laiderman Living Trust, dated September 10,
1992, and any amendments thereto, a Missouri trust, the trustees comprising
Steven Laiderman, a United States citizen, and Tammi Laiderman, a United
States citizen.

Betty Chang, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
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Before Taylor, Ritchie, and Coggins,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
The Trustees of the Steven Laiderman Living Trust, dated September 10, 1992,
and any amendments thereto, a Missouri trust, the trustees comprising Steven
Laiderman, a United States citizen, and Tammi Laiderman, a United States citizen
(“Applicant”) seek registration on the Supplemental Register of the mark BUSINESS
CARE, in standard character form, for services ultimately identified as, “Legal
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services, namely, providing, for a fixed annual fee, bi-annual meetings with clients,
unlimited calls from clients on new matters, and serving as a registered agent,” in
International Class 45.1
The Examining Attorney refused registration of Applicant’s mark under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), as likely to cause confusion,
mistake, or to deceive, based on a prior registration of the mark PREFERRED
BUSINESSCARE, also in standard characters, and registered on the Supplemental
Register, for “Legal services.”2
When the refusal was made final, Applicant filed a request for reconsideration.
When the request for reconsideration was denied, Applicant filed a timely appeal.
The appeal is fully briefed. For the reasons discussed herein, we affirm the Section
2(d) refusal to register.
I. Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of the probative facts in evidence that are relevant to the factors bearing on
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 Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we keep in mind that “[t]he

1 Serial No. 87192237, filed on October 4, 2016, under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a), alleging dates of first use and use in commerce on October 3, 2016.
2 Registration No. 4770584, registered July 7, 2015.
Serial No. 87192237
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fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976); see also In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014). We further
note that “[n]ot all of the [du Pont] factors are relevant to every case, and only factors
of significance to the particular mark need be considered.” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012)
(quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir
2010)).
A. The Services, Trade Channels and Purchasers
We consider first the similarities or dissimilarities between the respective
services as identified in the application and the cited registration. 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 cited registration
compared). The cited registration identifies “legal services,” and the application
identifies, more specifically, “legal services, namely, providing, for a fixed annual fee,
bi-annual meetings with clients, unlimited calls from clients on new matters, and
serving as a registered agent.” The services in the application are thus a subset of the
services identified in the cited registration. See Octocom Sys., Inc. v. Houston Comput.
Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is
legion that the question of registrability of an applicant’s mark must be decided on
the basis of the identification of goods set forth in the application regardless of what
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the record may reveal as to the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to which the sales of goods are
directed.” (citations omitted)). They are overlapping and legally identical.
As for the channels of trade, when as here, the respective identifications of
services are legally identical, without restrictions as to nature, type, channels of
trade, or classes of purchasers, the services are presumed to travel in the same
channels of trade to the same class of purchasers. In re Viterra, Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (“[A]bsent restrictions in the application and
registration, goods and services are presumed to travel in the same channels of trade
to the same class of purchasers.”). Thus, we must presume the trade channels and
classes of purchasers are the same or overlapping for the “legal services” offered by
registrant, and for the more specific “legal services, namely, providing, for a fixed
annual fee, bi-annual meetings with clients, unlimited calls from clients on new
matters, and serving as a registered agent” identified by Applicant.
These factors weigh heavily in favor of finding a likelihood of confusion.
B. Strength of the Cited Mark
Applicant argues that mark in the cited registration is a “weak” mark, registered
on the Supplemental Register, and that there are numerous third-party marks that
incorporate the terms “BUSINESS” for related goods and services. 4 TTABVUE 17,
18. Applicant refers to “at least 239 registrations”3 for marks that include the word

3 4 TTAB 19.
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BUSINESS used in connection with legal services, 100 of which were made of record.4
We note, too, that the Examining Attorney made of record various third-party
registrations for marks that include the term “CARE” for legal services.5 As pointed
out by the Examining Attorney, while there are numerous third-party registrations
in the record that include the individual terms “BUSINESS” or “CARE” as part of
other marks, none of the third-party registrations includes both terms, much less the
term “BUSINESS CARE” (or “BUSINESSCARE”) together, as do Applicant’s mark
and the cited mark.
The mark in the cited registration is unquestionably weak, and it is registered on
the Supplemental Register. Nonetheless, unlike any of the other registered marks
cited by Applicant, the cited mark fully incorporates the term “BUSINESS CARE” (or
“BUSINESSCARE”), which is the entirety of Applicant’s mark. Applicant and the
Examining Attorney agree that there is no evidence of “fame” of the cited mark. 4
TTABVUE 16; 7 TTABVUE 4. Although the degree of descriptiveness of the cited
mark may influence whether or not confusion is likely, it is well recognized that even
weak marks are entitled to protection against a mark that is substantially similar in
sight, sound, and commercial impression and is used on identical services, as here.
See In re Clorox Co., 578 F.2d 305, 198 USPQ 337, 341 (CCPA 1978) (affirming
Section 2(d) refusal of mark on Principal Register based on cited registration on
Supplemental Register).

4 March 6, 2018 Response to Office Action, at 2-31, and July 5, 2018 Request for
Reconsideration, at 2-115.
5 January 11, 2017 Office Action, at 11-25.
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C. The Marks
We next compare the marks in their entireties for similarities and dissimilarities
in appearance, sound, connotation and commercial impression. Palm Bay Imps., 73
USPQ2d at 1692. The focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of trademarks. In re
Assoc. of the U.S. Army, 85 USPQ2d 1264, 1268 (TTAB 2007); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Here, the average purchaser
includes consumers of legal services, including Applicant’s more narrowly defined
“legal services, namely, providing, for a fixed annual fee, bi-annual meetings with
clients, unlimited calls from clients on new matters, and serving as a registered
agent.”
Applicant’s mark consists solely of the term “BUSINESS CARE” in standard
character form. The mark in the cited registration is PREFERRED
BUSINESSCARE. Applicant argues that these marks are different in appearance,
sight, sound, and commercial impression. While the marks clearly have some
differences, the test is not whether the marks can be distinguished when subjected to
a side-by-side comparison, but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion as to the source of the
goods offered under the respective marks is likely to result. Coach Servs., Inc. v.
Triumph Learning LLC, 101 USPQ2d at 1721. Under actual marketing conditions,
consumers do not necessarily have the luxury of making side-by-side comparisons
between marks, and must rely upon their imperfect recollections. Dassler KG v. Roller
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Derby Skate Corp., 206 USPQ 255, 259 (TTAB 1980). Applicant points out that the
first terms of the marks are different. While it is true that the first term of a mark is
most likely to make an impression on consumers, this is only one aspect in analyzing
the marks as a whole. Cf. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 73 USPQ2d at 1692 (Fed. Cir. 2005); Presto Prods., Inc. v. Nice-Pak
Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). Indeed, the term BUSINESS CARE,
which comprises the whole of Applicant’s mark, is encompassed within the cited
mark, which increases the likelihood of confusion. See In re Chatam Int’l Inc., 380
F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE GASPAR
GOLD); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (CCPA
1967) (THE LILLY and LILLI ANN); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB
1985) (CAREER IMAGE AND CREST CAREER IMAGES). Moreover, the lack of a
space between the terms BUSINESS and CARE in the cited mark does not have any
source-identifying significance.
The sole differing term, PREFERRED, is defined as 1. To set or hold before or
above other persons or things in estimation; like better; choose rather than; 2. Law.
To give priority, as to one creditor over another.6 Applicant further noted in its
Request for Reconsideration that “‘PREFERRED’ is obviously a descriptive term as
it describes services that are desirable over other services.”7 The Examining Attorney
made of record printouts from various third-party websites that use the term

6 Dictionary.com. Attached to July 5, 2018 Request for Reconsideration, at 116.
7 See July 5, 2018 Request for Reconsideration.
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“Preferred” in connection with legal services to refer to a legal provider who offers
favorable services or rates. Some examples include the following:
Preferred Legal: We are committed to providing your office with
professional legal services. Our goal is to provide the best service in the
industry. PreferredLegal.net. Attached to March 8, 2018 Final Office
Action, at 24.

Preferred Legal Service Providers: We have an extensive network of
preferred Process Servers, Private Investigation and other general
Legal Services companies that we trust. SameDayServes.com. Attached
to March 8, 2018 Final Office Action, at 14.

UFSelect Preferred Legal Plan: UFSelect offers a legal plan that
provides low-cost access to a [sic] comprehensive legal assistance,
advice, and representation on different types of legal services.
https://benefits.hr.ufl.edu. Attached to July 25, 2018 Denial of Request
for Reconsideration, at 32.

Brain Injury Association – Preferred Attorneys: Selecting the right legal
representation is critical. The Brain Injury Association of America’s
Preferred Attorneys have demonstrated their knowledge of the physical,
cognitive, emotional, and financial tolls a brain injury can inflict.
Biausa.org. Attached to July 25, 2018 Denial of Request for
Reconsideration, at 45.

Thus, Applicant’s mark BUSINESS CARE is likely to be perceived as a variation of
the cited mark and that registrant offers its “legal services” to “preferred” customers
or at “preferred” rates. As such, the marks have very similar commercial impressions.
Taking into account that the cited mark is registered on the Supplemental
Register, and considering the marks as a whole, we note that the marks use
substantially similar wording for legally identical services. Where, as here, the marks
are used on services that are identical, the degree of similarity between the marks
necessary to support a finding of likely confusion declines. Bridgestone Ams. Tire
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Operations LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir.
2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992). The marks are substantially similar in sight, sound, and
especially commercial impression, and the first du Pont factor also favors finding a
likelihood of confusion.
D. Conditions of Sale
Applicant urges us to consider the sophistication of consumers of legal services. In
particular, Applicant argues that “[t]he care and attention afforded in selecting an
attorney will prevent the potential for confusion.” 4 TTABVUE 15. While legal
proceedings can indeed be costly and complex, we must consider the degree of care
that would be exercised by the least sophisticated consumers. See Stone Lion Capital
110 USPQ2d at 1163 (affirming that TTAB properly considered all potential
purchasers for recited services, including both sophisticated and unsophisticated
investors, since precedent requires consumer care for likelihood of confusion decision
be based “on the least sophisticated potential purchasers”). The cited registration
identifies, generally, “legal services,” while Applicant’s services are more narrowly
identified as “legal services, namely, providing, for a fixed annual fee, bi-annual
meetings with clients, unlimited calls from clients on new matters, and serving as a
registered agent.”
Taking into account the relevant consumers and services, we find that consumers
of the overlapping legal services are likely to exercise some care in their purchasing
Serial No. 87192237
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decisions. This factor accordingly weighs somewhat against finding a likelihood of
confusion.
E. Concurrent Use Without Confusion
Applicant argues that there have been no instances of actual confusion despite
that “[t]he parties have existed in the market together since at least as early as 2016.”
4 TTABVUE 17-18. We note, however, that while the presence of confusion may be
very useful to our analysis, the lack of evidence of actual confusion carries little
weight. J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438
(CCPA 1965). This is especially true where, as here, the record is unclear as to the
amount of meaningful opportunities for confusion to have occurred among
purchasers. Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1202 (TTAB 2007).
While we understand that both Applicant and registrant have use dates since
2016, we cannot conclude with any certainty the extent to which there has been
opportunity for actual confusion to occur. These factors are neutral.
II. Conclusion
After considering all of the arguments and evidence of record as they pertain to
the relevant du Pont factors, even if not specifically discussed here, we find that the
services are overlapping and legally identical, and we presume that they would travel
through some of the same channels of trade to some of the same general consumers.
We further find that the marks as a whole are substantially similar in sight, sound,
connotation, and especially commercial impression. Accordingly, despite the
weakness of the cited mark, and taking into that some consumers will exercise more
Serial No. 87192237
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than ordinary care in their purchasing decisions, we find a likelihood of confusion
between Applicant’s mark BUSINESS CARE for “legal services, namely, providing,
for a fixed annual fee, bi-annual meetings with clients, unlimited calls from clients
on new matters, and serving as a registered agent,” and the cited mark PREFERRED
BUSINESSCARE for “legal services.”
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.