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`This Opinion is Not a
`Precedent of the TTAB
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`Mailed: March 28, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____
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`Trademark Trial and Appeal Board
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`_____
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`In re Gabriel J. Carrera
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`_____
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`Serial No. 87133450
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`_____
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`Barry L. Haley of Malin Haley DiMaggio & Bowen, P.A.
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`for Gabriel J. Carrera
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`Jonathan R. Falk, Trademark Examining Attorney, Law Office 111,
` Chris Doninger, Managing Attorney.
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`
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`_____
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`Before Cataldo, Heasley, and Lynch,
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`Administrative Trademark Judges.
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`Opinion by Lynch, Administrative Trademark Judge:
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`I. Background and Evidentiary Matter
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`Gabriel J. Carrera (“Applicant”) seeks registration on the Principal Register of the
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`mark ATTORNEY THAT RIDES in standard characters for “Legal services” in
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`Serial No. 87133450
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`International Class 45.1 The Examining Attorney refused registration under Section
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`2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion
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`with the registered mark THE ORIGINAL ATTORNEYS WHO RIDE in standard
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`characters, with ORIGINAL ATTORNEYS disclaimed, for services including “Legal
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`services” in International Class 45.2 After the Examining Attorney made the refusal
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`final, Applicant appealed.
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`Before turning to the merits, we exclude the list of third-party registrations
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`Applicant offered for the first time in its Reply Brief.3 Trademark Rule 2.142(d), 37
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`C.F.R. § 2.142(d), provides that the record should be complete prior to the filing of an
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`appeal. See also In re Procter & Gamble Co., 105 USPQ2d 1119, 1120 (TTAB 2012)
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`(the applicant’s discussion in its brief of third-party registrations not considered
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`because the registrations were not properly introduced during the examination
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`process); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)
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`§ 1203.02(e) (2018) (“Evidentiary references made in briefs but not supported by
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`timely submissions may not be considered.”). Regardless, a mere list of third-party
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`registrations, without the underlying registrations themselves, does not suffice to
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`make them of record. In re Broadway Chicken Inc., 38 USPQ2d 1559, 1560 n.6 (TTAB
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`1996) (“In order to make third-party registrations properly of record in a proceeding
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`such as this, applicant should submit copies of the registrations themselves, or the
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`1 Application Serial No. 87133450 was filed August 10, 2016 under Section 1(a) of the
`Trademark Act, 15 U.S.C. § 1051(a), based on alleged use of the mark in commerce.
`2 Registration No. 5113286 issued January 3, 2017.
`3 9 TTABVUE 6.
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`Serial No. 87133450
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`electronic equivalent thereof, namely, printouts from the electronic records of the
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`Patent and Trademark Office’s Trademark Automated Search System”).
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`II. Likelihood of Confusion
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`Our determination under Section 2(d) involves an analysis of all of the probative
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`evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours
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`& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
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`considered, hereinafter referred to as “du Pont factors”); see also In re Majestic
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`Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). Two key
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`considerations are the similarities between the marks and the relatedness of the
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`services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir.
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`2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
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`29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
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`effect of differences in the essential characteristics of the goods [or services] and
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`differences in the marks.”).
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`A. The Services, Trade Channels, and Classes of Consumers
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`The subject application and cited registration both identify “legal services.” Thus,
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`the services at issue are identical. We must therefore presume that the channels of
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`trade and potential consumers are also identical. See In re Viterra Inc., 671 F.3d 1358,
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`101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal
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`presumption in determining likelihood of confusion); Am. Lebanese Syrian Assoc.
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`Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
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`- 3 -
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`Serial No. 87133450
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`Thus, the second and third du Pont factors weigh strongly in favor of a finding of
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`likely confusion.
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`B. Similarity of the Marks
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`We turn to comparing ATTORNEY THAT RIDES to THE ORIGINAL
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`ATTORNEYS WHO RIDE “in their entireties as to appearance, sound, connotation
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`and commercial impression.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
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`Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005).
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`(quoting du Pont, 177 USPQ at 567). The test assesses not whether the marks can be
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`distinguished in a side-by-side comparison, but rather whether their overall
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`commercial impressions are so similar that confusion as to the source of the services
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`offered under the respective marks is likely to result. Coach Servs. Inc. v. Triumph
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`Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom
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`Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). We bear in mind that
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`where, as here, marks would appear on identical services, the degree of similarity
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`necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate
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`v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.1992); Viterra,
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`101 USPQ2d at 1908.
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`The marks are alike in their meaning and commercial impression because they
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`refer to a lawyer or lawyers who ride. Applicant’s specimen of use and evidence
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`submitted by Applicant indicate that “ride” in both cases refers lawyers who ride
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`motorcycles.4 As the Examining Attorney characterizes it, “[b]oth marks contain the
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`4 Applicant’s December 20, 2017 Response to Office Action at .pdf 6-9.
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`- 4 -
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`Serial No. 87133450
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`wording ‘ATTORNEY’ or its plural followed by ‘RIDE’ with a pronoun in between.”5
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`While the cited mark includes the additional wording THE ORIGINAL at the
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`beginning, this article and adjective modify the more dominant phrase ATTORNEYS
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`WHO RIDE. See In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
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`1985) (“in articulating reasons for reaching a conclusion on the issue of confusion,
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`there is nothing improper in stating that, for rational reasons, more or less weight
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`has been given to a particular feature of a mark, provided the ultimate conclusion
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`rests on consideration of the marks in their entireties”); see also Stone Lion Capital
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`Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
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`2014). In the context of this mark, the disclaimed term ORIGINAL conveys a
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`laudatory sense, while the term THE has no source-indicating significance. See In re
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`Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (finding WAVE and THE WAVE
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`“virtually identical” marks; “[t]he addition of the work ‘The’ at the beginning of the
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`registered mark does not have any trademark significance.”). And although
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`Applicant’s mark refers to ATTORNEY in the singular while the cited mark refers to
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`ATTORNEYS in the plural, this difference is minimal. See Swiss Grill Ltd. v. Wolf
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`Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (singular and plural of SWISS
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`GRILL deemed “virtually identical”); Weider Publ’ns, LLC v. D & D Beauty Care Co.,
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`109 USPQ2d 1347, 1355 (TTAB 2014) (singular and plural forms of SHAPE
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`considered essentially the same mark). The common elements in Applicant’s and
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`5 8 TTABVUE 4 (Examining Attorney’s Brief).
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`Serial No. 87133450
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`Registrant’s marks are the focus of the connotations and commercial impressions,
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`rendering them highly similar.
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`As for appearance and sound, ATTORNEY THAT RIDES and THE ORIGINAL
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`ATTORNEYS WHO RIDE look and sound very similar because of the shared and
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`similar wording. As noted above, we find the differences in the marks relatively
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`insignificant in the overall comparison, remaining mindful that consumers may not
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`make side-by-side comparisons, and may have imperfect recollections of marks.
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`North Face Apparel Corp. v. Sanyang Industry Co., 116 USPQ2d 1217, 1228 (TTAB
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`2015).
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`Given their resemblance in sound, appearance, connotation and commercial
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`impression, Applicant’s and the cited marks are very similar. This factor weighs in
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`support of finding a likelihood of confusion.
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`C. Irrelevance of Alleged Geographic Scope of Actual Services
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`Applicant incorrectly asserts that the allegedly separate geographic markets in
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`which it and Registrant offer legal services should be considered in this likelihood of
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`confusion analysis.6 The cited registration entitles the owner to nationwide rights,
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`regardless of the geographic extent of actual use of the cited mark. 15 U.S.C.
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`§ 1057(b); Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1568, 218
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`USPQ 390, 393 (Fed. Cir. 1983). “Inasmuch as applicant is seeking a geographically
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`unrestricted registration, the Board is constrained to evaluate similarities in terms
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`6 6 TTABVUE 8-9 (Applicant’s brief).
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`Serial No. 87133450
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`of potentially nationwide markets….” In re Integrity Mutual Ins. Co., Inc., 216 USPQ
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`895, 896 (TTAB 1982) (also noting that “this is not mitigated by the fact that
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`insurance companies must seek special authorization to enter and provide
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`underwriting services under the laws of the various states”).
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`D. Other du Pont Factors
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`Applicant makes very brief, unsupported arguments about the sophistication of
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`customers and the alleged lack of actual confusion. No evidence was cited for either
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`proposition. See In re Simulations Publ’ns, Inc., 521 F.2d 797, 187 USPQ 147, 148
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`(CCPA 1975) (“Statements in a brief cannot take the place of evidence.”); Galen Med.
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`Assocs., Inc. v. United States, 369 F.3d 1324, 1339 (Fed. Cir. 2004) (“Statements of
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`counsel . . . are not evidence.”).
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`The unrestricted recitations of “legal services” would reach ordinary individuals
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`seeking legal counsel for matters such as wills, divorces, and small business issues.
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`The record indicates that Applicant and the owner of the cited registration practice
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`in the field of personal injury law, and Applicant practices in the additional fields of
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`family law and immigration law.7 These services are available to ordinary individuals
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`requiring legal representation. Because we must consider these “least sophisticated
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`potential purchasers,” there is no heightened degree of care in purchasing, and we
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`find this factor neutral. See Stone Lion Capital Partners, 110 USPQ2d at 1163
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`(“Although the services recited in the application also encompass sophisticated
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`7 Applicant’s December 20, 2017 Response to Office Action at .pdf 6-9.
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`Serial No. 87133450
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`investors, Board precedent requires the decision to be based ‘on the least
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`sophisticated potential purchasers.’”).
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`As for the alleged lack of actual confusion, “uncorroborated statements of no
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`known instances of actual confusion are of little evidentiary value.” Majestic
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`Distilling, 65 USPQ2d at 1205. We also have no evidence of whether the extent and
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`circumstances of Applicant’s and Registrant’s use was such as to give rise to
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`meaningful opportunities for actual confusion to occur. In re Kangaroos U.S.A., 223
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`USPQ 1025, 1026‒27 (TTAB 1984). We find this factor neutral.
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`III. Conclusion
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`The overall similarity of these marks for identical services that move in the same
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`channels of trade to the same classes of customers renders confusion likely.
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`Decision: The refusal to register Applicant’s mark is affirmed.
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