This Opinion is Not a
`Precedent of the TTAB
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`Mailed: February 26, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`Trademark Trial and Appeal Board
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`————
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`In re The Jacob D. Fuchsberg Law Firm, LLP
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`_____
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`Serial No. 87843998
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`_____
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`Marina A. Lewis of Lewis Kent LLP
` for The Jacob D. Fuchsberg Law Firm, LLP.
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`Katherine S. Chang, Trademark Examining Attorney, Law Office 115,
`Daniel Brody, Managing Attorney.
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`_____
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`Before Mermelstein, Adlin and Heasley, Administrative Trademark Judges.
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`Opinion by Adlin, Administrative Trademark Judge:
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`Applicant The Jacob D. Fuchsberg Law Firm, LLP seeks a Principal Register
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`registration for the mark JACOB FUCHSBERG LAW FIRM in the form shown below
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`(LAW FIRM disclaimed) for: “legal services; legal services, namely, providing
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`customized documentation, information, counseling, advice and consultation services
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`in all areas of plaintiffs tort litigation, including medical malpractice, personal injury,
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`World Trade Center victim compensation fund, class actions, products liability,
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`construction and labor law, civil rights and prisoners' rights” in International Class
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`

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`Serial No. 87843998
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`45.1 The Examining Attorney refused registration under Section 2(d) of the
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`Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so
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`resembles the two previously registered and commonly owned marks shown below
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`2
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`3
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`(LAW, COLLEGE and LAW CENTER disclaimed in each), both for, inter alia, “legal
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`services” in International Class 45, that use of Applicant’s mark in connection with
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`Applicant’s services is likely to cause confusion. After the refusal became final,
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`1 Application Serial No. 87843998, filed March 21, 2018 under Section 1(a) of the Trademark
`Act, 15 U.S.C. § 1051(a), based on first use dates of June 1, 1983. The application indicates
`that the name shown in the mark “does not identify a particular living individual,” and
`includes this description of the mark: “The mark consists of the wording ‘JACOB
`FUCHSBERG’ above the stylized wording ‘LAW FIRM’. A horizontal line appears to the left
`and right of the wording ‘LAW FIRM’.”
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`2 Registration No. 5034800, issued September 6, 2016. This registration also identifies
`services in Class 41, indicates that the name shown in the mark “does not identify a
`particular living individual,” and includes this description of the mark: “The mark consists
`of the words ‘TOURO LAW’ in capital letters to the right of the capitalized letter ‘T’ and above
`the wording ‘TOURO COLLEGE JACOB D. FUCHSBERG LAW CENTER’. ‘TOURO
`COLLEGE’ is above ‘JACOB D. FUCHSBERG’ which is above the wording ‘LAW CENTER’.
`The ‘T’ contains part of the crown, the torch, and part of the arm of the Statue of Liberty.”
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`3 Registration No. 5034799, issued September 6, 2016. This registration also identifies goods
`in Classes 6, 16, 20, 21, 22 and 25 and services in Classes 35 and 41, indicates that the name
`shown in the mark “does not identify a particular living individual,” and includes this
`description of the mark: “The mark consists of the words ‘TOURO LAW’ in capital letters to
`the right of the capitalized letter ‘T’ and above a shaded rectangle containing the words
`‘TOURO COLLEGE JACOB D. FUCHSBERG LAW CENTER’. The ‘T’ contains part of the
`crown, the torch, and part of the arm of the Statue of Liberty.”
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`2
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`

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`Serial No. 87843998
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`Applicant appealed and filed a request for reconsideration which was denied.
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`Applicant and the Examining Attorney filed briefs.
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`I. Likelihood of Confusion
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`Our determination under Section 2(d) is based on an analysis of all of the
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`probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
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`de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
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`factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
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`USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each duPont factor about
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`which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129
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`USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion analysis, two
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`key considerations are the similarities between the marks and the similarities
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`between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
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`1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)
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`goes to the cumulative effect of differences in the essential characteristics of the goods
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`and differences in the marks.”).
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`A. The Services, Channels of Trade and Classes of Consumers
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`The involved application and cited registrations each identify “legal services.”
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`Where, as here, the services are identical, we presume that the channels of trade and
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`classes of purchasers for those services are also the same. See In re Viterra Inc., 671
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`F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no
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`evidence regarding channels of trade and classes of consumers, the Board was
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`entitled to rely on this legal presumption in determining likelihood of confusion); In
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`re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where
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`3
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`Serial No. 87843998
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`there are legally identical goods, the channels of trade and classes of purchasers are
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`considered to be the same); Am. Lebanese Syrian Associated Charities Inc. v. Child
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`Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
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`The identity of the services and their overlapping channels of trade and classes of
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`consumers weigh in favor of finding a likelihood of confusion. In addition, where, as
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`here, the services are identical, the degree of similarity between the marks necessary
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`to find a likelihood of confusion declines. In re Viterra, 101 USPQ2d at 1908; In re
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`Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max
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`Capital Grp., Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).
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`B. The Marks
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`Before considering the marks we should point out that the record in this case does
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`not include any evidence.4 Nonetheless, Applicant asserts in its Appeal Brief that
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`… the name Jacob Fuchsberg – as shown in both
`Applicant’s Mark and the Cited Marks – is a reference to
`the late Jacob D. Fuchsberg. Mr. Fuchsberg was a, [sic]
`prominent New York attorney, national trial attorney, and
`Judge of the Court of Appeals of the State of New York, as
`well as a founder of the Jacob Fuchsberg Law Firm since
`approximately 1980. In addition, the late Mr. Fuchsberg
`assisted in the establishment of the law school at Touro
`College, which was named in his honor as “Touro College
`Jacob D. Fuchsberg Law Center.”
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`6 TTABVUE 4. We accept this representation in part because the Examining
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`Attorney does not dispute it. Furthermore, it is supported, at least to some extent, by
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`4 Applicant of course submitted a specimen, but that is not particularly illuminative for our
`purposes.
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`4
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`Serial No. 87843998
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`Applicant’s specimen, which reveals promotion by a law firm using the involved
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`mark:
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`And as explained in more detail below, Applicant’s representations are supported by
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`the involved and cited marks themselves. In any event, even if we did not accept
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`Applicant’s representations, our ultimate decision in this case would be no different.
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`We consider the marks “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). Here, the marks are similar because they both
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`contain the name Jacob Fuchsberg,5 and different because, unlike Applicant’s mark,
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`Registrant’s includes a large and distinctive statue of liberty design within a large
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`capitalized “T,” the words TOURO LAW presented above and in much larger letters
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`5 While Registrant’s mark includes the middle initial “D” and Applicant’s mark does not, this
`minor difference is insignificant, especially in the absence of any evidence that other marks
`used for legal services or related goods or services include the name Jacob Fuchsberg.
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`5
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`Serial No. 87843998
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`than the name Jacob D. Fuchsberg, and the words “Touro College” and “Law Center”
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`all of which are absent from Applicant’s mark. The marks are also different because
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`Applicant’s mark includes the stylized words “Law Firm” in the center of a horizontal
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`line, features which are absent from Registrant’s mark. We conclude that these
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`differences outweigh the relatively minor similarities.
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`Most significantly, both of Registrant’s marks are dominated by the large Statue
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`of Liberty design within an even larger solid black “T,” with the “T” clearly
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`referencing the “t” in TOURO LAW, which also appears in large letters first and at
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`the top of Registrant’s marks. These words, the initial “T” and the Statue of Liberty
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`design immediately catch the eye and directly convey the essence of the mark
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`(“TOURO LAW”). Thus, consumers encountering Registrant’s marks would be
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`significantly more impressed by and likely to remember “TOURO LAW” than any of
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`the marks’ other features, including “JACOB D. FUCHSBERG.”
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`Indeed, it is clear from the marks’ context and presentation that Mr. Fuchsberg
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`was a founder or supporter of, or prominent donor or contributor to, Touro College’s
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`Law Center. That is, it is both well-known and common sense that formulations such
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`as “Touro College Jacob D. Fuchsberg Law Center” are primarily intended to identify
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`the Law Center as Touro College’s, and Mr. Fuchsberg as one of the Law Center’s
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`honorees. For consumers or potential consumers of Registrant’s legal services,
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`however, the takeaway is that Touro College’s Law Center will provide the legal
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`services rather than Mr. Fuchsberg. In fact, even consumers who are aware that Mr.
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`Fuchsberg was a prominent lawyer would be likely to believe this, because of the
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`6
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`Serial No. 87843998
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`dominance of TOURO LAW in the mark. That dominance reveals Touro Law as the
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`source of the services, while “Touro College Jacob D. Fuchsberg Law Center” (in small
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`print and a subordinate position) reveals that Touro chose to honor Mr. Fuchsberg by
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`naming its Law Center, which provides the services, after him. The record provides
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`no reason to assume that consumers would expect Mr. Fuchsberg to provide
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`Registrant’s identified legal services himself, any more than they would expect
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`Leland Stanford Jr. to provide Stanford University’s educational services. This is true
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`even of consumers who know Mr. Fuchsberg as a lawyer. In other words, it is the
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`mark itself, its context and how it is presented that conveys that the Touro College
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`Law Center provides the identified legal services.
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`The meaning conveyed by Registrants’ marks is quite different than the meaning
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`conveyed by Applicant’s mark. In Applicant’s mark, the provider of the identified
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`legal services is a “LAW FIRM” called the JACOB FUCHSBERG LAW FIRM.6 It is
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`widely known that law firms are often named for one or more of their partners, and
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`this convention is not just limited to the law. Many businesses are named for owners
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`or founders, and this is so often the case that consumers would understand that when
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`a personal name is used as a business name, the named person is or was likely
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`6 While the terms LAW, COLLEGE and LAW CENTER are descriptive and disclaimed, we
`may not ignore them, and they still factor into our likelihood of confusion analysis. See In re
`Viterra, 101 USPQ2d at 1912 (citations omitted) (“we previously have found that the
`dominant portion of a composite word and design mark is the literal portion, even where the
`literal portion has been disclaimed”); In re Shell Oil Co., 992 F.2d 11204, 26 USPQ2d 1687
`(Fed. Cir. 1993) (“Shell’s argument that the only consideration is the ‘design form’ of the
`words ‘Right-A-Way’, omitting the words ‘right-a-way’ because they were disclaimed, was
`correctly rejected by the Board.”).
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`7
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`Serial No. 87843998
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`affiliated with the business. In this case, there is really no other conclusion to draw,
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`because JACOB FUCHSBERG has no meaning other than as a personal name, and
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`the law firm in question could not be found or identified by any means other than the
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`name JACOB FUCHSBERG. Thus, consumers would perceive that Mr. Fuchsberg
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`provides, or at one time provided, legal services on the law firm’s behalf, or that he
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`otherwise played a principal role in providing those services.
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`While we would fully expect many consumers exposed to both Applicant’s and
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`Registrant’s marks to believe that they identify the same Jacob Fuchsberg, that
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`would not lead to confusion under these circumstances. Instead, these consumers
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`would understand, from the marks alone, that Mr. Fuchsberg founded or is or was
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`otherwise affiliated with a law firm that provides legal services, that he also
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`contributed in some way to Touro’s Law Center, and that those contributions were so
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`valuable that the school honored him by naming its Law Center after him.
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`The marks do not only differ in meaning. As alluded to above in our finding that
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`the large, solid “T” surrounding the Statue of Liberty design and the words TOURO
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`LAW are the dominant features of Registrants’ marks, the marks look completely
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`different. In addition to the appearance and presentation of the cited marks’
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`dominant portions, Registrant’s marks each contain five words, which Applicant’s
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`mark does not. And while the most noticeable portion of Applicant’s mark is JACOB
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`FUCHSBERG, the most noticeable portion of Registrant’s marks is TOURO LAW
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`and the T and Statue of Liberty design.
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`8
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`Serial No. 87843998
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`The marks also sound completely different, notwithstanding that they each
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`include JACOB, FUCHSBERG and LAW. In fact, the first and source identifying
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`portion of Applicant’s mark is pronounced “JACOB FUCHSBERG,” while the first
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`and source identifying portion of Registrant’s marks is “TOURO LAW,” followed
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`immediately by “TOURO COLLEGE.”
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`Finally, the marks’ commercial impressions are different. Although both marks
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`are used to identify legal services, consumers will immediately perceive Applicant’s
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`mark as identifying a law firm, and Registrants’ marks as identifying a law school.
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`While the “Jacob D. Fuchsberg Law Center” portion of Registrants’ marks could,
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`standing alone, perhaps identify an organization akin to a law firm, that portion of
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`the mark does not stand alone. It is instead part of the whole, and a small part at
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`that, subordinate to the essence of the mark, TOURO LAW and design. In this
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`context, where it is apparent that the TOURO LAW identified prominently in the
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`mark is part of TOURO COLLEGE, also identified in the mark, the phrase “Touro
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`College Jacob D. Fuchsberg Law Center” appears to be merely the name of Touro
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`College’s law school, also known as TOURO LAW. Consumers are likely to perceive
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`it as the more complete or formal name of the entity commonly or more informally
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`known as TOURO LAW. As Applicant indicates, “Mr. Fuchsberg assisted in the
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`establishment of the law school at Touro College, which was named in his honor as
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`‘Touro College Jacob D. Fuchsberg Law Center.” 6 TTABVUE 4.7
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`7 The Examining Attorney’s argument that TOURO LAW and TOURO COLLEGE “are
`essentially house marks,” 8 TTABVUE 7, is unsupported by any evidence. Moreover, even if
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`9
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`Serial No. 87843998
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`II. Conclusion
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`The essence of Applicant’s mark is JACOB FUCHSBERG while the essence of
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`Registrants’ marks is TOURO LAW. When considered in their entireties, the marks
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`look and sound different, convey different meanings and create different commercial
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`impressions. The marks are so different that confusion is unlikely even though the
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`marks are used for identical services which travel in the same channels of trade to
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`the same consumers. See Kellogg Co. v. Pack’em Enters. Inc., 951 F.2d 330, 21
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`USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of no reason why, in a particular case,
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`a single duPont factor may not be dispositive.”).
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`Decision: The refusal to register Applicant’s mark under Section 2(d) of the
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`Trademark Act is reversed.
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`we agreed that these are house marks, that would not change the appearance, sound,
`meaning or commercial impression of Registrants’ marks, or our conclusion that the marks
`are dissimilar.
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`10
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