This Opinion is not a
`Precedent of the TTAB
`
`
`
`
`
`Oral Hearing: February 9, 2022
`
`Mailed: March 31, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`In re J. Spagnuolo & Associates, P.C.
`_____
`
`Serial No. 88789548
`_____
`
`
`Dean W. Amburn of Amburn Law PLLC,
`for J. Spagnuolo & Associates, P.C.
`
`Kyle Ingram, Trademark Examining Attorney, Law Office 125,
`Heather Biddulph, Managing Attorney.
`
`
`Before Lykos, Goodman and Hudis,
`Administrative Trademark Judges.
`
`_____
`
`
`Opinion by Goodman, Administrative Trademark Judge:
`
`J. Spagnuolo & Associates, P.C. (“Applicant”) seeks registration on the Principal
`
`Register of the mark
`
`
`
`(“Macomb Law Group”
`
`disclaimed) for:
`
`

`

`Serial No. 88789548
`
`Legal services; Providing customized legal information,
`counseling, and advice, and litigation services in the field
`of tort law in International Class 45.1
`
`The Trademark Examining Attorney refused registration of Applicant’s mark
`
`under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on likelihood of
`
`confusion with the mark MLG AUTOMOTIVE LAW (in standard characters,
`
`“automotive law” disclaimed) for:
`
`Legal consultation services; Legal consulting services in
`the field of automotive related legal cases; Legal services
`in International Class 45.2
`
`When the refusal was made final, Applicant appealed and requested
`
`reconsideration. After
`
`the Examining Attorney denied
`
`the request
`
`for
`
`reconsideration, the appeal was resumed. An oral hearing was held.
`
`We reverse the refusal to register.
`
`
`1 Application Serial No. 88789548 was filed on February 7, 2020, based upon Applicant’s
`claim of September 1, 2017 as its first use anywhere date and January 30, 2018 as its first
`use in commerce date under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). As
`described in the Application, “the mark consists of the stylized literal element ‘MLG’ overlaid
`by the scales of justice design with MACOMB LAW GROUP written below the scales of justice
`design. The letter L is positioned in the middle of M and G and it is slightly lower than M
`and G. The scales of justice include a horizontally curved beam that is resting on the top
`portion of the L as its central pivot point and it is extended over the center of the M and G.
`Scales are seen hanging from the ends of the curved beam proximate to the M and G. Color
`is not claimed as a feature of the mark.”
`
`Page references to the application record refer to the online database of the USPTO’s
`Trademark Status & Document Retrieval (TSDR) system. References to the briefs on appeal
`refer to the Board’s TTABVUE docket system. Before the TTABVUE designation is the docket
`entry number; after this designation are the page references, if applicable. Applicant’s brief
`is at 6 TTABVUE. The Examining Attorney’s brief is at 8 TTABVUE. Applicant’s reply brief
`is at 9 TTABVUE.
`
` 2
`
` Registration No. 4699169, issued March 10, 2015; Section 8 accepted and Section 15
`acknowledged.
`
`- 2 -
`
`

`

`Serial No. 88789548
`
`I. Evidentiary Issue
`
`Before proceeding to the merits of the refusal, we address a few evidentiary
`
`matters.
`
`The Examining Attorney objects to consideration of third-party registrations
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`attached to Applicant’s appeal brief as exhibit B. These registrations were not
`
`submitted during prosecution.
`
`Because the third-party registrations in exhibit B were not previously submitted,
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`the Examining Attorney’s objection is sustained and the third-party registrations in
`
`exhibit B will not be considered. See In re Inn at St. John’s, LLC, 126 USPQ2d 1742,
`
`1744 (TTAB 2018) (evidence “submitted with Applicant’s appeal brief that Applicant
`
`did not previously submit during prosecution is untimely and will not be
`
`considered.”), aff’d mem., 777 F. App’x 516 (Fed. Cir. 2019)). See also Trademark Rule
`
`2.142(d), 37 C.F.R. § 2.142(d) (“The record in the application should be complete prior
`
`to the filing of an appeal. Evidence should not be filed with the Board after the filing
`
`of a notice of appeal.”).
`
` Applicant also submitted with its appeal brief third-party registration evidence
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`(exhibit A) and website evidence (exhibit C) that it already provided in its October 28,
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`2020 Response to Office Action at TSDR 8-35. While obviously admissible, the Board
`
`discourages this practice. In re Lorillard Licensing Co., 99 USPQ2d 1312, 1315 (TTAB
`
`2011) (“[T]he Board discourages attaching such material to briefs. … [I]t is far more
`
`helpful to identify, by the date of submission and the page numbers in the Office’s
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`[TSDR] database, the material which is referred to in a brief.”); In re Thor Tech Inc.,
`
`- 3 -
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`

`

`Serial No. 88789548
`
`85 USPQ2d 1474, 1475 n.3 (TTAB 2007) (attaching evidence from the record to a brief
`
`is duplicative and unnecessary).
`
`II. Likelihood of Confusion
`
`Section 2(d) of the Trademark Act prohibits registration of a mark that so
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`resembles a registered mark as to be likely, when used on or in connection with the
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`goods or services of the applicant, to cause confusion, mistake, or to deceive. 15 U.S.C.
`
`§ 1052(d). Our determination of likelihood of confusion under Section 2(d) is based on
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`an analysis of all probative facts in the record that are relevant to the likelihood of
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`confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
`
`USPQ 563, 567 (CCPA 1973) (“DuPont”). We consider each DuPont factor for which
`
`there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129
`
`USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
`
`In every Section 2(d) case, two key factors are the similarity or dissimilarity of the
`
`marks and the goods or services. Federated Foods, Inc. v. Fort Howard Paper Co., 544
`
`F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by
`
`§ 2(d) goes to the cumulative effect of differences in the essential characteristics of
`
`the goods and differences in the marks.”). These factors and others for which there is
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`evidence and argument are discussed below.
`
`A. Similarity or Dissimilarity of the Services
`
`We first consider the second DuPont factor, “[t]he similarity or dissimilarity and
`
`nature of the goods or services as described in an application or registration.” DuPont,
`
`177 USPQ at 567. See also Stone Lion Cap. Partners, LP v. Lion Cap. LLP, 746 F.3d
`
`- 4 -
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`

`

`Serial No. 88789548
`
`1317, 110 USPQ2d 1157, 1161-63 (Fed. Cir. 2014). The goods or services need not be
`
`identical or even competitive to find a likelihood of confusion. On-line Careline Inc. v.
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`Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot Inc. v.
`
`Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000). They need only be
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`“related in some manner and/or if the circumstances surrounding their marketing are
`
`such that they could give rise to the mistaken belief that the goods [or services]
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`emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668
`
`F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v.
`
`Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). It is sufficient for a finding of
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`likelihood of confusion as to a particular class if relatedness is established for any
`
`item of identified goods or services within that class in the application or cited
`
`registration. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ
`
`986, 988 (CCPA 1981).
`
`During prosecution and in its brief, Applicant argued that the legal services are
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`different because Applicant is providing tort law services and Registrant’s legal
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`services focus on automotive law. 6 TTABVUE 22.
`
`Applicant’s services are identified as “Legal services; Providing customized legal
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`information, counseling, and advice, and litigation services in the field of tort law,”
`
`and Registrant’s services are identified as “Legal consultation services; Legal
`
`consulting services in the field of automotive related legal cases; Legal services.”
`
`Applicant’s and Registrant’s “legal services” are legally identical. Registrant’s
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`“legal consultation services” encompass Applicant’s more narrowly defined
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`- 5 -
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`

`

`Serial No. 88789548
`
`“customized legal information, counseling and advice” services in the field of tort law.
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`Additionally, as the Examining Attorney argues, and the website evidence shows, tort
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`law includes personal injury law, and this type of law addresses automobile accidents
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`that have resulted in injury. November 25, 2020 Office Action at TSDR 2-139. Thus,
`
`Applicant’s legal counseling and advice in the field of tort law encompass Registrant’s
`
`more narrowly defined automotive law legal consulting services. See, e.g., In re
`
`Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s
`
`broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s
`
`narrowly identified ‘residential and commercial furniture.”’); In re Solid State Design
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`Inc., 125 USPQ2d 1409, 1413 (TTAB 2018) (where the goods in an application or
`
`registration are broadly described, they are deemed to encompass all the goods of the
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`nature and type described therein). Because we find the services are legally identical,
`
`the second DuPont factor weighs in favor of a finding of likelihood of confusion.
`
`B. Similarity or Dissimilarity of the Trade Channels
`
`We next turn to the third DuPont factor which requires us to consider “the
`
`similarity or dissimilarity of established, likely-to-continue trade channels.” We
`
`compare the trade channels and classes of consumers for the services as identified in
`
`the involved application and cited registration. Octocom Sys., Inc. v. Hous. Comput.
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`Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
`
`Because Applicant’s and Registrant’s legal services are legally identical, we
`
`presume that these services will move in the same trade channels to the same classes
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`of purchasers, namely, consumers of legal services. See In re Viterra Inc., 671 F.3d
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`- 6 -
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`

`

`Serial No. 88789548
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`1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Yawata Iron & Steel Co., 403
`
`F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods,
`
`the channels of trade and classes of purchasers are considered to be the same).
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`In view of the overlapping trade channels and classes of purchasers, the third
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`DuPont factor weighs in favor of a finding of likelihood of confusion.
`
`C. Strength of the Mark
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`Because the strength or weakness of the cited mark informs our comparison of the
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`marks, we address Applicant’s arguments that MLG in the cited mark is weak and
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`entitled to a narrow scope of protection.
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`In determining the strength of a mark, we first consider its inherent strength,
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`based on the nature of the mark itself. New Era Cap. Co. v. Pro Era LLC, 2020
`
`USPQ2d 10596, at *10 (TTAB 2020); Top Tobacco, L.P. v. N. Atl. Operating Co., 101
`
`USPQ2d 1163, 1171-72 (TTAB 2011). Suggestive, arbitrary and fanciful marks are
`
`deemed inherently distinctive. Two Pesos Inc. v. Taco Cabana Inc., 505 U.S. 763, 23
`
`USPQ2d 1081, 1083 (1992). Inherent distinctiveness does not extend to disclaimed,
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`and therefore, admittedly descriptive, components of the registered mark. See In re
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`Highlights for Children, Inc., 118 USPQ2d 1268, 1275 (TTAB 2016) (there is no
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`inherent or acquired distinctiveness in a disclaimed term in a registered mark). The
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`cited mark issued on the Principal Register without a showing of acquired
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`distinctiveness in part under Section 2(f) of the Trademark Act. Accordingly, we must
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`presume that the MLG portion of the mark is inherently distinctive. See New Era
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`Cap Co., 2020 USPQ2d 10596, at *10 (“Opposer’s mark is inherently distinctive as
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`- 7 -
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`

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`Serial No. 88789548
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`evidenced by its registration on the Principal Register without a claim of acquired
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`distinctiveness under Section 2(f) of the Trademark Act.”).
`
`Applicant argues that the cited mark is weak because MLG is commonly used,
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`referencing third-party registrations, and citing Juice Generation, Inc. v. GS Enters.
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`LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015) as support for the
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`point that when there is widespread third-party use of similar marks in the
`
`marketplace, “customers have been educated to distinguish between different such
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`marks on the bases of minute distinctions.” 6 TTABVUE 14. We note that third-party
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`registration evidence goes to conceptual weakness, while third-party use evidence
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`goes to commercial weakness. See Tao Licensing LLC v. Bender Consulting Ltd., 125
`
`USPQ2d 1043, 1057 (TTAB 2017). Third-party registrations are not evidence of use
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`in the marketplace or public familiarity with the third-party marks. See AMF Inc. v.
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`Am. Leisure Prod., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). In this case,
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`Applicant did not submit any evidence of third-party use in the marketplace.
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`This leaves us with evaluating the cited mark’s conceptual strength. Active third-
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`party registrations may be relevant to show that a mark or a portion of a mark is
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`descriptive, suggestive, or so commonly used that the public will look to other
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`elements to distinguish the source of the goods or services. See, e.g., In re
`
`i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); Jack Wolfskin
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`Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U.,
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`797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS
`
`Enters. LLC, 115 USPQ2d at 1674-75. In other words, “[t]hird party registrations are
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`- 8 -
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`

`

`Serial No. 88789548
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`relevant to prove that some segment of the [marks] has a normally understood and
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`well recognized descriptive or suggestive meaning, leading to the conclusion that that
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`segment is relatively weak.” Id. at 1675 (internal quotation marks omitted). See also
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`Jack Wolfskin, 116 USPQ2d at 1136.
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`Applicant points to “several prior registrations [that] include the letters ‘MLG’ for
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`goods and services and are not limited to legal services.” 6 TTABVUE 14. However,
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`as we stated above, we have excluded this evidence because it was not timely
`
`submitted. In any event, third-party registrations for non-legal services have very
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`little, if any, probative value on the issue of the weakness of the cited mark. See
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`Omaha Steaks Int’l v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686,
`
`1694 (Fed. Cir. 2018) (error to rely on third-party evidence of similar marks for
`
`dissimilar goods, as Board must focus “on goods shown to be similar”).
`
`Applicant also relies on third-party registrations for marks that do not contain
`
`MLG as evidence that “[t]he USPTO has routinely registered overlapping use-based
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`registrations in Class 45 featuring initials of a law firm’s partners, or geographic
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`place or location with a term or terms disclaimed.” 6 TTABVUE 11. October 28, 2020
`
`Response to Office Action at TSDR 9-29 (e.g., FLG and FLG FILIPINO LAW GROUP;
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`PATHFINDER INJURY LAW and PATH LAW GROUP; SHE LAW and SHE WINS
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`LAW; M LAW, M MESH LAW, M MOSTYN LAW; LAW LIONS, 1-800-LION-LAW).
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`Applicant argues that “[t]he third-party registrations are relevant and provide
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`evidence of the USPTO’s pattern and practice of registering marks for legal services
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`- 9 -
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`

`

`Serial No. 88789548
`
`on the Principal Register where the mark[s] share three non-disclaimed letters.” 6
`
`TTABVUE 14.
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`However, the Board previously has found this type of third-party registration
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`evidence is not probative. In re Joel Embiid, 2021 USPQ2d 577, at * 35-38 (TTAB
`
`2021) (third-party registrations used to show current peaceful coexistence of
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`registrations for identical or substantially similar marks by separate entities for
`
`shoes and clothing for “paired” COBRA and SOLE marks were so different from the
`
`involved marks TRUST THE PROCESS that the Board found the evidence has no
`
`probative value); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009)
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`(evidence that six pairs of similar marks for MRI and ultrasound equipment
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`registered that are “so different” from the marks at issue found not relevant,). As the
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`third-party registrations Applicant submitted do not include the initialism MLG, we
`
`do not find them probative.
`
`Because Applicant’s evidence does not establish commercial or conceptual
`
`weakness of the MLG portion of the cited registration, we accord it “the normal scope
`
`of protection to which inherently distinctive marks are entitled.” Bell’s Brewery, Inc.
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`v. Innovation Brewing, 125 USPQ2d 1340, 1347 (TTAB 2017).
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`D. Similarity or Dissimilarity of the Marks
`
`We now turn to the first DuPont factor that requires us to determine the similarity
`
`or dissimilarity of the marks when viewed in their entireties in terms of appearance,
`
`sound, connotation and overall commercial impression. Palm Bay Imp., Inc. v. Veuve
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`Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
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`- 10 -
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`

`

`Serial No. 88789548
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`(Fed. Cir. 2005) (quoting Dupont, 177 USPQ at 567). The test, under the first DuPont
`
`factor, 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 services
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`offered under the respective marks is likely to result. See Coach Servs., 101 USPQ2d
`
`at 1721. While the marks must be considered in their entireties, “‘in articulating
`
`reasons for reaching a conclusion on the issue of confusion, there is nothing improper
`
`in stating that, for rational reasons, more or less weight has been given to a particular
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`feature of a mark, provided the ultimate conclusion rests on consideration of the
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`marks in their entireties.”’ In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
`
`(Fed. Cir. 1985).
`
`“No mechanical rule determines likelihood of confusion, and each case requires
`
`weighing of the facts and circumstances of the particular mark.” In re Mighty Leaf
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`Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). 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 a comparison of the entire marks, not just part of the
`
`marks. In re Nat’l Data Corp., 224 USPQ at 751.
`
`Applicant’s mark is
`
` (“law group” disclaimed). Registrant’s
`
`mark is MLG AUTOMOTIVE LAW (“automotive law” disclaimed).
`
`We find that MLG is the dominant portion of Registrant’s mark because MLG is
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`the first term in the mark and the wording that follows is at least highly descriptive
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`Serial No. 88789548
`
`of the services and has been disclaimed. See, e.g., In re Detroit Athletic Co., 903 F.3d
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`1297, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018). As to Applicant’s mark, we find that
`
`although MACOMB LAW GROUP is disclaimed, it is the dominant portion of
`
`Applicant’s mark, with this wording reinforced by the scales of justice design,
`
`symbolizing the law. The MLG element, although somewhat larger, is partially
`
`obscured by the design, with the bold letters “M” and “G” being more prominent than
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`the not bold letter “L,” which has been placed in a lower position than “M” and “G,”
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`as it is being used as the central pivot point and base for the scales of justice, making
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`it less likely that consumers will recall the MLG element. See Giant Food, Inc. v.
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`Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983) (finding
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`GIANT dominant part of mark GIANT HAMBURGERS and design even where
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`GIANT disclaimed).
`
`The marks are similar in appearance to the extent that they both share the
`
`initialism MLG and the term LAW. The marks otherwise are different in appearance
`
`as Applicant’s mark has a design and the additional terms MACOMB and GROUP,
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`while Registrant’s mark includes the term AUTOMOTIVE. We find the marks are
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`more dissimilar than similar in appearance.
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`As to sound, the marks are similar to the extent that both include the letters MLG
`
`and the term LAW but are otherwise different in sound due to the additional words
`
`used with them. For the reasons previously stated, in calling for the services,
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`consumers are more likely to remember MACOMB LAW GROUP than MLG. We find
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`the marks are dissimilar in sound.
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`Serial No. 88789548
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`In terms of connotation, we find the marks are dissimilar when viewed in their
`
`entireties. The letters MLG in Applicant’s mark clearly connote MACOMB LAW
`
`GROUP due to the presence in the mark of that wording; customers viewing the mark
`
`as a whole will readily understand MLG to be an abbreviation or initialism of
`
`MACOMB LAW GROUP. In Registrant’s mark, MLG likely references the initials of
`
`an unknown attorney or attorneys, and AUTOMOTIVE LAW identifies the type of
`
`law practiced. Therefore, the marks have different connotations.
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`In terms of overall commercial impression, we find that Applicant’s mark MLG
`
`MACOMB LAW GROUP and design gives the impression of a law group in a
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`particular geographic location, Macomb county, Michigan. The cited registered mark,
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`on the other hand, gives the impression of a law firm practicing automotive law.
`
`We find that the marks are dissimilar when viewed in their entireties as to
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`appearance, sound, connotation and overall commercial impression. The first DuPont
`
`factor weighs heavily against a finding of likelihood of confusion.
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`III. Conclusion
`
`Any of the DuPont factors may play a dominant role in assessing likelihood of
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`confusion. DuPont, 177 USPQ at 567. In fact, in some cases, a single factor may be
`
`dispositive. Kellogg Co. v. Pack’em Enters. Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145
`
`(Fed. Cir. 1991) stating that “[w]e know of no reason why, in a particular case,
`
`a single [DuPont] factor may not be dispositive” and holding that “substantial and
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`undisputed differences” between two competing marks justified a conclusion of no
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`likelihood of confusion on summary judgment).
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`Serial No. 88789548
`
`Notwithstanding the legal identity of the services and the overlapping trade
`
`channels and consumers, we find that in view of the dissimilarities of the marks
`
`confusion is unlikely. Considering and weighing all of the relevant DuPont factors for
`
`which there has been evidence and argument, we find that the dissimilarity of the
`
`marks under the first DuPont factor simply outweighs the other relevant DuPont
`
`factors, and we conclude that there is no likelihood of confusion.
`
`Decision: The Section 2(d)
`
`refusal
`
`to
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`register Applicant’s mark
`
` is reversed.
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`- 14 -
`
`