`ESTTA238164
`ESTTA Tracking number:
`09/22/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91171681
`Defendant
`Mark Allen Davis
`Mark A. Davis
`The Davis Law Office, LLC
`500 Madison Avenue, Suite 340
`Toledo, OH 43604
`UNITED STATES
`attorney@buckeye-express.com
`Brief on Merits for Defendant
`Mark A. Davis
`attorney@bex.net
`//Mark A. Davis//
`09/22/2008
`applicant brief final.pdf ( 14 pages )(69764 bytes )
`Ex A Legal_Eagles movie.pdf ( 1 page )(26212 bytes )
`Ex B legal eagle defined.pdf ( 2 pages )(100475 bytes )
`Ex C legal eagle google search.pdf ( 2 pages )(21221 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark Application Serial No. 78/684,218
`
`Filed: August 2, 2005
`For the Mark: “WHEN YOU NEED A LEGAL EAGLE, CALL A BALD EAGLE”
`
`Published in the Ofiicial Gazette on May 9, 2006
`
`Legal Eagle, Inc.
`
`Opposer,
`
`vs.
`
`Mark Allen Davis
`
`Applicant
`
`I.
`
`Introduction
`
`Opposition No. 91 l7l68l
`
`APPLICANT’S BRIEF
`
`In this case, Legal Eagle, Inc. opposes the registration of “When you need a legal
`
`eagle, call a bald eagle” (which plays on the fact that Applicant is bald). Opposer requests that
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`Applicant’s Mark be denied because it alleges confusion with its own Mark of “Legal Eagle.”
`
`Applicant counterclaims by showing that Legal Eagle is a common, generic term for an attorney such
`
`that its registration should be cancelled.
`
`II.
`
`Law and Argument
`
`Confusion does not arise between the two Marks upon any of the factors set forth in
`
`In Re DuPont DeNem0urs & Co., 476 F.2d 1357 as shown below.
`
`In fact, the term legal eagle does
`
`not commonly refer to an entity providing copying services as Opposer alleges.
`
`Instead, it is the
`
`
`
`generic term for an attorney. As a generic term, it cannot be “owned” by Opposer. As such, it’s
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`registrations are improper and should be cancelled.
`
`A.
`
`Opposer is not an attorney, does not provide legal services, and instead
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`provides copying services.
`
`As admitted by Opposer, it is not an attorney.
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`Instead, Opposer admits in its Brief
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`that it uses the “legal eagle” term to describe its copying services provided by its company. To wit,
`
`on pages 4-5, Opposer owns “Legal Eagle” Marks related to photocopying services marketed to
`
`attorneys.
`
`Mark
`
`Registration No.
`
`Goods/Services
`
`Legal Eagle
`
`1,982,384
`
`legal support services, namely photocopflng
`and clerical services
`
`Legal Eagle
`
`1,978,249
`
`legal support services, namely photocopflng
`And clerical services
`
`Legal Eagle
`
`2,015,446
`
`legal support services, namely photocopflng
`And clerical services
`
`Legal Eagle
`
`2,643,271
`
`stationery
`
`Legal Eagle
`
`2,366,023
`
`paralegal
`
`services,
`
`electrical document
`
`im:agi_ng services
`
`Legal Eagle
`
`2,601,613
`
`computer software for document management,
`
`namely imaging
`
`Legal Eagle, We
`
`3,027,178
`
`photocopflng
`
`Have an Eye for
`Perfection
`
`Other than photocopying, Opposer provides imaging services, which is another form
`
`of photocopying. Opposer does not provide any legal services to the public. Opposer, admittedly,
`
`is not a lawyer or a law firm. Instead, Opposer markets its services to attorneys.
`
`
`
`B.
`
`Opposer’s Mark is a generic term that refers to an attorney.
`
`As a matter of law, the term “legal eagle” refers to an attorney just as the words
`
`“lawyer” and “barrister” refer to an attorney. Even our learned judges have used the term “legal
`
`eagle” to refer to a lawyer.
`
`For example, in Henderson v. Georgia Pacific, the United States District Court Judge
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`Robert S. Gawthrop, III wrote in his opinion, “one could really understand that this gentleman
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`...might well have been taken aback by the sight of a long varnished table attended by 21 legal eagles
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`all presumably armed with briefcases and accompanied by a court reporter.” 1990 US Dist. LEXIS
`
`2769, *4 (1990 E.Dist. Penn). Obviously, the good judge used the term “legal eagle” to refer to
`
`attorneys, and not a photocopying service.
`
`Similarly, in the case of Modisett v. Jolly, the term legal eagle referred to an attorney
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`drawing up a contract. (“Until we see if the legal eagles can draw up a satisfactory contract.”). 286
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`N.E. 2nd 675, *11 (Indiana, 1972). Admittedly, Opposer does not draw up contracts.
`
`In the movie, Legal Eagles,1 Robert Redford does not play a copier salesman who
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`helps lawyers manage documents. No, Robert Redford plays a lawyer, District Attorney Tom Logan.
`
`See Exhibit A.
`
`Dictionary.com defines a legal eagle as a lawyer}
`
`See Exhibit B.
`
`Other
`
`dictionaries, such as Merriam—Webster’s define the term “legal eagle” as a lawyer.
`
`A google search for legal eagle provides 2, 220,000 hits.1 See Exhibit C. Of these
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`hits, less than one one thousand ofone percent (.00001) relates to Opposer’ s business. The majority
`
`1 Produced in discovery
`
`
`
`of the hits relate to lawyers or references to lawyers.
`
`As shown above, the term “legal eagle” is a generic term. As a generic term, it may
`
`not be trademarked. Kellogg Co. v. National Biscuit C0., (1938) 305 U.S. 111, 116 (The plaintiff
`
`has no exclusive right to the use of the term "Shredded Wheat" as a trade name. For that is the
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`generic term of the article, which describes it with a fair degree of accuracy; and is the term by
`
`which the biscuit in pillow— shaped form is generally known by the public. Since the term is generic,
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`the original maker of the product acquired no exclusive right to use it).
`
`The term “legal eagle” is analogous to that of the term “American.” While legal
`
`eagle is a generic term for an attorney, “American” is a generic term for someone from the Americas
`
`(i.e., Western Hemisphere, and more commonly, the United States). Simply using the generic term,
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`American, to a title of a company or service, such as American Appraisals, does not give the right
`
`of American Appraisals to trademark the term, “American.”
`
`Imagine, if for example, everytime the word “American” was used, a fee would have
`
`to be paid to whoever trademarked “American.”
`
`Similarly, “mother” may not be trademarked
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`because of its universal meaning. Nebraska Consol. Mills v Shawnee Milling C0. (1951, WD Okla)
`
`99 F Supp 70, 90 USPQ 303, affd (1952, CAl0 Okla) 198 F2d 36, 94 USPQ 19 ("Mother" has
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`become so universal in meaning and use that its exclusive use for any commercial purpose has been
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`judicially prohibited.).
`
`As with the words “American” and “mother”, “legal eagle” is a common daily term
`
`used by millions of people with a universal meaning of an attorney. Thus, Opposer may not claim
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`the exclusive right to this generic term.
`
`
`
`Since the term “legal eagle” is a generic term that may not be trademarked, the
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`original granting of the trademark appears in error and the registration should be canceled.
`
`C. Even if “legal eagle” is not generic, no likely confusion arises.
`
`The ultimate question of the likelihood of consumer confusion has been termed a
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`question of fact. Coca—Cola Company v. Snow Crest Beverages, Inc., 162 F.2d 280, 73 USPQ 518
`
`(1st Cir. 1947), cert. den. 332 US 809, 75 USPQ 365 (1947).
`
`Curiously, the Opposer has not offered a single fact which shows consumer confusion
`
`between photocopying services under Legal Eagle and attorney representation under “When you
`
`need a legal eagle, call a bald eagle. Upon this point alone, the Opposer’s brief fails.
`
`77
`
`Following In Re DuPont DeNem0urs & C0. , twelve factors shall be reviewed to show
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`there is no likelihood of confusion between the Marks. See 476 F.2d 1357, 1361 (CCPA 1973).
`
`They are as follows:
`
`(1)
`
`The similarity or dissimilarity of the Marks in their entireties as to
`
`appearance, sound, connotation and commercial impression.
`
`Comparing the Marks “in their entireties,” there is a great dissimilarity in the
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`appearance, sound, connotation, and commercial impression.
`
`First, as to appearance, the Opposer’s Mark consists of only two words while the
`
`Applicant’s Mark has 10 words. Opposer’s Mark is a two—word term, while Applicant’s Mark is
`
`a slogan. Thus, the appearance is markedly different and dissimilar.
`
`As to the sound, the Marks only overlap upon the term, “legal eagle. This overlap
`
`77
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`amounts to only twenty percent of Applicant’s Mark.
`
`This small overlap greatly diminishes,
`
`
`
`however, given that Applicant’s Mark has a cadence while Opposer’ s does not. In particular, there
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`is a pregnant pause in the slogan after eagle. Thus, when you need a legal eagle (pause), call a bald
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`eagle. This pregnant pause gives effect to the joke that when you are searching for a lawyer, hire
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`a bald one (thereby making good natured fun of the undersigned). As such, the Applicant’s Mark
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`has a very distinct and different sound despite the 20 percent overlap of words.
`
`The connotation of Applicant’ s Mark differs greatly from Opposer’ s. The opposer’ s
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`Mark, “legal eagle” has little or no connotation at all.
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`In fact, it is neither descriptive nor does it
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`provide meaning to Opposer’s primary product of photocopying services.
`
`Instead, a name like
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`“True Copy” might have given a connotation to Opposer’s services as being accurate.
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`The point of Applicant’s Mark is to differentiate one particular attorney from the
`
`others by providing a connotation that a bald eagle is preferable to an ordinary eagle and therefore,
`
`in jest, a bald attorney is preferable to a well—coifed attorney. Thus, Applicant’s Mark has a strong
`
`connotation while Opposer’s has little or none. Accordingly, the connotation differentiates the
`
`Marks.
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`Next, we consider the “commercial impression” of the two Marks. Commercial
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`impression of a Mark is the meaning or idea it conveys to consumers. Applicant’s Mark clearly
`
`conveys to the consumer legal representation by a lawyer. Opposer’s Mark has no meaning as to
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`providing photocopying services for lawyers.
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`Instead of legal eagle, Opposer could have named
`
`itself French Fry. Neither conveys any meaning as to the services and products offered by Opposer.
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`When asked in a poll, not a single person identified “legal eagle” with stationary. See Registration
`
`No. 2,643,271.
`
`
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`Although it may spend a few thousand dollars in advertising, Opposer has in no way
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`established in the average American consumer the meaning that its Mark, Legal Eagle, refers to its
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`company or services the way that Coca—Cola refers to its company or services.
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`In other words,
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`Opposer truly lacks any material commercial impression and its name provides no assistance in
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`producing any commercial impression.
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`For these reasons, the commercial impression of the
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`Applicant is very dissimilar to Opposer’ s.
`
`(2)
`
`The similarity or dissimilarity and nature of the goods or services as
`
`described in an application or registration or in connection with which a prior
`Mark is in use.
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`The differences in the services of the two Marks could not be greater. Applicant is
`
`a licensed attorney whose Mark constitutes a marketing slogan for attorney representation. Legal
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`services include plaintiff personal injury, criminal defense, and business incorporation, among
`
`others. Applicant does not sell stationary or provide photocopying services.
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`Opposer does not provide any legal services and it cannot do so because Opposer does
`
`not have a law licence and does not practice law. What does opposer do? It provides clerical
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`support such as photocopying and sells stationary.
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`Not only are the products/services entirely different, but the consumers of the
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`products and services do not intersect or overlap. Applicant’s services serve people who are not
`
`lawyers to solve legal problems. Opposer’ s services serve lawyers — a completely different market.
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`Because the nature of the goods and services are so completely different and do not
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`overlap or intersect in their respective markets, consumer confusion is highly unlikely.
`
`
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`(3) The similarity or dissimilarity of established, likely—to—continue trade channels.
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`To say the trade channels are similar simply because both parties utilize the Internet
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`is disingenuous because everyone uses the Internet. A more accurate comparison of the trade
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`channels arises from a review of what they are. As Opposer admits, it advertises within websites
`
`such as Martindale Hubbel. The Applicant does not.
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`Opposer, in its brief, claims that “Opposer advertises in legal publications and
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`publications used by the public to find legal services, and Applicant does likewise.” Quite to the
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`contrary, the Applicant does not advertise in legal publications at all and never has. As shown
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`above, this is because the target market of the Opposer is lawyers while the Applicant seeks clients
`
`in competition with other lawyers. The advertising mediums and trade channels are completely
`
`different.
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`For example, Applicant has a full page advertisement in the yellow pages under
`
`attorneys. Opposer has no presence at all.
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`If a consumer sought an attorney, it would look under
`
`the yellow pages.
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`If Opposer’s consumers, i.e., lawyers, were to seek secretarial support services
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`such as offered by Opposer, it might look under “secretary” or even copying in the yellow pages.
`
`A lawyer would not look for support services under attorneys in the yellow pages.
`
`For these reasons, the trade channels are completely different and provide no
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`likelihood of consumer confusion.
`
`
`
`(4)
`
`The conditions under which buyers to whom sales are made, i.e. "impulse"
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`vs. careful, sophisticated purchasing.
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`The conditions of consumer purchasing of the respective services are completely
`
`different. Applicant’s consumer’s are normally in great distress, either from a serious injury
`
`suffered or because they are in jail.
`
`In their desperation, they turn to a lawyer through the easiest
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`source, namely the yellow pages (no Internet in jail). The client’s decision to hire is an impulsive
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`one and is typically based upon how colorful the yellow pages advertisement is, whether the
`
`advertisement claims that the attorney is “tough and aggressive” and whether free—consultations are
`
`offered. Sometimes attorneys are hired simply based upon their picture (“oh, he’s cute” or “oh, he
`
`looks mean”).
`
`To the contrary, the Opposer’ s target market of attorneys carefully selects its support
`
`services based upon availability, service, price, and the present volume of business within the law
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`office. As such, the great dissimilarity in purchase conditions results in very little, if any, consumer
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`confusion between the two Marks.
`
`(5)
`
`The fame of the rior Mark sales advertisin
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`len th of use .
`
`Neither side enjoys any real fame of their Mark. Across the United States
`
`marketplace, very few attorneys or even average consumers have ever heard of “legal eagle” support
`
`services or the boring bald lawyer from Toledo Ohio.
`
`Since neither side enjoys any particular fame to their Mark, the likelihood of
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`consumer confusion amounts to almost nothing.
`
`
`
`(6) The number and nature of similar Marks in use on similar goods.
`
`Although no one shares the Applicant’ s unique slogan, “When you need a legal eagle,
`
`call a bald eagle,” the Opposer has millions of users diluting its Mark whenever they use the term
`
`“legal eagle” to refer to a lawyer as opposed to a photo copy shop. As such, this factor in the
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`DuPont analysis favors the Applicant because the average consumer would never think of a photo
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`copy shop as a legal eagle.
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`(7) The nature and extent of any actual confusion.
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`Opposer has offered no evidence of any actual confusion and there is none. In further
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`support thereof, Applicant has never been contacted by anyone seeking the secretarial support
`
`services offered by Opposer and no one has ever called asking any affiliation with the legal eagle
`
`photo copying group.
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`Since there is no actual confusion, and any possible future likelihood of confusion
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`is so small, the registration of Applicant’s Mark should be granted and Opposer’s contestation
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`denied.
`
`(8)
`
`The length of time during and conditions under which there has been
`concurrent use without evidence of actual confusion.
`
`Although Applicant has used its Mark for four years, there has never been a time or
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`condition of concurent use because the two marketplaces of Applicant and Opposer do not overlap.
`
`Applicant has never sought to provide secretarial support and copying services to other lawyers and
`
`10
`
`
`
`Opposer has never practiced law. Since the two marks operate in two very different worlds, there
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`has been no overlap, no confusion, and no true likelihood of confusion. As such, this factor heavily
`
`weighs in favor of granting registration to Applicant and denying the Opposer’ s attempt to block it.
`
`(9)
`
`The variet of oods on which a mark is or is not used house mark "famil
`
`"
`
`mark, product mark).
`
`As noted above, the services and marketplaces do not intersect. Similarly, the suite
`
`of products or family of services do not overlap. For example, Applicant offers legal representation
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`for criminal defense. There are no legal services offered by Applicant which relate to criminal
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`defense.
`
`In fact, there is no overlap of the family of services provided by Applicant, i.e., legal
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`services, because it would be illegal for Opposer to do so (Opposer is unauthorized to practice law).
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`Since not even the family of services relate, this factor under DuPont favors the
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`registration of the Applicant’s Mark.
`
`(10)
`
`The market interface between applicant and the owner of a prior Mark:
`
`Because, as noted above, there is no market interface between Applicant and Opposer,
`
`the likelihood of consumer confusion is nil. As such, Applicant’s Mark should be registered.
`
`(ll)
`
`The extent to which applicant has a right to exclude others from use of its
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`Mark on its goods.
`
`Either through common law, or through the Trademark process, the Applicant has the
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`complete right to exclude others from using his unique trademark slogan. As such, this factor favors
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`registration of the Mark.
`
`ll
`
`
`
`(12) The extent of potential confusion, i.e., whether de minimis or substantial.
`
`As noted above, there is no confusion and has been no confusion between the Marks
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`after four years of use. As such, there is no potential confusion, or if there is, it would be de
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`minimus. Even if someone were to call Applicant for Opposer’s services, which no one has,
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`Applicant would not begin selling stationary or offer photo copying services. If someone would call
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`the Opposer for representation upon a drunk driving charge, the Opposer would have to refuse.
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`Thus, there is no potential confusion, and even if there was, it would be so de minimus that neither
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`side would suffer any prejudice or loss of business.
`
`(13)
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`Any other established fact probative of the effect of use.
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`In this last factor, the Trademark and Appeal Board should consider the undeniable
`
`fact that “legal eagle” is a generic term. Because the term is generic, the likelihood or potential of
`
`consumer confusion greatly diminishes and becomes nonexistent. For example, the term Smith
`
`could refer to a metal working industry or to any of the many people named Smith. The dilution of
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`the term to the generic level precludes any consumer association with the term “Smith.” The same
`
`thing has happened to “legal eagle.”
`
`Just as it would be inappropriate to trademark the terms
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`“attomey” or “lawyer”, the term “legal eagle” is too generic to trademark. With a generic term, there
`
`is simply no consumer confusion. Following this prime principle, it is proper and just to allow the
`
`registration of the Applicant’s slogan, “When you need a legal eagle, call a bald eagle.”
`
`l2
`
`
`
`III. Conclusion
`
`As shown above, the Opposer’s opposition fails upon multiple grounds. First and
`
`foremost, the term, “Legal Eagle” is a generic term for lawyer and cannot serve as a registered trade
`
`mark. As such, it had been improperly registered, ab initio, and must be cancelled.
`
`Next, no likely confusion arises between the two Marks. Upon proceeding through
`
`the In Re DuPont DeNem0urs & C0. evaluation of thirteen factors to determine potential confusion,
`
`every single factor favors registration of the Applicant’s trademark. Quite simply, the services are
`
`vastly different and cannot intersect, as a matter of law, because Opposer is not an attorney and
`
`cannot provide legal counsel. Furthermore, Opposer’s customer’s are attorneys while Applicant’s
`
`customers are clients. Neither of these two worlds intersect.
`
`Given the mutually exclusive services and markets, there has been no confusion over
`
`the Marks and has no likelihood of confusion over the Marks. As such, it is proper and just to
`
`register Applicant’s Mark and to cancel Opposer’s registration.
`
`Respectfully submitted:
`
`//Mark A. Davis//
`
`Mark A. Davis, Esq.
`The Davis Law Office, LLC
`
`500 Madison Avenue, Ste 340
`
`Toledo, Ohio 43604
`Tel: 419-297-5088
`
`Fax: 419-710-0008
`
`Email: atto:mey@be>;.net
`
`13
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the foregoing
`
`document was on this 22th day of September, 2008 sent to Natalma McKnew by first class US
`mail to
`
`Natalma M. McKnew
`
`Leatherwood Walker Todd & Mann PC
`
`300 East McBee Avenue, Suite 500
`
`Greenville, South Carolina 29601
`
`//Mark A. DaVis//
`
`Attorney and Applicant pro se
`
`14
`
`
`
`Legal Eagles — Wikipedia, the free encyclopedia
`
`Page 1 of 2
`
`Legal Eagles
`
`From Wikipedia, the free encyclopedia
`
`Legal Eagles is a 1986 crime dramedy film written and directed
`
`by Ivan Reitman, and starring Robert Redford, Debra Winger and
`
`Daryl Hannah.
`
`Plot details
`
`Tom Logan (Redford) is a successful attorney in the New York
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`City District Attorney's Office, who is on his way to becoming the
`
`new DA. Into his life enters Laura Kelly (Winger), an attorney
`
`who is representing Chelsea Deardon (Hannah). Chelsea is
`
`accused of stealing a painting from an art dealer, Victor Taft
`
`(Terrence Stamp). However, Chelsea claims that the painting is
`
`actually hers, as her father made it for her and signed it to her on
`
`her 8th birthday 18 years ago — the same day that her father and
`
`most of his paintings went up in smoke in a mysterious fire.
`
`Kelly eventually manages to convince Logan into helping them
`(after she creates an impromptu press conference at the dinner
`where Logan is being introduced as the new candidate for District
`Attorney). However, things turn even more mysterious when Taft
`suddenly drops all charges against Chelsea and a police detective,
`Cavanaugh (Brian Dennehy), comes up with proof that the
`paintings that supposedly were lost in the fire — which were worth
`millions in insurance — are still in existence. As Logan and Kelly
`dig deeper, they risk putting their professions — and their growing
`romance for each other — on the line.
`
`Alternate Endings:
`
`§DireCted by
`§WritteI1 by
`Estarring
`
`.
`.
`Plsmbuted by
`§Re1eaSe date“)
`§Rnnning tnne
`§Langn age
`‘
`
`1Van Reitman
`Ivan Reitman
`Robert Redford
`Debra Winger
`Da1ry1Hannah
`Umversal Plctures
`June 18’ 1986
`116 nnn
`Engnsn
`IMDb profile
`
`Unlike your average movie, Legal Eagles has several different endings. The movie opened to mediocre reviews in
`
`theaters and by the time it reached television, defendent Chelsea Dearden, had gone from innocent to guilty. The
`
`guilt or innocence of Dearden was clearly secondary to generating a profitable and satisfying movie. The alternate
`
`endings include her guilty of one murder, innocent, and then guilty of a different murder.
`
`Highlights
`
`Daryl Hannah doing fire art.
`
`Cast and roles include
`
`http://en.wikipedia.org/wiki/Legal_Eagles
`
`l2/7/2006
`
`
`
`legal eagle — Definitions from Dicti0nary.com
`
`Page 1 of 2
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`l2/7/2006
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`legal eagle — Definitions from Dicti0nary.com
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`http://dicti0nary.reference.c0m/browse/legal%20eagle
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`l2/7/2006
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`legal eagle — Google Search
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`Leonard l‘v’iilhoiand's Better Haif \/W and Legal Eagei Uitraiighti
`Plans for my working 4 stroke 244 Lbs Legal Eagle have been made
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`Leonard lviilhoiands Better i-iaif VW and Legal Eagei Uitraiighti
`Plans for my working 4 stroke 244 Lbs Legal Eagle have been made available
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`Each month Legal Eagle Eye Newsletter for the Nursing profession covers the latest US
`court decisions and new Federal regulations affecting hospitals,
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`New Jersey State Bar Foundation — Students’ Corner
`The Foundation's popular legal newspaper for kids, The Legal Eagle, is distributed to more
`than 262000 students in nearly 1900 schools.
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`Remodeling: Legal Eagle Contractors, Co. A full service remodeling company based in
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`Steve Kiblinger, Stan Levin and Bruce Blauveltjoin forces to build a Leonard Milholland
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`Legal Eagle TV and Radio Spots. “Legal Eagle“ is a public service program operating in a
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