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THIS OPINION IS NOT A
`PRECEDENT OF THE TTAB
`
`
`
`Mailed:
`December 19, 2008
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`______
`
`Legal Eagle, Inc.
`v.
`Mark Allen Davis
`_____
`
`
`
`Opposition No. 91171681
`to application Serial No. 78684218
`filed on August 2, 2005
`_____
`
`Natalma M. McKnew of Smith Moore Leatherwood, LLP for Legal
`Eagle, Inc.
`
`Mark A. Davis of The Davis Law Office, LLC for Mark Allen
`Davis.
`
`______
`
`Before Bucher, Bergsman and Wellington, Administrative
`Trademark Judges.
`
`Opinion by Bergsman, Administrative Trademark Judge:
`
`Mark Allen Davis (“applicant”) filed a use-based
`
`
`
`application for the mark “When you need a legal eagle, call
`
`a bald eagle.”, in standard character form, for “legal
`
`services,” in Class 42.
`
`
`
`Legal Eagle, Inc. (“opposer”) filed a notice of
`
`opposition against the registration of applicant’s mark on
`
`the ground of priority of use and likelihood of confusion
`
`pursuant to Section 2(d) of the Trademark Act of 1946, 15
`
`

`
`Opposition Nos. 91171681
`
`U.S.C. §1052(d). Specifically, opposer alleged that it is
`
`the owner of seven federally-registered “Legal Eagle” marks
`
`including LEGAL EAGLE, in typed drawing form, for, inter
`
`alia, paralegal services1 and legal support services, namely
`
`photocopying and clerical services,2 and that applicant’s
`
`mark is likely to cause confusion with opposer’s marks.
`
`
`
`Applicant denied the salient allegations in the notice
`
`of opposition, and filed a counterclaim to cancel opposer’s
`
`pleaded registration for the mark LEGAL EAGLE for paralegal
`
`services. As ground for cancellation, applicant claimed
`
`that the term LEGAL EAGLE is generic for paralegal services.
`
`Opposer denied the essential allegations in applicant’s
`
`counterclaim to cancel opposer’s registration.
`
`The Record
`
`By rule, the record includes applicant’s application
`
`file, the file for the registration sought to be canceled,
`
`and the pleadings. Trademark Rule 2.122(b), 37 CFR
`
`§2.122(b). In addition, opposer introduced the following
`
`testimony and evidence:
`
`1.
`
`The testimony deposition of Richard C. Carnahan,
`
`Jr., the controlling shareholder of opposer, with attached
`
`exhibits; and,
`
`
`1 Registration No. 2,366,023, issued July 11, 2000; affidavits
`under Sections 8 and 15 accepted and acknowledged.
`
` 2
`
` Registration No. 1978249, issued June 4, 1996; affidavits under
`Sections 8 and 15 accepted and acknowledged; renewed.
`
`2
`
`

`
`Opposition Nos. 91171681
`
`2.
`
`A notice of reliance on applicant’s responses to
`
`opposer’s interrogatory Nos. 1-17 and applicant’s
`
`supplemental responses to opposer’s interrogatory Nos. 11
`
`and 17.
`
`Opposer also filed a notice of reliance on copies of
`
`its pleaded registrations “together with status information
`
`through March 12, 2008.” However, no documents were
`
`attached. Nevertheless, opposer’s pleaded registrations
`
`have been made of record to the extent that they have been
`
`properly identified and introduced during Mr. Carnahan’s
`
`testimony. See the discussion on standing below.
`
`
`
`Applicant did not introduce any testimony or evidence
`
`during his testimony period. However, applicant attached
`
`three (3) exhibits to his brief. The exhibits were not
`
`timely filed, nor were they filed pursuant to a notice of
`
`reliance. Therefore, they were not filed in compliance with
`
`the Trademark Rules of Practice, and, with the exception of
`
`the dictionary definition of the term “legal eagle,”3 they
`
`have not been given any consideration. Trademark Rule
`
`2.123(l), 37 CFR §2.123(l) (“Evidence not obtained and filed
`
`in compliance with these sections will not be considered”).
`
`See also TBMP §704.05(b) (2nd ed. rev. 2004) (“Exhibits and
`
`
`3 We may take judicial notice of dictionary definitions. See
`Hard Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1405
`(TTAB 1998) (dictionary definitions attached to applicant’s brief
`were the proper subject of judicial notice).
`
`3
`
`

`
`Opposition Nos. 91171681
`
`other evidentiary materials attached to a party’s brief on
`
`the case can be given no consideration unless they were
`
`properly made of record during the time for taking
`
`testimony”).
`
`A. Standing.
`
`Counterclaim
`
`
`
`Applicant’s position as the defendant in the opposition
`
`gives it a personal stake in the outcome of the proceeding,
`
`and therefore it has standing to file a counterclaim seeking
`
`to cancel opposer’s pleaded registration. Space Base Inc.
`
`v. Stadis Corp., 17 USPQ2d 1216, 1220 (TTAB 1990); Alberto-
`
`Culver Co., v F.D.C. Wholesale Corp., 16 USPQ2d 1597, 1603
`
`(TTAB 1990); General Mills, Inc. v. Nature’s Way Products,
`
`Inc., 202 USPQ 840, 841 (TTAB 1979).
`
`B. Whether LEGAL EAGLE is generic for paralegal services?
`
`The registration of opposer’s mark on the Principal
`
`Register is prima facie evidence of the validity of that
`
`registration and that the mark identified in the
`
`registration is not generic. Accordingly, applicant has the
`
`burden of proving that opposer’s registration is invalid
`
`because its mark is generic. Stocker v. General Conference
`
`Corp., 39 USPQ2d 1385, 1392 (TTAB 1996) (“the burden of
`
`proof rests squarely on petitioners who are asserting
`
`invalidity”).
`
`4
`
`

`
`Opposition Nos. 91171681
`
`There is a two-part test used to determine whether a
`
`designation is generic: (1) What is the class of goods or
`
`services at issue? and (2) Does the relevant public
`
`understand the designation primarily to refer to that class
`
`of goods or services? H. Marvin Ginn Corp. v. International
`
`Association of Fire Chiefs, Inc., 782 F.2d 987, 990, 228
`
`USPQ 528, 530 (Fed. Cir. 1986). The test turns upon the
`
`primary significance that the term has with the relevant
`
`public. Evidence of the relevant public’s understanding of
`
`a term may be obtained from any competent source, including
`
`direct testimony of consumers, consumer surveys, newspapers,
`
`magazines, dictionaries, catalogs and other publications.
`
`Stocker v. General Conference Corp., 39 USPQ2d at 1392.
`
`Our primary reviewing court has stated that a party
`
`asserting genericness must prove its claim by a
`
`preponderance of the evidence. Therefore, applicant has the
`
`dual burden of overcoming the registration’s validity and he
`
`must also prove by a preponderance of the evidence that the
`
`term LEGAL EAGLE is used or understood by the relevant class
`
`of consumers primarily to refer to the class of services
`
`with which the term is registered (i.e., paralegal
`
`services). Stocker v. General Conference Corp., 39 USPQ2d
`
`at 1392.
`
`The only admissible evidence applicant introduced into
`
`the record was a dictionary definition for the term “legal
`
`5
`
`

`
`Opposition Nos. 91171681
`
`eagle.” It is defined as a disparaging term to identify a
`
`lawyer.4 Accordingly, applicant argues that “[a]s 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.”5 Applicant specifically asserts that
`
`the term “‘legal eagle’ is a generic term for an attorney.”6
`
`However, opposer’s registration for LEGAL EAGLE is not for
`
`attorney or legal services; it is registered for paralegal
`
`services. Indeed, Mr. Carnahan testified that opposer is
`
`not rendering legal services; rather it is rendering
`
`paralegal services and other legal support services.7
`
`Opposer’s one dictionary definition is clearly insufficient
`
`to establish the genus or class of opposer’s services or
`
`that the public understands the mark LEGAL EAGLE to refer to
`
`paralegal services. Accordingly, opposer has not met its
`
`burden of proving that LEGAL EAGLE is generic for opposer’s
`
`paralegal services.
`
`In view of the foregoing, the counterclaim to cancel
`
`opposer’s pleaded registration is dismissed.
`
`
`4 Dictionary.com Unabridged (v 1.01) derived from the Random
`House Unabridged Dictionary (2006).
`5 Applicant’s Brief, p. 3.
`6 Applicant’s Brief, p. 4.
`7 Carnahan Dep., pp. 6-7.
`
`6
`
`

`
`Opposition Nos. 91171681
`
`Likelihood of Confusion
`
`A. Opposer’s Standing and Priority
`
`Mr. Carnahan testified that since December 1994,
`
`opposer has been using the mark LEGAL EAGLE to identify
`
`paralegal services and technical support services for
`
`attorneys such as duplication services, imaging and indexing
`
`services, and document numbering.8 This testimony is
`
`sufficient to establish opposer’s personal interest in the
`
`outcome of the proceeding and opposer’s priority of use.
`
`See National Bank Book Co. v. Leather Crafted Products,
`
`Inc., 218 USPQ 826, 828 (TTAB 1993) (oral testimony may be
`
`sufficient to prove the first use of a party’s mark when it
`
`is based on personal knowledge, it is clear and convincing,
`
`and it has not be contradicted); Liqwacon Corp. v. Browning-
`
`Ferris Industries, Inc., 203 USPQ 305, 316 (TTAB 1979) (oral
`
`testimony may be sufficient to establish both prior use and
`
`continuous use when the testimony is proffered by a witness
`
`with knowledge of the facts and the testimony is clear,
`
`convincing, consistent, and sufficiently circumstantial to
`
`convince the Board of its probative value); GAF Corp. v.
`
`Anatox Analytical Services, Inc., 192 USPQ 576, 577 (TTAB
`
`1976) (oral testimony may establish prior use when the
`
`testimony is clear, consistent, convincing, and
`
`uncontradicted).
`
`
`8 Carnahan Dep., pp. 6-7.
`
`7
`
`

`
`Opposition Nos. 91171681
`
`Moreover, Mr. Carnahan identified copies of opposer’s
`
`pleaded registrations and testified that the registrations
`
`were subsisting and owned by opposer.9 Because opposer
`
`properly made its pleaded registrations of record, opposer
`
`has established its standing. Cunningham v. Laser Golf
`
`Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000);
`
`Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
`
`1024, 213 USPQ 185, 189 (CCPA 1982). In addition, because
`
`opposer’s pleaded registration are of record, Section 2(d)
`
`priority is not an issue in this case as to the marks and
`
`the services covered by the registrations. King Candy Co.
`
`v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
`
`(CCPA 1974).
`
`B. Likelihood of confusion analysis.
`
`Our determination under Section 2(d) is based on an
`
`analysis of all of the probative facts in evidence that are
`
`relevant to the factors bearing on the issue of likelihood
`
`of confusion. In re E. I. du Pont de Nemours & Co., 476
`
`F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re
`
`Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
`
`1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
`
`analysis, two key considerations are the similarities
`
`between the marks and the similarities between the services.
`
`See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
`
`
`9 Carnahan Dep., pp. 13-18 and Exhibits 4-10.
`
`8
`
`

`
`Opposition Nos. 91171681
`
`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”).
`
`1.
`
`The similarity or dissimilarity and nature of the
`services at issue.
`
`Opposer has registered LEGAL EAGLE, in typed drawing
`
`
`
`form, for paralegal services and for legal support services,
`
`namely photocopying and clerical services. Applicant is
`
`seeking to register his mark for legal services. Opposer
`
`argues that applicant’s legal services encompass opposer’s
`
`paralegal and legal support services.10 On the other hand,
`
`applicant argues that opposer does not provide legal
`
`services to the public; rather it markets its legal support
`
`services to attorneys.11
`
`There is no evidence in this record regarding the
`
`relationship between legal services, on the one hand, and
`
`paralegal services and legal support services, on the other.
`
`However, it is well settled that applicant’s services and
`
`registrant’s services do not have to be identical or
`
`directly competitive to support a finding that there is a
`
`likelihood of confusion. It is sufficient if the respective
`
`services are related in some manner and/or that the
`
`conditions surrounding their marketing are such that they
`
`
`10 Opposer’s Brief, p. 8; Opposer’s Reply, p. 2.
`11 Applicant’s Brief, pp. 2 and 7.
`
`9
`
`

`
`Opposition Nos. 91171681
`
`would be encountered by the same persons under circumstances
`
`that could, because of the similarity of the marks used in
`
`connection therewith, give rise to the mistaken belief that
`
`they emanate from or are associated with a single source.
`
`In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB
`
`1993); In re International Telephone & Telegraph Corp., 197
`
`USPQ 910, 911 (TTAB 1978).
`
`“In determining whether products are identical or
`
`similar, the inquiry should be whether they appeal to the
`
`same market, not whether they resemble each other physically
`
`or whether a word can be found to describe the goods of the
`
`parties.” Harvey Hubbell Inc. v. Tokyo Seimitsu Co., Ltd.,
`
`188 USPQ 517, 520 (TTAB 1975). Mr. Carnahan testified that
`
`opposer renders its paralegal and legal support services to
`
`attorneys and corporate legal departments.12 Moreover, it
`
`is common knowledge that attorneys and paralegals work
`
`together in rendering legal services, and that they also
`
`render their services to other attorneys and corporate legal
`
`departments. Accordingly, the services of the parties
`
`appeal to the same market. In view of the foregoing, we
`
`find that the services of the parties are related.
`
`
`12 Carnahan Dep., pp. 10, 36-37, 57, 63 and Exhibit 18.
`
`10
`
`

`
`Opposition Nos. 91171681
`
`The similarity or dissimilarity of likely-to-
`continue trade channels and classes of consumers.
`
`2.
`
`
`As indicated above, opposer renders its paralegal and
`
`legal support services to attorneys and corporate legal
`
`departments.13 Applicant argues that “[l]egal services
`
`include personal injury, criminal defense, and business
`
`incorporation, among others.”14 As indicated above, both
`
`parties could render their services to attorneys and
`
`corporate legal departments. Moreover, because the
`
`description of services in neither opposer’s registrations,
`
`nor applicant’s application, contain any restrictions or
`
`limitations as to channels of trade or classes of consumers,
`
`we must presume that the services move in all channels of
`
`trade normal for those services, and that the services are
`
`available to all classes of purchasers for the listed
`
`services. See In re Linkvest S.A., 24 USPQ2d 1716, 1716
`
`(TTAB 1992). See also Hewlett-Packard Co. v. Packard Press
`
`Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002);
`
`Octocom Systems, Inc. v. Houston Computers Services Inc.,
`
`918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
`
`In view of the foregoing, we find that the parties
`
`render their services in the same channels of trade and to
`
`the same classes of consumers.
`
`
`13 Carnahan Dep., pp. 10, 36-37, 57, 63 and Exhibit 18.
`14 Opposer’s Brief, p. 7.
`
`11
`
`

`
`Opposition Nos. 91171681
`
`3.
`
`The similarity of the marks in their entireties in
`terms of appearance, sound, meaning, and
`connotation.
`
`
`
`We now turn to the du Pont likelihood of confusion
`
`factor focusing on the similarity or dissimilarity of the
`
`marks in their entireties as to appearance, sound,
`
`connotation and commercial impression. In re E. I. du Pont
`
`de Nemours & Co., 177 USPQ at 567. In a particular case,
`
`any one of these means of comparison may be critical in
`
`finding the marks to be similar. In re White Swan Ltd., 9
`
`USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6
`
`USPQ2d 1041, 1042 (TTAB 1988). In addition, in comparing
`
`the marks, we are mindful that the test is not whether the
`
`marks can be distinguished when subjected to a side-by-side
`
`comparison, but rather whether the marks are sufficiently
`
`similar in terms of their overall commercial impression so
`
`that confusion as to the source of the goods offered under
`
`the respective marks is likely to result. San Fernando
`
`Electric Mfg. Co. v. JFD Electronics Components Corp., 565
`
`F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc.
`
`v. Morrison Inc., 23 USPQ 1735, 1741 (TTAB 1991), aff’d
`
`unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The
`
`proper focus is on the recollection of the average customer,
`
`who retains a general rather than specific impression of the
`
`marks. Winnebago Industries, Inc. v. Oliver & Winston,
`
`12
`
`

`
`Opposition Nos. 91171681
`
`Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v.
`
`Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
`
`The marks of the parties are similar to the extent that
`
`applicant’s mark incorporates the entirety of opposer’s
`
`LEGAL EAGLE mark. On the other hand, they are different
`
`because applicant’s mark is a slogan incorporating opposer’s
`
`mark. The term “Legal Eagle” as used by both parties means
`
`substantially the same thing and engenders a similar
`
`commercial impression. In applicant’s case, it connotes a
`
`legal mind with an attention to details, and in opposer’s
`
`case it connotes a good attorney or legal mind.15 As such
`
`the term “Legal Eagle” is suggestive when used in connection
`
`with legal services, paralegal services or legal support
`
`services. In reaching this conclusion, we note that with
`
`the exception of the one dictionary definition, applicant
`
`failed to introduce any testimony or evidence regarding the
`
`meaning or use of the term “Legal Eagle” as a recognized
`
`term or colloquialism for legal services. We have very
`
`little basis on this record to find that applicant’s use of
`
`the term “Legal Eagle” as part of its slogan “When you need
`
`a legal eagle, call a bald eagle.” creates a readily
`
`distinguishable connotation or commercial impression. Thus,
`
`
`15 We readily admit that we do not understand why applicant’s
`dictionary definition indicates that the term “legal eagle” is
`often used as a disparaging term for attorneys. Moreover, if it
`is, in fact, a disparaging term, why are opposer and applicant
`being fighting over it?
`
`13
`
`

`
`Opposition Nos. 91171681
`
`in comparing the marks, the term “Legal Eagle” is
`
`sufficiently distinctive to create a memorable commercial
`
`impression which is likely to create an associative reaction
`
`in the minds of consumers familiar with opposer’s mark upon
`
`encountering applicant’s slogan incorporating opposer’s
`
`mark. Accordingly, we find that the similarity of the marks
`
`outweigh their differences, and that the marks are similar
`
`in terms of their appearance, sound, meaning and commercial
`
`impression.
`
`F. Balancing the factors.
`
`
`
`Because of the similarity of the marks, the similarity
`
`of the services, and the presumption that the services move
`
`in the same channels of trade and are sold to the same
`
`classes of consumers, we find that applicant’s mark “When
`
`you need a legal eagle, call a bald eagle.” for legal
`
`services is likely to cause confusion with opposer’s LEGAL
`
`EAGLE mark for paralegal service and legal support services.
`
`To the extent that we have any doubts regarding the
`
`likelihood of confusion, we resolve them, as we must, in
`
`opposer's favor. Giant Food, Inc. v. Nation’s Foodservice,
`
`Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983);
`
`Carlisle Chemical Works v. Hardman & Holden Ltd., 434 F.2d
`
`1403, 168 USPQ 111, 112 (CCPA 1970).
`
`14
`
`

`
`Opposition Nos. 91171681
`
`
`
`Decision: The counterclaim to cancel opposer’s
`
`pleaded registration is dismissed.
`
`The opposition is sustained and registration to
`
`applicant is refused.
`
`15

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