Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA783688
`
`Filing date:
`
`11/17/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92057850
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Merchant & Gould P.C.
`
`JOHN A CLIFFORD
`MERCHANT & GOULD PC
`80 S 8TH ST STE 3200
`MINNEAPOLIS, MN 55402-2215
`UNITED STATES
`jclifford@merchantgould.com, aavery@merchantgould.com, dockm-
`pls@merchantgould.com, merbele@merchantgould.com, sjohn-
`ston@merchantgould.com
`
`Brief on Merits for Plaintiff
`
`John A. Clifford
`
`jclifford@merchantgould.com, aavery@merchantgould.com
`
`/John A. Clifford/
`
`11/17/2016
`
`2016 11 17 FINAL Petitioners Trial Brief REDACTED VERSION.PDF(759699
`bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`)
`)
`) Cancellation No. 92057850
`)
`) Registration No. 4,202,232
`) Mark: MG-IP
`)
`)
`)
`)
`
`
`
`Merchant & Gould P.C.
`
`
`
`
`
`Petitioner,
`
`
`
`v.
`
`
`
`
`MG-IP Law, PLLC,
`
`
`
`
`
`
`
`Respondent.
`
`
`
`
`
`
`
`
`
`
`PETITIONER’S TRIAL BRIEF
`
`(REDACTED VERSION)
`
`November 17, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`John A. Clifford
`Rachel Zimmerman Scobie
`MERCHANT & GOULD P.C.
`P.O. Box 2910
`Minneapolis, MN 55402-0910
`Tel. 612.336.4616
`Fax 612.332.9081
`
`
`
`

`

`I.
`
`II.
`
`III.
`
`IV.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ...............................................................................................................1
`
`DESCRIPTION OF THE RECORD ...................................................................................2
`
`STATEMENT OF THE ISSUES.........................................................................................3
`
`RECITATION OF FACTS ..................................................................................................4
`
`A.
`
`B.
`
`C.
`
`D.
`
`M&G Is a Well-Known Provider of Intellectual Property Legal Services in the
`United States, and Has Used the M&G Mark in Connection with Those
`Services Since 1962. ................................................................................................4
`
`M&G Has Made Extensive Use of the M&G Mark in Marketing and
`Promoting Its Legal Services. ..................................................................................6
`
`M&G Registered the M&G Mark for Legal Services in 1997, and that
`Registration Has Become Incontestable. .................................................................9
`
`In 2012, Respondent Registered the Confusingly Similar Mark “MG-IP” for
`the Same Services. ...................................................................................................9
`
`V.
`
`ARGUMENT .....................................................................................................................10
`
`A.
`
`M&G Has Prior, Valid Trademark Rights in Its Federally Registered M&G
`Marks. ....................................................................................................................10
`
`B.
`
`Analysis of the DuPont Factors Establishes a Likelihood of Confusion. ..............11
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`M&G Is a Strong Mark Entitled to a Broad Scope of Protection. .............12
`
`Respondent’s Mark Is Confusingly Similar. ..............................................14
`
`The Parties’ Services Are the Same. ..........................................................16
`
`The Channels of Trade Are the Same. .......................................................17
`
`The Conditions of Purchase of Legal Services Support the Conclusion
`that Confusion Is Likely. ............................................................................17
`
`There Is Evidence of Actual Confusion. ....................................................18
`
`Respondent’s Purported Evidence of Third Party Use Should Be Given
`No Weight. .................................................................................................19
`
`C.
`
`D.
`
`E.
`
`Petitioner’s Survey Demonstrates a Likelihood of Confusion. .............................20
`
`M&G Is Damaged by the Continued Registration of MG-IP. ...............................21
`
`Any Doubt Concerning Likelihood of Confusion Should Be Resolved in
`Favor of M&G as the Senior User. ........................................................................21
`
`VI.
`
`CONCLUSION ..................................................................................................................22
`
`
`
`
`
`i
`
`

`

`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`AMF, Inc. v. Am. Leisure Prods., Inc.,
`474 F.2d 1403 (C.C.P.A. 1973) ...............................................................................................19
`
`Analytic Recruiting, Inc. v. Analytic Res., LLC,
`156 F. Supp. 2d 499 (E.D. Pa. 2001) .......................................................................................15
`
`CBS, Inc. v. Morrow,
`708 F.2d 1579 (Fed. Cir. 1983)................................................................................................17
`
`Century 21 Real Estate Corp v. Century Life of Am.,
`970 F.2d 874 (Fed. Cir. 1992)..................................................................................................16
`
`Champagne Louis Roederer v. J. Garcia Carrion, S.A.,
`732 F. Supp. 2d 836 (D. Minn. 2010) ......................................................................................14
`
`In re Clorox Co.,
`578 F.2d 305 (C.C.P.A. 1978) .................................................................................................19
`
`Cunningham v. Laser Gold Corp.,
`222 F.3d 943 (Fed. Cir. 2000)............................................................................................15, 21
`
`In re E.I. DuPont DeNemours & Co.,
`476 F.2d 1357 (C.C.P.A. 1973) ...........................................................................................2, 11
`
`Edison Bros. Stores v. Brutting E.B.,
`230 U.S.P.Q. (BNA) 530 (T.T.A.B. 1986) ........................................................................15, 16
`
`In re Elbaum,
`211 U.S.P.Q. (BNA) 639 (T.T.A.B. 1981) ..............................................................................16
`
`Giant Food, Inc. v. Nation’s Foodservice, Inc.,
`710 F.2d 1565 (Fed. Cir. 1983)................................................................................................18
`
`Giersch v. Scripps Networks Inc.,
`90 U.S.P.Q.2d (BNA) 1020 (T.T.A.B. 2009) ..........................................................................18
`
`Han Beauty, Inc. v. Alberto-Culver Co.,
`236 F.3d 1333 (Fed. Cir. 2001)................................................................................................12
`
`Herbko Int’l Inc. v. Kappa Books,
`308 F.2d 1156 (Fed. Cir. 2002)................................................................................................12
`
`ii
`
`

`

`Hewlett-Packard Co. v. Packard Press, Inc.,
`281 F.3d 1261 (Fed. Cir. 2002)................................................................................................18
`
`In re Hyper Shoppes, Inc.,
`837 F.2d 463 (Fed. Cir. 1988)..................................................................................................21
`
`Kenner Parker Toys, Inc. v. Rose Art Indus.,
`963 F.2d 350 (Fed. Cir. 1992)......................................................................................12, 13, 22
`
`King-Kup Candies, Inc. v. King Candy Co.,
`288 F.2d 944 (C.C.P.A. 1961) .................................................................................................14
`
`Lipton Indus., Inc. v. Ralston Purina Co.,
`670 F.2d 1024, 213 U.S.P.Q. (BNA) 185 (C.C.P.A. 1982) .....................................................21
`
`In re Nat’l Data Corp.,
`753 F.2d 1056 (Fed. Cir. 1985)................................................................................................15
`
`Neville Chem. Co. v. Lubrizol Corp.,
`196 U.S.P.Q. (BNA) 756 (T.T.A.B. 1977) ..............................................................................11
`
`Presto Prods., Inc. v. Nice-Pak Prods., Inc.,
`9 U.S.P.Q.2d (BNA) 1895 (T.T.A.B. 1988) ............................................................................14
`
`San Fernando Elec. Mfg. Co. v. JFD Elec. Components Corp.,
`565 F.2d 683 (C.C.P.A. 1977) .................................................................................................21
`
`In re Shell Oil Co.,
`992 F.2d 1204 (Fed. Cir. 1993)..........................................................................................16, 22
`
`Skincode AG v. Skin Concept AG,
`109 U.S.P.Q.2d (BNA) 1325 (T.T.A.B. 2013) ........................................................................17
`
`Smith Bros. Mfg. Co. v. Stone Mfg. Co.,
`476 F.2d 1004 (C.C.P.A. 1973) ...............................................................................................19
`
`Specialty Brands, Inc. v. Coffee Bean Distribs., Inc.,
`748 F.2d 669 (Fed. Cir. 1984)..................................................................................................14
`
`Time Warner Enter Co., LP v. Jones,
`65 U.S.P.Q.2d (BNA) 1650 (T.T.A.B. 2002) ..........................................................................18
`
`In re Toshiba Med. Sys. Corp.,
`91 U.S.P.Q.2d (BNA) 1266 (T.T.A.B. 2009) ..........................................................................18
`
`In re Total Quality Grp., Inc.,
`51 U.S.P.Q.2d (BNA) 1474 (T.T.A.B. 1999) ..........................................................................18
`
`iii
`
`

`

`In re White Swan Ltd.,
`8 U.S.P.Q.2d (BNA) 1534 (T.T.A.B. 1988) ............................................................................14
`
`Statutes
`
`15 U.S.C. §1052 .............................................................................................................................11
`
`15 U.S.C. § 1064 ............................................................................................................................21
`
`15 U.S.C. § 1115 ............................................................................................................................11
`
`
`
`iv
`
`

`

`I.
`
`INTRODUCTION
`
`Merchant & Gould (“M&G”) is an intellectual property (IP) law firm that was founded in
`
`1900. M&G has offices in 8 major cities across the United States, in Silicon Valley, New York,
`
`Denver, Minneapolis, Madison, Atlanta, Knoxville, and the Washington D.C. area. M&G
`
`lawyers exclusively practice IP law, including patent, trademark, copyright, and trade secret law.
`
`M&G is one of the most well-known IP law firms in the United States, and has been in existence
`
`for more than 115 years. M&G has been using the mark M&G in connection with legal services
`
`since at least as early as 1962, and obtained a registration for the same on October 28, 1997. That
`
`registration is incontestable. M&G has other registrations for the use of M&G in connection with
`
`various items in International Classes 16, 18, 20, 21, 25 and 28. The M&G mark is of great value
`
`to M&G as it serves as a distinctive designator of the law firm and the reputation it has built over
`
`the last several decades.
`
`In this action, M&G seeks cancellation of Respondent’s Registration No. 4,202,232 (“the
`
`’232 registration”) for the mark MG-IP for “Attorney services; legal services” in International
`
`Class 45. Respondent, MG-IP Law, PLLC (“MG-IP”) is an IP law firm that was founded in
`
`2006, by Martin Geissler. Mr. Geissler was, at the time, an IP lawyer with 5 years of legal
`
`experience. MG-IP opened its office in the Washington D.C. area, not far from M&G’s
`
`Washington D.C. area office. Six years later, in 2012, MG-IP sought and obtained registration of
`
`the MG-IP mark. This cancellation proceeding was filed approximately one year later after M&G
`
`became aware of an instance of actual confusion.
`
`Priority cannot be disputed. M&G had been using its M&G mark in connection with IP
`
`legal services for more than 40 years at the time Respondent decided to adopt MG-IP for IP legal
`
`services. Registration of MG-IP by Respondent for legal services is likely to cause confusion that
`
`
`
`1
`
`

`

`Respondent’s services are those of M&G, or are otherwise endorsed, sponsored, or approved by
`
`M&G. This is evidenced by application of the DuPont factors to the facts of this case, as well as
`
`by M&G’s likelihood of confusion survey that demonstrates likely confusion by potential
`
`consumers of legal services for trademark relevant reasons. The likely confusion causes damage
`
`to M&G, and is harmful to the consuming public. For the reasons set forth herein, and in the
`
`other files and papers submitted in this proceeding, M&G respectfully requests that the Board
`
`sustain its Petition to cancel the ’232 registration.
`
`II.
`
`DESCRIPTION OF THE RECORD
`
`
`
`The record consists of the following testimonial depositions and notices of reliance filed
`
`by the parties:
`
` Testimonial Deposition of John D. Gould and Exhibits 1-6, taken May 7, 2014 (“Gould
`
`Dep.”);1
`
` Testimonial Deposition of Leon B. Kaplan and Exhibits 1-2, taken April 20, 2016
`
`(“Kaplan Dep.”);
`
` Testimonial Deposition of Julie Daulton and Exhibits 3-4, taken May 3, 2016 (“Daulton
`
`Dep.”);
`
` Testimonial Deposition of William Schultz and Exhibits 5-25, taken May 3, 2016 (“1st
`
`Schultz Dep.”);
`
` Testimonial Deposition of Brian Batzli and Exhibits 28-50, taken May 3, 2016 (“Batzli
`
`Dep.”);
`
` Petitioner’s First Notice of Reliance, filed May 6, 2016 (“Pet. 1st Not. of Rel.”);
`
`
`1 Mr. Gould unfortunately passed away in 2015, prior to the testimony period in this case. His
`deposition was taken in May of 2014 to preserve his testimony in view of his advanced age and
`medical issues. (Batzli Dep. 65:7-10.)
`
`
`
`2
`
`

`

` Testimonial Deposition of Martin R. Geissler and Exhibits 1-10, taken June 16, 2016
`
`(“Geissler Dep.”);
`
` Respondent’s First Notice of Reliance and Exhibits A-R, filed June 20, 2016 (“Resp. 1st
`
`Not. of Rel.”);
`
` Respondent’s Second Notice of Reliance and Exhibits A-G, filed June 20, 2016 (“Resp.
`
`2nd Not. of Rel.”);
`
` Respondent’s Third Notice of Reliance and Exhibits A-D, filed June 20, 2016 (“Resp. 3rd
`
`Not. of Rel.”);
`
` Respondent’s Fourth Notice of Reliance and Exhibits A-H, filed June 20, 2016 (“Resp.
`
`4th Not. of Rel.”);
`
` Respondent’s Fifth Notice of Reliance and Exhibits A-B, filed June 20, 2016 (“Resp. 5th
`
`Not. of Rel.”);
`
` Respondent’s Sixth Notice of Reliance and Exhibits A-B, filed June 20, 2016 (“Resp.
`
`6th Not. of Rel.”);
`
` Respondent’s Seventh Notice of Reliance and Exhibits A-N, filed July 5, 2016 (“Resp.
`
`7th Not. of Rel.”);
`
` Second Testimonial Deposition of William Schultz and Exhibit 28, taken August 17,
`
`2016 (“2nd Schultz Dep.”); and
`
` Petitioner’s Second Notice of Reliance and Exhibits A-E, filed August 19, 2016 (“Pet.
`
`2nd Not. of Rel.”).
`
`III.
`
`STATEMENT OF THE ISSUES
`
`
`
`The issue in this cancellation is whether Respondent’s registration on the Principal
`
`Register of the mark MG-IP for “Attorney services; Legal services” in International Class 45
`
`
`
`3
`
`

`

`(Registration No. 4,202,232) is likely to cause confusion with M&G’s previously used and
`
`registered M&G marks, including M&G’s incontestable registration of the mark M&G for legal
`
`services in International Class 42, resulting in damage to M&G.
`
`IV. RECITATION OF FACTS
`
`A. M&G Is a Well-Known Provider of Intellectual Property Legal Services in
`the United States, and Has Used the M&G Mark in Connection with Those
`Services Since 1962.
`
`
`The law firm known today as Merchant & Gould, or M&G, has its roots in the first
`
`intellectual property firm in the State of Minnesota. (Batzli Dep. Ex. 28 at MG000082.) Founded
`
`in 1900, M&G has been providing intellectual property (IP) legal services for more than 100
`
`years. (Gould Dep. 15:24-16:5.) The firm was originally known as Williamson & Merchant, but
`
`in 1962, a few years after John Gould joined the firm, it became known as Merchant & Gould.
`
`(Batzli Dep. Ex. 28 at MG000083; Gould Dep. 6:23-7:14.) The mark M&G for legal services
`
`was first used in 1962, and has been in continuous use since that time. (Batzli Dep. Ex. 37.)
`
`Since at least 2000, the M&G mark has also been applied to a variety of goods, such as pens,
`
`hats, jackets, and the like, that have been distributed in connection with the promotion and
`
`operation of M&G as an IP legal services provider. (1st Schultz Dep. Ex. 16.)
`
`Over the past 65 years, M&G has established itself as one of the premier IP law firms in
`
`the country. This has been accomplished through significant litigation victories, receipt of
`
`numerous awards and recognitions, involvement in or authorship of multiple publications, and
`
`investment in advertising and promotion of the firm.
`
`An exhaustive list of M&G’s numerous awards, accolades, and achievements would be
`
`overwhelmingly long. (Batzli Dep. 57:20-58:12.) One notable example of M&G earning
`
`notoriety as a provider of IP legal services occurred in the early 1990s, when M&G represented
`
`
`
`4
`
`

`

`Honeywell in a case against Minolta that resulted in over $100 million in damages for patent
`
`infringement. (Batzli Dep Ex. 28 at MG000101.) M&G attorneys are also regularly named as IP
`
`Stars. For example, in approximately 2010, twelve M&G attorneys from the firm’s Minneapolis,
`
`Madison, Denver, Knoxville, Atlanta, and D.C. area offices were named IP Stars. (Batzli Dep.
`
`27:17-29:2 & Ex. 31 (“Congratulations to our M&G attorneys selected as IP Stars. . . .”).) M&G
`
`has received awards from BTI, NameProtect, and IP Law Today. (Batzli Dep. 57:20-24; 59:1-
`
`16.) M&G has regularly been ranked as the #1filer in trademark and copyright prosecution in the
`
`Central United States. (Batzli Dep. Ex. 28 at MG000090.) M&G was identified as the top firm in
`
`the Central United States for patent filing, as well as for trademark and copyright filing, in 1999
`
`by Managing Intellectual Property Today. (Batzli Dep. Ex. 48.) M&G attorney Phil Smith,
`
`together with other M&G attorneys, authored Intent to Use Trademark Practice, published by
`
`BNA, in 1987. (Batzli Dep. Ex. 28 at MG000090.) M&G attorneys also publish a Trademark
`
`Clearance and Usage Guide. (Batzli Dep. Exs. 49-50.)
`
`M&G lawyers routinely attend, and promote the firm at, numerous legal industry events,
`
`including AIPLA, LES, local bar events, Federal Bar Association events, the BIO conference,
`
`various trade shows, and INTA. (Batzli Dep. 13:17-16:10.) Upwards of 20 lawyers from M&G
`
`regularly attend the INTA conference, and M&G normally sponsors a reception that is attended
`
`by hundreds. (Batzli Dep. 14:18-15:3.)
`
`In 1998, M&G expanded outside of Minnesota, opening its first regional office in
`
`Denver, Colorado. (Batzli Dep. Ex. 28 at MG000103-104.) In 2000, M&G opened offices in
`
`Seattle and Atlanta. (Batzli Dep. Ex. 28 at MG000103-104.) Today, M&G has offices in 8 major
`
`cities across the United States and a client base that extends throughout the United States and
`
`
`
`5
`
`

`

`abroad. (Batzli Dep. 18:4-21.) M&G has operated an office in the Washington D.C. area since
`
`2002. (Batzli Dep. 29:21-30:21.)
`
`B. M&G Has Made Extensive Use of the M&G Mark in Marketing and
`Promoting Its Legal Services.
`
`
`Over the past ten years, M&G has spent an average of approximately
`
` per year
`
`on marketing and promotion. (Schultz Dep. 36:24-37:22, Ex. 13.) M&G uses the M&G mark
`
`prominently in and on materials advertising and promoting its legal services. For example, the
`
`M&G mark is used on the firm’s practice group promotional literature and on invitations to firm
`
`events:
`
`From practice group
`literature:
`
`
`From invitation to firm
`event:
`
`
`From M&G IP fishing tournament
`invite:
`
`
`
`
`
`
`
`
`(Batzli Dep. Ex. 33; see
`also 1st Schultz Dep.
`22:23-24:24.)
`
`(Batzli Dep. Ex. 46; see
`also 1st Schultz Dep.
`26:15-25.)
`
`(2nd Schultz Dep. Ex. 28 at
`MG001140 & MG001246.)
`
`M&G has also used the M&G mark as a watermark on its stationary. (Batzli Dep. 24:23-25:19.)
`
`The M&G watermarked stationary has been in continuous use for nearly 30 years. (Batzli Dep.
`
`25:10-19.) The use of the mark on the letterhead means it has been regularly visible to clients,
`
`accused infringers, opposing counsel, courts, and any others receiving correspondence from the
`
`firm. M&G has used the M&G mark on its Trademark Usage & Clearance Guide and on its
`
`Advancing Innovation 100 year anniversary publication:
`
`
`
`6
`
`

`

`From Trademark Usage Guide:
`
`From Advancing Innovation publication:
`
`(Gould Dep. Ex. 4.)
`
`(Batzli Dep. Ex. 28.)
`
`
`
`
`
`M&G has used the M&G mark in the entryways to its various offices, on its holiday cards, and
`
`on postcard mailings:
`
`From office entry in
`Minneapolis:
`
`
`From Holiday Card:
`
`From postcard:
`
`
`
`
`
`(1st Schultz Dep. Ex. 5; see
`also 1st Schultz Dep. 16:7-20.)
`
`M&G has used the M&G mark on coasters, on its website, and on the M&G linker internet
`
`(1st Schultz Dep. Ex. 11.)
`
`(1st Schultz Dep. Ex. 10.)
`
`search toolbar:
`
`
`
`7
`
`

`

`Coaster:
`
`Website:
`
`M&G Linker:
`
`
`
`
`
`
`
`
`
`(1st Schultz Dep. Ex. 19.)
`
`(1st Schultz Dep. Exs. 21 & 22.)
`
`(1st Schultz Dep. Ex. 6.)
`
`M&G has used the M&G mark in advertisements, such as the one published in Minnesota Bench
`
`& Bar congratulating John Gould on 60 years with the law firm in 2014. (Batzli Dep. Ex. 53
`
`(“Congratulations to John D. Gould . . . From your friends and colleagues at M&G.”).) M&G has
`
`also used the M&G mark in connection with its M&G News newsletter. (1st Schultz Dep. 20:16-
`
`21:4, 21:14-22:17.) M&G uses its M&G mark on hang tags attached to various items, on signage
`
`used by M&G at industry or trade show events, and on promotional items (such as golf balls) it
`
`distributes:
`
`From hang tag:
`
`From trade show display:
`
`From golf ball:
`
`
`
`
`
`(1st Schultz Dep. Ex. 16.)
`
`(1st Schultz Dep. Ex. 17.)
`
`(1st Schultz Dep. Ex. 18.)
`
`
`
`8
`
`

`

`From sweatshirt:
`
`From hat:
`
`From bag:
`
`
`
`
`
`(1st Schultz Dep. Ex. 16.)
`
`(1st Schultz Dep. Ex. 16.)
`
`
`
`(1st Schultz Dep. Ex. 16.)
`
`These items are distributed and displayed in connection with the promotion and marketing of
`
`M&G’s legal services. The M&G mark is an integral part of M&G’s brand identity; it serves as
`
`an indicator of source for its legal services and is imbued with significant goodwill as a result of
`
`many years of use and the reputation M&G has built around it. (1st Schultz Dep. 31:3-32:23.)
`
`C. M&G Registered the M&G Mark for Legal Services in 1997, and that
`Registration Has Become Incontestable.
`
` M&G owns several trademark registrations, including registrations in International
`
`
`
`Classes 16, 18, 20, 21, 25, 28, and 42 for its M&G mark. (Pet. 2nd Not. of Rel. Exs. A, C.)
`
`M&G’s registration for the service mark M&G for “legal services, in Class 42” is incontestable.
`
`(Pet. 2nd Not. of Rel. Ex. A.) M&G also owns an incontestable registration for a stylized version
`
`of the M&G mark. (Pet. 2nd Not. of Rel. Ex. B.) And M&G owns an incontestable registration
`
`for the mark THE M&G NEWS for a “periodical newsletter in the nature of a house organ for a
`
`law firm, in Class 16.” (Pet. 2nd Not. of Rel. Ex. D.)
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`D.
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`In 2012, Respondent Registered the Confusingly Similar Mark “MG-IP” for
`the Same Services.
`
`
`In April of 2006, Martin Geissler, a patent attorney with 5 years of legal experience,
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`started a new law firm and decided to name it MG-IP Law, PLLC. (Geissler Dep. 8:14-16; 9:4-
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`16; 22:21-23:1.) Mr. Geissler personally selected the name MG-IP for his firm. (Geissler Dep.
`
`
`
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`15:17-16:3.) He was searching for available names and, in particular, for a name to apply to his
`
`IP law practice. (Geissler Dep. 19:3-10.) According to Mr. Geissler, the “IP” in MG-IP stands for
`
`intellectual property law. (Geissler Dep. 19:18-21.) He used a hyphen between MG and IP
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`because he thought IP looked like a nice separation from MG. (Geissler Dep. 19:11-17.)
`
`
`
`After adopting and using the MG-IP mark, Respondent’s brand new firm was able to
`
`grow its business quickly. For example, from 2007 to 2008, using the MG-IP mark,
`
`Respondent’s number of patent applications prosecuted increased by 645.7%. (Geissler Dep.
`
`132:2-133:16 & Ex. 9 at MG-IP000180.) By 2012, Respondent had increased its total patent
`
`applications to 954, up from 35 applications in 2007. (Geissler Dep. Ex. 9.) Respondent has
`
`provided no explanation for the pace of growth it experienced beyond the obvious—the
`
`confusing similarity between M&G and MG-IP in the promotion of IP legal services.
`
`
`
`In 2012, Respondent registered the mark MG-IP for “Attorney services; legal services” in
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`International Class 45. After learning of an instance of actual confusion between the two marks
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`in July of 2013 (Daulton Dep. Ex. 3), M&G filed this proceeding to cancel Respondent’s
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`registration for MG-IP on September 12, 2013.
`
`V.
`
`ARGUMENT
`
`A. M&G Has Prior, Valid Trademark Rights in Its Federally Registered M&G
`Marks.
`
`
`
`Priority is not contested here. M&G has prior, valid, and subsisting trademark rights in
`
`the mark M&G. The M&G mark has been used by M&G continuously and extensively
`
`throughout the United States in connection with legal services since 1962. M&G’s use of its
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`M&G mark clearly predates Respondent’s first claimed use date for the MG-IP mark of 2006.
`
`Indeed, the M&G mark was registered for legal services almost 10 years before Respondent ever
`
`thought of using the name MG-IP for legal services. (Pet. 2nd Not. of Rel. Ex. A.) The
`
`
`
`10
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`incontestable status of M&G’s registration for M&G for legal services is conclusive evidence of
`
`the validity of that mark, the ownership of that mark, and M&G’s exclusive right to use that
`
`mark in commerce for the claimed services. See 15 U.S.C. § 1115(b). The only issue for decision
`
`here is whether Respondent’s registration of the mark MG-IP for legal services is likely to cause
`
`confusion, mistake, or deception when used concurrently with Petitioner’s M&G mark for legal
`
`services. See, e.g., Neville Chem. Co. v. Lubrizol Corp., 196 U.S.P.Q. (BNA) 756, 759 (T.T.A.B.
`
`1977). As discussed below, the answer is yes.
`
`Analysis of the DuPont Factors Establishes a Likelihood of Confusion.
`
`B.
`
`The Lanham Act precludes continued registration of a mark if the mark resembles
`
`
`
`another registered or used mark such that use of the mark is likely “when used on or in
`
`connection with the goods of the [Registrant], to cause confusion, or to cause mistake, or to
`
`deceive.” 15 U.S.C. §1052(d). In determining whether there is a likelihood of confusion within
`
`the meaning of Section 2(d) of the Trademark Act, relevant factors include: (1) the similarity
`
`between the parties’ marks as to appearance, sound, connotation and commercial impression;
`
`(2) the similarity between the parties’ respective goods as described in the applications or
`
`registrations or in connection with which a prior mark is in use; (3) the similarity between the
`
`parties’ trade channels; (4) the conditions under which and buyers to whom sales are made (i.e.,
`
`“impulse” vs. careful, sophisticated purchasing); (5) the fame of the prior mark (sales,
`
`advertising, length of use); (6) the number and nature of similar marks in use on similar goods;
`
`(7) the nature and extent of any actual confusion; (8) the variety of goods on which a mark is or
`
`is not used (house mark, “family” mark, product mark); and (9) any probative evidence
`
`concerning the effect of use. In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361
`
`(C.C.P.A. 1973). The Board need not consider every DuPont factor when determining whether
`
`
`
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`confusion is likely. See Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336 (Fed. Cir.
`
`2001). Some factors — such as the relatedness of the goods and services — may alone be
`
`dispositive. Id.
`
`As the plaintiff in this proceeding, Petitioner has the burden of proof to establish, by a
`
`preponderance of the evidence, that it has standing and a ground upon which relief may be
`
`granted. See, e.g., Herbko Int’l Inc. v. Kappa Books, 308 F.2d 1156, 1161 (Fed. Cir. 2002).
`
`However, in the likelihood of confusion analysis, the Board will resolve doubts against the
`
`newcomer. See Kenner Parker Toys, Inc. v. Rose Art Indus., 963 F.2d 350, 355 (Fed. Cir. 1992).
`
`As demonstrated below, applying these factors to the facts at hand compels the conclusion that
`
`confusion is likely.
`
`
`
`
`
`
`
`1.
`
`M&G Is a Strong Mark Entitled to a Broad Scope of Protection.
`
`The M&G mark is strong and it is entitled to a broad scope of protection. The strength of
`
`the M&G mark is derived, in part, from its inherently distinctive nature, as applied to legal
`
`services, as well as from the extensive goodwill cultivated by M&G in the mark through many
`
`years of significant use and brand investment.
`
`
`
`M&G as a brand has no descriptive or generic meaning in the field of providing legal
`
`services. The mark M&G also is not suggestive for legal services. The M&G mark is inherently
`
`strong. Regardless, it has acquired distinctiveness and has become incontestable. (Pet. 2nd Not.
`
`of Rel. Ex. A.)
`
`
`
`The M&G mark is also commercially strong as a result of M&G’s investment in
`
`promotion of its legal services under the mark for nearly 65 years. In 2006, M&G spent
`
`
`
` on advertising and marketing its legal services. Expenditures for the period of 2006-2014
`
`averaged approximately
`
` per year. (Schultz Dep. 36:24-37:22, Ex. 13.) For the years
`
`
`
`12
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`

`

`2006-2013, M&G’s annual revenues generated from sale of its legal services ranged from a low
`
`of
`
` to a high of
`
`. (Batzli Dep. 34:15-35:19, Ex. 34.) The impressive
`
`revenues generated under the M&G mark and M&G’s extensive advertising and promotional
`
`efforts, demonstrate that the M&G mark is a strong mark, widely recognized by the consuming
`
`public and therefore entitled to a broad scope of protection. Kenner Parker Toys Inc., 963 F.2d at
`
`352-53.
`
`
`
`In existence for over 115 years, M&G is one of the United States’ oldest IP law firms.
`
`(Batzli Dep. 16:20-25.) In 1999 alone, M&G prosecuted more than 1,000 U.S. patents to
`
`issuance for clients around the world, putting M&G in the top 15 patent firms in the country
`
`according to Intellectual Property Today. (Batzli Dep. Ex. 45.) Over the years, M&G has
`
`received numerous similar awards. (Batzli Dep. 57:11-60:3.) M&G lawyers are involved in
`
`numerous industry groups and conferences within the IP legal field, including AIPLA, LES, the
`
`Federal Bar Association, BIO, IPO, and INTA. (Batzli Dep. 13:17-15:19.) M&G currently
`
`employs approximately 100 attorneys in 8 separate offices located in major cities throughout the
`
`United States, including in the Washington D.C. area. (Batzli Dep. 17:1-24.) The reputation
`
`M&G has developed over many years of providing IP legal services and the strength of its brand
`
`allows M&G, as a 100-attorney firm, to compete for and bring in clients of the Fortune 100 and
`
`Fortune 500 variety. (Schultz Dep. 32:1-9.)
`
`
`
`The inherent and commercial strength of the M&G mark supports the conclusion that
`
`M&G has strong trademark rights in the M&G mark that are entitled to a broad scope of
`
`protection, and favors a finding of likely confusion.
`
`
`
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`2.
`
`Respondent’s Mark Is Confusingly Similar.
`
`Similarity of marks is determined by comparing the marks in sight, sound, and meaning.
`
`Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 671 (Fed. Cir. 1984). There is
`
`no requirement that the marks must be identical in all respects for a finding of likely confusion.
`
`In re White Swan Ltd., 8 U.S.P.Q.2d (BNA) 1534, 1535 (T.T.A.B. 1988). Here, both marks are
`
`registered in standard, character form, so the similarity is determined without regard to
`
`stylization.
`
`The mark M&G for legal services, namely IP legal services, is confusingly similar to
`
`Respondent’s MG-IP mark for IP legal services. The first portion of a trademark is often most
`
`likely to be impressed on the minds of consumers and remembered. As such, it is expected that
`
`many consumers will focus on the common use of M&G/MG, and pay less attention to the
`
`addition of IP at the end of Respondent’s mark. See Presto Prods., Inc. v. Nice-Pak Prods., Inc.,
`
`9 U.S.P.Q.2d (BNA) 1895, 1897 (T.T.A.B. 1988) (KIDWIPES confusingly similar to
`
`KIDSTUFF); see also King-Kup Candies, Inc. v. King Candy Co., 288 F.2d 944, 945 (C.C.P.A.
`
`1961) (holdi