Abbott Law Chartered

Trademark Trial and Appeal Board

May 11, 2016

No. 86366618 (T.T.A.B. May. 11, 2016)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
May 11, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Abbott Law Chartered
_____

Serial No. 86366618
_____

Eric L. Abbott, Esq. for Abbot Law Chartered.

Lauren E. Burke, Trademark Examining Attorney, Law Office 106 (Mary I.
Sparrow, Managing Attorney).
_____

Before Kuhlke, Greenbaum, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Abbott Law Chartered (“Applicant”) has filed an application to register the mark
BATTLEBORNIP.COM in standard characters for:
Legal services, namely, providing customized
documentation, information, counseling, advice and
consultation services in all areas of business law and
intellectual property, in International Class 45.1
The Trademark Examining Attorney refused registration under § 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used

1 Application Serial No. 86366618, filed August 14, 2014 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), on the basis of Applicant’s asserted bona fide intention
to use the mark in commerce.
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in connection with Applicant’s services, so resembles the registered mark shown
below as to be likely to cause confusion, or to cause mistake, or to deceive.

The cited mark is registered for:
Legal consulting services in the field of personal injury;
Litigation services, in International Class 45.2
No claim is made to the exclusive right to use INJURY LAWYERS apart from the
mark as shown. The colors silver, gold, and grey are claimed as a feature of the
mark. The black background is not part of the mark. The registration describes the
design element of the mark as “a silver and gold ram head, which can also be seen
as a silver ram head colliding with a gold ram head.”
When the refusal was made final, Applicant appealed. Applicant and the
Examining Attorney have filed briefs.
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 as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities

2 Reg. No. 4604101, issued September 16, 2014.
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between the goods and services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
As an initial matter, we note that Applicant has sought to show that its mark was
placed in use prior to the cited registered mark.3 This contention is not relevant to
our analysis. The Examining Attorney’s refusal under Section 2(d) is not based on
the earlier use of the cited mark, but on the fact that the cited mark is registered.
See 15 U.S.C. § 1052(d). A registration on the Principal Register is prima facie
evidence of the validity of the registration, 15 U.S.C. § 1057(b), and matters that
constitute a collateral attack on the cited registration will not be considered.4
1. The marks.
We first consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison
of the marks, but instead whether the marks are sufficiently similar in terms of
their commercial impression such that persons who encounter the marks would be
likely to assume a connection between the parties.” Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal
quotation marks omitted). While we consider each mark in its entirety, there is
nothing improper in stating that, for rational reasons, more or less weight has been

3 Applicant’s brief at 7, ¶¶ 1, 6, 4 TTABVUE 8.
4 Applicant’s recourse to have such arguments considered would have been to suspend
prosecution of its application and file a petition for cancellation of the cited registration.
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given to a particular feature of a mark, provided that our ultimate conclusion rests
upon a comparison of the marks in their entireties. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). “Indeed, this type of analysis
appears to be unavoidable.” Id.
In appearance, sound, and meaning, the two marks resemble each other to the
extent that they include the literal terms BATTLEBORN- (in Applicant’s mark) and
BATTLE BORN (in Registrant’s mark). In both marks, this wording would be
readily understood to suggest something that arose out of conflict. In both marks
this term is arbitrary as applied to the services, and is accordingly a relatively
strong indicator of source.
The marks differ in appearance and sound by virtue of their other elements. In
Applicant’s mark, BATTLEBORN- runs together with the suffix -IP.COM, as a
single word. In Registrant’s mark, the wording INJURY LAWYERS is a point of
difference in appearance and sound. Registrant’s mark also includes the ram’s head
design and the silver, gold and gray color scheme, thereby differing further in
appearance from Applicant’s mark. The meanings of these additional elements also
differ from each other. In Applicant’s mark, the letters IP, which are a recognized
abbreviation for “intellectual property,”5 would be recognized as such in the context

5 We take judicial notice of the definition of IP from THE AMERICAN HERITAGE
ABBREVIATIONS DICTIONARY (Third Ed. 2005), available at . The Board
may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C.
Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular
fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). We have not
considered the definition from (Office Action of December 2, 2014 at
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of legal services in the field of intellectual property. The suffix .COM would readily
be recognized as a top level domain indicator. The words INJURY LAWYERS in
Registrant’s mark describe the types of professionals who perform Registrant’s
services. The ram’s head design obviously suggests the idea of a ram, but also, when
perceived as two “colliding” rams’ heads, may reinforce the idea of conflict inherent
in the words BATTLE BORN.
Applicant points out that the letters IP in its mark could mean “internet protocol”
as well as “intellectual property,” and that they therefore constitute a double
entendre. Applicant contends that this double entendre confers upon Applicant’s
mark a “presumption of registrability,” citing TMEP § 1213.05(c) and In re Fox, 702
F.3d 633, 105 USPQ2d 1247, 1251 (Fed. Cir. 2012).6 This contention is misplaced.
Neither cited authority supports Applicant’s position. TMEP § 1213.05(c) addresses
whether a double entendre will save a mark from a refusal of registration on
grounds of mere descriptiveness under Section 2(e)(1). In re Fox, which dealt with a
refusal under Section 2(a) on grounds of the immoral or scandalous content of a
mark, actually refused to find a presumption of registrability in a vulgar double
entendre. A double entendre will not reduce the likelihood of confusion in this case
unless it gives rise to a commercial impression that distinguishes Applicant’s mark
from that of the cited registered mark. However, we must consider the commercial
impression that Applicant’s mark will make “as used on or in connection with the

8) because the definition is from the “British English” section of that dictionary and is not
reliable evidence of how United States customers would interpret the letters IP.
6 Applicant’s brief at 15-16, 4 TTABVUE 16-17.
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[services] of the [A]pplicant.” 15 U.S.C. § 1052(d). As we have noted above, in the
context of legal services in the field of intellectual property, the letters IP would be
immediately recognized as a reference to intellectual property. There is no reason
why, in this context, a customer would think of “internet protocol.”
Considering the marks in their entireties, we find that they create highly similar
commercial impressions. The most distinctive aspects of the two marks are highly
similar: the arbitrary literal elements BATTLEBORN- and BATTLE BORN. The
differences between the marks are found primarily in descriptive matter that
customers would not rely upon as an indicator of source, i.e., the terms –IP.COM
and INJURY LAWYERS. Even these differing elements of the marks have a degree
of similarity, in that they both refer to categories of legal services that might be
offered by a law firm. Although Registrant’s mark has a distinctive design element,
it is not sufficient to distinguish the two marks. Customers will likely use the
distinctive wording of the marks, BATTLEBORN- and BATTLE BORN, in
describing and requesting the services. Accordingly, the design element deserves
less weight in our analysis. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596
(TTAB 1999) (“In the case of marks which consist of words and a design, the words
are normally accorded greater weight because they would be used by purchasers to
request the goods”); In re Appetito Provisions Co., 2 USPQ2d 1553, 1554 (TTAB
1987). Moreover, Applicant seeks to register its mark in standard character form,
such that the rights associated with it would not be limited to any particular
display. Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d
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1253, 1256 (Fed. Cir. 2011). Accordingly, Applicant could display its mark in
lettering styles, layout of wording, or color schemes similar to those appearing in
Registrant’s mark. The fact that Applicant’s mark, unlike Registrant’s mark,
creates the commercial impression of an Internet domain name does not
meaningfully distinguish the two marks. Virtually every kind of service, including
legal services, may be advertised on the Internet through a website. Customers
would likely expect Registrant to use the Internet and, accordingly, would not be
surprised to see Registrant using the term .COM in the same manner in which it
appears in Applicant’s mark.
For the reasons discussed, we find that the du Pont factor of the similarity or
dissimilarity of the marks weighs in favor of a finding of likelihood of confusion.
2. The services.
We next consider the similarity or dissimilarity of the services as identified in the
application and the cited registration. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-1162 (Fed. Cir. 2014); In re
Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); Octocom
Syst. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). We must determine whether the services are related in such a way
that using similar marks in connection with them could give rise to the mistaken
belief that they originate from or are in some way associated with the same
producer. Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410
(TTAB 2010); Schering Corporation v. Alza Corporation, 207 USPQ 504, 507 (TTAB
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1980); Oxford Pendaflex Corporation v. Anixter Bros. Inc., 201 USPQ 851, 854
(TTAB 1978).
Registrant provides legal consulting in the field of personal injury; and litigation
services that are not limited to any one field of practice. Registrant’s litigation
services are set off by the semicolon which serves to separate them as services
distinct from the legal consulting services in the field of personal injury. In re
Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163, 1166 (TTAB 2013).
Therefore the litigation services are not subject to the limiting language “in the field
of personal injury” and we must presume that Registrant’s litigation services
encompass all services of the nature and type identified in the registration,
including litigation in fields other than personal injury. See In re Jump Designs, 80
USPQ2d 1370, 1374 (TTAB 2006).
In order to show that relevant customers would likely believe that the services of
Applicant and Registrant emanate from the same business, the Examining Attorney
has made of record excerpts from the websites of 5 law firms that offer, under the
same roof, services similar to those of Applicant and Registrant.7 For example,
Clark Law Firm PLLC advertises business counseling and business litigation.
Francis Law Office PLLC offers advice in the field of intellectual property as well as
litigation and personal injury services. Tucker IP advertises that it will “seek the
maximum compensation” for its clients’ personal injury; and also offers advice

7 Office Action of December 2, 2014 at 23-26; Office Action of March 30, 2015 at 21-29. We
have not considered the website of Choquette & Hart LLP because, although it offers
business and intellectual property litigation services, it does not clearly offer advice or
consultation services.
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regarding patent and trademarks and patent litigation. Callahan & Blaine offers
business and personal injury litigation services and advice regarding copyright,
trademark, and intellectual property. Wharton Aldhizer & Weaver, PLC offers
business and commercial litigation, including intellectual property, and states, “We
emphasize our role as counselors with the goal of helping our clients avoid litigation
…”
The Examining Attorney has also submitted 10 use-based, third-party
registrations (belonging to 10 different registrants)8 that cover services similar to
those of both Applicant and Registrant, as shown below.
Reg. No. Relevant services similar to
those of Applicant
Relevant services similar to
those of Registrant

4349691 Legal services, namely, intellectual
property consulting services …
Legal consulting services in the
field of Personal Injury

4486158 Intellectual property consulting
services …
Counseling, advice and
consultation services in all areas
of civil and criminal litigation; …
personal injury; …

4488205 Providing customized legal
information, counseling, and advice,
… in the field of … business law, …

Providing customized legal
information, counseling, and
advice, and litigation services in
the field of … personal injury, …

4555574 Counseling, advice and consultation
services in all areas of business law
…

Counseling, advice and
consultation services in all areas
of … personal injury law …

4576150 Intellectual property consultation

Litigation consultancy; litigation
services

8 Office Action of December 2, 2014 at 9-22; Office Action of March 30, 2015 at 6-20.
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4501155 Consulting in the field of
intellectual property licensing

Litigation services
4617278 Legal consultation services in the
field of trademark law, business
law, copyright law, …

Litigation services
4691892 Legal services, namely, providing …
counseling, advice and consultation
services in all areas of … business
law, …

Legal services, namely,
providing … counseling, advice
and consultation services in all
areas of … civil litigation, and
personal injury

4695433 Legal services, namely, intellectual
property consulting services, …;
Providing customized legal
information, counseling, and advice
… in the field of BUSINESS LAW;
…

Litigation consultancy;
Litigation services; … Providing
… litigation services in the field
of BUSINESS LAW; …

3246176 Legal services related to …
business law, …
Legal services related to …
personal injury, litigation, …

Third-party registrations that are based on use in commerce and that individually
cover a number of different services may serve to suggest that the listed services are
of a type which may emanate from the same source. In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1785-1786 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988).
Applicant contends that “the Examining Attorney did not perform the proper
comparison between the services in the Application and the services in the CITED
MARK”;9 and points out that “Applicant’s services do not include services related to

9 Applicant’s brief at 14, 4 TTABVUE 15.
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personal injury or litigation.”10 It is true that the services of Applicant and
Registrant do not actually overlap. However, the Examining Attorney took the
correct approach in seeking to demonstrate that the different services of Applicant
and Registrant are commercially related in the minds of customers of legal services,
because such customers would expect that a single law firm would be capable of
providing both types of legal services. The question we must consider is confusion as
to source, not as to the type of services. J. C. Hall Co. v. Hallmark Cards, Inc., 340
F.2d 960, 144 USPQ 435, 438 (CCPA 1965); In re Rexel Inc., 223 USPQ 830, 831
(TTAB 1984).
We find the evidence discussed above sufficient to show that customers of legal
services would readily believe that the services of Applicant and Registrant could
emanate from a single legal services provider. Accordingly, the du Pont factor of the
similarity or dissimilarity of the services weighs in favor of a finding of likelihood of
confusion.
3. Number of similar marks in use.
Applicant contends that the term BATTLE BORN “is commonly used and weak,”
such that customers are likely to look to other elements of the marks at issue as a
means of distinguishing them.11 Applicant adduced the results of a search for
business names that include BATTLE BORN in the records of the Nevada Secretary
of State.12 The results list approximately 103 such business names. (We have not

10 Id. at 15, 4 TTABVUE 16.
11 Applicant’s brief at 11, 4 TTABVUE 12.
12 Applicant’s response of February 6, 2015 at 15-29.
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counted names that are listed as revoked, expired or dissolved. We have counted
those that are listed as “Default.”) The list does not set forth the field of business of
the entities, and none of the business names makes reference to law services.
Applicant has also submitted the results of Yellow Pages searches for “Battle
Born” in Las Vegas, Reno, and Ely, Nevada.13 Together, these searches yielded
references to 41 businesses (none in the field of law).
Finally, Applicant has submitted 8 U.S. registrations (belonging to 6 owners) of
marks that include the term BATTLE BORN;14 those registrations cover clothing,
distribution of beverages, beer, guns and gun parts, computers, gun manufacture,
and helicopter charters.
The evidence enumerated above suggests that, in Nevada, the term “Battle Born”
has some recognized meaning; however, the record does not reveal what that
meaning is. Inasmuch as the rights of registration are nationwide in scope, we must
consider the likelihood of confusion among customers throughout the United States.
Applicant’s evidence does not indicate that the meaning of “Battle Born” that may
be understood in Nevada would be known in other places, or that other places in the
United States market have experienced the same proliferation of “Battle Born”
business names that is seen in Nevada. Thus, on this record, there is no reason to
believe that most U.S. customers have been exposed to a multiplicity of uses of the
“Battle Born” designation.

13 Id. at 30-40.
14 Id. at 41-53.
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In addition, none of the examples of third-party use of “Battle Born” business
names is in the field of legal services. In fact, the goods and services for which such
names are used are, to the extent we can discern them, extremely different from
legal services. The applicable du Pont factor is “The number and nature of similar
marks on similar goods [or services].” 177 USPQ at 567 (emphasis added). Thus,
Applicant’s evidence does not demonstrate that the term “Battle Born” is weak or
diluted in the field of legal services.
Applicant cites Armstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 205 USPQ
969 (5th Cir. 1980) for the proposition that “The greater the number of identical or
more or less similar trade-marks already in use on different kinds of goods, the less
is the likelihood of confusion . . . .” Id. at 975, quoting RESTATEMENT OF TORTS §729,
comment g (1938) (emphasis added). In Armstar the Court considered such evidence
but did not interpret it as indicative of a reduced scope of protection of a plaintiff’s
mark in the plaintiff’s own field of business:
Defendants do not contend, nor does this court hold, that
plaintiff's mark is not a distinctive, well-known mark for
its sugar and related products. The third-party uses and
registrations discussed above merely limit the protection
to be accorded plaintiff's mark outside the uses to which
plaintiff has already put its mark.
Armstar, 205 USPQ at 976, citing with approval American Sugar Co. v. Texas Farm
Products Co., 159 USPQ 679, 681 (TTAB 1968), in which the Board, having found a
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commercial relationship between the goods then at issue, rejected as irrelevant
evidence of third-party uses on different goods.15
In the case now before us, we need not consider whether Registrant’s mark would
be considered weak if it were asserted against use of a similar mark outside the
legal services field. The services of Applicant and Registrant are all aspects of the
practice of business law. Moreover, the Examining Attorney’s evidence shows that
there is a commercial relationship between Applicant’s intellectual property law
services and Registrant’s litigation services, such that customers would believe they
might emanate from a single source. Under these circumstances, we are not
persuaded that Registrant’s mark deserves a reduced scope of protection in the
fields of business at issue in this case.
4. Trade channels.
The Examining Attorney contends that similarity of trade channels is one of the
relevant du Pont factors in this case. The website evidence bears upon this issue, as
it shows that a single law firm may be a channel through which customers may
obtain services like those of both Applicant and Registrant. Accordingly, we find
that this du Pont factor weighs in favor of a finding of likelihood of confusion.
5. Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. On the present

15 “Applicant also contends that ‘DOMINO’ is a weak mark as evidenced by the third party
registrations and uses thereof hereinbefore referred to. This contention would be relevant,
however, only if opposer were seeking protection of the mark in a field other than that in
which it had previously been used, and such is not here the case.” 159 USPQ at 681.
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record, we find that Applicant’s mark so resembles the cited mark as to be likely,
when used in connection with Applicant’s services, to cause confusion as to the
source of Applicant’s services.
Decision: The refusal to register is affirmed.