Innovation Law Group, Ltd.

Trademark Trial and Appeal Board

Sep 26, 2005

No. 76508351 (T.T.A.B. Sep. 26, 2005)

Mailed: September 26, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Innovation Law Group, Ltd.
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Serial No. 76508351
_______

Jacques M. Dulin and Virginia P. Shogren of Innovation Law
Group, Ltd. for Innovation Law Group, Ltd.

Tracy Whittaker-Brown, Trademark Examining Attorney, Law
Office 111 (Craig D. Taylor, Managing Attorney).
_______

Before Quinn, Chapman and Drost, Administrative Trademark
Judges.

Opinion by Chapman, Administrative Trademark Judge:
On April 21, 2003, Innovation Law Group, Ltd. (a
California corporation with a business address in Sequim,
Washington) filed an application to register on the
Principal Register the mark GOT IDEA?...CALL ILG! for
“legal services relating to intellectual property law and
strategy, domestic and foreign patents, licensing, trade
secrets, trademarks and copyrights” in International Class
42. The application is based on applicant’s clamed dates
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser. No. 76508351
2
of first use and first use in commerce of November 8, 2002
and December 10, 2002, respectively.
The Examining Attorney has refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the ground that applicant’s mark, when used in connection
with applicant’s identified services, would be likely to
cause confusion, mistake or deception with the registered
mark GOT AN IDEA? for “legal services” in International
Class 42.1
When the refusal to register was made final, applicant
appealed to the Board. Applicant and the Examining
Attorney have filed briefs. Applicant did not request an
oral hearing.
Our determination of likelihood of confusion is based
on an analysis of all of the 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 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities of

1 Registration No. 2758736, issued September 2, 2003, to Hinkle &
O’Bradovich, LLC. The claimed date of first use and first use in
commerce is January 1, 2001.
Ser. No. 76508351
3
the marks and the similarities of the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also,
In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
We initially consider the first du Pont factor, which
is “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, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005); and In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
It is well settled that marks must be considered in
their entireties because the commercial impression of a
mark on an ordinary consumer is created by the mark as a
whole, not by its component parts. This principle is based
on the common sense observation that the commercial
impression is created by the purchaser’s general reaction
to a mark in the marketplace, not from a meticulous
comparison of it to others to assess possible legal
differences or similarities. See 3 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition, §23:41 (4th
ed. 2005). See also, Dassler KG v. Roller Derby Skate
Corp., 206 USPQ 255 (TTAB 1980). Moreover, the differences
Ser. No. 76508351
4
in the marks may not be recalled by purchasers seeing the
marks at separate times. The emphasis in determining
likelihood of confusion is not on a side-by-side comparison
of the marks, but rather must be on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of the many trademarks
encountered; that is, the purchaser’s fallibility of memory
over a period of time must be kept in mind. See Grandpa
Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477 F.2d 586,
177 USPQ 573 (CCPA 1973); and Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d unpub’d
(Fed. Cir., June 5, 1992).
In this case, registrant’s mark is the phrase GOT AN
IDEA?, and applicant’s mark begins with the phrase GOT
IDEA? and then applicant’s mark adds ...CALL ILG!, a
specific reference to applicant. These marks, GOT AN IDEA?
and GOT IDEA?...CALL ILG, are similar in sound and
appearance. It is often the first term or portion of a
mark which is most likely to be impressed upon the mind of
a purchaser and be remembered by the purchaser. See Presto
Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895,
1897 (TTAB 1988).
Clearly the cited mark and the first portion of
applicant’s mark evoke the same connotation, which is “do
Ser. No. 76508351
5
you have an idea?” The fact that applicant left out the
article “an” does not alter the meaning of the phrase to
consumers. The implicit connotation of the question “do
you have an idea?” is that if you have an idea, then you
should contact the entity offering the service. That is,
consumers would perceive the marks as asking if they have
an idea, then presumably they would want to contact the
entity that offers the service. The fact that applicant’s
mark includes specific information referring to itself by
its initials ILG and emphatically invites consumers to
“CALL ILG!” is not a sufficient difference to avoid
confusion. The addition of a word (or two words) to a
registered mark does not generally avoid confusion. See
Menendez v. Holt, 128 U.S. 514 (1888); Coca-Cola Bottling
Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188
USPQ 105 (CCPA 1975); and In re El Torito Restaurants Inc.,
9 USPQ2d 2002 (TTAB 1988).
We find that the cited mark and applicant’s mark are
highly similar in sound, appearance, connotation and
commercial impression.
Turning next to a consideration of the respective
services, it has been repeatedly held that, when evaluating
the issue of likelihood of confusion in Board proceedings
regarding the registrability of marks, the Board is
Ser. No. 76508351
6
constrained to compare the services as identified in the
application with the services as identified in the
registration. See Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990); and Canadian Imperial Bank v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). As the Court of
Appeals for the Federal Circuit stated in Octocom, supra,
16 USPQ2d at 1787:
The authority is legion that the
question of the registrability of an
applicant’s mark must be decided on the
basis of the identification of goods
[services] set forth in the application
regardless of what the record may
reveal as to the particular nature of
applicant’s goods [services], the
particular channels of trade or the
class of purchasers to which sales of
the goods [services] are directed.

And later the Court reiterated in Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000):
Proceedings before the Board are
concerned with registrability and not
use of a mark. Accordingly, the
identification of goods/services
statement in the registration, not the
goods/services actually used by the
registrant, frames the issue.

Applicant’s services are identified as “legal services
relating to intellectual property law and strategy,
domestic and foreign patents, licensing, trade secrets,
Ser. No. 76508351
7
trademarks and copyrights.” Registrant’s services are
identified as “legal services.”
Clearly, the services identified in the cited
registration (“legal services”) encompass the more specific
legal services in the field of intellectual property
offered by applicant.
The identifications of services of both applicant and
registrant are not restricted as to trade channels or
purchasers. Therefore, we must presume in this
administrative proceeding that the registrant’s services
are offered through all normal channels of trade to all the
usual classes of purchasers for its general “legal
services” (which would include as consumers those seeking
legal services for intellectual property law issues). See
Octocom Systems Inc. v. Houston Computers Services Inc.,
supra; and Canadian Imperial Bank v. Wells Fargo Bank,
supra.
Applicant’s argument and submissions that the cited
mark is weak, as it is generic (brief, p. 2 and reply
brief, p. 2), is not persuasive.2 The existence of five

2 Applicant’s argument that the registered mark is generic is an
impermissible collateral attack on the cited registration. See
Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b). (We note
that the cited registration issued on the Principal Register with
no reference to Section 2(f) of the Trademark Act and no
disclaimer.)
Ser. No. 76508351
8
third-party registrations, all for legal services and all
of which include the word “IDEA,” does not persuade us to
reach a different conclusion in this case. The third-party
registered marks (e.g., THE IDEA ATTORNEYS, IDEA TO IPO,
EVERY IDEA IS UNIQUE) create different commercial
impressions from the commercial impressions engendered by
the marks involved herein (GOT AN IDEA? and GOT
IDEA?...CALL ILG!).
Also, applicant strongly contends that the Examining
Attorney “completely ignores PRIOR Registration 2,473,301
for ‘GOT AN IDEA? GETSTARTEDHERE.COM’” (emphasis in
original) (reply brief, p. 2); and that “why was [the cited
registration for the mark GOT AN IDEA?] allowed over the
[GOT AN IDEA? GETSTARTEDHERE.COM] mark?” and “while the TMO
[Trademark Office] may not be troubled by grievous and
glaring inconsistencies, it is a serious issue for
applicants and registrants” (reply brief, p. 3).
In the Final Office action (unnumbered page 3), the
Examining Attorney specifically referred to this
registration (No. 2473301), noting that it is for financial
consultation services and explaining that “financial
consultation is unrelated to legal services [within the
meaning of the Trademark Act]” and there are “diverse
channels of trade.”
Ser. No. 76508351
9
As the Examining Attorney had explained, the services
in Registration No. 2473301 (“financial consultation
services, namely, providing assistance to new and small
businesses in the field of capital funding and
investments”) are significantly different from the cited
registrant’s identified “legal services.” Moreover, even
if one considers the identified services of the cited
registrant and the third-party registrant to be related, it
does not justify registration of another mark which is
likely to cause confusion. Each case must be decided on
its own merits, on the basis of the record therein. See In
re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed.
Cir. 2001). See also, In re Kent-Gamebore Corp., 59 USPQ2d
1373 (TTAB 2001).
Applicant’s argument that the cited registrant “can
oppose if so inclined” (reply brief, p. 4) is also
unpersuasive. The applicant in the case of In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997) made this argument, and the Court responded as
follows (at 1535):
Dixie argues alternatively that the PTO
should pass the mark to publication and
allow the registrant to oppose the
applicant’s mark, if it chooses. But
it is the duty of the PTO and this
court to determine whether there is a
likelihood of confusion between two
Ser. No. 76508351
10
marks. (Citation omitted.) It is also
our duty “to afford rights to
registrants without constantly
subjecting them to the financial and
other burdens of opposition
proceedings.” (Citations omitted.)
Otherwise protecting their rights under
the Lanham Act would be an onerous
burden for registrants.

Considering all of the relevant du Pont factors, we
conclude that consumers familiar with registrant’s legal
services offered under the mark GOT AN IDEA? would be
likely to believe, upon encountering applicant’s mark GOT
IDEA?...CALL ILG! for legal services relating to
intellectual property law, that both originate with or are
somehow associated with or sponsored by the same entity.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.