Innovation Law Group, Ltd.v.Ryan E. Alley

Trademark Trial and Appeal Board

May 22, 2015

No. 91202418 (T.T.A.B. May. 22, 2015)

This Opinion is Not a Precedent of the TTAB Hearing: May 13, 2015 Mailed: May 22, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Innovation Law Group, Ltd. v. Alley _____ Opposition No. 91202418 _____ Neil D. Greenstein of Techmark for Innovation Law Group, Ltd. Ryan E. Alley of Ryan Alley Intellectual Property Law for Ryan E. Alley. _____ Before Bergsman, Shaw and Goodman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Ryan E. Alley (“Applicant”) seeks registration on the Principal Register of the mark BUILDING ASSETS FROM IDEAS (in standard characters) for “legal services in intellectual property, including patent, trademark, copyright, and trade secret procurement, transfer, and enforcement,” in Class 45.1 1 Application Serial No. 85342228 was filed on June 9, 2011, based upon Applicant’s claim of first use anywhere at least as early as May 26, 2011 and use in commerce since at least as early as June 2, 2011. Opposition No. 91202418 - 2 - Innovation Law Group, Ltd. (“Opposer”) opposed the registration of Applicant’s mark on the ground of likelihood of confusion pursuant to Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), alleging that Applicant’s mark is likely to cause confusion with its previously registered marks listed below: 1. Registration No. 2090854 for the mark TRANSFORMING IDEAS INTO BUSINESS ASSETS (typed drawing form) for “legal services relating to intellectual property law and strategy,” in Class 42;2 2. Registration No. 3129158 for the mark TRANSFORMING IDEAS INTO BUSINESS ASSETS (standard characters) for the services listed below: Business consultation in the field of intellectual property issues, innovation management, corporate formation, development and launching of new products, processes and services and transactions involving intellectual property assets, in Class 35; and Consultation services in the fields of new product development, technology transfer, protection and licensing of intellectual property, and patent and industrial property licensing, in Class 42;3 and 3. Registration No. 3215068 for the mark INNOVATION LAW GROUP TRANSFORMING IDEAS INTO BUSINESS ASSETS and design, shown below, for “business consultation services in the field of business performance and strategy,” in Class 35.4 2 Registered August 26, 1997; renewed. Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings. A typed mark is the legal equivalent of a standard character mark. TMEP § 807.03(i) (January 2015). 3 Registered August 15, 2006; Sections 8 and 15 affidavits accepted and acknowledged. 4 Registered March 6, 2007; Sections 8 and 15 affidavits accepted and acknowledged. Opposition No. 91202418 - 3 - Applicant, in his Answer, denied the salient allegations in the Notice of Opposition. I. Preliminary Issues. A. Stipulation for testimony affidavits or declarations in lieu of depositions. On October 24, 2013, the parties filed a stipulation to use affidavits or declarations in lieu of depositions.5 The stipulation was approved in an Order dated October 31, 2013.6 B. Applicant’s cross-motion to perfect his declarations. On March 17, 2014, Opposer filed a motion to strike Applicant’s declarations on the ground that they were not properly verified as being under oath.7 In response, Applicant moved for leave to properly execute his declarations.8 In an Order dated June 30, 2014, the Board granted Applicant’s cross-motion for leave to properly execute his declarations.9 Applicant refiled properly executed declarations on July 15, 2014.10 5 35 TTABVUE. Citations to the record in this opinion are to the TTABVUE docket entry number and the electronic page number where the document or testimony appears. 6 37 TTABVUE. 7 46 TTABVUE. 8 47 TTABVUE. 9 56 TTABVUE. The Board’s Order and Opposer’s Brief on the case, where Opposer renewed his objection to the admissibility of Applicant’s declarations crossed in the mail. For purposes of clarity, the Board reiterates the holding in its June 30, 2014 Order. 10 60 TTABVUE and 61 TTABVUE. Opposition No. 91202418 - 4 - C. Applicant’s motion to resubmit his brief. On July 15, 2014, one day after filing his brief on the case and one day after the due date for filing his brief, Applicant filed a request to “re-submit[] its main brief … to replace the Brief of July 14 containing many errors”11 with a copy of the corrected brief. Opposer objected to the late filing of the corrected brief on the ground that Applicant “added additional case law and entirely new arguments.”12 Because the Board decides cases based on the evidence of record, and not arguments, Applicant’s request to file a corrected brief is granted. D. Numerous objections lodged by the parties. The parties have lodged numerous objections. None of the evidence sought to be excluded is outcome determinative. Moreover, the Board is capable of weighing the relevance and strength or weakness of the objected-to testimony and evidence, including any inherent limitations, and this precludes the need to strike the testimony and evidence. Given these facts, coupled with the number of objections, we see no compelling reason to discuss the specific objections in detail. As necessary and appropriate, we will point out any limitations applied to the evidence or otherwise note that the evidence cannot be relied upon in the manner sought. We have considered all of the testimony and evidence introduced into the record. In doing so, we have kept in mind the various objections raised by the parties and we have accorded whatever probative value the subject testimony and evidence merit. 11 59 TTABVUE 2. 12 66 TTABVUE 7. Opposition No. 91202418 - 5 - II. The Record The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the application file for the mark being opposed. The parties submitted the testimony and evidence listed below: A. Opposer’s testimony and evidence. 1. Testimony declaration of Diane van Os, the first web master of Opposer’s website and a former colleague of Opposer’s principal Jacques M. Dulin, with attached exhibits;13 2. Testimony declaration of Richard W. Parks, a mechanical engineer and businessman;14 3. Testimony declaration of Robert F. Dennis, an attorney and former colleague of Jacques M. Dulin, with attached exhibit;15 4. Testimony declaration of Laurel Black, expert witness on marketing in the field of “corporate identity, brand building, communications and business collateral,” with attached exhibits;16 5. Testimony declaration of Kirk V. Thomas, a software engineer;17 6. Testimony declaration of Jacques M. Dulin, the owner of Opposer’s marks, with attached exhibits;18 13 38 TTABVUE 2-10. 14 38 TTABVUE 11-14. 15 38 TTABVUE 15-21. 16 38 TTABVUE 22-27. 17 38 TTABVUE 28-35. Opposition No. 91202418 - 6 - 7. Rebuttal testimony declaration of Jacques M. Dulin with attached exhibits;19 and 8. Rebuttal testimony declaration of Laurel Black.20 B. Applicant’s testimony and evidence. 1. Testimony declaration of Ryan E. Alley proffered to challenge the testimony declaration of Jacques M. Dulin;21 and 2. Testimony declaration of Ryan E. Alley with attached exhibits.22 III. Standing Opposer introduced copies of its pleaded registrations showing the current status and title to the registrations printed from the electronic databases of the USPTO in the declaration of Jacques M. Dulin.23 Because Opposer has properly made of record its pleaded registrations, Opposer has established its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 18 63 TTABVUE 2-55. See paragraph 6 at 63 TTABVUE 5 where Mr. Dulin attested that he is the owner of the marks in the pleaded registrations. “I adopted and used the mark ‘TRANSFORMING IDEAS INTO BUSINESS ASSETS’ in 1996, promptly applied for federal registration in connection with IP legal services, and received Federal Trademark Registration No. 2,090,854 in 1997. I have continuously used that mark - - first as a sole proprietor and then through Innovation Law Group, Ltd., my professional corporation, since its first use in 1996 in connection with my IP legal services.” 19 46 TTABVUE 2-18. 20 46 TTABVUE 19-25. 21 60 TTABVUE. 22 43 TTABVUE. Pursuant to the Board’s June 30, 2014 Order noted above, Applicant filed a properly executed declaration at 61 TTABVUE. In discussing Applicant’s testimony and evidence, the Board will reference 43 TTABVUE because the exhibits are affixed to that TTABVUE entry. 23 63 TTABVUE 3-4 and 13-30. Opposition No. 91202418 - 7 - 2000); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).24 IV. Priority Because Opposer has properly made of record its pleaded registrations, Section 2(d) priority is not an issue in the opposition as to the marks and the services covered by the pleaded registrations. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).25 V. Likelihood of Confusion 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 Co., 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 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.”). These factors, and any other relevant du Pont factors in the proceeding now before us, will be considered in this decision. 24 Applicant, in his brief, admitted that Opposer has standing. 59 TTABVUE 8. 25 Applicant, in his brief, admitted that Opposer has priority. 59 TTABVUE 8. Applicant also stipulated that Opposer has priority. 15 TTABVUE 2. Opposition No. 91202418 - 8 - We focus our analysis on Registration No. 2090854 for the mark TRANSFORMING IDEAS INTO BUSINESS ASSETS (typed drawing form) for “legal services relating to intellectual property law and strategy” because if we do not find a likelihood of confusion with that mark and its associated services, then there would be no likelihood of confusion with the marks in the other pleaded registrations. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). A. The similarity or dissimilarity and nature of the services, established, likely- to-continue channels of trade, and classes of consumers. Applicant is seeking to register his mark for “legal services in intellectual property, including patent, trademark, copyright, and trade secret procurement, transfer, and enforcement.” The description of services in Opposer’s pleaded registration is “legal services relating to intellectual property law and strategy.” For purposes of determining likelihood of confusion, the services are identical. Because the services described in the application and Opposer’s registration are identical, we must presume that the channels of trade and classes of purchasers are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same); American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, Opposition No. 91202418 - 9 - 1028 (TTAB 2011) (where there are legally identical services, marketing channels of trade and targeted classes of consumers are the same). B. The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing. Opposer argues that “because a significant portion of the consumers shopping for the Parties' respective IP legal services are ordinary people who think they have invented something, as opposed to sophisticated corporations or in-house counsel,” the average purchaser is not especially sophisticated in selecting intellectual property counsel.26 Opposer references the following testimony: 1. Diane van Os Testimony Declaration ¶ 6 - “most consumers of intellectual property legal services are not sophisticated regarding the legal services industry and that such consumers are not highly selective in evaluating their lawyer options.”;27 2. Robert Dennis Testimony Declaration ¶ 13 - “[m]any [IP] clients … are quite unsophisticated.”;28 3. Jacques M. Dulin Rebuttal Declaration ¶ 8 - listing numerous “examples of the non-commercial and non-sophisticated client types that fall within providing ‘Legal services in intellectual property, including patent, trademark, copyright, and trade secret procurement, transfer, and enforcement.’”29 26 Opposer’s Brief, p. 34 (55 TTABVUE 35). 27 38 TTABVUE 4. 28 38 TTABVUE 19. 29 53 TTABVUE 4-5. Opposition No. 91202418 - 10 - Regarding the importance of the tagline, Mr. Dulin provided the testimony below: 7. … [P]rospective clients frequently make positive remarks about [Opposer’s] mark, TRANSFORMING IDEAS INTO BUSINESS ASSETS. For example, clients have indicated to me that [Opposer’s] mark piques their interest in what we do, and motivates them to contact us. We at [Opposer] do not even keep track of all the positive comments we have received about [Opposer’s] mark, but we have repeatedly heard that it is a catchy slogan that is “cool” and communicates the general feeling that we understand our clients’ needs.30 In essence, Mr. Dulin testified that Opposer’s “catchy slogan that is ‘cool’” generates initial interest on behalf of potential intellectual property clients. This testimony arguably supports Opposer’s contention that consumers of intellectual property legal services do not exercise a high degree of care when selecting counsel as they are influenced by a “cool” and “catchy” tagline rather than an analytical and logical approach to selecting counsel. Applicant argues, to the contrary, that consumers of intellectual property services exercise a high degree of care when selecting their intellectual property provider. For the past three years in my current solo practice and for over four years with a large IP boutique, I have been involved with client servicing and development for a broad range of consumers in all areas of IP, including patents, trademarks, copyrights, and trade secrets. These consumers have included completely IP-unaware individuals and startup companies, small and medium sized US firms involved with IP only as an enforcement target, and large international conglomerates seeking 30 53 TTABVUE 4. Opposition No. 91202418 - 11 - maximal IP procurement. From my experience, all potential and engaged consumers of IP legal services exercise extreme care in selecting IP legal services providers, due to the identity-driven nature of professional legal services, the remarkable cost of IP legal services, and the highly-commercial nature of IP involvement.31 To support his argument, Applicant introduced Exhibits 9-18 to his declaration.32 Those exhibits “are articles and pamphlets from providers, public interest websites, and bar associations discussing how consumers should select legal service providers.”33 Presumably, consumers use an Internet search engine to inquire “how to select an intellectual property attorney,” and the Internet search engine retrieves one of the proffered articles, or something similar. Applicant testified that “consumer selection of legal services providers is extremely identity driven, being most influenced by referrals and in-person introductions that exchange personal information about the provider and relatively much less by advertising.”34 According to Applicant, the hiring process generally includes an initial interview, including information about Applicant’s experience and expertise, costs, and information regarding how the legal services are provided and billed.35 On the other hand, Applicant testified that he has “never been 31 Alley Declaration ¶ 12 (43 TTABVUE 8-9). 32 43 TTABVUE 163-197. 33 Alley Declaration ¶ 16 (43 TTABVUE 10). 34 Alley Declaration ¶ 16 (43 TTABVUE 11). 35 Alley Declaration ¶ 17 (43 TTABVUE 11). Opposition No. 91202418 - 12 - identified by or asked about [his] slogan ‘Building Assets from Ideas’ in these conversations.”36 Laurel Black, Opposer’s expert witness on marketing in the field of “corporate identity, brand building, communications and business collateral,” testified to the following distinction between “sophisticated” and “unsophisticated” inventors: The taglines under consideration here [Applicant’s BUILDING ASSETS FROM IDEAS and Opposer’s TRANSFORMING IDEAS INTO BUSINESS ASSETS] are also distinctive in providing this goal: the development of the idea into an asset. For unsophisticated inventors, the taglines crystallize a path to a goal. For sophisticated inventors, or entrepreneurs and executives whose responsibility is to protect the Intellectual Property of a company, the tagline appears concisely expressive, and therefore shows that the firm understands that the company needs to convert its IP into assets, exactly what the prospect seeks.37 With the exception of Mr. Dulin’s testimony about Opposer’s “cool” and “catchy” tagline, Opposer’s witnesses provide only broad brush conclusions that consumers of intellectual property law services do not necessarily exercise a high degree of care. Only Applicant provides any testimony regarding the process those consumers use to select intellectual property counsel: that is, consumers for intellectual property services make their purchasing decisions through referrals and interviews. However, Applicant testified that he is not aware that the tagline or service mark at 36 Alley Declaration ¶ 17 (43 TTABVUE 11-12). 37 Black Declaration ¶ 6 (38 TTABVUE 24). Ms. Black also testified that Applicant’s testimony is not reliable because it was based on “unsupported and sweeping generalizations … which are on their face unprovable and self-serving.” Black Rebuttal Declaration ¶ 6 (53 TTABVUE 21). On the other hand, Ms. Black did not proffer any opinions on the level of purchasing care exercised by consumers of intellectual property services of what role the tagline plays in the selection of intellectual property counsel. Opposition No. 91202418 - 13 - issue in this proceeding played any role in the purchasing decision which is contrary to Mr. Dulin’s testimony that the tagline creates initial interest on behalf of potential clients. Based on the nature of the services at issue, we find that purchasers selecting intellectual property counsel would exercise a high degree of care. For example, selecting intellectual property counsel is not an everyday purchase; intellectual property law services involve special laws requiring consultation with experts; intellectual property law services are expensive; and consumers have a specific purpose for requiring intellectual property counsel. Nothing in the record is to the contrary and we do not find Mr. Dulin’s initial interest testimony persuasive. On the other hand, Applicant’s testimony about the personal referrals and interviews that characterize the selection of intellectual property counsel rings true, with the caveat that Applicant was not aware of the service mark at issue playing a role in the purchasing decision. We find that the degree of care weighs in favor of finding that there is no likelihood of confusion. C. The number and nature of similar marks in use in connection with similar services. Applicant argues that he introduced into evidence 67 purported distinct individuals or organizations using a tagline or phrase similar to the mark in Opposer’s pleaded registration - TRANSFORMING IDEAS INTO BUSINESS Opposition No. 91202418 - 14 - ASSETS.38 The following table lists the most relevant examples of law firms using the same or similar marks as taglines: Website TTABVUE Hoffmann & Baron, LLP Transforming Ideas Into Assets 43 TTABVUE 217 Jeff Schell Transforming Ideas Into Assets 43 TTABVUE 321 The Fletcher Law Firm PLLC Turning Your Ideas Into Assets 43 TTABVUE 327 Fountainhead Law Group Transforming Ideas Into Assets 43 TTABVUE 330 FirstPoint IP Turning Ideas Into Assets 43 TTABVUE 333 Scott Redmond (Patent Agent) Turning Ideas Into Assets 43 TTABVUE 336 Clock Tower Law Group Transform Ideas Into Assets39 43 TTABVUE 337 Santangelo Law Offices, P.C. Turning Ideas Into Assets 43 TTABVUE 354 38 Alley Declaration ¶ 21 (43 TTABVUE 35). We did not consider third-party use from entities outside of the United States. 39 Mr. Dulin testified that after sending the Clock Tower Law Group a protest letter, that firm agreed to stop using the tagline “Transform Ideas Into Assets.” 63 TTABVUE 7-8. Opposition No. 91202418 - 15 - Website TTABVUE Steve Gruber Intellectual Property Transforming Ideas Into Assets 43 TTABVUE 357 Boston Legal Consultant Group, LLC Turning Concepts Into Assets 43 TTABVUE 365 Wells St. John Creating Value From Ideas 43 TTABVUE 377 Greg Osterloth Securing Patents that Turn Abstract Ideas into Tangible Assets and Real Revenue 43 TTABVUE 395 AdamsIP, LLC Ideas Into Assets 43 TTABVUE 396 Bateman IP Where Innovation Becomes Assets 43 TTABVUE 400 Paul W. Fulbright, PLLC From Ideas to Profits 43 TTABVUE 403 Emerson Thomson & Bennett, LLC Ideas Are Valuable 43 TTABVUE 410 Inventa Capital PLC Turning Innovation To Capital 43 TTABVUE 411 The table below lists examples of law firms using the same or similar terms in advertising text: Website TTABVUE Clever Ventures We turn ideas into assets. We build and sell innovations …Creators of seminal disruptive-technologies used by tens … We create companies and product revolutions.40 43 TTABVUE 334 40 The excerpt from the website was not complete. Opposition No. 91202418 - 16 - Website TTABVUE The Marbury Law Group, PLLC Transforming ideas into valuable IP assets in order to gain a competitive advantage is a hallmark of our practice. 43 TTABVUE 361 Thomas/Horstemeyer Thomas Horstemeyer, LLP (Thomas/Horstemeyer) is Atlanta’s IP boutique - the largest Atlanta-based intellectual property law firm providing services in litigation, patent, copyright and trademark. … This allows us to specialize and deliver our clients the singular expertise needed to turn great ideas into valuable assets. 43 TTABVUE 371 Kelly & Krause, LP Experience matters. We are intellectual property practitioners with multiple years of IP law experience on top of years of industry experience as technologists. We create value by turning ideas into assets. 43 TTABVUE 373 Law Offices of CR Miles Having a great idea is one half of the equation. The other half is CR MILES - a team of experienced, thoughtful intellectual property attorneys with decades of experience helping some of America’s top inventors and business owners. CR MILES is the perfect firm to turn your ideas into assets. 43 TTABVUE 374 Balser & Grell IP Law, LLC A business identity, reputation, goodwill and brand are all critical in establishing a competitive edge in today’s marketplace, and investment in these areas actually equates to real profits. It is obvious then that the importance of protecting a business’ trademarks, which operate as the embodiment of the identity, reputation, goodwill, and brand attached to the business’ quality goods and services is constantly increasing. Thus, our trademark practice is one way that we help turn our clients’ ideas into assets. 43 TTABVUE 375 Opposition No. 91202418 - 17 - Website TTABVUE Bruce Berman, From Ideas To Assets: Investing Wisely In Intellectual Property. This book is advertised as “a detailed overview of what intellectual property assets are and how they work.” 43 TTABVUE 379 Swanson & Bratschun, L.L.C. We will help you look at your breakthrough engineering or life science discovery from every standpoint. We will guide you from idea to asset. 43 TTABVUE 398 Opposer asserts that some of the third-party uses are not trademark use but fair use of a term used in its primary descriptive sense.41 For example, The Marbury Law Group, PLLC (Marburylaw.com) uses a similar term in the following manner: Strategic Intellectual Property Counselling Transforming ideas into valuable IP assets in order to gain a competitive advantage is a hallmark of our practice.42 Likewise, Thomas|Horstemeyer, LLP (tkhr.com) uses a similar term in text, not as a trademark, as shown below: Thomas Horstemeyer, LLP (Thomas|Horstemeyer) is Atlanta’s IP boutique - the largest Atlanta-based intellectual property law firm providing services in litigation, patent, copyright and trademark. Our attorneys practice solely in IP law and have a wide variety of education and industry experience. This allows us to specialize - and deliver our clients the singular expertise to turn great ideas into valuable assets.43 The same with Kelly & Krause, L.P. (Kelly-krause.com): 41 Opposer’s Brief, pp. 36-37 (55 TTABVUE 37-38). 42 43 TTABVUE 360-361. 43 43 TTABVUE 371. Opposition No. 91202418 - 18 - Experience matters. We are intellectual property practitioners with multiple years of IP law experience on top of years of industry experience as technologists. We create value by turning ideas into assets.44 Opposer also asserts that many of the third-party uses are not similar to Opposer’s mark - TRANSFORMING IDEAS INTO BUSINESS ASSETS45 - citing the book title FROM IDEAS TO ASSETS: INVESTING WISELY IN INTELLECTUAL PROPERTY46 and the Emerson Thomas & Bennett, LLC (etblaw.com) webpage using the registered trademark IDEAS ARE VALUABLE as a tagline.47 The third-party use corroborates what we intuitively knew about the mark in Opposer’s pleaded registration - TRANSFORMING IDEAS INTO BUSINESS ASSETS: that is, the mark is highly suggestive. In fact, that is the essence of Laurel Black’s testimony as set forth below: 5. Both of the marks at issue are word marks as distinct from logos or composite marks (logos + words), and both function as branding “taglines,” telling the prospective client the strategic goals the respective firms offer, with respect to providing the legal services. Taglines, also known as slogans, function to provide prospects with a condensation of the essence of the service or product offered, so that they can quickly “get” what the firm can do for them. Such taglines are intended, in connection with services, to motivate the prospect to make initial contact, or in the case of an Internet presence, to click on the “Contact Us” button on the firms’ web page. Such contact motivation is a key goal of professional services brand development taglines. 44 43 TTABVUE 373. 45 Opposer’s Brief, p. 37 (55 TTABVUE 38). 46 43 TTABVUE 379. 47 43 TTABVUE 409. Opposition No. 91202418 - 19 - 6. In this regard, the Registered mark of the Opposer is very distinctive in telling a prospect what the Opposer’s suite of services does for them. It conveys a sense of process for the prospect, who we know has an idea, yet who may not have a clear concept of his or her goal. The taglines under consideration here are also distinctive in providing this goal: the development of the idea into an asset. For unsophisticated inventors, the taglines crystallize a path to a goal. For sophisticated inventors, or entrepreneurs and executives whose responsibility is to protect the Intellectual Property of a company, the tagline appears concisely expressive, and therefore shows that the firm understands that the company needs to convert its IP assets, exactly what the prospect seeks. The insights provided by the tagline also self-evidently serve a client retention and loyalty-building purpose.48 The facts presented in this case show that there are many third-party users of marks or taglines that are similar to the mark in Opposer’s pleaded registration in connection with intellectual property law services. Not surprisingly, the parties contend that the roles the marks play in their marketing efforts differ. As noted above by Applicant, he is not aware that the tagline or service mark at issue in this proceeding plays any role in the purchasing decision.49 On the other hand, as recounted by Mr. Dulin above, the tagline generated initial interest on the part of potential clients. While we find that this factor weighs against finding that there is a likelihood of confusion, we must keep in mind what the Court of Customs and Patent Appeals, the predecessor or our primary reviewing court, said in Matsushita Elec. Indus. Co., 48 38 TTABVUE 23-24. 49 Laurel Black testified that “[t]he insights provided by the tagline also self-evidently serve a client retention and loyalty-building purpose.” 38 TTABVUE 24. It is not self-evident to us how the tagline serves those purposes in that the performance of counsel is going to drive client retention, and loyalty lasts only so long as counsel serves a purpose. Opposition No. 91202418 - 20 - Ltd. v. Nat’l Steel Constr. Co., 442 F.2d 1383, 170 USPQ 98, 99 (CCPA 1971), in finding likelihood of confusion between uses of NATIONAL in a cancellation proceeding: Neither trademarks nor the public are adequately protected unless decisions in cases of this kind are based on a realistic appraisal of the likelihood of purchasers or prospective purchasers being confused as to source regardless of theoretical “weakness” of a mark. With that in mind, we turn to the similarity of the marks. D. The similarity or dissimilarity of the marks in their entireties in terms of appearance, sound, connotation and commercial impression. 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. du Pont, 177 USPQ at 567. In a particular case, “two marks may be found to be confusingly similar if there are sufficient similarities in terms of sound or visual appearance or connotation.” Kabushiki Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29 USPQ2d 1317, 1318 (TTAB 1991), aff’d mem., 979 F.2d 216 (Fed. Cir. 1992) (emphasis in the original; citation omitted). See also Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1519 (TTAB 2009), citing Krim-Ko Corp. v. The Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”). In comparing the marks, we are mindful that where, as here, the services are identical, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the services. Coach Opposition No. 91202418 - 21 - Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). Finally, “[t]he 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, 101 USPQ2d at 1721 (citation omitted). See also San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (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. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Applicant’s mark is BUILDING ASSETS FROM IDEAS and the mark in Opposer’s pleaded registration is TRANSFORMING IDEAS INTO BUSINESS ASSETS. The marks have similar meanings and engender similar commercial impressions. We find that both marks mean and engender the commercial Opposition No. 91202418 - 22 - impression that the law firms help their clients develop ideas into assets. See also the Laurel Black testimony discussed infra. With respect to the appearance and sound of the marks, we note that the marks are not identical. Nevertheless, they are similar because they share the words “Assets” and “Ideas” in taglines that mean the same thing. Trademark law does not require exact similitude to conclude that two marks are similar. Hercules Inc. v. Nat’l Starch and Chem. Corp., 223 USPQ 1244, 1246 (TTAB 1984). Thus, the differences between the marks at issue do not obviate their similarity. In view of the foregoing, we find that the marks are similar in their entireties in terms of appearance, sound, meaning and commercial impression. E. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion. The absence of any reported instances of confusion is meaningful only if the record indicates appreciable and continuous use by Applicant of his mark for a significant period of time in the same markets as those served by Opposer under its mark. Citigroup Inc. v. Capital City Bank Group, Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In other words, for the absence of actual confusion to be probative, there must have been a reasonable opportunity for confusion to have occurred. Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007) (the probative value of the absence of actual confusion depends upon there being a significant opportunity for actual confusion to have occurred); Red Carpet Corp. v. Johnstown American Enters. Opposition No. 91202418 - 23 - Inc., 7 USPQ2d 1404, 1406-1407 (TTAB 1988); Central Soya Co., Inc. v. North American Plant Breeders, 212 USPQ 37, 48 (TTAB 1981) (“the absence of actual confusion over a reasonable period of time might well suggest that the likelihood of confusion is only a remote possibility with little probability of occurring”). Applicant began using his mark BUILDING ASSETS FROM IDEAS in May 2011.50 Since Opposer’s testimony period closed December 2, 2013, there have been two and one-half years of simultaneous use of the parties’ marks without any reported instances of confusion. Although Applicant is licensed to practice law in California and Virginia, he has advertised on the Internet which is national in scope.51 There is no other testimony or evidence regarding Applicant’s advertising or geographic trading area. On the other hand, Mr. Dulin, on behalf of Opposer, testified that he has an “active practice as an IP lawyer based in Washington state, and serve[s] clients primarily in California, Illinois, Colorado, Pennsylvania, Michigan, Florida, Kansas, Arizona, and Washington.”52 In addition to Internet advertising, Opposer’s mark has been advertised on a firm truck in California, Washington, Oregon, Idaho, Utah, Wyoming and Colorado.53 Because we do not have any evidence regarding the extent of Applicant’s advertising or the geographic scope of his practice, we cannot make a finding as to 50 43 TTABVUE 5. 51 43 TTABVUE 4 and 6. 52 39 TTABVUE 10 and 53 TTABVUE 2. 53 39 TTABVUE 9. Opposition No. 91202418 - 24 - whether after two and one-half years of simultaneous use, there has been an reasonable opportunity of confusion to have occurred. Accordingly, we find that this du Pont factor is neutral. F. Balancing the factors. Despite the fact that the mark in Opposer’s pleaded registration is highly suggestive and, therefore, entitled to only a narrow scope of protection or exclusivity of use and the fact that the consumers will exercise a high degree of consumer care in making their decision to select intellectual property counsel, because the marks are similar, the services are identical 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 BUILDING ASSETS FROM IDEAS for “legal services in intellectual property, including patent, trademark, copyright, and trade secret procurement, transfer, and enforcement” is likely to cause confusion with TRANSFORMING IDEAS INTO BUSINESS ASSETS for “legal services relating to intellectual property law and strategy.” Decision: The opposition is sustained and registration of Applicant’s mark, BUILDING ASSETS FROM IDEAS, is refused.