Ivy Legal Placement, LLC

Trademark Trial and Appeal Board

Apr 3, 2003

No. 75668451 (T.T.A.B. Apr. 3, 2003)

Mailed: April 3, 2003
Paper No. 18
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UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Ivy Legal Placement, LLC
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Serial No. 75/668,451
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Ivy Legal Placement, LLC, pro se.
M. Catherine Faint, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
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Before Cissel, Seeherman and Drost, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Ivy Legal Placement, LLC has appealed from the final
refusal of the Trademark Examining Attorney to register IVY
LEGAL PLACEMENT as a mark for “professional legal
recruitment services.”1 Registration has been refused
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.
1 Application Serial No. 75/668,451, filed March 25, 1999, and
asserting a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/668,451
2
1052(d), on the ground that applicant’s mark so resembles
the mark IVY ASSOCIATES (with the word ASSOCIATES
disclaimed), registered for “attorney placement consulting
services”2 that, if used on applicant’s identified services,
it would be likely to cause confusion or mistake or to
deceive. The Examining Attorney has also made final,
pursuant to Section 6(a) of the Act, 15 U.S.C. 1056(a), a
requirement for a disclaimer of LEGAL PLACEMENT.
Applicant and the Examining Attorney have filed appeal
briefs;3 an oral hearing was not requested.
We turn first to the requirement for a disclaimer. In
applicant’s request for reconsideration, it offered a
disclaimer of LEGAL PLACEMENT “in the event the Examining
Attorney reverses her determination [of the Section 2(d)
refusal] and approves the proposed mark for registration.”
As the Examining Attorney noted in her appeal brief, this
conditional offer does not constitute a disclaimer of the
2 Registration No. 1,690,442, issued June 2, 1992; Section 8 and
15 affidavits filed; renewed.
3 Applicant’s brief does not comply with Trademark Rule
2.142(b)(1), which requires, inter alia, that briefs be double
spaced and in at least pica or eleven-point type. Because it
appears that applicant’s brief would have been within the twenty-
five limit set forth in the rule if the brief had been submitted
in the appropriate format, the Board has exercised its discretion
and considered the brief. However, applicant is advised that, in
future, strict compliance with the rules is expected.
Ser No. 75/668,451
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term. Accordingly, we have considered the acceptability of
the Examining Attorney’s requirement.
Section 6(a) of the Trademark Act provides that the
Director may require an applicant to disclaim an
unregistrable component of a mark otherwise registrable.
Section 2(e)(1) of the Act prohibits the registration of
matter that is merely descriptive of the applicant’s goods
or services.
There is no dispute that the term LEGAL PLACEMENT is
descriptive of legal recruitment services. Applicant
concedes that LEGAL PLACEMENT means placements in the field
of law. Brief, p. 4. However, applicant argues that no
disclaimer is required because LEGAL PLACEMENT as used in
the mark IVY LEGAL PLACEMENT forms a double entendre,
playing on the sound of LEGAL following IVY as indicating
“Ivy League” and suggesting that applicant’s candidates are
graduates of Ivy League or other top tier schools.
We are not persuaded by this argument. Although there
is a similarity in sound between the first part of LEGAL
and the word LEAGUE, we do not believe that consumers are
likely to view IVY LEGAL PLACEMENT as a unitary term, such
that the clear descriptive meaning of LEGAL PLACEMENT will
Ser No. 75/668,451
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be subsumed in a reference to the IVY LEAGUE.4 Thus, this
situation differs from that in, for example, In re Colonial
Stores Incorporated, 394 F.2d 549, 157 USPQ 382 (CCPA
1968), in which the Court stated that, while the individual
terms “sugar” and “spice” were descriptive of bakery
products, when combined as the mark SUGAR & SPICE they lost
their merely descriptive significance, and instead
indicated the nursery rhyme and its reference to
“everything nice.” In the present case, the words LEGAL
PLACEMENT retain their descriptive significance in the mark
IVY LEGAL PLACEMENT, and therefore we affirm the
requirement for a disclaimer.
This brings us to the issue of likelihood of
confusion. Our determination of this issue is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors set forth in In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In
any likelihood of confusion analysis, two key
4 In its brief applicant makes the comment that “Upon hearing
the name of Applicant’s firm, professionals at law firms, banks
and Fortune 500 corporations routinely acknowledge the double
entendre.” p. 11. Aside from the anecdotal nature of this
statement, it cannot be considered as evidence because, under
Trademark Rule 2.142(d), the record must be complete as of the
filing of the appeal. For similar reasons, applicant’s statement
in its brief that it was founded in 1998 cannot be considered as
evidence that it began using the mark at that time. The
application was filed in 1999 based on an asserted intention to
use the mark, not on a claim of actual use in commerce.
Ser No. 75/668,451
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considerations are the similarities between the marks and
the similarities between the goods [or services].
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
Applicant’s services are identified as professional
legal recruitment services. The cited registration is for
attorney placement consulting services. The services,
thus, are in part identical, as applicant’s services
include attorney placement/recruitment.
We now turn to a consideration of the marks, keeping
in mind that when marks would appear on virtually identical
goods or services, the degree of similarity necessary to
support a conclusion of likely confusion declines. Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
Although marks must be compared in their entireties,
there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular
feature of a mark. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749 (Fed. Cir. 1985). In this case, IVY is
the dominant feature of both applicant’s mark and the cited
mark. The word ASSOCIATES in the cited mark, which has
been disclaimed, is descriptive, and, as we discussed in
connection with the disclaimer requirement, so is the term
Ser No. 75/668,451
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LEGAL PLACEMENT in applicant’s mark. Thus, it is the word
IVY in each mark that consumers will look to as the source-
identifying element. The differences in appearance and
pronunciation resulting from the additional descriptive
words in each mark are not sufficient to distinguish the
marks.
As for the connotation of the marks, even if we accept
applicant’s argument that IVY will be perceived as a
reference to the Ivy League, rather than as a purely
arbitrary term, this connotation is the same for both
marks. In this connection we take judicial notice of the
dictionary definition of “ivy” submitted with the Examining
Attorney’s brief, i.e., “Informal A university in the Ivy
League.”5 Moreover, applicant has indicated that the word
IVY “calls to mind an association with Ivy League colleges
or graduates of those institutions,” request for recon, p.
3, referring to such third-party registrations as IVY WEST
for tutoring/test-prep service for students taking college
entrance exams; IVY WISE for consulting services for
choosing colleges; IVY LEARNING CENTER for tutoring
5 The American Heritage Dictionary of the English Language, 4th
ed. 2000.
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services; and SYLVAN IVY PREP for tutoring/test
preparation, college selection services.6
Accordingly, we find that both applicant’s mark and
the cited mark convey the same commercial impressions.
Applicant has argued that IVY is a weak mark,
asserting that “a search of the term ‘ivy’ on the U.S
Trademark Electronic Search System (TESS) yields 266
records.” Request for recon, p. 3.7 The only information
about these third-party registrations and/or applications
that applicant has provided is that “the various and sundry
goods and services covered include treatments for poison
ivy, linens, cough drops, dolls and doll clothing, real
estate development and clothing.” Request for recon, p. 3.
Applicant has not provided evidence of third-party
registrations for legal placement services or employment
services of any kind. As a result, we cannot conclude that
6 Applicant did not follow the correct procedure for making
third-party registrations of record, namely, by submitting copies
of such registrations prepared by the U.S. Patent and Trademark
Office or taken from the Office database. Thus, we do not have
the registration numbers of these registrations, nor can we
confirm that the services indicated by applicant are accurate.
However, because the Examining Attorney did not object to the
mere listings in applicant’s papers at a point at which applicant
could have corrected the error, and because the Examining
Attorney has discussed some of the registrations in her brief, we
have considered the limited information regarding the
registrations which applicant has provided.
7 Again, applicant has not provided copies of the registrations,
and has referred to them in the most general of terms.
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IVY ASSOCIATES is a weak mark for attorney placement
consulting services, and is entitled to a narrow scope of
protection.
Applicant also asserts that in the legal placement
field there are firms with similar names, and that in the
metropolitan New York area such firms with registered
trademarks include Special Counsel, Hire Counsel and Co-
Counsel.8 Clearly, these examples are distinguishable from
IVY ASSOCIATES and IVY LEGAL PLACEMENT. The term
“counsel,” which is common to those marks, is a highly
descriptive term for legal placement services, such that
consumers would expect to look to other elements of the
marks to distinguish them. However, in the present case,
the common term is the arbitrary or at most suggestive term
IVY. The other marks mentioned by applicant are also
distinguishable, e.g., the dominant words in Strategic
Legal Resources and Stone Legal Resources are different,
while the dominant word IVY in applicant’s mark and the
cited mark is the same.
Applicant also argues that the consumers of legal
placement services are sophisticated and careful. In
particular, applicant asserts that after a recruitment firm
8 Again, applicant has not submitted copies of such
registrations.
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is selected, it takes time for the recruiter to place a
candidate, and that in the course of the placement process,
clients interact and develop a close relationship with the
recruiter. It appears that applicant is arguing that over
the course of these dealings if there were any confusion,
it would be corrected. However, we are concerned with the
likelihood of confusion when a consumer contacts or engages
the placement firm, not whether any misapprehension is
ultimately corrected.
Applicant also asserts that in the legal placement
business, clients typically pay placement fees ranging from
25% to 33% of the hired candidate’s annual salary, and that
it is common for recruitment firms to command a minimum of
$35,000 for placements of attorneys. Certainly a decision
as to whether to hire a particular attorney will be made
with great deliberation, but there is a distinction between
hiring an attorney and hiring legal placement services.
Because there is no indication that a customer must pay any
fees to a legal placement company until a candidate is
chosen, the decision to engage a company would not
necessarily be undertaken with the same degree of care that
would occur with the hiring of the individual attorney.
More importantly, applicant has stated that clients
frequently select recruitment firms on the basis of
Ser No. 75/668,451
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referrals, and we find that this would militate toward a
finding of likelihood of confusion. That is, a partner in
a law firm might say to a friend in another law firm that
he was pleased with the services of the IVY firm, meaning
registrant, and the second attorney might assume, upon
seeing IVY LEGAL PLACEMENT, that this was the company that
had been recommended. Even if the first attorney correctly
referred to the registrant’s services as IVY ASSOCIATES,
the second attorney could make the same assumption upon
seeing IVY LEGAL PLACEMENT. Quite simply, because the
dominant term IVY is identical in both marks, even
sophisticated customers are likely to assume that the marks
IVY ASSOCIATES and IVY LEGAL PLACEMENT indicate services
emanating from the same source.
Finally, applicant asserts that in the years that it
has been in business, it has not received any complaints
that clients or candidates have confused its services with
those of the registrant. As we previously stated in
footnote 4, there is no evidence in the record as to when
applicant first began using its mark. Even if we assume
that such use began in 1998, we cannot ascertain that there
has been a significant opportunity for confusion to occur,
such that we could assume from the lack of actual confusion
that confusion is not likely to occur. We note that
Ser No. 75/668,451
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applicant offers its services primarily in the New York
area, as well as in Boston, Washington and Houston. On the
other hand, applicant asserts, based on information it
obtained from the registrant’s website, that the registrant
is located in California and describes itself as “Northern
California’s Premier Attorney Placement Specialists.” If
these statements are accurate, that would explain any lack
of actual confusion. We would also point out that
applicant has not provided any information as to the amount
of its own business or the extent of its advertising, nor
have we heard from the registrant as to any actual
confusion which it may have encountered.
After reviewing the various duPont factors that are
applicable, we find that if applicant were to use IVY LEGAL
PLACEMENT for professional legal recruitment services it
would be likely to cause confusion with IVY ASSOCIATES for
attorney placement consulting services.
Decision: The refusal on the ground of likelihood of
confusion and the requirement for a disclaimer of LEGAL
PLACEMENT are affirmed.