LAWORLD

Trademark Trial and Appeal BoardJan 29, 2002

No. 75717887 (T.T.A.B. Jan. 29, 2002)

1/29/02 Paper No. 17 & 19 DEB UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re LAWORLD ________ Serial Nos. 75/717,887 & 75/768,871 _______ David A. Cutner and Debra I. Resnick of Cutner & Associates, P.C. for LAWORLD. Brian Neville, Trademark Examining Attorney, Law Office 114 (K. Margaret Le, Managing Attorney). _______ Before Walters, Bucher and Holtzman, Administrative Trademark Judges. Opinion by Bucher, Administrative Trademark Judge: LAWORLD seeks two collective service mark registrations for “legal services performed by the members of the applicant,” for the mark LAWORLD1 and for the mark LAWORLD (and design) as shown below: 2 1 Application Ser. No. 75/717,887 was filed on June 1, 1999 based upon an allegation of use in interstate commerce since at least as early as September 15, 1994. 2 Application Ser. No. 75/768,871 was filed on August 4, 1999 based upon an allegation of use in interstate commerce since at least as early as September 15, 1994. THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE TTAB Serial Nos. 75/717,887 & 75/768,871 - 2 - These consolidated cases are now before the Board on appeal from the final refusals to register based upon Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d). The Trademark Examining Attorney has held that applicant’s marks, as used in connection with the collective services set forth in the application, so resembles the service mark LAWWORLD which is registered for “providing access to an on-line computer database and bulletin board service featuring advertisement and marketing information for legal products and services offered to users of a global computer network; on-line computerized ordering of legal products and services,” in International Class 42,3 as to be likely to cause confusion, to cause mistake or to deceive. Applicant has appealed the final refusals to register. Briefs have been filed but after initially requesting an oral hearing, applicant chose to waive the scheduled hearing. We affirm the refusals to register. Applicant asserts that the respective services are distinct and move in different channels of trade to sophisticated purchasers; that the cited mark is suggestive and quite weak; and that the marks are visually distinictive. 3 Reg. No. 2,030,852, issued on January 14, 1997. Serial Nos. 75/717,887 & 75/768,871 - 3 - By contrast, the Trademark Examining Attorney finds the marks to be “nearly identical” and the services to be sufficiently related such that confusion as to source would be likely. In the course of rendering this decision, we have followed the guidance of In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973). This case sets forth the factors, which if relevant, should be considered in determining likelihood of confusion. In the analysis of likelihood of confusion in this case, two key considerations are the similarities between the marks and the similarities between the services. Turning first to our consideration of the respective marks, the marks all consist essentially of simple typestyles. In the second-filed application, the letter “o” employs a globe design, which merely reinforces the connotation of the word WORLD. Likewise, the slight spelling difference between registrant’s LAWWORLD and applicant’s LAWORLD does not adequately distinguish applicant’s marks from registrant’s mark. The proper test for determining the issue of likelihood of confusion is the similarity of the general commercial impression engendered by the marks. Due to the consuming public’s fallibility of memory, the emphasis is Serial Nos. 75/717,887 & 75/768,871 - 4 - on the recollection of the average customer, who normally retains a general rather than a specific impression of trademarks or service marks. Spoons Restaurants, Inc. v. Morrison, Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d. No. 92- 1086 (Fed. Cir. June 5, 1992); and In re Steury Corporation, 189 USPQ 353 (TTAB 1975). We find this principle particularly relevant in this case. While acknowledging that applicant’s marks and registrant’s mark are not identical, we conclude that consumers would neither note nor remember such a minor difference in spelling, and hence it is unlikely that this slight difference would be the basis for anyone to distinguish between the respective marks. Whether the mark repeats the letter “W” (registrant’s LAWWORLD) or telescopes it (applicant’s LAWORLD or ), in the context of these services, both are likely to be perceived predominantly as the term “Law World.” Accordingly, we find that the overall commercial impressions of both applicant’s marks and registrant’s mark are substantially similar. Turning to the services, we note that applicant seeks to distinguish registrant’s services from its own services by arguing that registrant’s services are auxiliary services used by attorneys, whereas applicant’s services Serial Nos. 75/717,887 & 75/768,871 - 5 - are primary services performed by attorneys; that the channels of trade for the respective services are different, based upon the nature of the services; and that the attorneys who are the users of applicant’s services are likely to be sophisticated, careful purchasers. We do not find applicant’s arguments to be well taken. The question of likelihood of confusion is determined on the basis of the services as identified in the application and the registration. See J&J Snack Foods, Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991). The recital contained in the cited registration is not limited as to purchasers and, thus, can be construed as including attorneys and non-attorneys. Applicant’s services are broadly recited as legal services, and registrant’s services include using the Internet to access legal services. Thus, applicant’s and registrant’s services appear to be, in part, legally identical. Further, in order to find a relationship between these respective services, it is only necessary that the services be sufficiently related such that if identified by confusingly similar marks, consumers are likely to believe that the services emanate from the same source. In addition, applicant’s services are not restricted to any particular channels of trade. For example, it seems Serial Nos. 75/717,887 & 75/768,871 - 6 - that the Internet itself would be a primary way in which prospective customers of all types of legal resources would tend to gain access to the services of applicant and of registrant. As to the sophistication of the prospective purchasers, where the marks are nearly identical, even attorneys may find themselves confused as to the source of related services offered under quite similar service marks. Furthermore, as noted above, it appears as if both of these services could be accessed by non-attorneys as well. Finally, as to the weakness of the cited mark, even if LAWWORLD is, as applicant contends, a suggestive mark, this registration is nonetheless entitled to the protection of the statute. Moreover, the mere fact that applicant can recite a dozen second-level domain names having similar letter strings has no particular relevance under the Lanham Act to the issues before us in the instant case. In conclusion, we find that confusion is likely because the services set forth in the applications and in the cited registration are related and the marks are essentially the same. Decision: The refusal to register is affirmed.