The Advice Company

Trademark Trial and Appeal BoardJun 7, 2012

No. 77005059 (T.T.A.B. Jun. 7, 2012)

Hearing: Mailed: November 17, 2011 June 7, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re The Advice Company ________ Serial No. 77005059 _______ Andrew B. Katz of Belles Katz LLC for The Advice Company. David Yontef, Trademark Examining Attorney, Law Office 105 (Thomas G. Howell, Managing Attorney). _______ Before Seeherman, Bergsman and Kuczma, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: The Advice Company (“applicant”) filed a use-based application under the provisions of Section 2(f) of the Trademark Act of 1946, 15 U.S.C. § 1052(f), to register the mark ATTORNEYPAGES, in standard character form, for “providing a searchable directory of lawyers, legal service providers and information about the same through electronic means on a global computer network,” in Class 35. During the prosecution of the application, applicant amended the recitation of services to read as follows: Providing an on-line searchable commercial information directory on the THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77005059 2 Internet featuring information regarding lawyers and legal service providers and business information in the field of lawyers and legal service providers. Applicant also claimed ownership of Supplemental Registration No. 2390588 for the mark ATTORNEYPAGES, in standard character form, for “providing a searchable directory of lawyers, legal service providers and information about the same through electronic means on a global computer network,”1 the original recitation of services in the pending application. The Trademark Examining Attorney refused to register applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark is likely to cause confusion with the previously registered mark ATTORNEYYELLOWPAGES.COM, in standard character form, for “on-line business directories featuring attorneys,” in Class 35.2 The cited registration was registered on the Supplemental Register after the issuance of the Supplemental Registration claimed by applicant. The Examining Attorney also refused registration on the ground that applicant’s evidence of acquired 1 Issued September 26, 2000; renewed. Applicant claimed March 1998 as its date of first use anywhere and in commerce. 2 Registration No. 3243194, issued May 15, 2007. Registrant claimed December 11, 2006, as its date of first use anywhere and in commerce. Serial No. 77005059 3 distinctiveness is not sufficient to support the registration of the mark ATTORNEYPAGES, and therefore the mark is merely descriptive. Likelihood of Confusion Our determination of likelihood of confusion 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). A. The similarity or dissimilarity and nature of the services described in the application and services described in the registration, likely-to-continue trade channels and classes of consumers. Applicant’s recitation of services is “providing an on-line searchable commercial information directory on the Internet featuring information regarding lawyers and legal service providers and business information in the field of lawyers and legal service providers.” The recitation in the cited registration is providing “on-line business directories featuring attorneys.” The services are legally identical. Serial No. 77005059 4 Because the services are legally identical, we must presume that the channels of trade and classes of purchasers are the same. See In re Thor Tech Inc., 90 USPQ2d 1634, 1639 (TTAB 2009); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers.”). See also 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). B. The strength of the registered mark. The mark in the cited registration, ATTORNEYYELLOWPAGES.COM, is registered on the Supplemental Register. Registration on the Supplemental Register is prima facie evidence that, at least at the time of registration, the registered mark was merely descriptive. In re Central Soya Co., Inc., 220 USPQ 914, 917 (TTAB 1984). In re Hunke & Jochheim, 185 USPQ 188, 189 (TTAB 1975), the Board provided the following explanation regarding the strength of a mark on the Supplemental Register: Serial No. 77005059 5 [R]egistration on the Supplemental Register may be considered to establish prima facie that, at least at the time of registration, the registered mark possessed a merely descriptive significance. (Citation omitted.) This is significant because it is well established that the scope of protection afforded a merely descriptive or even a highly suggestive term is less than that accorded an arbitrary or coined mark. That is, terms falling within the former category have been generally categorized as “weak” marks, and the scope of protection extended to these marks has been limited to the substantially identical notation and/or to the subsequent use and registration thereof for substantially similar goods. See also In re Texas Instruments Inc., 193 USPQ 678 (TTAB 1976) (COPPERCLAD and design for composite metal wire for use in electric conductors is not likely to cause confusion with COPPERCLAD, registered on the Supplemental Register, for copper-coated carbon electrodes for use in electric arc cutting and gouging). The term “Yellow Pages” is defined as “a classified telephone directory or section of a directory, listing subscribers by the type of business or service they offer, usually printed on yellow paper.”3 The top level domain 3 The Random House Dictionary of the English Language (Unabridged), p. 2202 (2nd ed. 1987). The Board may take judicial notice of dictionary evidence. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Serial No. 77005059 6 “.com” typically signifies the type of entity using the domain name (e.g., .com signifies a commercial entity, .edu signifies an educational entity, etc.) and does not serve a source-indicating function. See In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682 (Fed. Cir. 2009) (MATTRESS.COM generic for “online retail store services in the field of mattresses, beds, and bedding,” and applicant “presented no evidence that ‘.com’ evoked anything but a commercial internet domain”). See also TMEP § 1209.03(m). In view of the foregoing, we consider the mark ATTORNEYYELLOWPAGES.COM to be highly descriptive for “on- line business directories featuring attorneys.” Therefore, unlike a situation involving an arbitrary or fanciful mark, It seems both logical and obvious to us that where a party chooses a trademark which is inherently weak, he will not enjoy the wide latitude of protection afforded the owners of strong trademarks. Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights. The essence of all we have said is that in the former case there is not the possibility of confusion that exists in the latter case. Sure-Fit Products Company v. Saltzson Drapery Company, 254 F.2d 158, 117 USPQ 295, 297 (CCPA 1958). Accordingly, the mark ATTORNEYYELLOWPAGES.COM, used in connection with “on- Serial No. 77005059 7 line business directories featuring attorneys” is entitled to a narrow scope of protection. In the context of the facts and circumstances presented by the record in this case, discussed more fully below, the strength or weakness of the mark in the cited registration is a very important factor. C. The similarity or dissimilarity of the marks in their entireties as to 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. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. The marks are similar to the extent that they both start with the word “Attorney” followed by the word “Pages.” However, as indicated above, the mark ATTORNEYYELLOWPAGES.COM is highly descriptive and, therefore, the scope of protection to which the cited registration is entitled is quite limited. Under these circumstance, we find that the differences between ATTORNEYPAGES and ATTORNEYYELLOWPAGES.COM are sufficient to render applicant’s mark distinguishable from the mark in the cited registration. Serial No. 77005059 8 D. The market interface between applicant and registrant. After the examining attorney initially refused to register applicant’s mark, applicant filed a petition to cancel the cited registration (Cancellation No. 92048603). That cancellation proceeding was suspended pending a civil litigation between applicant and the registrant (The Advice Co. v. James Novak et. al., Case No. CV 08-1951 (N.D. Cal.)). “The resolution of the civil action led to a confidential settlement agreement in which the parties agreed among other things that (a) their respective marks could and would co-exist; and (b) the petition to cancel was to be dismissed with prejudice.”4 In its November 8, 2010 response to the examining attorney, applicant submitted a redacted copy of the settlement agreement. The portion of the agreement that applicant submitted is summarized below: 1. Applicant agrees to release any claims concerning the mark ATTORNEYYELLOWPAGES.COM and does not place any conditions, restraints or limitation on the use of that mark; 2. Registrant agrees to release any claims concerning the mark ATTORNEYPAGES and does not place any 4 Applicant’s Brief, p. 4. Serial No. 77005059 9 conditions, restraints or limitation on the use of that mark; and 3. Applicant and registrant agree that they will not oppose any application or interfere with the registration of either party. The examining attorney argues that the redacted settlement agreement is entitled to little probative value because it constitutes a “naked consent” agreement. According to the examining attorney, the agreement (1) fails to set forth reasons why the parties believe there is no likelihood of confusion, and (2) fails to describe the arrangements undertaken by the parties to avoid confusion.5 We agree that applicant presented, in essence, a naked consent to use and register. A “naked consent” typically carries little weight as compared to a more detailed agreement. In re Four Seasons 5 Examing Attorney’s Brief, unnumbered page 9. Despite the fact that the examining attorney contacted applicant by telephone on November 9, 2010, to discuss an amendment to the recitation of services and issued a written Office action on November 15, 2010, the examining attorney raised for the first time in his brief that applicant did not submit the signature page for the settlement agreement. Applicant submitted the signature pages in its reply brief. Because the examining attorney did not object to the omission of the signature pages at the time applicant filed the agreement, we consider such objection to be waived, and we treat the signature pages as part of the record. Cf. In re 1st USA Realty Professionals, 84 USPQ2d 1581, 1583 (TTAB 2007) (Board considered a list of third-party registrations because the examining attorney did not advise applicant of the insufficiency of the list while there was still time to correct the mistake). Serial No. 77005059 10 Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071, 1073 (Fed. Cir. 1993); In re E. I. du Pont De Nemours & Co., 177 USPQ at 568. However, the agreement should not be ignored. As pointed out by the court in In re Mastic Inc., 829 F.2d 1114, 4 USPQ2d 1292, 1294 (Fed. Cir. 1987), “[i]f the evidence of record establishes facts supporting an applicant's argument that the two uses can exist without confusion of the public, even a ‘naked’ consent to registration is significant additional evidence in support of the applicant's position.” In this case, the document is not precisely a naked consent, but is an acknowledgment of a broader settlement agreement. Given the nature of the legal proceedings involving applicant and registrant, it is reasonable to conclude that their settlement agreement reflects the view of the applicant and registrant that confusion is not likely, and supports our conclusion that the differences in the marks are sufficient to avoid a likelihood of confusion. Specifically, the circumstances in which the applicant and registrant executed the settlement agreement indicate that there was an arms-length agreement which was reached with serious consideration of the actual possibility for confusion. While the agreement itself does not include the provisions we would prefer in a consent agreement, or Serial No. 77005059 11 settlement agreement, it was reached after the parties had been involved in a cancellation proceeding and a district court case, with at least the cancellation proceeding involving the issue of likelihood of confusion.6 So while the agreement (as recited above) does not specifically recite that the parties do not believe there is a likelihood of confusion, that question was necessarily considered because the agreement resulted from the settlement of at least one legal dispute involving the issue of likelihood of confusion. The facts surrounding the agreement thus indicate that the applicant and the registrant have determined that confusion is unlikely. In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed. Cir. 1993) (“Here the self-interests of applicant and registrant have caused them to enter into a consent agreement determining for themselves that confusion of their marks is unlikely.”). 6 Applicant did not submit copies of the pleadings in either proceeding, nor did applicant identify the issues during the prosecution of its application, but we may take judicial notice of our own proceedings. Fed.R.Evid. 201. See also Kraft, Inc. v. Balin, 209 USPQ 877, 881 n.8 (TTAB 1981) (the Board noted that the records in another proceeding showed that a certain application had been abandoned and an opposition had been dismissed). Taking judicial notice of records of Board proceedings in no way affects the Board's well-established practice that it does not take judicial notice of registrations that reside in the USPTO. See TBMP § 704.12(a) (3rd ed. 2011). Serial No. 77005059 12 E. Other probative facts. The thirteenth du Pont factor relates to “any other established fact probative of the effect of use.” Indeed, each case must be decided on its own specific and, sometimes, unique facts. This final factor accommodates the need for flexibility in assessing each unique set of facts, such as in the case in this appeal. As indicated above, applicant is the owner of an existing registration on the Supplemental Register for the mark ATTORNEYPAGES for “providing a searchable directory of lawyers, legal service providers and information about the same through electronic means on a global computer network.” The recitation of services in the involved application, “providing an on-line searchable commercial information directory on the Internet featuring information regarding lawyers and legal service providers and business information in the field of lawyers and legal service providers,” is legally identical to the recitation of services set forth in applicant’s existing registration. Applicant’s Supplemental Registration issued before the cited registration. Although this is not as significant a factor in our analysis as those previously discussed, applicant’s Serial No. 77005059 13 ownership of the prior registered mark on the Supplemental Register weighs against finding a likelihood of confusion. E. Balancing the factors. After considering all of the relevant du Pont factors, as discussed above, we find that applicant’s mark ATTORNEYPAGES for “providing an on-line searchable commercial information directory on the Internet featuring information regarding lawyers and legal service providers and business information in the field of lawyers and legal service providers” is not likely to cause confusion with the mark ATTORNEYYELLOWPAGES.COM for “on-line business directories featuring attorneys.” Acquired Distinctiveness To show that its mark ATTORNEYPAGES has acquired distinctiveness, applicant submitted the declaration of Mary Martin, applicant’s Vice President and Secretary. Ms. Martin’s testimony is summarized below: 1. Applicant has been using the mark ATTORNEYPAGES since 1998 to identify its services; 2. Applicant’s website “receives thousands of unique visitors daily and averages over 150,000 unique visitors monthly; 3. Since 1998, applicant’s revenues have grown from just over $100,000 to almost $1,500,000 in 2009; Serial No. 77005059 14 4. Applicant advertises in TRIAL, the trade journal for the American Trial Lawyers Association and in the ABA Journal magazine; and 5. Applicant has been an exhibitor at national conventions for the American Association of Justice since 2000. The examining attorney argues to the contrary that applicant’s mark is highly descriptive and that the evidence submitted by applicant is insufficient to show that its mark has acquired distinctiveness. To support his position, the examining attorney submitted numerous registrations for “Page” formative marks for directories registered on the Supplemental Register or under the provisions of Section 2(f) (e.g., YOGA PAGES, THE CLAIMS PAGES, MUSICIANS PAGE, etc.). The examining attorney also submitted excerpts from websites for directories that display “Page” formative marks. The most relevant websites are listed below:7 NEW YORK LAWYER PAGES THE LAWYER WHITE PAGES 7 The examining attorney also submitted an excerpt from a website displaying the mark ATTORNEY-PAGES.NET, but it is not a directory of attorneys; it is a website advertising the services of Valley Lawyer Marketing for developing websites for law firms. Accordingly, the marks ATTORNEYPAGES and ATTORNEY-PAGES.NET describe different services (a directory of attorneys vs. developing websites for law firms). Serial No. 77005059 15 US LAWYER PAGES It is not entirely clear to us what the examining attorney’s purpose was in submitting this evidence. The third-party uses are of marks incorporating the word “pages” rather than descriptive uses of the term “attorney pages.”8 In fact, the numerous registrations and websites featuring “Page” formative marks in connection with directories demonstrate that businesses have registered and/or used “Page” formative marks and that consumers encounter “Page” formative marks, especially in the legal field, and would therefore regard ATTORNEYPAGES as a mark, rather than as a descriptive term. To the extent that the examining attorney was attempting to show that applicant has not made substantially exclusive use of its mark, we point out that applicant is not attempting to register PAGES, but ATTORNEYPAGES. Recognizing that the amount and character of evidence needed to support a Section 2(f) showing is necessarily a subjective determination based on the degree of descriptiveness of the term, it is our view that the 8 We acknowledge that the inclusion in many marks of a common term can show that the term has a descriptive significance, but descriptiveness is not an issue in this case, where applicant has already acknowledged, by its prior registration of ATTORNEYPAGES on the Supplemental Register, and by seeking registration under Section 2(f), that its mark is not inherently distinctive. Serial No. 77005059 16 declaration attesting to over ten years of substantially exclusive and continuous use of the mark, together with evidence of applicant’s growth under the mark, and its advertising and promotion activities, is sufficient to support a claim of acquired distinctiveness in this case. We have considered the cases cited by the examining attorney in which various showings of acquired distinctiveness were found to be insufficient. However, because the evidence necessary to show acquired distinctiveness is dependent on the particular mark, these cases are of little help in our analysis. Decision: The refusals to register are reversed.