Wolfson*
Larkin
Hudis
This Opinion is Not a
Precedent of the TTAB
Mailed: July 2, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re QuisLex, Inc.
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Serial Nos. 87468607 and 87468614
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Peter S. Sloane and Chelsea Russell, of Leason Ellis LLP, for QuisLex, Inc.
C. Scott Strickland, Trademark Examining Attorney, Law Office 122,
John Lincoski, Managing Attorney.
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Before Wolfson, Larkin and Hudis,
Administrative Trademark Judges.
Opinion by Wolfson, Administrative Trademark Judge:
QuisLex, Inc. (Applicant) seeks registration on the Principal Register of the
standard character marks VERDANT and VERDANT ANALYTICS (ANALYTICS
disclaimed) for services ultimately amended to:
Legal invoice review services, namely, reviewing outside
law firm invoices on behalf of large companies to ensure
consistent adherence to the billing guidelines of their in-
house corporate legal departments; legal invoice claims
management services, namely, the management of legal
invoicing services for corporate legal departments in the
nature of analyzing and collecting billing data and
providing benchmarking information; none of the services
Serial Nos. 87468607 and 87468614
in the foregoing clauses in the nature of providing legal
services,
in International Class 35.1
The Examining Attorney refused registration of Applicants marks under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of confusion
with the standard character mark VERDANT LAW (LAW disclaimed) for legal
services in International Class 45.2
After the Examining Attorney made the refusals final, Applicant filed a Request
for Reconsideration, 4 TTABVUE, and appealed to this Board. 1 TTABVUE.
Following the Examining Attorneys denial of Applicants Request for
Reconsideration, the appeal resumed.3 We affirm the refusal to register.
I. Evidentiary Objection
With its brief, Applicant submitted new evidence in the form of Internet
printouts. We sustain the Examining Attorneys objection to this evidence, and have
not considered it. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d) (record should be
complete prior to appeal); see also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (TBMP) § 1203.02(e) (June 2019) (Exhibits attached to a brief that were
not made of record during examination are untimely, and generally will not be
1Application Serial Nos. 87468607 (VERDANT) and 87468614 (VERDANT ANALYTICS)
were filed on May 30, 2017, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b),
based on Applicants allegation of a bona fide intent to use the marks in commerce.
2 Reg. No. 4799583 issued August 25, 2015.
3 Following briefing, the Board remanded the applications to the Examining Attorney to
correct an error in the recitation of services in each application. After amendment, the
applications were returned to the Board for resumption of the appeal.
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Serial Nos. 87468607 and 87468614
considered.); cf. In re Procter & Gamble Co., 105 USPQ2d 1119, 1120 (TTAB 2012)
(applicants discussion in its brief of third-party registrations not considered because
the registrations were not properly introduced during the examination process).
II. Likelihood of Confusion
Our determination of the issue 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 likelihood
of confusion issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). Not all of the DuPont factors are relevant to every case, and only
factors of significance to the particular mark need be considered. Cai v. Diamond
Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (citing In re
Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the relatedness of the goods or services. In re Chatam Intl Inc., 380
F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). In addition, we
address channels of trade, classes of consumers, and consumer sophistication, and
have considered all of the arguments and evidence of record.
A. Similarity or Dissimilarity of the Marks in Their Entireties
We first consider the DuPont factor of the similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177
USPQ at 567). The focus is on the recollection of the average purchaser, who normally
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retains a general rather than a specific impression of trademarks. See In re Aquitaine
Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018); Mini Melts, Inc. v. Reckitt
Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118
USPQ2d 1084, 1089 (TTAB 2016). Here, the relevant purchasers are large companies
and corporate legal departments seeking audit, review and management of their
outside law firms invoices.
1. VERDANT (Serial No. 87468607)
Applicants mark VERDANT is nearly identical in sound, appearance, connotation
and overall commercial impression to Registrants mark VERDANT LAW. The term
VERDANT is the central focus of Registrants mark because it is the only arbitrary
term in the mark, whereas the term LAW is generic for Registrants legal services,
and has been disclaimed. Although we consider the marks 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, provided the ultimate conclusion rests on
consideration of the marks in their entireties. In re Natl Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985); Joel Gott Wines LLC v. Rehoboth Von Gott Inc.,
107 USPQ2d 1424, 1430 (TTAB 2013). That a particular feature is descriptive or
generic with respect to the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark. National Data, 224 USPQ at
751. Moreover, VERDANT is the first term in Registrants mark and thus it, and
not the term LAW, is most likely to be impressed upon the mind of a purchaser and
remembered. Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897
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Serial Nos. 87468607 and 87468614
(TTAB 1988); see also Palm Bay, 73 USPQ2d at 1692 (Veuve is the most prominent
part of the mark VEUVE CLICQUOT because veuve is the first word in the mark
and the first word to appear on the label); Wet Seal Inc. v. FD Mgmt. Inc., 82 USPQ2d
1629, 1639 (TTAB 2007).
Although there is no explicit rule that likelihood of confusion automatically
applies where one mark contains in part the whole of another mark, the fact that
Applicants mark is subsumed within Registrants mark increases the similarity
between the two. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260
(Fed. Cir. 2010) (affirming decision finding applicants mark ML similar to registered
mark ML MARK LEES); In re United States Shoe Corp., 229 USPQ 707, 709 (TTAB
1985) (finding applicants CAREER IMAGE marks similar to registered mark CREST
CAREER IMAGES). In United States Shoe, the Board observed that the applicants
mark would appear to prospective purchasers to be a shortened form of registrants
mark. 229 USPQ at 709. We find the same to be true on the facts of this case. See,
e.g., Hunter Indus., Inc. v. The Toro Co., 110 USPQ2d 1651, 1661 (TTAB 2014)
(finding applicants mark PRECISION would appear to prospective purchasers to be
a shortened form of opposers mark PRECISION DISTRIBUTION CONTROL); see
also McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, §7:18 (5th ed.
2019) (Americans are prone to abbreviate recognized trademarks and to use
nicknames).
Applicant argues that the marks are distinguishable because the two-word mark
VERDANT LAW presents the commercial impression of a law firm name while the
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single-word mark VERDANT is more in keeping with the name of a typical service
provider. 7 TTABVUE 9. As the Examining Attorney points out:
[A]pplicant presents no evidence to support this conclusory
statement. Further, contrary to applicants position, the
term LAW in VERDANT LAW merely communicates that
its services are legal in nature, rather than specifically
indicating a law firm. Applicants mark, the lone term,
VERDANT, is arbitrary with respect to the services and
conveys no specific message regarding either those services
or the industry in which they are provided. Thus, it is
improper to assume that a consumer would immediately
understand that VERDANT would not offer legal services
of any kind based purely on the reading of its trademark.
11 TTABVUE 9.
In short, Applicants mark VERDANT is similar to Registrants mark VERDANT
LAW in sight, sound, meaning and overall commercial impression. The first DuPont
factor favors a finding of likelihood of confusion with respect to Applicants mark
VERDANT.
2. VERDANT ANALYTICS (Serial No. 87468614)
Applicants mark VERDANT ANALYTICS is similar to Registrants mark
VERDANT LAW in appearance and pronunciation due to the shared term
VERDANT. Moreover, the overall commercial impression of Applicants mark is
derived from the dominant term VERDANT because, as noted, it is arbitrary in
relation to Applicants services, and also because it is the first word of the mark. The
term ANALYTICS is less significant not only because it is in second position, but also
because it merely describes a feature of Applicants services, namely, that Applicant
provides services in the nature of analyzing and collecting billing data and providing
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benchmarking information as part of its legal invoice claims management services.
In other words, Applicant conducts analytics, defined as: the systematic
computational analysis of data or statistics.4 Applicant thus properly disclaimed
this term during prosecution in recognition of its descriptive nature. Viewing
Applicants mark in its entirety, the addition of the descriptive term ANALYTICS
does not create a significantly different commercial impression than that conveyed
by Registrants mark VERDANT LAW.
Consumers will focus on the term VERDANT when recalling both Applicants
mark and the cited mark, and when requesting the respective services. Although
consumers will not ignore the additional word in either mark, they are more likely to
discount the impact of such wording when encountering the marks under actual
marketing conditions. We cannot assume that consumers have the luxury of making
side-by-side comparisons between marks, and they must rely instead upon their
imperfect recollections. Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255, 259
(TTAB 1980). The 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. Cai, 127 USPQ2d at 1801; see also In re
i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); In re St. Helena
Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (marks must be
4See definition from the ENGLISH OXFORD LIVING DICTIONARIES, attached to September 2,
2017 Office Action (Serial No. 87468614) at TSDR 14.
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Serial Nos. 87468607 and 87468614
considered . . . in light of the fallibility of memory and not on the basis of side-by-
side comparison.) (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components
Corp., 565 F.2d 683, 685 (CCPA 1977)). Considering the marks in their entireties, we
find they are similar in appearance, pronunciation, connotation and overall
commercial impression.
The first DuPont factor favors a finding of likelihood of confusion with respect to
Applicants mark VERDANT ANALYTICS as compared to the cited mark VERDANT
LAW.
B. Similarity of the Services; Channels of Trade; Classes of Consumers
We now consider the DuPont factors addressing the similarity of the services, the
channels of trade in which they may be encountered and the consumers to whom they
are marketed. Our determinations under these factors are based on the services as
they are recited in the applications and the cited registration. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
1. Similarity of Services
The cited registration is for legal services. Applicant provides legal invoice
review services and legal invoice claims management services. Despite Applicants
specific exclusion of legal services from its recitation, the issue is not whether
purchasers would confuse the services, but rather whether there is a likelihood of
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confusion as to the source of the services. In re Rexel Inc., 223 USPQ 830, 832 (TTAB
1984). The respective services need not be identical or even competitive in order to
support a finding of likelihood of confusion. They need only be related in some
manner and/or if the circumstances surrounding their marketing [be] such that they
could give rise to the mistaken belief that the [services] emanate from the same
source. Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83
USPQ2d 1715, 1724 (TTAB 2007)); In re Martins Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d
1386, 1388 (TTAB 1991).
The Examining Attorney submitted a number of printouts from third-party
commercial websites demonstrating that companies providing legal services also
provide data analytics. Specifically, the evidence shows that firms providing legal
services also offer, as a separate service, to review legal invoices of their competitors
to ensure that their clients are not overcharged for legal services. For example:
Stuart Maue offers legal fee audits and law firm
services.5
Kreiner Burke & Burns is a boutique law firm that
prides itself on our creative and personalized approaches
to the legal and business issues facing our clients, and also
offers to review your legal bills to help you save money.6
Wilbraham Lawler & Buba provides consultation,
ligation services and litigations management for all types
5At http://www.smmj.com/services/legal-audit, attached to Office Action dated September 2,
2017 at p. 19-25 and at http://www.smmj.com/services/law-firm-services, attached to
November 1, 2108 Denial of Request for Reconsideration at TSDR 4.
6At http;//kreinerlawfirm.com/legal_audit and http://kreinerlawfirm.com/about_us, attached
to April 11, 2018 Office Action at TSDR 4-5.
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of tort and insurance matters and also conducts legal bill
review, auditing and guideline compliance.7
Knapp Petersen Clarke prides itself as a law firm
on its creativity and accessibility in providing a wide
range of legal services. A division of the corporation, KPC
Legal Audit Services Inc., has developed procedures and
standards which allow for an efficient and complete
analysis of legal billings.
Applicant urges the Board to take judicial notice that law firms cannot provide
financial services. 7 TTABVUE 9. Not only does the evidence of third-party use
suggest otherwise, it demonstrates that providing legal advice and providing advice
concerning legal invoicing/billing are related services. Selected web pages from
Knapp Petersen Clarkes website are illustrative:8
7At http://www.wlbdeflaw.com/practice-areas, attached to April 11, 2018 Office Action at
TSDR 3.
8 At http://www.kpclegal.com/practice-areas/, and at http://www.kpclegalcom/kpc-legal-
audit/methodology/, attached to November 1, 2018, Denial of Request for Reconsideration at
TSDR 2 and 3. Although the legal audit services are apparently rendered by a related
company, both practice areas are advertised under the Knapp Petersen Clarke banner.
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Serial Nos. 87468607 and 87468614
Given the relationship between legal services and legal invoice review illustrated
above, Applicants services, under its VERDANT and VERDANT ANALYTICS
marks, may appear to be a line extension from Registrants legal services, which
law firms historically have provided, into legal invoice review, which the record shows
to be an area into which at least some law firms are expanding.
Applicant argues that the trade channels and classes of consumers would not
overlap because Applicant promotes its services to large corporations and not the
general public. Needless to say, Registrants services are not so limited and may be
offered to large corporations as well as the general public. In the registration context,
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relatedness of the services, their trade channels, and the nature of the consumer
classes are factors determined by the services as they are identified in the application
and the cited registration. In the absence of any restrictions or limitations in the
registration, as is the case here, we must assume the services are offered through all
the normal and usual trade channels for such services to all the usual purchasers of
such services. Hewlett-Packard, 62 USPQ2d at 1005; cf. Octocom Sys., 16 USPQ2d at
1788 ([A]n application with an identification of goods having no restriction on trade
channels obviously is not narrowed by testimony that the applicants use is, in fact,
restricted to a particular class of purchasers.).
Here, there is no direct evidence regarding the trade channels of either Applicant
or Registrant, and we may infer only that both Applicant and Registrant likely
advertise over the Internet as the Examining Attorneys evidence of related services
is by way of Internet printouts. In addition, because there are no restrictions as to
consumers in the cited registration, we must assume that Registrants services are
offered to corporate legal departments. Thus, to the extent there is evidence in the
record, it supports a finding that the trade channels and classes of consumers overlap.
Given the relatedness of the services, trade channels and purchaser classes,
prospective consumers of Applicants legal invoice processing services are likely to
believe that Applicants services originate with Registrant. The second and third
DuPont factors weigh in favor of a finding that confusion is likely.
C. Sophistication of the Relevant Purchasers
Applicant argues that its purchasers are sophisticated and discriminating. The
very nature and expense of the services ensures that the purchasers are
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discriminating in making their purchasing decisions and unlikely to be confused
despite any similarity between the marks. 7 TTABVUE 8. Applicant fails to support
its assertion with record evidence and, as noted above, neither the application nor
registration contains restrictions as to the price range for the services, specific trade
channels to which any marketing activities may be limited, or the types of purchasers
who use the services, other than that Applicants services are provided to large
corporations and to corporate legal departments of any size, which, as noted, may
patronize Registrant as well. While legal services may be expensive and the
consumers of such services may exercise a degree of care in choosing such services,
the fact that some consumers are sophisticated or knowledgeable in a particular field
does not necessarily mean that they are sophisticated or knowledgeable in the field
of trademarks or immune from source confusion. TMEP § 1207.01(d)(vii); see In re
Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993) (indicating
that even sophisticated purchasers can be confused by very similar marks); Top
Tobacco, LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011).
Moreover, the identifications must be read as offering the services to all normal
customers therefor, including the least sophisticated purchasers, Stone Lion, 110
USPQ2d at 1163, and our decision must be based on those purchasers. Although there
is no record evidence that Applicants customers are sophisticated, we recognize that
large corporations and corporate legal departments are likely staffed by
knowledgeable purchasers who may act with more discrimination, and that legal
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services, legal invoice review services and legal invoice claims management services,
by their nature, likely involve the exercise of a heightened degree of care.
Thus, the fourth DuPont factor favors a finding of no likelihood of confusion..
III. Summary
A likelihood of confusion exists in this case. The marks VERDANT and
VERDANT ANALYTICS are quite similar in appearance, pronunciation,
connotation, and overall commercial impression to Registrants mark VERDANT
LAW. The services are related and travel through all normal trade channels for sale
to the same classes of consumers, including large corporations and corporate law
departments. Although customers for the respective services may exercise a
heightened degree of care in their purchases, the high degree of similarity of the
marks and the relatedness of the services outweigh this factor. It is likely that
prospective consumers familiar with Registrants VERDANT LAW legal services,
when confronted with Applicants marks VERDANT or VERDANT ANALYTICS,
would believe that Applicants services emanate from, are associated with, or are
sponsored by the same company.
Decision:
The refusal to register Applicants marks under Trademark Act Section 2(d) is
affirmed.
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