QuisLex, Inc.

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 Applicant’s 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 Attorney’s denial of Applicant’s 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 Attorney’s 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 Applicant’s 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)

(applicant’s 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 Int’l 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)

Applicant’s mark VERDANT is nearly identical in sound, appearance, connotation

and overall commercial impression to Registrant’s mark VERDANT LAW. The term

VERDANT is the central focus of Registrant’s mark because it is the only arbitrary

term in the mark, whereas the term “LAW” is generic for Registrant’s 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 Nat’l 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 Registrant’s 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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(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

Applicant’s mark is subsumed within Registrant’s 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 applicant’s mark ML similar to registered

mark ML MARK LEES); In re United States Shoe Corp., 229 USPQ 707, 709 (TTAB

1985) (finding applicant’s CAREER IMAGE marks similar to registered mark CREST

CAREER IMAGES). In United States Shoe, the Board observed that the applicant’s

mark “would appear to prospective purchasers to be a shortened form of registrant’s

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 “applicant’s mark PRECISION would appear to prospective purchasers to be

a shortened form of opposer’s 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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Serial Nos. 87468607 and 87468614

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 applicant’s position, the
term LAW in VERDANT LAW merely communicates that
its services are legal in nature, rather than specifically
indicating a law firm. Applicant’s 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, Applicant’s mark VERDANT is similar to Registrant’s 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 Applicant’s mark

VERDANT.

2. VERDANT ANALYTICS (Serial No. 87468614)

Applicant’s mark VERDANT ANALYTICS is similar to Registrant’s mark

VERDANT LAW in appearance and pronunciation due to the shared term

VERDANT. Moreover, the overall commercial impression of Applicant’s mark is

derived from the dominant term VERDANT because, as noted, it is arbitrary in

relation to Applicant’s 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 Applicant’s services, namely, that Applicant

provides services in the nature of “analyzing and collecting billing data and providing

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Serial Nos. 87468607 and 87468614

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

Applicant’s mark in its entirety, the addition of the descriptive term ANALYTICS

does not create a significantly different commercial impression than that conveyed

by Registrant’s mark VERDANT LAW.

Consumers will focus on the term VERDANT when recalling both Applicant’s

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

Applicant’s 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 Applicant’s

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 Martin’s 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 Clarke’s 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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Given the relationship between legal services and legal invoice review illustrated

above, Applicant’s services, under its VERDANT and VERDANT ANALYTICS

marks, may appear to be a “line extension” from Registrant’s 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, Registrant’s 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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Serial Nos. 87468607 and 87468614

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 applicant’s 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 Attorney’s 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 Registrant’s 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 Applicant’s legal invoice processing services are likely to

believe that Applicant’s 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 Applicant’s 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 Applicant’s 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 Registrant’s 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 Registrant’s VERDANT LAW legal services,

when confronted with Applicant’s marks VERDANT or VERDANT ANALYTICS,

would believe that Applicant’s services emanate from, are associated with, or are

sponsored by the same company.

Decision:

The refusal to register Applicant’s marks under Trademark Act Section 2(d) is

affirmed.

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