This Opinion is not a
Precedent of the TTAB

Mailed: June 13, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

TRADEMARK TRIAL AND APPEAL BOARD
_____

RLP Ventures, LLC
v.
Focus Approach, LLC

Opposition No. 91228593
to Application Serial No. 86554989

RLP Ventures, LLC, pro se Opposer.

Ellen S. Simpson of Simpson & Simpson PLLC
for Applicant, Focus Approach, LLC.
_____

Before Wellington, Kuczma and Hightower,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:

Focus Approach, LLC (“Applicant”) filed an application to register the mark:
Opposition No. 91228593

for:

Educational services, namely, conducting classes for law
school preparation tests in International Class 41.1

RLP Ventures, LLC (“Opposer”) opposes registration of Applicant’s mark on the

ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C.

§ 1052(d). Opposer alleges that Applicant’s mark, when used in connection with

Applicant’s identified services, so resembles Opposer’s earlier used and registered

IRAC2, IRAC CHALLENGE3 and 4 marks in connection with services

1 Application Serial No. 86554989 filed on March 5, 2015, under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), alleging September 4, 2014 as the date of first use of the mark and
first use of the mark in commerce. The description of the mark states that the mark consists
of the wording “LAW SCHOOL” above and separated by a horizontal line from the wording
“IRAC” which is above and separated by a horizontal line from the wording “THE FOCUS
APPROACH,” all of which is below a triangle in the shape of a peaked roof and above a
trapezoid in the shape of a building foundation. “LAW SCHOOL” and “IRAC” are disclaimed.
2 Opposer owns the following registrations for the mark IRAC (in standard characters):
Supplemental Registration No. 5033571 for “education services, namely, providing
instruction in the fields of legal writing; entertainment in the nature of competitions in the
field of legal writing; providing online non-downloadable journals in the field of law” in
International Class 41, issued August 30, 2016; Registration No. 5316956 for “all-purpose
carrying bags” in International Class 18, issued October 24, 2017; and Registration No.
5456874 for “advertising services, namely, promoting and marketing the goods and services
of others through all public communication means; arranging and conducting incentive
reward programs to promote the sale of a company’s goods or services” in International Class
35, issued May 1, 2018.
3 Supplemental Registration No. 5038276 for the mark IRAC CHALLENGE (in standard
characters and “CHALLENGE” disclaimed) for “education services, namely, providing
instruction in the field of legal writing; entertainment in the nature of competitions in the
field of legal writing” in International Class 41, issued on September 16, 2016.

4 Registration No. 5082402 for the word and design mark (“IRAC” disclaimed)
for “education services, namely, providing instruction in the fields of legal writing;
entertainment in the nature of competitions in the field of legal writing; providing online non-
downloadable journals in the field of law” in International Class 41, issued on November 15,
2016. The description of the mark states that the mark consists of the wording “IRAC”,
preceded by a series of four designs in a quadrant. The design in the upper left quadrant
consists of a silhouette of stylized scales of justice. The design in the lower left quadrant
consists of a silhouette of four stylized figures, one figure atop a rectangle intersecting with

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Opposition No. 91228593

including education in the field of legal writing, online journals, legal writing

competitions and social media, and additional goods and services, as to be likely to

cause confusion, mistake or deception in violation of Trademark Act § 2(d).

Applicant denies the salient allegations of the Notice of Opposition and asserts

affirmative defenses which were not pursued at trial. Accordingly, the affirmative

defenses are waived. Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107

USPQ2d 1750, 1753 (TTAB 2013), aff’d, 565 Fed. App’x 900 (Fed. Cir. 2014) (mem.);

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”)

§ 801.01 (2018).

I. The Record

The record includes the pleadings5 and, by operation of Trademark Rule

2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file history for Applicant’s Application No.

86554989 which is the subject of this proceeding, and the following evidence:

Opposer’s submissions:

1. Opposer’s First Notice of Reliance (18 TTABVUE 2-422):6

a stylized polygon shape and three adjacent figures atop three intersecting rectangles. The
design in the upper right quadrant consists of a silhouette of stylized triumphal arch. The
design in the lower right quadrant consists of a silhouette of a stylized gavel and a silhouette
of a stylized sound block. Following the word “IRAC”, in the far upper right, is the design of
a stylized word “ME” appearing inside of a rectangle. In the far lower right, is the design of
a circle.
5 Opposer’s Exhibits to the Notice of Opposition, including its copies of its trademark
applications, are not evidence on behalf of Opposer. See Trademark Rule 2.122(c) and (d), 37
CFR § 2.122(c) and (d), TBMP § 317.
6Citations to the record are by entry and page number to TTABVUE, the Board’s online
docketing information and file database, and to the Trademark Status and Document
Retrieval system (TSDR).

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Opposition No. 91228593

– Exhibit A: copies of Registration Nos. 5033571, 5038276, 5082402,
5316956 (18 TTABVUE 11, 17, 22, 45)7; copies of USPTO electronic
trademark applications for Serial No. 87405942 (Registration No.
5456874) (18 TTABVUE 47-54); and Serial No. 87405914, which
later issued as Registration No. 5683017, however this Registration
was not introduced into evidence (18 TTABVUE 55-61)8;

– Exhibit B-1: Applicant’s Answers to Opposer’s First Set of
Interrogatories (18 TTABVUE 62-78);

– Exhibit B-2-A: Applicant’s Answers to Opposer’s First Set of
Document Requests (18 TTABVUE 79-98)9;

– Exhibit B-2-B (18 TTABVUE 99-298): Documents produced in
response to Opposer’s Document Request No. 7, including April 12,
2013 email from [email protected] to [email protected],
[email protected] with cc: to [email protected] and donaldgor
[email protected] (18 TTABVUE 100-101); Trademark Search
Reports dated December 8, 2014 for Law School IRAC The Focus
Approach (18 TTABVUE 102-209) and for Design (18 TTABVUE 210-
298);

7The copies of these Registrations submitted by Opposer are not admissible as they do not
reflect the current status of and title to the Registrations. See Trademark Rule 2.122(d), 37
CFR § 2.122(d); TMBP § 704.03(b)(1)(A). However, Applicant introduced copies of these
Registrations showing status and title into evidence in its First Notice of Reliance (see below).
8 In its Trial Brief, Applicant also conceded Opposer’s ownership of Registration No. 5456874
(identified above as Serial No. 87405942) (see Applicant’s First Notice of Reliance) (26
TTABVUE 5). A registration owned by any party to the proceeding may be deemed by the
Board to be of record in the proceeding, even though the registration was not properly
introduced in accordance with the applicable rules, if the adverse party in its brief, or
otherwise, treats the registration as being of record. See Local Trademarks Inc. v. Handy
Boys Inc., 16 USPQ2d 1156, 1157 (TTAB 1990) (applicant conceded ownership and validity
in trial brief); TBMP § 704.03(b)(1)(A).
While Serial No. 87405914 subsequently issued as Registration No. 5683017, neither
Opposer nor Applicant submitted that Registration into the record. Thus, it is not in evidence.
9 We usually consider written responses to document requests only to the extent that the
respondent has responded that no documents exist. See United Global Media Group, Inc. v.
Tseng, 112 USPQ2d 1039, 1044 (TTAB 2014); Trademark Rule 2.120(k)(3)(ii), 37 CFR
2.120(k)(3)(ii). In this case however, Applicant raised no objection and confirmed that the
responses to the documents requests, and other Exhibits, were of record. See the Description
of the Record Nos. 9 and 13 on p. 2 of Applicant’s Trial Brief (26 TTABVUE 6).

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Opposition No. 91228593

– Exhibit B-2-C: Documents produced in response to Opposer’s
Document Request No. 15 (18 TTABVUE 299-302);

– Exhibit B-2-D: Documents produced in response to Opposer’s
Document Request No. 16 (18 TTABVUE 303-309);

– Exhibit B-2-E: Documents produced in response to Opposer’s
Document Request No. 17 (18 TTABVUE 310-312);

– Exhibit B-2-F: Documents produced in response to Opposer’s
Document Request No. 24 (18 TTABVUE 313-315);

– Exhibit B-2-G: Documents produced in response to Opposer’s
Document Request No. 29 (18 TTABVUE 316-320);

– Exhibit B-2-H: Documents produced in response to Opposer’s
Document Request No. 33, “ayc Media 2013 Web Site Proposal” (18
TTABVUE 321-330);

– Exhibit B-2-I: Documents produced in response to Opposer’s
Document Request No. 34, NYS Department of State, Division of
Corporations, Focus Approach, LLC (18 TTABVUE 331-335);

– Exhibit B-2-J: Documents produced in response to Opposer’s
Document Request No. 36, Execution Page to the Operating
Agreement of Focus Approach, LLC, Business Certificate (18
TTABVUE 336-339);

– Exhibit B-2-K: Documents produced in response to Opposer’s
Document Request No. 42 (18 TTABVUE 340-342);

– Exhibit B-3: Applicant’s First Supplemental Response to Opposer’s
First Set of Document Requests, Document Request No. 29 (18
TTABVUE 343-346);

– Exhibit C: Although Exhibit C is entitled “Declaration of Ramona
Prioleau” (18 TTABVUE 348), it is actually a copy of Trademark
Application Serial No. 86554989 for LAW SCHOOL IRAC THE
FOCUS APPROACH & Design (the opposed mark) (18 TTABVUE
347-356);

– Exhibit D-1: The Focus Approach Law Review LSAT Program,
Schedule of Classes & Events from http://www.focusapproach.ayc
demo.com/classes-events/2015/december/ (18 TTABVUE 357-359);

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Opposition No. 91228593

– Exhibit D-2: The Focus Approach Law Review LSAT Program,
Schedule of Classes & Events December 2015 from http://www.focus
approach.aycdemo.com/classes-events/2015/december/ (18 TTAB-
VUE 360-363);

– Exhibit D-3: The Focus Approach Law Review LSAT Program,
Register for a Course from http://www.focusapproach.aycdemo.com/
cartnew.php?a=registerdetailso . . . (18 TTABVUE 364-366);

– Exhibit D-4: The Focus Approach Law Review LSAT Program,
Schedule of Classes & Events from http://www.focus approach .com
/classes-events/2016/july/focus-approach . . . (18 TTABVUE 367-369);

– Exhibit D-5: Florida Coastal School of Law, The Florida Coastal Blog
from https://www.fcsl.edu/blog/lsat-prep-program-florida/(18 TTAB-
VUE 370-373);

– Exhibit D-6: Florida Coastal Channel Program-You Tube from
https://www.youtube/watch?v=sllr7F6vJgI (18 TTABVUE 374-377);

– Exhibit E-1: The Focus Approach Law Review LSAT Program, Law
Enforcement Resources from http://www.focusapproach.com/ps-
enforcement-resources.php (18 TTABVUE 378-381);

– Exhibit E-2: The Focus Approach Law Review LSAT Program, Law
School Resources from https://www.focusapproach.com/ps-resources
.php (18 TTABVUE 382-392);

– Exhibit F-1: The Focus Approach Law Review LSAT Program,
Suggestion Box from https://www.focusapproach.com/cs-suggestion-
box.php (18 TTABVUE 393-396);

– Exhibit F-2: The Focus Approach Law Review LSAT Program, Join
us for a free online class! https://www.focusapproach.com/
registerpreview.php (18 TTABVUE 397-400) Register for a Course
https://www.focusapproach.com/cartnew.php?a=registerdetailsonlin
e&co . . . (18 TTABVUE 401-402);

– Exhibit F-3: Focus Approach-Prospective Students-Testimonials
from https://www.focusapproach.com/ps-testimonials.php (18 TTAB-
VUE 403-407);

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Opposition No. 91228593

– Exhibit G-1: The Focus Approach Law Review LSAT Program,
Locations from https://www.focusapproach.com/ps-locations.php (18
TTABVUE 408-411);

– Exhibit G-2: The Focus Approach Law Review LSAT Program,
Schedule a Class Visit https://www.focusapproach.com/ps-schedule-
visit.php (18 TTABVUE 412-416); and

– Exhibit G-3: The Focus Approach Law Review LSAT Program,
Register for a Course from https://www.focusapproach.com/cartnew
.php?a=registerlive (18 TT-ABVUE 417-422).

2. Declaration of Ramona Prioleau (19 TTABVUE 2-6);

3. Opposer’s Second Notice of Reliance (24 TTABVUE):

1. Copy of page from Black’s Law Dictionary with definition of “IRAC”
(8th Edition 2004), page 2430 (Exhibit A) (24 TTABVUE 5-6);

2. Copy of the “Newbie” webpage https://irac.me/level/newbie/ (Exhibit
B) (24 TTABVUE 7-8);

3. USPTO electronic records from TSDR for Serial No. 87405914 for
IRAC in Class 41 (Exhibit C) (24 TTABVUE 9-11);

4. Copy of the “Terms of Use” webpage https://irac.me/terms-of-use/
(Exhibit D) (24 TTABVUE 12-13);

5. Copy of Opposer’s Facebook webpage https://www.facebook.com/
IRAC-455361957991354/ (Exhibit E) (24 TTABVUE 14-15);

6. Copy of Applicant’s Facebook webpage https://www.facebook.com/
focusapproach/ (Exhibit F) (24 TTABVUE 16-17);

7. Copies of Opposer’s calendar entries from 2013 through 2017
(Exhibit G) (24 TTABVUE 18-48).

Applicant’s submissions:

A. Applicant’s First Notice of Reliance (20 TTABVUE):

1. Copies of Opposer’s Service Mark Registration No. 5033571 for the
mark IRAC, TESS status sheet for Registration No. 5033571 dated

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Opposition No. 91228593

May 3, 2018, and Examiner’s Amendment issued July 14, 2016 (20
TTABVUE 7-13);

2. Copies of Opposer’s Service Mark Registration No. 5038276 for the
mark IRAC CHALLENGE, TESS status sheet for Registration No.
5038276 dated May 3, 2018, and Examiner’s Amendment issued July
14, 2016 (20 TTABVUE 14-21);

3. Copies of Service Mark Registration No. 5082402 for the mark
, TESS Status Sheet for Registration No. 5082402 dated
May 3, 2018, Examiner’s Amendment issued July 14, 2016 (20
TTABVUE 22-29);

4. Copies of January 27, 2018 Office Action issued in connection with
Application Serial No. 87405914 for the mark IRAC, TESS sheet for
Serial No. 87405914 (20 TTABVUE 30-43)10;

5. Copies of January 27, 2018 Final Office Action issued in connection
with Application Serial No. 87405983 for the mark IRAC, TESS
sheet for Serial No. 87405983 (20 TTABVUE 44-54)11;

B. Applicant’s Second Notice of Reliance (21 TTABVUE):

1. Printout of “Wikipedia-IRAC” webpage found at https://en/Wikiped
ia.org/wiki/IRAC (21 TTABVUE 10-15);

2. Printout of “U.S. Legalcom” webpage found at https://definitions
.uslegal.com/i/irac (21 TTABVUE 7-9);

3. Columbia Law School: Organizing a Legal Discussion (IRAC, CRAC,
ETC.), http://www.law.columbia.edu/sites/default/files/microsites/w
riting-center/files/organizing_a_legal_discussion.pdf (21 TTABVUE
16-21);

4. CUNY School of Law: IRAC/CRRACC Format, http://www.law.cuny
.edu/legal-writing/students/irac-crracc/irac-crracc-1.html (21 TTAB-
VUE 22-23);

10As noted in n.8, although Serial No. 87405914 subsequently issued as Registration No.
5683017, the Registration was not submitted into the record.
11 Application Serial No. 87405983 (18 TTABVUE 28-44) was abandoned on July 30, 2018.

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Opposition No. 91228593

5. Western New England University School of Law, Digital Commons:
Reflections of IRAC http://digitalcommons.law.wne.edu/cgi/viewcon
tent.cgi?article=1117&context=facschol (21 TTABVUE 24-25);

6. Legal Writing Institute, The Second Draft, Bulletin of the Legal
Writing Institute v. 10, No.1 November 1995: The Value of IRAC and
Point/Counterpoint: Use of IRAC-type Formulas-Desirable or
Dangerous? (21 TTABVUE 26-49);

7. New York Law School Review: What is the “R” in “IRAC”?
http://www.nylslawreview.com/wp-content/upload/sites/16/2013/11/
46-3.4.Sinclair-IRAC-article.pdf (21 TTABVUE 50-92).

C. Applicant’s Third Notice of Reliance (22 TTABVUE designated
CONFIDENTIAL)12 (23 TTABVUE):

1. Opposer’s Responses to Applicant’s Requests for Admissions Nos. 1-
13 (CONFIDENTIAL pursuant to the Board’s Standard Protective
Order) (22 TTABVUE 6-9).13

In addition to the foregoing, both Opposer and Applicant submitted trial briefs

and Opposer submitted a reply brief.

II. Background

Opposer, a New York limited liability company, asserts that it is the owner and

operator of an educational, competitive, social media and e-commerce platform

(referred to as the “IRAC platform”) that is accessible throughout the United States

as well as internationally. Opposer has used and registered the IRAC, IRAC

12Inasmuch as Opposer’s Responses to Applicant’s Requests for Admissions Nos. 1-13 were
designated “confidential” pursuant to the Board’s Standard Protective Order (22 TTABVUE
6-9) access is limited only to the Board.
13 An admission to a request to admit may be offered in evidence under Trademark Rule
2.120(k)(3)(i) and made of record by notice of reliance during the testimony period of the
offering party. TBMP § 704.10. Thus, Opposer’s admissions in response to Applicant’s
Requests for Admission Nos. 1, 3 (with respect to part admitted), 4, 6-7 and 9 are in evidence.

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Opposition No. 91228593

CHALLENGE and marks in commerce in connection with a number of

services and goods, including education, legal writing competitions, social media, and

e-commerce platforms, advertising services, arranging and conducting incentive

reward programs, and all purpose carrying bags, as early as March 2013. Opposer

built the IRAC platform, “investing substantial amounts of time and money.”14

According to Opposer, its IRAC platform:

allows members of the legal community to demonstrate
their mastery of the IRAC methodology while also building
a resource that can be used by anyone—lawyers as well as
the public. The platform allows users to enroll in
asynchronous coursework; participate in competitions;
interact with other users as well as purchase merchandise.
The platform was and continues to be targeted to lawyers,
law schools, law professors, law librarians and law
students.15

Applicant is a New York limited liability company located in Pound Ridge, New

York. Applicant uses its mark to market its associated LSAT preparation

courses through normal channels of trade, namely on Applicant’s website, at trade

shows and law school events. Applicant’s services are marketed nationwide to the

general public, and specifically to prospective law students.16 As mentioned above,

14 Declaration of Ramona Prioleau (Prioleau Decl.) ¶¶ 4, 5, 8 and 10 (19 TTABVUE 4-5).
15Trial Brief for Opposer RLP Ventures, LLC (Opposer’s Trial Brief) p. 2 (25 TTABVUE 7);
Prioleau Decl. ¶¶ Nos. 4, 5, 7 and 12 (19 TTABVUE 3-5).
Opposer’s Notice of Reliance, Applicant’s Answers to Opposer’s First Set of Interrogatories
16

Nos. 2, 7-8 (18 TTABVUE 65-66, 71-72).

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Opposition No. 91228593

Applicant filed the subject application to register its mark on March 5, 2015

for “educational services, namely, conducting classes for law school preparation

tests.”

III. Standing

Standing is a threshold issue that must be proven by the plaintiff in every inter

partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111

USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94

USPQ2d 1942, 1945 (TTAB 2010) (citing Ritchie v. Simpson, 170 F.3d 1092, 50

USPQ2d 1023, 1025 (Fed. Cir. 1999)). The U.S. Court of Appeals for the Federal

Circuit has enunciated a liberal threshold for determining standing, namely that a

plaintiff must demonstrate that it possesses a “real interest” in a proceeding beyond

that of a mere intermeddler, and “a reasonable basis for his belief of damage.”

Empresa Cubana Del Tabaco v. Gen. Cigar, 111 USPQ2d at 1062; Ritchie v. Simpson,

50 USPQ2d at 1025; Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213

USPQ 185, 189 (CCPA 1982).

Opposer’s standing is established by its ownership of the registered marks IRAC,

IRAC CHALLENGE and which are the subjects of Registration Nos.

5033571, 5038276 and 5082402, and which the record shows to be valid and

subsisting.17 Accordingly, Opposer has a real interest in this proceeding and a

17See Applicant’s First Notice of Reliance including printouts from the Trademark Electronic
Search System for Registration Nos. 5033571, 5038276, 5082402. (20 TTABVUE 10, 17, 25).

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Opposition No. 91228593

reasonable basis for its belief that it will be damaged by the registration of Applicant’s

mark. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed.

Cir. 2000).

IV. Priority

Because Opposer owns the Registrations identified above, some of which are on

the Supplemental Register, its priority is not an issue as to the services and goods

identified in those Registrations. Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280,

1286 (TTAB 1998) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d

1400, 182 USPQ 108, 110 (CCPA 1974)).18

V. Acquired Distinctiveness

Opposer’s Registration Nos. 5033571 for IRAC, 5038276 for IRAC CHALLENGE

and 5082402 for are for marks and services which are most likely to

support a likelihood of confusion claim.19 Therefore, if no likelihood of confusion is

18See Otter Products LLC v. BaseOneLabs LLC, 105 USPQ 2d 1252, 1254-55 (TTAB 2012)
(priority not at issue in opposition where pleaded registration of record resides on
Supplemental Register).
19 Additionally, although Opposer did not make its Registration Nos. 5316956 (for “all-
purpose carrying bags” in International Class 18), 5456874 (for “advertising services, namely,
promoting and marketing the goods and services of others through all public communication
means; arranging and conducting incentive reward programs to promote the sale of a
company’s goods or services” in International Class 35), and 5683017 (for “providing an on-
line computer game where users earn points by uploading photos, posting comments, or
providing entertainment information related to local attractions and events” in International
Class 41), of record, Applicant has not contested Opposer’s ownership of Registration Nos.
5316956 and 5456874, or their status, and identifies them as part of the record. See p. 1 of
Applicant’s Trial Brief (26 TTABVUE 5). However, the goods and services covered by these
three Registrations are sufficiently different from the services identified in Opposer’s
Registration Nos. 5033571, 5038276 and 5082402, and Applicant’s application, that they are
not relevant to the determination of likelihood of confusion and are not considered.

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Opposition No. 91228593

found with respect to these marks, no likelihood of confusion will be found with

respect to any of Opposer’s other marks. Applicant contends that the dominant literal

element of each of the marks, namely, “the acronym IRAC,” is merely descriptive

which means that Opposer must demonstrate that its marks have acquired

distinctiveness.20

Opposer’s registered word marks IRAC and IRAC CHALLENGE in Registration

Nos. 5033571 and 5038276 respectively, are registered on the Supplemental Register.

Although registrations on the Supplemental Register remove priority as an issue,

they are evidence of nothing more than the fact that the registrations issued on the

dates printed thereon. In re Federated Dep’t Stores Inc., 3 USPQ2d 1541, 1543 (TTAB

1987). Thus, they are not entitled to the presumptions of § 7(b) of the Trademark Act.

In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 n.9 (Fed. Cir.

2010); McCormick & Co., Inc. v. Summers, 354 F.2d 668, 148 USPQ 272, 276 (CCPA

1966). Nor can they be considered as evidence of a proprietary right in the registered

marks. Otter Prods. LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1255-56 (TTAB

2012); Hi-Shear Corp. v. Nat’l Auto. Parts Ass’n, 152 USPQ 341, 344 (TTAB 1966).

Marks registered on the Supplemental Register are presumed to be merely

descriptive. See Quaker State Oil Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296,

172 USPQ 361, 363 (CCPA 1972). Thus, Opposer has the burden to prove that the

marks in its Supplemental Registrations have acquired distinctiveness. Nazon v.

Ghiorse, 119 USPQ2d 1178, 1182 (TTAB 2016); Otter Prods. v. BaseOne Labs, 105

20 Applicant’s Trial Brief p. 15 (26 TTABVUE 19).

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Opposition No. 91228593

USPQ at 1255.21 To establish secondary meaning or “acquired distinctiveness,”

Opposer must show that “in the minds of the public, the primary significance of a

[service] feature or term is to identify the source of the [service] rather than the

[service] itself.” Inwood Labs., Inc. v. Ives Labs., 456 U.S. 844, 214 USPQ 1, 4 n.11

(1982); Qualitex Co. v. Jacobson Prods. Inc., 514 U.S. 159, 34 USPQ2d 1161, 1163

(1995).

In determining whether secondary meaning has been acquired, the Board may

examine advertising expenditures, sales success, length and exclusivity of use,

unsolicited media coverage, copying of the mark by the opposing party and consumer

studies (linking the name to a source). Coach Servs., Inc. v. Triumph Learning LLC,

668 F.3d 1356, 101 USPQ2d 1713, 1729 (Fed. Cir. 2012); In re Steelbuilding.com, 415

F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005); Cicena Ltd. v. Columbia

Telecomms. Group, 900 F.2d 1546, 14 USPQ2d 1401, 1406 (Fed. Cir. 1990). On this

list, no single factor is determinative. A showing of secondary meaning need not

consider each of these elements. Rather, the determination examines all of the

circumstances involving the use of the mark. In re Steelbuilding, 75 USPQ2d at 1424.

Considering the evidence, proprietary rights in the wordmarks IRAC and IRAC

CHALLENGE have not been established. Opposer introduces Exhibits A, C and D

21Since priority is not at issue, Opposer need not establish that its marks registered on the
Supplemental Register acquired distinctiveness prior to any date on which Applicant
obtained rights in its mark. Opposer need only show that its marks now have acquired
distinctiveness. This is akin to the situation in which an opposer has a valid registration on
the Principal Register that is not the subject of a counterclaim for cancellation; whether the
applicant has made prior use of its mark is not relevant, as the registration itself means that
priority is not at issue. Nazon v. Ghiorse, 119 USPQ2d at 1182 n.7.

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Opposition No. 91228593

submitted with its Second Notice of Reliance (24 TTABVUE) in support of the

distinctiveness of its marks. Exhibit A is the definition of IRAC from Black’s Law

Dictionary (24 TTABVUE 6); Exhibit C is a Trademark Status & Document Retrieval

printout of its application Serial No. 87405914 for “IRAC” for “providing an on-line

computer game where users earn points by uploading photos, posting comments, or

providing entertainment information related to local attractions and events” (which

has now issued as Registration No. 5683017) (24 TTABVUE 10-11); and Exhibit D

appears to be a “Terms of Use” page from Opposer’s website (24 TTABVUE 13). None

of these Exhibits, or any other of Opposer’s Exhibits, establish that in the minds of

the public, the primary significance of IRAC or IRAC CHALLENGE identifies or

describes the source of Opposer’s services rather than the services themselves.

Neither does the testimony of Ramona Prioleau, Opposer’s founder, support the

distinctiveness of its IRAC and IRAC CHALLENGE marks. Ms. Prioleau testifies

that Opposer began using its marks as early as March 2013,22 that on behalf of

Opposer she “bootstrapped the platform from the ground up, investing substantial

amounts of time and money,”23 that “[t]he Opposer’s web presence has also been

accessed by pre-law students, legal assistants /paralegals and members of the general

public,”24 and that the platform for the services offered under the Opposer’s mark is

22Prioleau Decl. ¶ 8 (“Opposer commenced these uses mentioned above as early as March
2013.”) (19 TTABVUE 5).
23Id. at ¶ 10 (“I, on behalf of the Opposer, bootstrapped the platform from the ground up,
investing substantial amounts of time and money.”) (19 TTABVUE 5).
24Id. at ¶ 13 (“The Opposer’s web presence has also been accessed by pre-law students, legal
assistants /paralegals and members of the general public.”) (19 TTABVUE 5).

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Opposition No. 91228593

available to the public at www.irac.me where the Opposer’s mark appears on every

page.25 Inasmuch as there is no evidence provided to substantiate how much money

was invested, how it was invested, what it was invested in, the impact of such

investment, or the number of users viewing its website and their occupations, the

testimony is lacking in detail, and does not support a showing of distinctiveness of

Opposer’s IRAC and IRAC CHALLENGE marks.26

In view of the lack of evidence supporting the acquired distinctiveness of its IRAC

and IRAC CHALLENGE marks, Opposer is limited to its registered mark

as the basis of its opposition of Applicant’s mark.

VI. Likelihood of Confusion

Our determination under Section 2(d) of the Trademark Act is based on an

analysis of all of the relevant probative evidence in the record related to a likelihood

of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563

(CCPA 1973); see also Palm Bay Imports, Inc. v. Veuve Clicquot Pansardin Maison

Fondee En 1722, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). In any likelihood

of confusion analysis, two key considerations are the similarities between the marks

25Id. at ¶ 14 (“The platform for the services offered under the Opposer’s Mark is available to
the public at www.irac.me (the ‘IRAC’ platform). On the IRAC platform, the Opposer’s Mark
appears on every page, including the top of the IRAC platform’s home page.”) (19 TTABVUE
6).
26Opposer also argues that its marks are distinctive because its “ecosystem has been used
and accessed by users outside of the legal community and there have been over 20,000 likes
recorded in connection with the Facebook presence associated with the Opposer’s platform
and over 1,684 likes recorded in connection with the Twitter presence associated with the
Opposer’s ecosystem.” However, no evidence was submitted supporting the number of “likes”
and even if there was, it is not likely be sufficient on its own to support the acquired
distinctiveness of Opposer’s IRAC and IRAC CHALLENGE marks.

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Opposition No. 91228593

and the similarities between the goods and services. See Federated Foods, Inc., v. Fort

Howard Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental

inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential

characteristics of the goods and differences in the marks.”).

To the extent that any other du Pont factors for which no evidence or argument

were presented may nonetheless be applicable, we treat them as neutral.

A. Similarity of Services, Channels of Trade and Classes of Purchasers

We start with the second du Pont factor, where we look to the parties’ respective

services to determine their similarity or dissimilarity. When evaluating the issue of

likelihood of confusion, we compare the services of the Opposer with the services as

identified in Applicant’s application. See Stone Lion Capital Partners, LP v. Lion

Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (goods as

identified in involved application and registration compared); Octocom Sys. Inc. v.

Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990);

Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d

1813 (Fed. Cir. 1987). The authority is legion that the question of registrability of

Applicant’s mark must be decided on the basis of the identification of services set

forth in the application regardless of what the record may reveal as to the particular

nature of its services, the particular channels of trade or the class of purchasers to

which the sales of goods are directed. See Octocom Systems v. Houston Comput.

Servs., 16 USPQ2d at 1787 (citations omitted).

Applicant’s identified services are:

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Opposition No. 91228593

Educational services, namely, conducting classes for law
school preparation tests;

while Opposer’s services27 include:

Education services, namely, providing instruction in the
fields of legal writing; Entertainment services in the
nature of competitions in the field of legal writing;
Providing online non-downloadable journals in the field of
law.

Looking at the respective identifications of services, it is apparent that Applicant’s

services are closely related to Opposer’s services. Both parties’ services are directed

to educational services in the legal field, specifically, law school preparation tests and

legal writing. Persons taking Applicant’s law school preparation test classes are most

likely intending to go to law school where they will have the opportunity to perform

and study legal writing. The respective services in question 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. v. Triumph Learning, 101 USPQ2d at 1722 (quoting 7- Eleven

Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). Thus, conducting classes for

law school preparation tests and providing instruction in the field of legal writing are

directly related to admission into, and coursework during, law school.

Turning to the classes of consumers and channels of trade, because there is no

limitation as to classes of consumers or trade channels in the description of services

in either the application or in Opposer’s pleaded registration, we must presume that

27 These services are found in Opposer’s pleaded Registration No. 5082402.

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Opposition No. 91228593

Opposer’s “providing instruction in the fields of legal writing” and Applicant’s

“conducting classes for law school preparation tests” are marketed in all normal trade

channels for such services and to all normal classes of purchasers for such services.

See Stone Lion Capital Partners v. Lion Capital, 110 USPQ2d at 1162 (“An

application with ‘no restriction on trade channels’ cannot be ‘narrowed by testimony

that the applicant’s use is, in fact, restricted to a particular class of purchasers.’”)

(quoting Octocom Sys. Inc. v. Houston Comput. Servs., 16 USPQ2d at 1788); Coach

Servs. v. Triumph Learning, 101 USPQ2d at 1722; Packard Press, Inc. v. Hewlett-

Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1357 (Fed. Cir. 2000) (“When the

registration does not contain limitations describing a particular channel of trade or

class of customer, the goods or services are assumed to travel in all normal channels

of trade.”).

Opposer “designed [its] platform to be an education, content, competition, social

media and e-commerce environment targeted to lawyers, law schools, law professors,

law librarians and law students.”28 Applicant’s consumers, i.e., persons who are

interested in law school test preparation classes, are most likely intending to go to

law school. Once they have been admitted to law school and begin taking law school

courses, they are law students who will be studying and engaging in legal writing.

Applicant’s consumers who go on to attend law school are part of the same consuming

public who are desirous of Opposer’s services. Thus, both marks are likely to be

encountered by at least some of the same consumers under circumstances that would

28 Prioleau Decl. ¶ 5 (19 TTABVUE 4).

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Opposition No. 91228593

give rise to the mistaken belief that they originate from the same source or that there

is an association between the parties. To the extent that Applicant’s and Opposer’s

services will be offered to at least some of the same consumers, the channels of trade

and classes of customers overlap.

B. Similarity of the Marks

We next consider the appearance, sound, connotation and commercial impression

of the marks in their entireties. Palm Bay v. Veuve Clicquot, 73 USPQ2d at 1692. The

test is whether the marks are sufficiently similar in their entireties such that

confusion is likely to result. Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108

(TTAB 1975).

Looking at the marks, the dominant portion of Opposer’s and Applicant’s marks

is the term “IRAC.” Applicant’s mark contains the wording IRAC in capital

letters that are in a larger font size than the font sizes of the letters of the wording

“LAW SCHOOL” and “THE FOCUS APPROACH.” Opposer’s word and design mark

(in Registration No. 5082402) shows the wording “IRAC” in capital

letters in a larger font size relative to all of the other components of the mark. Thus,

the marks of both parties comprise the dominant literal element “IRAC” in bold and

large capital letters. While the term “IRAC” has been disclaimed by both parties due

to its descriptiveness in the legal area, it contributes to the similarity of the marks

when viewed in their entireties. See Specialty Brands, Inc. v. Coffee Bean

Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1282 (Fed. Cir. 1984).

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Opposition No. 91228593

Opposer contends that Applicant’s mark is confusingly similar in appearance and

overall commercial impression to Opposer’s mark because both marks include the

literal dominant element “IRAC.” According to Opposer, when the dominant portion

of the respective marks is the same, confusion may be more likely “notwithstanding

peripheral differences.”

Opposer recognizes that “the evidence demonstrates that the dominant portion of

the parties’ marks are identical or substantially similar in appearance, sound,

connotation, and commercial impression as required for a finding of likelihood of

confusion.”29 While we agree with Opposer that the dominant portions of the parties’

marks, i.e., “IRAC,”30 are identical, we disagree with Opposer’s argument that “[t]he

letters IRAC in the Opposer’s Mark are distinctive of its ecosystem and not

descriptive of any particular acronym.”31

The evidence of record establishes that “IRAC” is descriptive of Opposer’s and

Applicant’s services. A dictionary definition submitted by Opposer defines “IRAC” as:

A mnemonic acronym used mostly by law students and
their writing instructors, esp. as a method of answering
essay questions on law exams. The acronym is commonly
said to stand for either (1) issue, rule, application,
conclusion, or (2) issue, rule, analysis, conclusion.32

while Applicant submits evidence of similar definitions:

29 Applicant’s Trial Brief p. 15 (26 TTABVUE 19).
30 Opposer’s Trial Brief p. 10 (25 TTABVUE 15).
31 Id. at p. 11 (25 TTABVUE 16).
32Black’s Law Dictionary (8th ed. 2004) p. 2430, Opposer’s Notice of Reliance Exhibit A (24
TTABVUE 5-6).

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Opposition No. 91228593

IRAC is a mnemonic acronym used mostly by law students,
their writing instructors and attorneys, especially as a
method of answering legal questions. IRAC stands for
issue, rule, application/analysis, and conclusion. It is one
way to structure legal analysis. In IRAC, first the issue or
legal question is stated, then the applicable law or rule is
provided, next the facts are analyzed in the light of the law
and finally a conclusion is formed for each issue.33

IRAC is an acronym that generally stands for: Issue, Rule,
Application, and Conclusion. It functions as a
methodology for legal analysis. The IRAC format is mostly
used in hypothetical questions in law school and bar
exams.34

Additionally, Applicant cites to legal articles on “IRAC” topics further supporting

the descriptive meaning of “IRAC” in legal writing and analysis:

Organizing A Legal Discussion (IRAC, CRAC, ETC.)35

. . . legal writing has its own specific structure that lawyers
everywhere use in one form or another—and which they
expect to see in your written work.

Whether they call it IRAC (Issue, Rule, Application,
Conclusion), CRAC (Conclusion, Rule, Application,
Conclusion), or CREAC (Conclusion, Rule, Explanation,
Application, Conclusion), all lawyers write in the same
way: by laying out the issue to be discussed, the legal rule
relevant to the issue, the analysis of the pertinent facts
based on that rule, and the overall conclusion reached.

33USLegal.com May 3, 2018, Applicant’s Second
Notice of Reliance, No. 2 (21 TTABVUE 8).
34IRAC Wikipedia May 3, 2018, Applicant’s Second
Notice of Reliance, No. 1 (21 TTABVUE 10).
35“Organizing A Legal Discussion (IRAC, CRAC, ETC.),” Columbia Law School Legal Writing
Center , Applicant’s Second Notice of Reliance No. 4 (21 TTABVUE
17).

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Opposition No. 91228593

IRAC and CRRACC36

IRAC is the acronym for Issue, Rule, Application,
Conclusion. These words represent the stages of the most
commonly accepted way to organize a written legal
analysis . . .

Point/Counterpoint: Use of IRAC-type Formulas—
Desirable or Dangerous?37

The Value of IRAC

IRAC is a tool many of us use to help students provide
structure to legal analysis. Student use this tool not only in
writing objective and persuasive memos and briefs, but
also in writing answers to examination questions. . . .

What is the “R” in “IRAC”?38

. . . . “IRAC” is an acronym for a popular procedure for
briefing cases or “synthesizing” sets of cases: “I-R-A-C” for
“Issue” (the problem), “Rule” (the rule of the case, or the
rule you synthesize from the precedent cases),
“Application” (how your case comes under that rule), and
“Conclusion” (not, one hopes, “client goes to jail.”) . . .

The foregoing establishes that “IRAC” is a well-recognized term in the legal setting

describing a way to structure legal analysis and writing.39 Both parties use “IRAC”

36“IRAC and CRRACC,” Cuny School of Law , Applicant’s Second Notice of Reliance No. 3 (21 TTABVUE
23).
37“Point/Counterpoint: Use of IRAC-type Formulas—Desirable or Dangerous?,” The Second
Draft Bulletin of the Legal Writing Institute, Legal Writing Institute vol. 10, No. 1 November
1995 obtained from , Applicant’s Second Notice of Reliance, No. 5 (21 TTABVUE 25-49).
38“What is the ‘R’ in ‘IRAC’?,” New York School Law Review, March 20, 2003, vol. 46, pp.
457-498, , Applicant’s Second Notice of Reliance, No. 6 (21 TTABVUE 50-92).
39 Additionally, three excerpts from articles and newswires listed in the Newspapers section
of the Trademark Search Report referring to “IRAC” were cited at 4 (18 TTABVUE 198).

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Opposition No. 91228593

descriptively, if not generically, in their website advertising materials.40 Thus, the

primary significance that consumers are likely to attribute to “IRAC” as applied to

both parties’ services is the same merely descriptive meaning.

In further support of the descriptiveness of the term “IRAC,” Applicant notes that

Opposer’s Registration Nos. 5033571 for IRAC and 5038276 for IRAC CHALLENGE

are registered on the Supplemental Register. It is well settled that registration on

the Supplemental Register is prima facie evidence that, at least at the time of

registration, the registered mark was merely descriptive. See Otter Prods. v.

BaseOneLabs, 105 USPQ2d at 1255 (citing Perma Ceram Enterprises Inc. v. Preco

Indus., Ltd., 23 USPQ2d 1134, 1137 n.11 (TTAB 1992) (mark registered on the

Supplemental Register constitutes an implied admission that the term is descriptive,

at least at the time of registration)).

In addition, Opposer disclaimed the exclusive right to use the term “IRAC” in its

Registration No. 5082402 for the mark . “[I]t has long been held that the

disclaimer of a term constitutes an admission of the merely descriptive nature of that

term, as applied to the goods or services in connection with which it is registered, and

an acknowledgement of the lack of an exclusive right therein at the time of the

disclaimer.” In re DNI Holdings Ltd., 77 USPQ2d 1435, 1442 (TTAB 2005); see also

Quaker State Oil Refining v. Quaker Oil, 172 USPQ at 363. Similarly, Applicant was

required to disclaim the term “IRAC” in its pending application on the ground that

40See Opposer’s use of “IRAC” at 18 TTABVUE 53 and 20 TTABVUE 39; and Applicant’s use
of “IRAC” at 18 TTABVUE 306, 418-419.

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Opposition No. 91228593

“IRAC” merely describes components of a methodology, i.e., the “IRAC” method

utilized in law schools to issue spot, problem solve and analyze test questions.41

In view of the foregoing, “IRAC” as used in Opposer’s mark , and in

Applicant’s mark , is merely descriptive of the services provided by Applicant

and Opposer.

Lastly, in addition to both parties’ marks containing the literal element “IRAC,”

with Opposer’s mark also containing the minimized word “ME” in the exclamation

mark found at the end of its mark, Opposer contends that its word and design mark

includes a triumphal arch as a design element, and the literal and

design elements of the Applicant’s mark, , are also arranged in the shape of

a triumphal arch.42

On the other hand, Applicant describes its mark as including a depiction of a roof

of a building under which the phrase “LAW SCHOOL” is visible, indicating that the

building relates to a law school. Underneath “IRAC” appears Applicant’s registered

mark THE FOCUS APPROACH. According to Applicant, the “commercial impression

of the mark is that Applicant’s LSAT preparation courses, provided to persons

41 June 18, 2015 Office Action TSDR at 5; Applicant Brief p. 13 (26 TTABVUE 17).
42Opposer’s Trial Brief p. 5 (25 TTABVUE 10); Prioleau Decl. ¶ 11 (19 TTABVUE 5).
Additionally, Opposer argues that the literal elements of the Applicant’s mark also includes
the wording LAW SCHOOL which is a target market of the Opposer. Id.

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Opposition No. 91228593

seeking to enter law school, utilize the IRAC methodology.”43 Applicant goes on to

distinguish Opposer’s mark which also includes “IRAC,” and contains “a rendering of

a ‘gavel and sound block,’ the ‘scales of justice,’ a depiction of a lawyer standing at a

podium presenting a case to a jury, and a depiction of the outside of a building which

appears to be a courthouse, . . .”44 noting that none of the design elements of Opposer’s

mark are present in Applicant’s mark.

Looking at the marks, they each contain images generally related to a building.

Opposer’s mark features a rendering of a traditional government-type building such

as a courthouse as one of three additional images relating to courts, trials and justice,

while Applicant’s mark features a highly stylized depiction of a building which from

the wording in the mark makes it apparent that it represents a law school. Thus,

apart from the descriptive term “IRAC,” the marks contain different elements

rendering a different overall image. The only similar element in Opposer’s marks and

Applicant’s mark is the merely descriptive acronym “IRAC.”

VII. Conclusion

Applicant’s educational services, namely, conducting classes for law school

preparation tests, are related to Opposer’s education services, namely, providing

instruction in the fields of legal writing, and it is likely that these services move in

the same trade channels to at least some of the same end consumers.

43 Applicant’s Trial Brief p. 17 (26 TTABVUE 21).
44 Id.

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Opposition No. 91228593

Opposer’s mark and Applicant’s mark are similar to the

extent they contain the term “IRAC.” However, “IRAC” is descriptive when used in

connection with Opposer’s legal writing instruction services and Applicant’s law

school test services. Therefore, any similarity in commercial impression is diminished

due to the descriptiveness of the term “IRAC” in each mark. Moreover, Opposer has

failed to prove that its marks IRAC and IRAC CHALLENGE have acquired

distinctiveness; thus, Opposer must rely only on its composite mark to

establish a likelihood of confusion.

The design portions of Opposer’s and Applicant’s word and design marks are not

similar in appearance or meaning resulting in the parties’ marks having overall

different commercial impressions. Thus, the overall differences in the marks,

particularly the differences in the designs of Opposer’s and Applicant’s marks,

together with the descriptiveness of the term “IRAC” found in each mark, are

sufficient to avoid any likelihood of confusion despite the fact that the marks are used

in connection with related services.

Decision: The Opposition under § 2(d) of the Trademark Act is dismissed.

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