In re Kelleher

• Decision Date: 17 November 2020
• Docket Number: 87882281
• Court: Trademark Trial and Appeal Board
• Parties: In re James Kelleher

In re James Kelleher

No. 87882281

United States Patent and Trademark Office, Trademark Trial and Appeal Board

November 17, 2020

This Opinion is Not a Precedent of the TTAB

Christopher P. Bussert of Kilpatrick Townsend & Stockton LLP, for James Kelleher.

Pauline Ha, ^[1] Trademark Examining Attorney, Law Office 115, Daniel Brody, Managing Attorney.

Before Lykos, Shaw and English, Administrative Trademark Judges.

OPINION

Lykos Administrative Trademark Judge

James Kelleher ("Applicant") seeks to register on the Principal Register the standard character mark ASK JIM FIRST for, as amended, "Lawyer referral services provided to consumers who seek to retain an attorney to represent them in personal injury matters, excluding business advice, inquiries and information services" in International Class 35.^[2]

Registration has been refused under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant's applied-for mark so resembles the registered standard character mark ASK JIM on the Principal Register for "Business advice, inquiries or information" in International Class 35, ^[3] that it is likely to cause confusion or mistake or to deceive.^[4]

Briefing of the appeal is now complete. For the reasons set forth below, we affirm.

I. Likelihood of Confusion

Our determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563, 567 (CCPA 1973) ("DuPont"). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 U.S.P.Q.2d 1201, 1203 (Fed. Cir. 2003). We must consider each DuPont factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 U.S.P.Q.2d 1160, 1162-63 (Fed. Cir. 2019). When analyzing these factors, the overriding concerns are not only to prevent buyer confusion as to the source of the services, but also to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 26 U.S.P.Q.2d 1687, 1690 (Fed. Cir. 1993).

Varying weights may be assigned to each DuPont factor depending on the evidence presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 U.S.P.Q.2d 1253, 1261 (Fed. Cir. 2011); Shell Oil Co., 26 U.S.P.Q.2d at 1688 ("[T]he various evidentiary factors may play more or less weighty roles in any particular determination."). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the services. See In re Chatam Int'l Inc., 380 F.3d 1340, 71 U.S.P.Q.2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 U.S.P.Q. 24, 29 (CCPA 1976) ("The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the [services] and differences in the marks."). We discuss these factors and others below.

A. The Marks

This first DuPont likelihood of confusion factor involves an analysis 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 U.S.P.Q.2d 1689, 1692 (Fed. Cir. 2005) (citing DuPont, 177 U.S.P.Q. at 567). "Similarity in any one of these elements may be sufficient to find the marks confusingly similar." In re Inn at St. John's, LLC, 126 U.S.P.Q.2d 1742, 1746 (TTAB 2018), aff'd mem., 777 Fed.Appx. (Fed. Cir. 2019). Accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156 U.S.P.Q. 523, 526 (CCPA 1968) ("It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.") (citation omitted). "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." Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 U.S.P.Q.2d 1713, 1721 (Fed. Cir. 2012) (citation omitted).

As noted above, the applied-for mark is ASK JIM FIRST, and the cited mark is ASK JIM. To state the obvious, both marks are slogans and are highly similar in sound and appearance, with an almost identical meaning and commercial impression. In addition, Applicant's mark incorporates the entirety of the cited mark. While there is no per se rule that likelihood of confusion automatically applies where one mark encompasses another, likelihood of confusion has often been found where the entirety of one mark is incorporated within another. See In re Denisi, 225 U.S.P.Q. 624, 626 (TTAB 1985) (PERRY'S PIZZA for restaurant services specializing in pizza and PERRY'S for restaurant and bar services); see also Coca-Cola Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 U.S.P.Q. 105 (CCPA 1975) (applicant's mark BENGAL LANCER for club soda, quinine water and ginger ale likely to cause confusion with BENGAL for gin); In re Integrated Embedded, 120 U.S.P.Q.2d 1504, 1513 (TTAB 2016) (applicant's mark BARR GROUP wholly encompasses the registered mark BARR); Johnson Publ'g Co. v. Int'l Dev. Ltd., 221 U.S.P.Q. 155, 156 (TTAB 1982) (applicant's mark EBONY DRUM for hairdressing and conditioner is likely to cause confusion with EBONY for cosmetics); In re U.S. Shoe Corp., 229 U.S.P.Q. 707, 709 (TTAB 1985) (finding applicant's CAREER IMAGE marks similar to registered mark CREST CAREER IMAGES). This principle holds true here especially given that the sole distinguishing word, FIRST, appears at the end of the phrase ASK JIM in Applicant's mark. For this reason, consumers are likely to perceive the applied-for mark ASK JIM FIRST as a variation of the cited mark ASK JIM.

Overall the marks are similar in sound, sight, connotation and commercial impression. In making this finding, we note the differences in sight and sound. Consumers, however, do not focus on minutia but rather overall impressions. The sole distinguishing feature is likely to be overlooked when consumers consider the marks in their entireties. This DuPont factor weighs in favor of finding a likelihood of confusion.

B. Strength of the Cited Mark

Applicant postulates that the cited registration ASK JIM is entitled to only a narrow scope of protection. In support thereof, Applicant points to third-party registered marks incorporating the word ASK for both related and unrelated services (ASK LEGAL, ASK LEGAL BRAINS, ASK LESLIE THE LAWYER, ASK A LAWYER, ASKDOCTORLAW, 1-800-ASK DAVE, ASK RITA K, ASK THE DOM, ASK THE GENIUS, ASK SOMEONE YOU TRUST ABOUT US, ASK STEVE FOR FREE, ASK GARY, ASKLAW, ASK LAW OFFICES, ASK DAVE, JUST ASK, and 1-800-ASK-GARY); third-party registered marks incorporating the word FIRST for related and unrelated services (CALL BART FIRST, CLICK ME FIRST, CALL ME FIRST, CLICK BART FIRST, BUSINESS LAWYERS FIRST, and RESULTS FIRST); and third-party registered marks incorporating both ASK and FIRST (ASK U.S. FIRST, ASK ME FIRST, ASK COLIN FIRST and ASK FIRST).^[5]

Third-party registrations alone may be relevant, in the manner of dictionary definitions, "to prove that some segment of the [marks] has a normally understood and well recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak." Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 U.S.P.Q.2d 1671, 1675 (Fed. Cir. 2015) (internal quotation marks omitted). See also Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 U.S.P.Q.2d 1129, 1135-36 (Fed. Cir. 2015). In addition, "in determining the degree of weakness, if any, in the shared terms, we must 'adequately account for the apparent force of [third-party use and registration] evidence,' regardless of whether 'specifics' pertaining to the extent and impact of such use have been proven." Inn at St. John's, 126 U.S.P.Q.2d at 1746.

Some of the third-party registrations have been cancelled. For example, Registration No. 2151373 for the mark ASK FIRST for "physician referral services" was cancelled for failure to file a Section 8 affidavit or declaration showing use of the mark in commerce in the United States. "The existence of a cancelled registration- particularly one cancelled for failure to provide a declaration of continued use-does not tend to show that the cited mark is weak due to third-party use." Inn at St. John's, 126 U.S.P.Q.2d at 1745. See also New Era Cap Co., Inc. v. Pro Era, LLC, 2020 U.S.P.Q.2d 10596, *12-13 (TTAB 2020). Of the remaining third-party registrations, none incorporate the given name JIM, an integral feature of the cited mark, or for that matter both ASK and JIM for the same or related services. Applicant has not shown that the cited mark ASK JIM is conceptually weak in connection with the identified services or services related thereto, making the cited mark deserving a lesser scope of protection.

C. The Services

Next we compare the services as they are identified in the involved application and cited registration. See In re Detroit Athletic Co., 903 F.3d 1297, 128 U.S.P.Q.2d 1047, 1052 (Fed. Cir. 2018); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 U.S.P.Q.2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous. Comput Servs. Inc., 918 F.2d 937, 16 U.S.P.Q.2d 1783, 1787 (Fed. Cir. 1990); and Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 U.S.P.Q.2d 1001, 1004 (Fed. Cir. 2002). The services need not be identical or even competitive to find a likelihood of confusion. On-line...