Monday, July 09, 2012

TTAB Reverses 2(d) and 2(e)(1) Refusals of "ATTORNEYPAGES" for Online Legal Directory

The Advice Company overcame of bifusal (i.e., two refusals) of its mark ATTORNEYPAGES for an on-line searchable directory of information of lawyers and legal services. The Board found the mark not likely to cause confusion with the Supplementally-registered mark ATTORNEYYELLOWPAGES.COM for overlapping services. And Applicant's Section 2(f) evidence was sufficient to support its claim of acquired distinctiveness. In re The Advice Company, Serial No. 77005059 (June 7, 2012) [not precedential].

Likelihood of confusion:The Board found the involved services to be legally identical, and therefore presumed that they are offered through the same trade channels to the same classes of purchasers.

Because the cited mark ATTORNEYYELLOWPAGES.COM is registered on the Supplemental Register, it is considered to be merely descriptive at the time of registration. Moreover, the Board found it to be "highly descriptive" of the services and therefore entitled to only a narrow, "quite limited" scope of protection. In view of this narrow scope, the Board found the marks to be distinguishable.

The Board then looked over a settlement agreement, submitted in redacted form, between Applicant and Registrant that arose out of a previous civil action, in which agreement the Registrant agreed to "release any claims concerning the ATTORNEYPAGES mark," while Applicant released its claims regarding the cited mark. The Examining Attorney contended that this "naked consent" has little probative value because it failed to state why the parties believed there is no likelihood of confusion, and how the parties would avoid confusion.

The Board agreed that this naked consent carries little weight, but it should not be ignored. The consent is actually an acknowledgement of a broader, arms-length agreement arising out of prior legal proceedings. These circumstances indicate that the issue of confusion was necessarily and seriously considered, and that the parties determined that confusion is unlikely.

Finally, the Board noted that Applicant owns an existing Supplemental Registration for the same mark for legally identical services. Although this factor is not as weighty as the others, it does point away from a finding of likely confusion.

And so, balancing the relevant du Pont factors, the Board found confusion unlikely and it reversed the Section 2(d) refusal.

Acquired Distinctiveness: Applicant proved use of its mark since 1998, averaging 150,00 unique visitors per month, with revenues growing to nearly $1.5 million in 2009. It advertises in legal periodicals and exhibits at national conventions.

The Board recognized that the assessment of Section 2(f) evidence is a subjective one based on the relative degree of descriptiveness, but the Board found the evidence sufficient in this case. Therefore, it reversed the Section 2(e)(1) mere descriptiveness refusal.

TTABlog comment: Name two places where a naked consent is given legal weight. Answer here.

Text Copyright John L. Welch 2012.


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