Customer Sophistication For Expert Witness Services Yields Section 2(d) Reversal

The Board reversed a Section 2(d) refusal to register the mark shown below left, for "expert witness services in legal matters in the field of design of computer hardware, integrated circuits, communications hardware and software and computer networks for others," finding it not likely to cause confusion with the registered mark shown below left, for "legal services." Even assuming an overlap in customers, those customers would be careful and sophisticated, and able to distinguish the marks. In re Integrated Embedded dba Barr Group, Serial No. 86141386 (November 5, 2015) [not precedential].

The Examining Attorney submitted evidence from third-party websites showing that law firms may offer both legal services and expert witness services. The Board observed, however, that consumers of expert witness services are attorneys who desire to use those services in the preparation and presentation of their cases. Moreover, applicant's services are of a very specific nature, and the evidence did not show that those specialized services are offered by law firms. In fact, the third-party law firm webpages indicated that law firms that provide expert witness services focus those services on their areas of their legal expertise, not on technical expertise regarding computers.

And even if there were an overlap in the involved services, the only likely purchasers of the involved services would be attorneys who might need an expert witness in applicant’s field and might also have a need for legal services (for example, seeking co-counsel or assistance in an unfamiliar area of practice). "This one common class of consumers must be considered to be careful and sophisticated purchasers, who would pay attention to trademarks and notice differences between them."

As to the marks, applicant's mark "falls in the grey region between pure design marks which cannot be vocalized and word marks which are clearly intended to be." Therefore, the Board did not accept the Examining Attorney's view that the marks are "nearly identical" in sound, meaning, and commercial impression. The marks are obviously different in appearance, and this difference "causes them to have somewhat different commercial impressions." In view of the care with which the involved services will be chosen, the Board found those differences to be sufficient to distinguish the marks.

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: After this victory, applicant may be humming The Bee Gees, "Stayin Alive."

Text Copyright John L. Welch 2015.