Wednesday, April 26, 2017

TTAB Reverses 2(d) Refusal of ARC: Different Services and Channels of Trade, Sophisticated Purchasers

The Board reversed a Section 2(d) refusal of the mark shown below, for "litigation support services provided exclusively to law firms, namely, conducting electronic legal discovery in the nature of reviewing e-mails and other electronically stored information that could be relevant evidence in a laws," finding the mark not likely to cause confusion with the registered mark ARC for "legal services." The Board found that the differences in services and the care with which they would be purchased outweighed the similarities in the marks. In re Iris Data Services, Inc., Serial No. 86455558 (April 24, 2017) [not precedential] (Opinion by Judge Lykos).


The Marks: The cited mark is registered in standard character form, and could be used in the same font, color, and design as the applied-for mark. Moreover, it is the literal portion of the mark that will be used in calling for the services. And the design portion of applicant's mark merely reinforces the meaning and connotation of the word ARC. And so the Board found that the first factor weighed in favor of affirmance of the refusal.

The Services and Channels of Trade: The Examining Attorney contended that registrant's "legal services" encompass "all manner of legal services activities, including legal discovery and legal document review." Applicant argued that its services are computer-based services offered to legal professionals.

The Board sided with applicant, noting that the Examining Attorney offered no evidence to show that the involved services are related. The restriction of applicant's services to those provided "exclusively to law firms" made the channels of trade distinct. There was no evidence that the persons at law firms who are responsible for purchasing electronic discovery services are also the same individuals who retain "legal services" within the context of a traditional attorney/client relationship.

Therefore the Board concluded that these du Pont factors favored applicant.

Conditions of Sale: Although registrant's legal services encompass both high-priced and low-priced services, and even pro bono services, consumers will exercise a relatively high degree of care in their purchasing decisions. Applicant's services are of a specialized nature and are offered on a subscription basis at a relatively high price. Purchasers of applicant's services are likely to be highly sophisticated professionals knowledgeable about electronic discovery and information technology.

Therefore this factor favored applicant.

Conclusion: Balancing the relevant du Pont factors, the Board found confusion unlikely and it reversed the refusal.

Read comments and post your comment here.

TTABlog comment: Seems like the right decision to me. What about you?

Text Copyright John L. Welch 2017.

1 Comments:

At 10:09 PM, Blogger Douglas White said...

I agree with the XA that the broad term "legal services" encompasses more than just attorney services. For example, the ID manual lists "Legal services, namely, process serving," which sounds a lot like Applicant's "litigation support services." Wouldn't the PTO allow just "legal services" to be specified by a process server? Put another way, what if the applicant had specified "legal services, namely, litigation support services..."?
In other words, for all we know, the registrant in this case may well be providing the same legal services as the applicant.

 

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