TTABlog Test: Are Educational Services for Incarcerated Individuals Related to Legal Services Under Section 2(d)?
The USPTO refused to register the mark EMPOWERING FUTURES for "Education services, namely, providing classes, seminars and workshops for incarcerated and formerly incarcerated individuals in the fields of obtaining job skills, language arts, science and math, and mental health coping skills," finding confusion likely with the identical mark registered for "legal services." We know that when the involved marks are identical, "the degree of similarity between the parties’ services necessary to support a finding of likely confusion declines." [Why? one might ask. -ed.]. But are the services related? How do you think this appeal came out? In re Global Tel*Link Corporation, Serial No. 98157825 (February 24, 2025) [not precedential] (Opinion by Judge Elizabeth K. Brock).
Applicant Global argued that legal services do not encompass educational services for incarcerated and formerly incarcerated individuals, but the Board pointed out that the involved services need not be identical or even competitive to find a likelihood of confusion.
As to the relevant consumers, the cited registration in unrestricted and so registrant's legal services are presumed to be offered to all members of the public, including incarcerated and formerly incarcerated individuals. Therefore, the respective consumers overlap.
Global maintained that legal services are purchased carefully because the cost of legal services "are not typically considered a nominal amount." The Board observed, however, that some third parties offer legal services at little to no charge. "Nevertheless, we recognize that 'even in the case of the least sophisticated purchaser, [important decisions] will be made with some thought and research, even when made hastily.'" The Board found this factor to be neutral.
Examining Attorney Dana Molk submitted eleven examples of third parties using a single mark for both types of services.
Taken together, this evidence shows that it is not uncommon for the same entity to offer legal services and educational services for incarcerated and formerly incarcerated individuals in the fields of obtaining job skills, language arts, science and math, and mental health coping skills under the same mark. *** The evidence also demonstrates that at least some types of legal services and educational services offered to incarcerated and formerly incarcerated individuals travel in the same channels of trade.
The Board therefore found that applicant’s and registrant’s services are related.
Because all of the relevant DuPont factors weighed in favor of a finding of likelihood of confusion or were neutral, the Board found confusion likely and it affirmed the refusal to register.
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TTABlogger comment: How did you do?
Text Copyright John L. Welch 2025.
posted by John L. Welch @ 2/26/2025
3 comments
3 Comments:
To answer your "why" question, isn't it that when weighing the Dupont factors, one can think about it as if each factor gets a 1-10 score and thus the greater any one score the less that any other factor's score has to be in order to get to the threshold total score...whatever that may be? Or should some factors get greater weight in the scoring? Courts and the TTAB have never given more guidance on this beyond "every case is different" and "the weight given to any factor varies with each case", which is why this job is so difficult (or easy, depending on how you look at it)
I'm thinking mor abstractly. Is it really true that just because the marks are identical, a consumer will be less able to distinguish between goods and services?
I guess it depends on who I am representing - Plaintiff or Defendant!
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