TTABlog Test: Are Legal Services Related to Brand Consultation Services Under Section 2(d)?

The USPTO refused to register the mark MIRICK & Design, below left, for "legal services," deeming confusion likely with the registered mark shown below right, for, inter alia, "Business consulting services; developing customized branding strategies for businesses and individuals." Applicant and Examining Attorney Kiara Rodríguez Fontánez sparred over which part of applicant's mark is dominant and whether the services are related. How do you think this came out? In re Mirick, O’Connell, DeMallie & Lougee, LLP, Serial No. 98278181 (January 27, 2026) [not precedential] (Opinion by Judge Mark A. Thurmon).

The Marks: The Board found it unnecessary to determine whether there is a dominant element in applicant's mark. "[O]verall, it is enough that the design element is significant, because the design element is identical to the cited mark. This creates a visual similarity that increases the likelihood of confusion."

Furthermore, the similar commercial impressions engendered by the marks are likely to lead consumers to believe that "either the owner of the cited mark or the Applicant is now using a slightly different version of its mark (either by adding the MIRICK element or deleting it)."

The Services: The Board found the services to be related. It noted that because there is no limitation on the scope of the legal services identified in the application, they include legal services relating to brands. "Applicant’s counsel is, in fact, providing legal services relating to branding through its work on this appeal."

To put a finer point on it, a consumer might seek general consultation about branding as part of the process of selecting a trademark. Once that mark is selected, the same consumer may seek legal services concerning the protection of the mark. The services are complementary and may well be used by many of the same consumers. In such a context, it is likely that consumers will believe the two types of services, while technically distinct, are offered by a single source.

Customer Care: Applicant argued that consumers seeking legal services are careful, but it provided no evidence of same. The Board instead found that "not all actual and prospective consumers of Applicant’s services are careful."

We find this is a mixed market, with some consumers likely making careful purchasing decisions and some making less careful decisions, and we are required to base our decision “on the least sophisticated potential purchasers.” Stone Lion Capital Partners, 746 F.3d at 1325. We find that the “least sophisticated potential purchasers” of Applicant’s legal services likely exercise ordinary care in making purchasing decisions, which does not alter the likelihood of confusion. The fourth DuPont factor is neutral.

Strength of the Cited Mark: Applicant submitted 11 third-party registrations in an attempt to show that the Cited Mark is weak and entitled to a narrowed scope of protection. None were probative: some involved unrelated services and none were for marks sufficiently similar to the Cited Mark to put a dent in its strength. "There are an infinite number of ways to stylize the letter M, and Applicant’s evidence shows substantial variation."

And so, the Board affirmed the refusal.

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TTABlogger comment: What do you think? Don't trademark lawyers do brand consulting in one form or other?

Text Copyright John L. Welch 2026.