Monday, April 11, 2022

TTABlog Test: Are These Two "MLG" Marks Confusable for Legal Services?

The USPTO refused to register the mark MLG MACOMB LAW GROUP & Design for "legal services; providing customized legal information, counseling, and advice, and litigation services in the field of tort law" [MACOMB LAW GROUP disclaimed], in view of the registered mark MLG AUTOMOTIVE LAW for "Legal consultation services; Legal consulting services in the field of automotive related legal cases; Legal services." [AUTOMOTIVE LAW disclaimed]. The Board found the services to be overlapping and therefore legally identical. But how about the marks? How do you think this came out? In re J. Spagnuolo & Associates, P.C., Serial No. 88789748 (March 31, 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Applicant, relying on third-party registrations, argued that the cited mark is weak in light of the common use of MLG. The Board noted that third-party registration evidence "goes to conceptual weakness while third-party use evidence goes to commercial weakness." Applicant did not submit any evidence of third party use. As to conceptual strength, third-party registrations may show that a portion of a mark is "descriptive, suggestive, or so commonly used that the public will look to other elements to distinguish the source of the goods or services." [Wait a second. Registrations are not proof of use - ed.].

In any case, applicant's third-party registration evidence was not timely submitted, and even if it had been, the registrations did not cover legal services. Other registrations purporting to show that various "initial" marks for legal services - but not including the initials MLG - co-existed on the Trademark Register had no probative value.

The Board concluded that the cited mark merited the "normal scope of protection to which inherently distinctive marks are entitled."

Turning to the marks, the Board found MLG to be the dominant portion of the cited mark since it is the first term in the mark and since AUTOMOTIVE LAW is at least highly descriptive of the services. In applicant's mark, however, MACOMB LAW GROUP is dominant (even though disclaimed), the wording being "reinforced by the scales of justice design, symbolizing the law."

The MLG element, although somewhat larger, is partially obscured by the design, with the bold letters “M” and “G” being more prominent than the not bold letter “L,” which has been placed in a lower position than “M” and “G,” as it is being used as the central pivot point and base for the scales of justice, making it less likely that consumers will recall the MLG element.

As to appearance, the Board found the marks more dissimilar than similar, and as to sound and connotation, dissimilar.

The letters MLG in Applicant’s mark clearly connote MACOMB LAW GROUP due to the presence in the mark of that wording; customers viewing the mark as a whole will readily understand MLG to be an abbreviation or initialism of MACOMB LAW GROUP. In Registrant’s mark, MLG likely references the initials of an unknown attorney or attorneys, and AUTOMOTIVE LAW identifies the type of law practiced. Therefore, the marks have different connotations.

Finally, as to overall commercial impression, the Board found that applicant’s mark "gives the impression of a law group in a particular geographic location, Macomb county, Michigan. The cited registered mark, on the other hand, gives the impression of a law firm practicing automotive law."

And so the Board, finding the first DuPont factor to be dispositive, reversed the refusal.

Read comments and post your comment here.

TTABlogger comment: This is only the third reversal this year in 68 Section 2(d) appeals, which amounts to a little more than a 95% affirmance rate. 

Text Copyright John L. Welch 2022.


At 9:01 AM, Anonymous Anonymous said...

I was certain that this was affirmed. Help!

At 10:00 AM, Anonymous Catherine Cavella said...

Is it just me, or does it seem the Board is approaching this case differently vs. cases not involving legal services? Given that Automotive Law is largely going to be tort cases (a finding they made when they found the services overlapping), it seems to me the usual Board approach is to then look at MLG in the registration and the application and find that consumers are at least somewhat likely to see MLG in the registered mark as meaning "Macon Law Group" and therefore find the marks similar.

To find these marks dissimilar enough to reverse the refusal in light of a finding of overlapping services -- that is a result seemingly inconsistent with many of their LOC decisions of the past 3-5 years. Or perhaps it's a sign the Board is moving in a direction toward greater tolerance of similar marks? Or maybe they were swayed by the weakness of the marks? I'm not sure what to make of this case. For me it's a WYHA situation.

At 4:11 PM, Blogger Gene Bolmarcich, Esq. said...

You are correct Catherine. I made the first comment because this is so darn frustrating. This is exactly 180 degrees from their normal approach to ignoring generic and descriptive terms in marks and focusing almost completely on the literal elements of a mark which makes these two marks identical, namely MLG. I want to cite this decision with every argument I make on the issue of non-similarity of marks, despite that it's non-precedential and well, just wrong (assuming they are right in the other 99% of cases that were affirmed with very similar facts)

At 9:56 AM, Anonymous Anonymous said...

I certainly don't agree with this one, and I agree with the comment above that the fact that they were dueling law firms may have played into it (but not in a duPont way).


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