IP Law Daily MG-IP mark cancelled as confusingly similar to prior M&G law firm mark
Tuesday, July 18, 2017

MG-IP mark cancelled as confusingly similar to prior M&G law firm mark

M&G as a mark for a law firm was entitled to the normal scope of protection for inherently distinctive marks, the marks M&G and MG-IP are highly similar, the legal services, customers and channels of trade were identical and M&G’s survey evidence was probative of likelihood of confusion all of which supported cancellation of the MG-IP mark, the Trademark Trial and Appeal Board has decided. The remaining duPont factors were neutral (Merchant & Gould P.C. v. MG-IP Law, P.C., July 14, 2017, Hightower, S).

Merchant & Gould P.C. ("M&G") petitioned to cancel MG-IP Law, P.C.’s registration for the mark MG-IP in standard characters for "attorney services; legal services" in International Class 45, based on priority and likelihood of confusion with its mark M&G, also for legal services, under Section 2(d) of the Trademark Act. The TTAB granted the petition to cancel.

Evidentiary objections and record. The TTAB admonished both parties for not citing record evidence by reference to TTABVUE docket entry numbers, and admonished M&G for not including parallel USPQ citations to authority. The TTAB granted MG-IP’s objection to copies of the pleaded registrations and struck M&G’s rebuttal notice of reliance because proof of ownership and status of registration should have been presented in M&G’s case in chief. The TTAB also struck M&G’s proffered rebuttal testimony concerning M&G’s advertising and marketing as it also properly belonged in the case in chief.

Standing. M&G pleaded ownership of five registrations, but did not properly make them of record through Trademark Rule 2.122(d). M&G attempted to introduce plain copies of the registrations through testimony of a witness who testified as to ownership but not validity or status, which was not sufficient to satisfy Rule 2.122(d)(2)’s requirement of "appropriate identification." Nor did the TTAB find sufficient to establish that the pleaded registrations were valid and subsisting MG-IP’s admission in its answer. Nevertheless, there was record evidence that M&G made common-law use of the mark, which was sufficient to support a finding that M&G had a "real interest" in this proceeding, and that its claim was not "wholly without merit." Therefore M&G had standing.

Priority. MG-IP applied to register its mark in 2012, but its founder testified that it began using the name in 2006, which was not disputed. M&G offered testimony that it used the mark since at least 1994, that it has used the logo on the firm’s doors since 2002, as a watermark on the firm’s letterhead since 1988 and on marketing materials since 1999. Therefore, M&G established priority of use at common law. The TTAB therefore turned to the duPont factors to assess likelihood of confusion.

Similarity of the services, customers, and channels of trade. Because MG-IP’s identified "attorney services; legal services" encompass M&G’s intellectual property legal services, the TTAB found that the parties’ services are identical. Therefore, the TTAB presumed that the services move in the same channels of trade and are available to the same classes of customers for such services.

Strength of the M&G mark. The M&G mark is an initialism created from its firm name. There is no evidence that M&G has a descriptive or suggestive meaning. Therefore, the TTAB found that the mark is inherently distinctive and, as such, has conceptual strength. Based on sales, advertising, and length of use, the TTAB found that M&G proved that its mark is at least somewhat commercially strong in the legal services market.

Third-party use. The TTAB gave some weight to printouts evidencing similar marks in use for legal services. Based on the limited amount of information on the face of the printouts, only one of the third parties appeared to list among its practice areas intellectual property, the legal specialty of both parties. In sum, considering the conceptual and commercial strength of the M&G mark and the relatively weak evidence of similar marks in use for legal services under the fifth and sixth duPont factors, the TTAB accorded the M&G mark the normal scope of protection to which inherently distinctive marks are entitled.

Similarity of the marks. Although the two appended letters slightly distinguish MG-IP’s mark from M&G’s mark in sound and appearance, the term "IP" is highly descriptive in association with both parties’ services, and the TTAB accord it less weight in the comparison of the marks. The dominant – and only distinctive – portions of the parties’ respective marks are very similar in appearance and sound: MG vs. M&G. The record did not persuade the TTAB that consumers of legal services have been conditioned to distinguish them based on their minor differences. For all of these reasons, the TTAB found that the marks are highly similar.

Conditions of purchase and consumer sophistication. The parties’ services are not limited to sophisticated corporate buyers, and include individuals, but the services are costly. On balance, the fourth duPont factor was neutral.

Actual confusion. The parties had used their marks concurrently for identical services for more than ten years at the time of trial without evidence of actual confusion, even though both have offices in northern Virginia. On the record, however, it was not clear how much opportunity there had been for confusion of the marks at issue. The TTAB therefore found the eighth duPont factor to be neutral. M&G’s survey expert concluded that 25.2% of respondents were confused between the parties’ logos. In support of its arguments about the survey, MG-IP offered no citation to any cases or scientific sources, relying instead on arguments of counsel, which was not persuasive. Considering the overall survey result, the TTAB found that it is within the range of results that have supported findings that confusion is likely, albeit at the lower end. The TTAB found the survey to be probative evidence of likelihood of confusion.

Extent of potential confusion. While it may be that M&G often uses its mark in association with the full Merchant & Gould name at common law, such use exposes consumers to the meaning of the mark. MG-IP’s registration is for a mark that consumers encountering MG-IP could perceive it as the initials for Merchant & Gould. The record did not reveal a lessening of the extent of potential confusion under the twelfth duPont factor.

Laches. The subject registration issued in 2012 and the petition to cancel was filed in 2013. The TTAB did not find sufficient evidence to conclude that M&G had actual notice of the MG-IP mark before the opposition period closed.

The case is Cancellation No. 92057850.

Attorneys: John A. Clifford (Merchant & Gould PC) for Merchant & Gould PC. Janice Housey (Symbus Law Group, LLC) and P. Jay Hines (MG-IP Law, PC) for MG-IP Law, PC.

Companies: Merchant & Gould PC; MG-IP Law, PC

MainStory: TopStory Trademark USPTO

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