IP Law Daily, TRADEMARK—TTAB: Initials in the form of scales of justice tilt the balance away from consumer confusion, (Apr 1, 2022)

By Matthew Hersh, J.D.

The fact that the initials were stylized and offset, among other factors, made them dissimilar to a registered mark with the same lettering.

A design mark with a stylized version of the characters MLG was not likely to cause conclusion with a word mark containing the same initials because the lettering in the design mark was offset and it was overlaid with a model of a well-known legal motif, the Trademark Trial and Appeal Board has held in a nonprecedential opinion. The Board’s opinion, in a relatively uncommon reversal of a trademark examiner on likelihood of confusion grounds, found that the differences between the two marks were enough to overcome similarities in the goods offered and the channels of trade (In re for J. Spagnuolo & Associates, PC., March 31, 2022, Goodman, C.).

The mark at issue is a design mark containing a stylized version of the initials MLG above the phrase MACOMB LAW GROUP. The letters MLG are shown in different fonts from the main lettering and are offset somewhat, and a large arc containing the well-known “scales of justice” motif is superimposed so that the scales appear to dangle from opposing ends of the lettering. A Michigan law firm, J. Spagnuolo & Associates, P.C., submitted the design mark for registration in International Class 44 for legal services and litigation services in the tort law field. The proposed registration would disclaim the words “Macomb Law Group.”

The examining attorney refused registration of the mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on likelihood of confusion with the existing mark MLG AUTOMOTIVE LAW (in standard characters, “automotive law” disclaimed) for legal services in the field of “automotive related legal cases.” The Michigan law firm appealed, leading to this opinion.

Likelihood of confusion. The Board reversed the examining attorney and found that there was no likelihood of confusion between the two marks

The Board began its opinion by noting that several factors did weigh in favor of a likelihood of confusion. The services offered and the channels of trade were for all intents and purposes identical, as the automotive litigation specified in the already-registered mark was merely a subset of the broader tort law field specified in the proposed mark. Moreover, the Board noted, the law firm tendering the proposed mark did not identify any evidence sufficient to overcome the presumption of strength accorded to the registered mark. The law firm pointed to several third-party registrations of the initials MLG, the Board noted, but as these registered marks were not for legal services, they carried little weight in this case. Nor did it matter, the Board found, that the PTO had allowed registration of pairings of other sets of initials in the law firm context, such as the simultaneous registration of M LAW, M MESH LAW, and M MOSTYN LAW. These registrations did not include the term MLG, the Board noted, so they would not be relevant here.

Notwithstanding the strength of the registered mark and the similarity in services and channels of trade, the Board found that they were simply overcome by the differences between the two marks themselves. To be sure, the marks were similar in appearance to the extent that they both shared the initials MLG and the term LAW. But the marks otherwise differed considerably. In the already-registered mark, MLG AUTOMOTIVE LAW, the term MLG was dominant because the following two words were merely descriptive. In the proposed mark, by contrast, the disclaimed wording Macomb Law Group was in fact the more dominant component. “The MLG element,” the Board noted, “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.” Thus, the Board found, it was less likely that consumers would recall the MLG element in the proposed mark.

Other factors also supported the Board’s conclusion as to the dissimilarity of the marks. For one thing, the two marks plainly sounded different when pronounced due to the additional words used with them. Moreover, while those viewing the proposed mark as a whole would clearly understand MLG to represent Macomb Law Group, they would likely believe that the initials MLG in the already-registered mark referred more ambiguously to “the initials of an unknown attorney or attorneys.” Finally, in terms of overall commercial impression, while the proposed mark gives the impression of a law group in a particular geographic location—Macomb County, Michigan, to be precise—the registered mark, on the other hand, merely “gives the impression of a law firm practicing automotive law.” Thus, there was no likelihood of consumer confusion.

The Case is Serial No. 88789548.

Attorneys: Kyle Ingram for the USPTO. Dean W. Amburn (Amburn Law PLLC) for J. Spagnuolo & Associates, PC.

Companies: J. Spagnuolo & Associates, PC

Cases: Trademark USPTO GCNNews