Dominant Term Overshadows Foreign Translations

Overview

The Board’s decision centered on the DuPont factors, primarily focusing on the similarity of the marks (the first DuPont factor) and the similarity of the services (the second DuPont factor). While the Board found the services "legal services" and "attorney services" to be legally identical, it concluded that the marks themselves were sufficiently dissimilar in appearance, sound, connotation, and commercial impression. Specifically, the Board determined that the inclusion of the name "MICHAEL" in the applicant's marks served as the dominant feature, effectively distinguishing them from the registrant’s more general "Bull" attorney marks.

Background

The Applicant, the Law Offices of Michael S. Lamonsoff, PLLC (the "Applicant"), sought to register three standard-character marks for "legal services" in International Class 45. These marks were MICHAELTHEBULL.COM (Serial No. 98316445), MICHAEL “THE BULL” LAMONSOFF (Serial No. 98317034), and MICHAEL THE BULL (Serial No. 98317055).

The Examining Attorney issued final refusals for all three applications under Section 2(d) of the Trademark Act, citing a likelihood of confusion with ten prior registrations. These cited marks all involved the word "BULL" or its Spanish equivalent, "TORO," for "attorney services." Specifically, the cited marks included four word marks: CALL IN THE BULL, ABOGADO EL TORO, WE’RE THE BULL ATTORNEYS HIRE THE BIG GUNS, and THE BULL ATTORNEYS! (Registration Nos. 5150748, 5022205, 6693682, 5334164), as well as six composite marks featuring graphic depictions of bulls:

(Registration Nos. 5022207, 6198713, 6771320, 6778145, 6771319, 6771318)

Following the final refusals, the Applicant requested reconsideration, which was denied. The Applicant then appealed to the Trademark Trial and Appeal Board. Because the records were identical and the issues presented in the three appeals were nearly the same, the Board consolidated the appeals sua sponte to decide them in a single opinion.

How the Board Analyzed the DuPont Factors

DuPont #2 & #3: Similarity of the Services, Channels of Trade, and Consumers

The Board began by noting that the second and third DuPont factors strongly favored a finding of a likelihood of confusion. The Applicant’s services were identified as "legal services," while the Registrant’s services were "attorney services." By referencing dictionary definitions, the Examining Attorney established that "legal" refers to the profession of law and an "attorney" is a person licensed to represent others in legal matters. The Board concluded that "legal services" and "attorney services" were synonymous and, therefore, identical.

Because the services were identical and neither the applications nor the registrations contained restrictions on practice areas or trade channels, the Board presumed that the channels of trade and classes of purchasers were also identical. Consequently, the Board found that these factors heavily supported the refusal.

DuPont #1: Similarity or Dissimilarity of the Marks

The Doctrine of Foreign Equivalents

The Examining Attorney argued that several cited marks used Spanish terms like "TORO" and "ABOGADO." Evidence was submitted, including Wikipedia entries on the Spanish language in the U.S. and Census data, to show that Spanish is a common language in the United States. The Board took judicial notice that "toro" means "bull" and applied the doctrine of foreign equivalents. It concluded that the ordinary American purchaser of legal services would likely translate these terms.

While the doctrine of foreign equivalents presupposed that the cited composite marks containing Spanish words would have different sounds and appearances, the Board also found that these marks were dissimilar in meaning. The Board explained:

"Applicant’s mark names a specific individual service provider whose nickname is “The Bull” and who can be reached online. In contrast, the cited marks connote an unidentified attorney or group of attorneys who are described respectively as a bull or as bulls, and who can be reached by phone and ... [have] “big guns”..., imagery that is not present in Applicant’s mark."

Dominant Term

The Examining Attorney argued that the word "BULL" functioned as the dominant and "confusingly similar portion" of the marks. Under this view, the commercial impression was driven by the animal imagery, and the Examining Attorney maintained that the addition of a first name did not "mitigate" the underlying similarity to the cited marks.

Conversely, the Applicant argued that the dominant portion of its marks was not "BULL," but rather the specific name "MICHAEL" or "MICHAEL LAMONSOFF." The Applicant contended that the phrase "THE BULL" was never meant to stand alone; rather, it was clearly intended to function merely as a nickname modifying the principal’s actual name.

The Board agreed with the Applicant. Applying the well-established principle that marks must be considered in their entireties, the Board found that the name "MICHAEL" or "MICHAEL LAMONSOFF" was the dominant portion. The name "MICHAEL" identified a specific, individual service provider, and "THE BULL" functioned merely as a nickname for that specific person.

When the Board compared the marks side-by-side, nine of the ten cited marks did not include any specific individual's name at all. By omitting a personal name, those registrations created a more generalized impression of an anonymous law firm, a group of attorneys, or an unidentified individual using bull imagery to signal strength. The single cited mark that did include a personal name, "BRAD PISTOTNIK," explicitly identified an entirely different individual. The Board concluded that an ordinary consumer would not confuse a service explicitly tied to "MICHAEL" with one tied to "BRAD" or an anonymous entity, which heavily tipped the first DuPont factor against a likelihood of confusion.

Overall, the Board found that the first DuPont factor weighed heavily against finding a likelihood of confusion.

Board’s Decision

The TTAB reversed the refusals to register in all three applications. The Board concluded that while the second and third DuPont factors supported the Examining Attorney’s position due to the identity of the services and trade channels, the first DuPont factor, similarity of the marks, weighed heavily against a finding of likelihood of confusion. The Board emphasized that the marks are different enough in their entireties that consumers would not be confused into believing the services emanated from the same source.

The TTAB reversed the refusals to register in all three applications. The Board concluded that while the second and third DuPont factors supported the Examining Attorney’s position due to the identity of the services and trade channels, the first DuPont factor, namely, similarity of the marks, weighed heavily against a finding of a likelihood of confusion. Ultimately, the Board emphasized that the marks were different enough in their entireties that there was no likelihood of confusion.