The Board granted Merchant & Gould's petition for cancellation of a registration for the mark MG-IP, finding the mark likely to cause confusion petitioner's previously-used mark M&G, both for legal services. Petitioner failed to get its registrations for the mark M&G into the record, but was able to prove and prior common law rights in the mark. Merchant & Gould P.C. v. MG-IP Law, P.C., Cancellation No. 92057850 (July 14, 2017) [not precedential] (Opinion by Judge Susan J. Hightower).
Priority: Applicant MG-IP Law P.C. first used its mark in April 2006. The challenged registration issued in 2012. Petitioner Merchant offered testimony regarding its use of the M&G mark since at least 1994, including in a stylized form on its office door since 2002. And so petitioner had priority of use.
Likelihood of confusion: Because the involved services are identical, the Board presumed that they travel in the same channels of trade to the same classes of consumers.
As to the strength of petitioner's M&G mark, there was no evidence that M&G has any suggestive or descriptive significance. The Board concluded that the mark is inherently distinctive and has conceptual strength.
With regard to marketplace strength, the Board found the M&G mark to be "at least somewhat commercially strong in the legal services market," based on sales, advertising, and length of use.
Respondent pointed to three third-party registrations, but the Board found them to be of little probative value. As to 16 uses of MG in connection with legal services, the Board gave them some probative value , but only one was in the field of intellectual property, which is where the parties' services overlap.
In sum, considering the conceptual and commercial strength of Petitioner’s mark and the relatively weak evidence of similar marks in use for legal services under the fifth and sixth du Pont factors, we accord Petitioner’s mark the normal scope of protection to which inherently distinctive marks are entitled.
Turning to the marks, the Board observed once again that when the involved services are identical, a lesser degree of similarity between the marks is required to support a finding of likely confusion.
Although the term "IP" slightly distinguishes the marks in appearance and sound, the term is highly descriptive of the services offered by the parties and is accorded less weight.
Considered as a whole, the marks look and sound similar. As to meaning, the subject registration is for MG-IP alone. Its meaning is not limited to connoting Respondent’s full name and it may be considered to be arbitrary or connote the same meaning as Petitioner’s mark M&G when used with its full name Merchant & Gould.
The Board concluded that the marks are highly similar in sound, appearance, meaning, and overall commercial impression.
As to conditions of purchase, the Board found the services, although not limited to sophisticated buyers, to be costly. But even sophisticated buyers may be confused by similar trademarks. And so the Board deemed this factor to be neutral.
As to actual confusion, the Board pooh-poohed a purported incident involving one of petitioner's partners. However, it found probative, despite various objections from respondent, a likelihood of confusion survey that showed 25,2% confusion between the parties logos (shown below). .
The fact that petitioner often uses it full name adjacent the M&G mark did not diminish the source-identifying significance of the latter, but may reinforce its reference to Merchant & Gould.
Laches: In a cancellation proceeding, absent evidence that petitioner had actual notice, the date of registration is the operative date for determining laches. With actual notice, the date of publication for opposition (June 19, 2012) is the operative date.
The challenged registration issued on September 4, 2012, and the petition to cancel was filed approximately one year later, on September 12, 2013. Respondent argued that petitioner had actual notice since at least 2008, since both law firms had offices in the same part of Virginia, were members of the same organizations, and attended the same conferences. The Board noted, however, that the firms were not listed by their initialisms, and it concluded that petitioner did not have actual notice prior to the registration date.
The Board concluded that the delay was a mere one year, not an unreasonable delay for laches purposes.
Conclusion: And so the Board granted the petition for cancellation.