TTAB - Trademark Trial and Appeal Board - *1 OF COUNSEL, INC. v. STRICTLY OF COUNSEL, CHARTERED September 24, 1991

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)





September 24, 1991



 Opposition No. 81,481 to application Serial No. 792,280, filed April 10, 1989



J. David Wharton; Shook, Hardy & Bacon for Of Counsel, Inc.



George Zadorozny for Strictly of Counsel, Chartered



Before Simms, Quinn and Hohein






Opinion by Simms






 Of Counsel, Inc. (opposer), a Missouri corporation, has opposed the application of Strictly of Counsel, Chartered (applicant), a Florida corporation, to register the mark STRICTLY OF COUNSEL for providing attorneys on a temporary basis to law firms and other attorneys. [FN1] In the notice of opposition, opposer asserts that since May 1, 1988 it has provided licensed attorneys to law firms and other attorneys to perform legal services on a temporary or permanent basis under the mark OF COUNSEL; and that applicant's mark as applied to its services, so resembles opposer's previously used mark as to be likely to cause confusion, to cause mistake or to deceive. In its answer applicant has denied the essential allegations of the opposition and has asserted as an affirmative defense that opposer's pleaded mark is either generic or descriptive for opposer's services and that, accordingly, opposer cannot prevent registration to applicant. In the alternative, applicant alleges that if the term OF COUNSEL is capable of functioning as a mark, then applicant has superior rights because applicant possesses the rights of Of Counsel, Inc., which began its corporate existence on April 18, 1988.



 The record of this case consists of a testimony deposition taken by opposer  (and related exhibits) and the application file. [FN2] The parties have filed briefs.



 Opposer's president, Linda Taylor, testified that opposer began advertising its services under the trade name "Of Counsel, Inc." in May 1988. These advertisements promoted opposer's services of placing lawyers temporarily with law firms or in corporate law departments. [FN3] Exhibits 47 and 58, both from May 1988, show opposer's advertisements in The Kansas City Times and Missouri Lawyers Weekly. From its first client in May 1988, opposer has grown to include a roster of thirty-five attorneys and twenty legal assistants or paralegals. Serving primarily the midwestern states of Kansas, Missouri and Iowa, opposer has spent over $80,000 in advertising its temporary lawyer services by such means as advertisements placed in newsletters and directories as well as in bar journals and in the general business press. Opposer has also distributed a substantial number of brochures and has conducted direct mail. In addition to the temporary or short-term placement of attorneys (since May 1988) and of legal assistants (since September 1989), opposer also currently offers under the mark a legal writing seminar for paralegals (since November 1990).



 Applicant has submitted no evidence and the only material of record on behalf of applicant is its application file. Accordingly, the earliest date upon which applicant may rely is the application filing date of April 10, 1989. [FN4]



  *2 It is clear that both parties are providing similar services--the providing of attorneys on a temporary basis to law firms and to other attorneys. In view of the close similarity of the respective marks, we agree with opposer that confusion as to the origin of the respective services is likely.



 Decision: The opposition is sustained and registration to applicant is refused.



R. L. Simms



T. J. Quinn



G. D. Hohein



Members, Trademark Trial and Appeal Board



FN1. Application Serial No. 73/792,280, filed April 10, 1989, claiming use since October 14, 1988.



FN2. Applicant contends that opposer's testimony was taken before the scheduled time for taking testimony opened and therefore was in contravention of Trademark Rule 2.121(a)(1). Opposer took its trial testimony on December 13, 1990, two days before the December 15, 1990 opening. In response to these arguments, raised for the first time in applicant's brief, opposer points out that no objection was raised by applicant's attorney to the notice of deposition, or to the notice of filing of the Taylor testimony. We agree with opposer that the error in taking the testimony early was made in good faith and that applicant waived its objection to the premature taking of the trial deposition, which could have been corrected upon seasonable objection. See Trademark Rule 2.123(j).



FN3. While opposer has pointed to the establishment of a bank account under its trade name as evidence of its first use of the term OF COUNSEL, because that use is not one which would be exposed to the relevant public (potential customers of opposer's services), we have given little weight to that evidence of early use.



FN4. Because applicant has not submitted any evidence, the allegation in its answer that it is entitled to rely upon the rights of a predecessor is unsupported. Applicant has also failed to prove its affirmative defense that opposer's mark and trade name is generic, merely descriptive or has failed to achieve secondary meaning.


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