Gordon & Rees Los Angeles Partner Reid Dammann recently obtained a cancellation of a trademark on behalf of his client, a legal services website, in front of the Trademark Trial and Appeal Board (“TTAB”).
The respondent, a competing online legal business, had secured the trademark in 2012; however, Gordon & Rees’s client believed the trademark too similar to their own registered trademark, one which they had used for over fifteen years. The TTAB agreed with Gordon & Rees, citing that the relevant Du Pont factors (the standard criteria for determining similarity and likely confusion in trademark matters) favored petitioner. The TTAB went on to state that because the services are closely related, and the channels of trade and class of consumers overlap, confusion was likely. Dammann had previously successfully defended against the same respondent’s attempt to cancel his client’s trademark, obtaining a motion to dismiss in 2014.