Mirick, O'Connell, DeMallie & Lougee, LLP

This Opinion Is Not a
Precedent of the TTAB
Mailed: January 27, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Mirick, O’Connell, DeMallie & Lougee, LLP
_____
Serial No. 98278181
_____
Adam J. Bruno, of Bay State IP LLC, for Mirick, O’Connell, DeMallie & Lougee,
LLP.
Kiara Rodríguez Fontánez, Trademark Examining Attorney, Law Office 126,
Jeffrey Look, Managing Attorney.
_____
Before Greenbaum, Thurmon and Lavache, Administrative Trademark Judges.
Opinion by Thurmon, Administrative Trademark Judge:
Mirick, O’Connell, DeMallie & Lougee, LLP (“Applicant”) seeks registration on the
Principal Register of the mark shown below
1
1 Application Serial No. 98278181 was filed on November 20, 2023, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
The mark is described as follows: “The mark consists of the capital letter M in a chevron

Serial No. 98278181
- 2 -
for “legal services,” in International Class 45.
The Trademark Examining Attorney issued a final refusal of registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), finding a likelihood of
confusion, based on the registered mark shown below for “Business consulting
services; developing customized branding strategies for businesses and individuals;
marketing and branding services, namely, consulting, development, management
and marketing of brands for business and individuals, and providing customized
communication programs to obtain consumer insights and develop branding
strategies; political consultancy services; public policy research services; business
reputation management,” in International Class 35
.2
The appeal is fully briefed and ready for final decision. We affirm the refusal to
register.
Section 2(d) – Applicable Law
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. DuPont
pattern with the word MIRICK in capital letters directly underneath the M.” Color is not
claimed as part of the mark.
2 Registration No. 5712935, issued April 2, 2019. A combined Section 8 and 15 declaration
was filed on April 30, 2024, and has been accepted by the Office. The mark is described as
follows: “The mark consists of a stylized letter ‘M’. The letter ‘M’ and the logo are black and
white.” Color is not claimed as a part of the mark.

Serial No. 98278181
- 3 -
de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (“DuPont”), cited in B&B
Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138 (2015); see also In re Majestic
Distilling Co., 315 F.3d 1311, 1314 (Fed. Cir. 2003). We must consider each DuPont
factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912
F.3d 1376, 1378-79 (Fed. Cir. 2019). “Whether a likelihood of confusion exists between
an applicant’s mark and a previously registered mark is determined on a case-by-case
basis, aided by application of the thirteen DuPont factors.” Omaha Steaks Int’l, Inc.
v. Greater Omaha Packing Co., 908 F.3d 1315, 1318 (Fed. Cir. 2018). When analyzing
these factors, the overriding concerns are not only to prevent buyer confusion as to
the source of the goods or services, but also to protect the registrant from adverse
commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil
Co., 992 F.2d 1204, 1208 (Fed. Cir. 1993).
“Each case must be decided on its own facts and the differences are often subtle
ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 1199 (CCPA 1973). Varying
weights may be assigned to each DuPont factor depending on the evidence presented.
See Citigroup Inc. v. Cap. City Bank Grp. Inc., 637 F.3d 1344, 1356 (Fed. Cir. 2011);
Shell Oil, 992 F.2d at 1206 (“the various evidentiary factors may play more or less
weighty roles in any particular determination”). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods or services. See In re i.am.symbolic, LLC, 866 F.3d
1315, 1322 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d
1156, 1164-65 (Fed. Cir. 2002)); In re Chatam Int’l Inc., 380 F.3d 1340, 1342 (Fed.

Serial No. 98278181
- 4 -
Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods and differences in the
marks.”).
Likelihood of Confusion – Analysis
Applicant and the Trademark Examining Attorney presented arguments under
DuPont factors one, two, four and six. We address these factors in turn below.
A. Similarity of the Marks
To evaluate the similarity of the marks under the first DuPont factor, we consider
the marks in their entireties as to appearance, sound, connotation and commercial
impression. See, e.g., Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 1371 (citing DuPont, 476 F.2d at 1361). “Similarity
in any one of these elements may be sufficient to find the marks confusingly similar.”
In re Inn at St. John’s LLC, No. 87075988, 2018 TTAB LEXIS 170, *13 (quoting In re
Davia, No. 85497617, 2014 TTAB LEXIS 214, *4, aff’d mem., 777 F. App’x 516 (Fed.
Cir. 2019); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 732 (CCPA
1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely
to cause confusion.”) (citation omitted).
“The proper test is not a side-by-side comparison of the marks, but instead
whether the marks are sufficiently similar in terms of their commercial impression
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs. Inc. v. Triumph Learning, LLC, 668 F.3d 1356,

Serial No. 98278181
- 5 -
1368 (Fed. Cir. 2012). The focus is on the recollection of the average purchaser, who
normally “retains a general rather than a specific impression of marks.” In re
i.am.symbolic, llc, No. 85916778, 2018 TTAB LEXIS 281, *11.
The appealed Application involves the mark shown below.
The cited mark consists of the design shown below, which is identical to the design
portion of the applied-for mark.
Applicant and the Trademark Examining Attorney disagree over what part of the
applied-for mark is dominant, the design element or the literal element MIRICK.3
They cite numerous prior decisions by this Board, some finding a design element
dominant and others finding a literal element dominant.
We need not determine whether there is a dominant element in the applied-for
mark to determine whether the marks are similar. The design element of the applied-
for mark is significant, as it is larger than and appears above the literal element. The
literal element, on the other hand, is likely used by consumers who pronounce the
3 6 TTABVUE 9-10 (arguing the literal element is dominant); 9 TTABVUE 4-5 (arguing the
design element is dominant).

Serial No. 98278181
- 6 -
mark, so in this context, the literal element likely is dominant. But overall, it is
enough that the design element is significant, because the design element is identical
to the cited mark. This creates a visual similarity that increases the likelihood of
confusion. See, e.g., Hunter Indus., Inc. v. Toro Co., No. 91203612, 2014 TTAB LEXIS
105, at *33 (“Likelihood of confusion often has been found where the entirety of one
mark is incorporated within another.”).
Consider consumers familiar with the cited mark. When such consumers see the
applied-for mark, with an identical design element and the word MIRICK below that
design, it is likely that some consumers will mistakenly conclude that the new mark
is used by the same entity and that this entity has expanded its business. The added
name MIRICK will do little to reduce the risk of confusion in this context because a
substantial number of consumers familiar with the cited mark are likely to conclude
that someone named MIRICK is involved in the business, or perhaps that Ms. or Mr.
Mirick are, or were, a part of the business carried on under the cited mark, but were
not explicitly named until now. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 1347-
48 (Fed. Cir. 2010) (“the presence of an additional term in the mark does not
necessarily eliminate the likelihood of confusion if some terms are identical”).
The same type of confusion is likely in the other direction, too. A consumer familiar
with Applicant’s mark, when encountering the cited mark, is likely to conclude that
Applicant is now using the design mark alone, having dropped the literal MIRICK
part of the mark. The use of the identical design element in the marks creates a visual

Serial No. 98278181
- 7 -
similarity that is likely to lead to consumer confusion for consumers familiar with
either mark.
And while Applicant and the Trademark Examining Attorney cited cases to
support their opposed views on which part of the applied-for mark is dominant, prior
decisions are of somewhat limited value when evaluating the similarity of the marks.
It is more important to consider the actual marks and the way consumers of the
identified services are likely to see and understand the marks. We find the marks are
similar in appearance.
We do not find the marks similar in sound. The cited mark has no literal element,
while the applied-for mark contains the literal element MIRICK. Regardless of how
consumers “pronounce” the design element of the cited mark, that mark will not
sound like the applied-for mark.
We reach a similar conclusion as to the commercial impressions created by the
marks. With identical design elements, and only the added term MIRICK in the
applied-for mark, we find the marks create a similar commercial impression. And, as
we found concerning the visual similarity of the marks, we find the similar
commercial impressions are likely to lead consumers to believe either the owner of
the cited mark or the Applicant is now using a slightly different version of its mark
(either by adding the MIRICK element or deleting it).
To summarize, we find the marks similar in appearance and commercial
impression. The similarity of the marks increases the likelihood of confusion.

Serial No. 98278181
- 8 -
B. Similarity or Relatedness of the Services
We evaluate the second DuPont factor based on the services identified in the
Application and the Cited Registration. See Stone Lion Cap. Partners, LP v. Lion Cap.
LLP, 746 F.3d 1317, 1323 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous. Comput. Servs.
Inc., 918 F.2d 937, 942 (Fed. Cir. 1990). It is sufficient for a finding of likelihood of
confusion if relatedness is established between any of the services identified in the
Application and cited Registration. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648
F.2d 1335, 1336 (CCPA 1981); see also Double Coin Holdings Ltd. v. Tru Dev., No.
92063808, 2019 TTAB LEXIS 347, *18; In re Aquamar, Inc., No. 85861533, 2015
TTAB LEXIS 178, *9 n.5. In addition, the services need only be sufficiently related
that a relevant consumer would be likely to assume, upon encountering services
marketed under the marks at issue, that the services originate from, are sponsored
or authorized by, or are otherwise connected to the same source. See Black & Decker
Corp. v. Emerson Elec. Co., Nos. 91158891 and 91158941, 2007 TTAB LEXIS 50, *25-
26.
The Cited Registration identifies, in relevant part, “Business consulting services”
relating to branding. The Application identify “legal services.” We find these service
related. Trademarks are brands, and so business consulting concerning brands is
related to legal services related to brands. Applicant’s counsel is, in fact, providing
legal services relating to branding through its work on this appeal. Because there is
no limit in the legal services identified in the Application, they include legal services
relating to brands. This type of similarity increases the likelihood of confusion.

Serial No. 98278181
- 9 -
To put a finer point on it, a consumer might seek general consultation about
branding as part of the process of selecting a trademark. Once that mark is selected,
the same consumer may seek legal services concerning the protection of the mark.
The services are complementary and may well be used by many of the same
consumers. In such a context, it is likely that consumers will believe the two types of
services, while technically distinct, are offered by a single source.
The Trademark Examining Attorney submitted evidence that some business
consulting firms list legal support services on their websites, and that some law firms
mention business consulting services.4 Applicant disputes the assertion that the
business firms provide legal services and that the law firms provide business
consultation services.5 While Applicant may be technically correct, the evidence relied
upon by the Trademark Examining Attorney shows that consumers are presented
with information that exposes them to both types of services. Business consultation
services are often complementary to legal services, and it is likely that many
consumers are not aware of rules that may limit the actual overlap of these services
in the market. We find the evidence submitted by and relied upon by the Trademark
Examining Attorney further supports our finding that the services are related.
Applicant provided twelve sets of similar marks (some word marks, some design
marks and some composite marks) that have been registered by different entities for
4 9 TTABVUE 7-8.
5 6 TTABVUE 13.

Serial No. 98278181
- 10 -
business consulting services and legal services.6 We agree with Applicant that this
evidence shows the Office has registered similar marks from different entities for
these types of services. But this is not evidence that the services are unrelated. We
have a set of thirteen DuPont factors that may be used to evaluate the likelihood of
confusion and pulling a single factor out of context is not helpful. We do not know,
and are not bound by, the full analysis behind the results Applicant relies upon. We
consider the facts raised by the appeal before us, and based on those facts, we find
the services are related in a manner than increases the likelihood of confusion. The
second DuPont factor supports the refusal.
C. Customer Care
The fourth DuPont factor considers the likely care exercised by relevant
consumers. DuPont, 476 F.2d at 1361 (“The conditions under which … sales are made,
i.e. “impulse” vs. careful, sophisticated purchasing”). Applicant argues that the
customers of its legal services are careful.7 Applicant argues, “Legal services, such as
those offered by Applicant, are inherently expensive and involve substantial
investment.”8 There is no direct evidence on this point, but we accept that some
consumers who seek legal services are likely to exercise more than ordinary care. As
to business consultation services, we cannot reach the same conclusion. Such services
may be offered over the Internet and we have no evidence that such services are
6 Id. at 14-15 (table summarizing this evidence).
7 Id. at 21-22.
8 Id. at 21.

Serial No. 98278181
- 11 -
always expensive or that all consumers of such services always exercise more than
ordinary care. Nevertheless, if all likely consumers of Applicant’s legal services
exercise some heightened degree of care, the likelihood of confusion is reduced.
Applicant argued that consumers seeking legal services are careful, but presented
no evidence to support this argument. Martahus v. Video Duplication Servs. Inc., 3
F.3d 417, 420 (Fed. Cir. 1993) (“[M]ere attorney arguments unsubstantiated by record
evidence are suspect at best.”). There is no limitation on the legal services identified
in the Application, so we must decide this appeal based on the full range of potential
consumers of any kind of legal service. We find that not all actual and prospective
consumers of Applicant’s services are careful.
We find this is a mixed market, with some consumers likely making careful
purchasing decisions and some making less careful decisions, and we are required to
base our decision “on the least sophisticated potential purchasers.” Stone Lion
Capital Partners, 746 F.3d at 1325. We find that the “least sophisticated potential
purchasers” of Applicant’s legal services likely exercise ordinary care in making
purchasing decisions, which does not alter the likelihood of confusion. The fourth
DuPont factor is neutral.
D. Factor Six – The Impact of Third-Party Registrations
If properly made of record, third-party registrations alone may be relevant, in the
manner of dictionary definitions, “to prove that some segment of the [marks] has a
normally understood and well recognized descriptive or suggestive meaning, leading
to the conclusion that that segment is relatively weak.” Juice Generation, Inc. v. GS

Serial No. 98278181
- 12 -
Enters. LLC, 794 F.3d 1334, 1339 (Fed. Cir. 2015). See also Jack Wolfskin, 797 F.3d
1363 (Fed. Cir. 2015); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915 (CCPA 1976)
(even if “there is no evidence of actual use” of “third-party registrations,” such
registrations “may be given some weight to show the meaning of a mark in the same
way that dictionaries are used”). “[E]vidence of third-party registrations is relevant
to ‘show the sense in which . . . a mark is used in ordinary parlance.’” In re Guild
Mortg. Co., No. 86709944, 2020 TTAB LEXIS 17, at *10 (quoting Juice Generation,
115 USPQ2d at 1675).
Applicant relies on third-party registrations to challenge the conceptual strength
of the cited mark, which is reproduced again below.
Applicant submitted evidence of eleven third-party registrations of stylized M
design marks registered for either legal services or business services.9 Some of the
registrations involve services that are not similar enough to those involved in this
appeal. For example, one registration identifies: “Design of mechanical,
electromechanical and optoelectronic apparatus and instruments,”10 while another
identifies “Information, advice and consultancy in relation to domain name
registration and online social networking services.”11 These services are not
9 Id. at 19-20 (table summarizing this evidence).
10 Registration No. 6114887.
11 Registration No. 7003502.

Serial No. 98278181
- 13 -
sufficiently similar to those identified in the Application or the cited Registration and,
for that reason, we give them no weight in our analysis. Omaha Steaks, 908 F.3d at
1324-25 (error to rely on third-party evidence of similar marks for dissimilar goods,
as Board must focus “on goods shown to be similar”); i.am.symbolic, 866 F.3d at 1328
(disregarding third-party registrations for other types of goods where the proffering
party had neither proven nor explained that they were related to the goods in the
cited registration).
None of the third-party registrations identified by Applicant feature the same
design element shared by the marks involved in this appeal. There are an infinite
number of ways to stylize the letter M, and Applicant’s evidence shows substantial
variation. We provide the cited mark below, followed by some of the registered marks
relied upon by Applicant.
12
12 Registration No. 6966145.

Serial No. 98278181
- 14 -
13
14
We provided the most similar marks, in our view, from Applicant’s list, and yet
these marks are not very similar to the design used in the cited mark and in the
applied-for marks. Nine registrations for only vaguely-similar marks are not
sufficient evidence to show that the design at issue in this appeal is common or has
some established meaning in the business consulting or legal services market. We
find the sixth DuPont factor neutral.
E. Conclusion: Weighing the Factors
The marks are similar and the services are related. The first two DuPont factors
are dispositive in this appeal and both factors point strongly toward a likelihood of
confusion. The fourth and sixth DuPont factors are neutral. Confusion is likely and
the Section 2(d) refusal must be affirmed.
Decision: The Section 2(d) refusal is affirmed.
13 Registration No. 6305661.
14 Registration No. 7003502.