Silver & Silver, P.A.

This Opinion is Not a
Precedent of the TTAB
Mailed: September 11, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Silver & Silver, P.A.
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Serial No. 97772966
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David P. Lhota of Lhota & Associates, P.A. for Silver & Silver, P.A.
Jared M. Mason, Trademark Examining Attorney, Law Office 119,
Brett Golden, Managing Attorney.
_____
Before Heasley, Larkin, and English,
Administrative Trademark Judges.
Opinion by Larkin, Administrative Trademark Judge:
Some attorneys are known for being silver-tongued. This case involves attorneys
who are known for being “Silver.”
The attorneys at Silver & Silver, P.A. (“Applicant”), seek registration on the
Principal Register of the mark shown below

Serial No. 97772966
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for “Providing legal services in the field of personal injury, car accidents, motorcycle
accidents, truck accidents, wrongful death, bicycle accidents, boating accidents,
criminal defense, DUI, injuries to children, dog bites, premises liability, slip and fall,
workplace accidents, medical malpractice, catastrophic injuries, product liability” in
International Class 45.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that it
so resembles the standard-character mark SILVER LAW GROUP, registered by
other attorneys on the Principal Register for “legal services” in International Class
45,2 as to be likely to cause confusion when used in connection with the services
identified in the application.
When the Examining Attorney made the refusal final, Applicant appealed and
simultaneously requested reconsideration, which was denied. The appeal is fully
briefed.3 We affirm the refusal to register.
1 Application Serial No. 97772966 was filed on January 30, 2023 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention
to use the mark in commerce. Applicant describes its mark as follows: “The mark consists of
the scales of justice in white in a red box and the white stylized wording ‘SILVER INJURY
LAW’ over a white line and the smaller stylized wording ‘WWW.SILVERINJURYLAW.COM’
in white letters which are in a white outlined box over a black background.” The colors red,
black, and white are claimed as features of the mark. Applicant has disclaimed the exclusive
right to use INJURY LAW WWW.SILVERINJURYLAW.COM apart from the mark as
shown.
2 The cited Registration No. 4364147 (the “’147 Registration”) issued on July 9, 2013 and has
been renewed. The registrant has disclaimed the exclusive right to use LAW GROUP apart
from the mark as shown.
3 Citations in this opinion to the briefs refer to TTABVUE, the Board’s online docketing
system. The number preceding TTABVUE corresponds to the docket entry number, and any
numbers following TTABVUE refer to the page(s) of the docket entry where the cited

Serial No. 97772966
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I. Prosecution History and Record on Appeal4
We briefly summarize below the prosecution history of the application because it
provides useful background to our disposition of the appeal.
In the first Office Action, the Examining Attorney refused registration of
Applicant’s mark based on the ’147 Registration,5 and required Applicant to submit
an amended drawing and an amended description of the mark, and to disclaim
INJURY LAW WWW.SILVERINJURYLAW.COM.6 The Examining Attorney made
of record USPTO records regarding the ’147 Registration,7 dictionary definitions of
materials appear. Applicant’s appeal brief appears at 8 TTABVUE and its reply brief appears
at 11 TTABVUE. The Examining Attorney’s brief appears at 10 TTABVUE.
Trademark Rule 2.142(b)(2) provides that a reply brief “shall not exceed ten pages in length
in its entirety.” 37 C.F.R. § 2.142(b)(2). Applicant’s reply brief totals 50 pages, almost all of
which are taken up by two exhibits consisting of materials from the prosecution history of
the application. The Board strongly discourages attaching any materials to briefs, including
materials from the record, see, e.g., In re Michalko, No. 85584271, 2014 WL2531202, at *1
(TTAB 2014), and it was unnecessary for Applicant to have done so here. We will consider
only the six pages of text in Applicant’s reply brief.
4 Citations in this opinion to the application record are to pages in the downloadable .pdf
version of the Trademark Status & Document Retrieval (“TSDR”) database of the United
States Patent and Trademark Office (“USPTO”).
5 The Examining Attorney inaccurately states in his brief that Applicant originally filed to
register its mark “for ‘legal services’ in International Class 045.” 10 TTABVUE 1-2. Applicant
sought registration of its mark for the specific legal services listed above from the outset,
January 30, 2023 Application at 4, and the Examining Attorney acknowledged this in the
first Office Action. October 4, 2023 Office Action at 2 (stating that Applicant was seeking to
register its mark “for ‘Providing legal services in the field of personal injury, car accidents,
motorcycle accidents, truck accidents, wrongful death, bicycle accidents, boating accidents,
criminal defense, DUI, injuries to children, dog bites, premises liability, slip and fall,
workplace accidents, medical malpractice, catastrophic injuries, product liability’ in
International Class 045.”). Applicant did not “voluntarily amend[ ] its identification,” 10
TTABVUE 2, in its response to the first Office Action.
6 October 24, 2023 Office Action at 1-5.
7 Id. at 7-8.

Serial No. 97772966
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the words “injury,” “law,” and “legal,”8 and pages from Applicant’s website at
silverinjurylaw.com.9
Applicant responded to the Office Action by submitting an amended drawing,
entering the required disclaimer, and arguing against the refusal to register.10
Applicant embedded in its response a design that it described as reflecting the
“unique design and look” of the cited mark as it appears on the registrant’s website,11
and what appear to be active hyperlinks to its website and the registrant’s website.12
The Examining Attorney then issued an Office Action accepting the amended
drawing, mark description, and disclaimer, but making final the refusal to register
based on the ’147 Registration.13 The application then became abandoned, but
Applicant subsequently petitioned to revive it, arguing that Applicant’s counsel did
not receive the Final Office Action prior to the expiration of the response period.14
The Examining Attorney issued a Subsequent Final Office Action allowing Applicant
to respond to the original Final Office Action or file an appeal within three months.15
8 Id. at 9-15.
9 Id. at 16-27.
10 January 24, 2024 Response to Office Action at 8, 10-17.
11 Id. at 14.
12 Id. at 10. The Board has “made clear that providing hyperlinks to internet materials is
insufficient to make such materials of record.” In re Weiss, No. 88621608, 2024 WL 3617597,
at *2 (TTAB 2024) (citations omitted).
13 February 16, 2024 Final Office Action at 1-6.
14 August 5, 2024 Petition to Revive Abandoned Application at 2.
15 May 14, 2025 Subsequent Final Office Action at 1-2.

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After obtaining an extension of time to respond to the Subsequent Final Office
Action, Applicant appealed and simultaneously requested reconsideration. In its
Request for Reconsideration, Applicant argued against the final refusal and made of
record a screenshot from the registrant’s website.16
The Examining Attorney denied Applicant’s Request for Reconsideration,17 and
the appeal was resumed and is now ready for decision.
II. Evidentiary Issue
Before we discuss the merits of the appeal, we must address an evidentiary
objection by the Examining Attorney. Applicant attached as Exhibits A and B to its
appeal brief seven screenshots from its website and nine screenshots from the
registrant’s website, 8 TTABVUE 18-26, and the Examining Attorney states that “the
vast majority of [them] were never attached to any filing in the record.” 10 TTABVUE
2. He argues that “this new evidence was untimely submitted for the first time during
the appeal,” and he “objects to the evidence not previously made of record and
requests that the Board disregard it.” Id.18
Applicant responds in its reply brief that it “specifically identified and referenced
the relevant websites and marketplace usage during prosecution of the application,
including in connection with the Request for Reconsideration and Appeal Brief,” 11
16 November 14, 2025 Request for Reconsideration at 8.
17 December 5, 2025 Denial of Request for Reconsideration at 1-3.
18 The Examining Attorney did not specify exactly which materials are in the record and
which are not, but we do not consider attachments to briefs unless they involve a request for
judicial notice. We otherwise consider only what is in the prosecution history.

Serial No. 97772966
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TTABVUE 4, and that “[t]he domain names for the referenced websites, including
Applicant’s own website and the Registrant’s website, were provided in the Response
to the Non-Final Office Action demonstrating the actual nature of the parties’
respective legal services and marketplace presentation and making them of record.”
Id.19 According to Applicant,
[t]he Examining Attorney cannot reasonably claim
surprise or prejudice from these materials. Indeed, the
Examining Attorney was fully aware that the cited
registration was being relied upon as the basis for refusal
and therefore could have easily reviewed the Registrant’s
publicly available website and specimens of use at any time
during prosecution. The Examining Attorney himself
repeatedly relied upon the cited registration for “legal
services” as the basis for refusal and therefore had both the
ability and obligation to evaluate the real-world
marketplace context of the cited mark.
Id. at 3-4.20
Applicant concludes that
the referenced websites merely confirm facts already
discussed throughout prosecution — namely, that
Applicant exclusively provides personal injury-related
legal services while Registrant operates in the entirely
different field of securities, investment, and financial fraud
19 As noted above, Applicant unnecessarily attached the Office Action and Applicant’s
response to its reply brief, causing the reply brief to far exceed the permissible length of ten
pages in its entirety.
20 Although this section of our opinion addresses the Examining Attorney’s evidentiary
objection, we are compelled to address Applicant’s argument that the Examining Attorney
had an “obligation to evaluate the real-world marketplace context of the cited mark,” 11
TTABVUE 3-4, by visiting the registrant’s website. As discussed below, Applicant relies
almost exclusively on the real-world uses of the respective marks, which are irrelevant to the
issue of the registrability of Applicant’s mark. Examining attorneys have no “obligation to
evaluate the real-world marketplace context of the cited mark” (or, for that matter, the
applicant’s mark), at least where, as here, the involved goods or services are legally identical
and the drawings of the involved marks do not contain extrinsic matter that appears on
websites.

Serial No. 97772966
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litigation and arbitration. The exhibits are therefore
corroborative and explanatory of arguments already before
the Board rather than improper new evidence.
Id. at 4.
As discussed above, during prosecution, the Examining Attorney made of record
several screenshots from Applicant’s website,21 and Applicant made of record one
screenshot from the registrant’s website.22 The exhibits to Applicant’s brief do not
contain any of the screenshots from Applicant’s website that are in the record, and
they contain screenshots from the registrant’s website in addition to the single one
that is in the record.
“The record in an application should be complete prior to the filing of an appeal,”
In re Jimenez, No. 97551823, 2025 WL 3126703, at *2 (TTAB 2025) (citing Trademark
Rule 2.142(d), 37 C.F.R. § 2.142(d)), and “Applicant should not have attached ‘new
evidence’ to [its] brief to the Board.” In re Ralphs Famous Italian Ices Franchise Corp.,
No. 90302728, 2026 WL 1920835, at *9 (TTAB 2026). We sustain the Examining
Attorney’s objection to the screenshots attached to Applicant’s appeal brief at 8
TTABVUE 18-21 and 23-26, and have given them no consideration in our decision.23
21 October 24, 2023 Office Action at 16-27.
22 November 14, 2025 Request for Reconsideration at 4.
23 If Applicant wished to make the additional screenshots of record, the proper course was to
“submit a request to the Board to suspend the appeal and to remand the application for
further examination.” Weiss, 2024 WL 3617597, at *2 (quoting Trademark Rule 2.142(b)).
Applicant did not do so.

Serial No. 97772966
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III. Analysis of Likelihood of Confusion Refusal
“The Trademark Act prohibits registration of a mark that so resembles a
registered mark as to be likely, when used on or in connection with the goods or
services of the applicant, to cause confusion [or] mistake, or to deceive.” In re Charger
Ventures LLC, 64 F.4th 1375, 1379 (Fed. Cir. 2023) (cleaned up). Our determination
of likelihood of confusion under Section 2(d) of the Trademark Act is based on an
analysis of all probative facts in the record that are relevant to the factors set forth
in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (“DuPont”).
Charger Ventures, 64 F.4th at 1379. We consider each DuPont factor for which there
is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 1379 (Fed.
Cir. 2019).
“Two key factors in every Section 2(d) case are the first two factors regarding the
similarity or dissimilarity of the marks and the goods or services, because 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.” DC Comics
v. Cellular Nerd LLC, No. 91246950, 2022 WL 17832492, at *10 (TTAB 2022)
(internal quotations and quotation marks omitted).
Applicant focuses on the first two key DuPont factors, and the third factor, the
“similarity or dissimilarity of established, likely-to-continue trade channels.” DuPont,
476 F.2d at 1361. As Applicant puts it, “application of the most relevant du Pont
factors demonstrates that there is no likelihood of confusion between the Applicant’s
Mark and the Cited Registration because [of] (A) the dissimilarity of the Applicant’s

Serial No. 97772966
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Mark and the Cited Registration in their entireties as to appearance, sounds,
connotation and commercial impression; (B) the dissimilarity of the legal services
(personal injury vs securities and investment fraud) and (C) the dissimilarity of trade
channels (victims of personal injury and financial fraud are simply not looking for the
same type of law firms).” 8 TTABVUE 10. Applicant also obliquely invokes the fourth
DuPont factor, the “conditions under which and buyers to whom sales are made, i. e.
‘impulse’ vs. careful, sophisticated purchasing,” DuPont, 476 F.2d at 1361. 8
TTABVUE 15-16.
A. Similarity or Dissimilarity of the Services, Channels of Trade,
and Classes of Consumers
We begin with the second and third DuPont factors. The second factor “considers
‘[t]he similarity or dissimilarity and nature of the goods or services as described in an
application or registration . . . .” In re Detroit Athletic Co., 903 F.3d 1297, 1306 (Fed.
Cir. 2018). “This factor considers whether ‘the consuming public may perceive [the
goods or services] as related enough to cause confusion about the source or origin of
the goods or services.’” In re St. Helena Hosp., 774 F.3d 747, 752 (Fed. Cir. 2014)
(quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1267 (Fed. Cir.
2002)). “In analyzing the services, the Board considers ‘[t]he similarity or
dissimilarity and nature of the services as described in an application or
registration.’” In re OSF Healthcare Sys., No. 88706809, 2023 WL 6140427, at *4
(TTAB 2023) (quoting In re Embiid, No. 88202890, 2021 WL 2285576, at *10 (TTAB
2021)).

Serial No. 97772966
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The relatedness of goods or services may be established based on, inter alia, (1)
the language of the involved identifications of goods or services, which may show, on
the face of the identifications, that the goods or services are literally or legally
identical, or are otherwise intrinsically related, and (2) evidence of third-party uses
or registrations, which may show that the identified goods or services are commonly
offered by the same entity under the same mark. See, e.g., OSF Healthcare, 2023 WL
6140427, at *4. The involved identifications suffice here to show relatedness.
The services identified in the cited ’147 Registration are “legal services.” The
services identified in the application are “Providing legal services in the field of
personal injury, car accidents, motorcycle accidents, truck accidents, wrongful death,
bicycle accidents, boating accidents, criminal defense, DUI, injuries to children, dog
bites, premises liability, slip and fall, workplace accidents, medical malpractice,
catastrophic injuries, product liability.”
Applicant argues in its appeal brief that the “legal services offered under
Applicant’s Mark are strictly for personal injury including wrongful death and
product liability,” while extrinsic evidence shows that “the Cited Registration is
registered in connection with ‘legal services’ but [they] are limited to securities,
investment and financial fraud arbitration and litigation legal matters as shown in
Exhibit B [to Applicant’s appeal brief], the specimens of use filed by registrant in the
U.S. Trademark Office and advertisement on the Cited Registration website.” 8
TTABVUE 14 (emphasis in bold here in italics in Applicant’s brief). According to
Applicant, “[a] review of their respective websites shown at Exhibit A and Exhibit

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B [to Applicant’s appeal brief] instantly eliminates, avoids or obviates any likelihood
of confusion or potential for likelihood of confusion.” Id. (emphasis in bold here in
italics in Applicant’s brief).
The Examining Attorney responds that
the registration uses broad wording to describe “legal
services”, which presumably encompasses all services of
the type described, including applicant’s more narrow
“providing legal services in the field of personal injury, car
accidents, motorcycle accidents, truck accidents, wrongful
death, bicycle accidents, boating accidents, criminal
defense, DUI, injuries to children, dog bites, premises
liability, slip and fall, workplace accidents, medical
malpractice, catastrophic injuries, product liability”.
10 TTABVUE 7-8 (citations omitted). The Examining Attorney concludes that
“applicant’s and registrant’s services are legally identical,” id. at 8 (citations omitted),
because they are no “restrictions here on the face of the registration [and] registrant’s
services are presumed to include all reasonably possible fields of legal services,
including those of applicant.” Id.
In its reply brief, Applicant claims that the Examining Attorney improperly
disregards marketplace realities, and that “likelihood of confusion must be evaluated
from the standpoint of actual consumers in the marketplace under the relevant
DuPont factors.” 11 TTABVUE 5. Applicant “submits that [the Examining Attorney’s]
analysis ignores practical marketplace distinctions highly relevant under DuPont.”
Id. at 6. Applicant reiterates that it “exclusively provides personal injury and
accident-related legal services” while “Registrant, by contrast, focuses on securities,
investment, and financial fraud matters as reflected by its own website and
specimens of use.” Id. at 6-7.

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In comparing the services, “we must construe the services identified in the cited
[’147] [R]egistration as broadly as reasonably possible ‘to include all [services] of the
nature and type described therein,’” OSF Healthcare, 2023 WL 6140427, at *5
(quoting In re Solid State Design Inc., No. 87269041, 2018 WL 287909, at *6 (TTAB
2018) (internal quotation omitted)), and “we must resolve any ambiguities regarding
their coverage in favor of the cited registrant ‘given the presumptions afforded the
[’147] [R]egistration under Section 7(b)’ of the Trademark Act.” Id. (quoting In re C.H.
Hanson Co., No. 77983232, 2015 WL 6121759, at *5 (TTAB 2015) (citing 15 U.S.C. §
1057(b)). We must give “‘full sweep’ to an identification of goods or services regardless
of [the] registrant’s actual business,” Advance Mag. Publishers, Inc. v. Fashion Elecs.,
Inc., No. 91247034, 2023 WL 4261426, at *15 (TTAB 2023) (quoting Paula Payne
Prods. Co. v. Johnson Publ’g Co., 473 F.2d 901, 902 (CCPA 1973)), and “we may
consider . . . restrictions [regarding the actual services] only if they are included in
the identification of goods or services.” In re FCA US, LLC, No. 85650654, 2018 WL
1756431, at *4 n.18 (TTAB 2018), aff’d, 778 F. App’x 962 (Fed. Cir. 2019).
As the Board noted in FCA US, “[i]n innumerable cases,
the Board hears arguments about how the
parties’ actual goods, services, customers, trade channels,
and conditions of sale are narrower or different from the
goods and services identified in the applications and
registrations,” but “as stated in equally innumerable
decisions of our primary reviewing court, we may consider
any such restrictions only if they are included in the
identification of goods or services.”
Embiid, 2021 WL 2285576, at *14 n.38 (quoting FCA US, 2018 WL 1756431, at *4
n.18) (emphasis in bold here in italics in Embiid). Under these “innumerable
decisions,” “[o]ur decision . . . must be based on the identification of [services] in the

Serial No. 97772966
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[’147] Registration and subject Application, as that determines the scope of the
benefit of registration.” Sock It To Me, Inc. v. Fan, No. 91230554, 2020 WL 3027605,
at *10 (TTAB 2020).
The “legal services” broadly recited in the cited ’147 Registration are not restricted
to any specific type of legal services such as the “securities, investment and financial
fraud arbitration and litigation legal matters” referred to by Applicant, 8 TTABVUE
14, and we cannot “import restrictions into the identification . . . based on alleged real
world conditions.” In re i.am.symbolic, llc, 866 F.3d 1315, 1327 (Fed. Cir. 2017) (citing
Stone Lion Cap. Partners, L.P. v. Lion Cap. LLP, 746 F.3d 1317, 1323 (Fed. Cir.
2012)). We must deem the broadly identified “legal services” in the cited ’147
Registration to encompass the narrower “legal services in the field of personal injury,
car accidents, motorcycle accidents, truck accidents, wrongful death, bicycle
accidents, boating accidents, criminal defense, DUI, injuries to children, dog bites,
premises liability, slip and fall, workplace accidents, medical malpractice,
catastrophic injuries, product liability” identified in the application. As a result, the
services are legally identical,24 and the second DuPont factor strongly supports a
conclusion that confusion is likely. OSF Healthcare, 2023 WL 6140427, at *9.
24 Applicant was not without remedies against the breadth of the identification of “legal
services” in the cited ’147 Registration. Applicant “ha[d] the option of seeking a consent from
the owner of the [’147] [R]egistration, or seeking a restriction of the registration
under Section 18 of the Trademark Act, 15 U.S.C. § 1068, which permits the Board in an
inter partes proceeding to cancel registrations in whole or in part, or to otherwise restrict or
rectify . . . the registration of a registered mark.” Solid State Design, 2018 WL 287909, at *1
(internal quotation and quotation marks omitted). There is no evidence that Applicant
pursued either option.

Serial No. 97772966
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The third DuPont factor “considers ‘[t]he similarity or dissimilarity of established,
likely-to-continue trade channels.’” Detroit Athletic Co., 903 F.3d at 1308 (quoting
DuPont, 476 F.2d at 1361). As with the second DuPont factor, the third factor must
be evaluated based on the identifications of services in the cited ’147 Registration and
the application, not on the actual use of the marks. Stone Lion, 746 F.3d at 1323. As
a result, Applicant’s argument that the trade channels are dissimilar because
“victims of personal injury and financial fraud are simply not looking for the same
type of law firms,” 8 TTABVUE 10, is unpersuasive.
“Because the services described in the application and the [’147] [R]egistration are
legally identical . . . we must presume that the channels of trade and classes of
purchasers are the same as to those . . . identical services.” OSF Healthcare, 2023 WL
6140427, at *9 (quoting Monster Energy Co. v. Lo, No. 91225050, 2023 WL 417620, at
*8 (TTAB 2023) (citing In re Viterra Inc., 671 F.3d 1358, 1362 (Fed. Cir. 2012)). We
are entitled to “rely on this legal presumption in determining likelihood of confusion.”
Viterra, 671 F.3d at 1362. The third DuPont factor thus also strongly supports a
conclusion that confusion is likely. OSF Healthcare, 2023 WL 6140427, at *9.
B. Similarity or Dissimilarity of the Marks
Under the first DuPont factor, “we consider the ‘similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression.’” In re Ye Mystic Krewe of Gasparilla, No. 90522364, 2025 WL 2953731,
at *4 (TTAB 2025) (quoting DuPont, 476 F.2d at 1361). “Similarity in any one of these
elements may be sufficient to find the marks confusingly similar.” Sage Therapeutics,

Serial No. 97772966
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Inc. v. Sageforth Psych. Servs., LLC, No. 91270181, 2024 WL 1638376, at *5 (TTAB
2024) (quoting In re Inn at St. John’s, LLC, No. 87075988, 2018 WL 2734893, at *5
(TTAB 2018) (citation omitted), aff’d per curiam, 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.” Sage Therapeutics, 2024 WL 1638376, at *5 (quoting Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 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.’” Id. (quoting In re i.am.symbolic, llc, No.
85916778, 2018 WL 3993582, at *4 (TTAB 2018) (citations omitted)).
“[S]imilarity is not a binary factor, but is a matter of degree.” St. Helena Hosp.,
774 F.3d at 752 (quoting In re Coors Brewing Co., 343 F.3d 1340, 1344 (Fed. Cir.
2003)). Where, as here, the involved services are legally identical, a lesser degree of
similarity between the marks is required for confusion to be likely. Century 21 Real
Estate Corp. v. Century Life of Am., 970 F.2d 874, 877 (Fed. Cir. 1992) (“When marks
would appear on virtually identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion declines.”).

Serial No. 97772966
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The involved marks are SILVER LAW GROUP in standard characters and
Applicant’s composite mark, show again below:
Applicant argues that its mark “differs in appearance, sound, connotation and
commercial impression when compared to the Cited Registration and is used in
connection with completely different and unrelated legal services such that they do
not reach out to or attract the same or same type of potential clients.” 8 TTABVUE
10. According to Applicant,
[t]he appearance, sound, sight, and commercial impression
of Applicant’s Mark, when viewed in its entirety (giving
fair weight to the significant contributions of its component
parts), are dissimilar in appearance, sight, and commercial
impression when compared to the Cited Registration. The
mere fact that the marks share the common words
“SILVER” and “LAW” does not automatically result in a
likelihood of confusion, as the marks must be viewed in
their entiret[ies]. While Applicant’s mark includes the
words “SILVER” and “LAW” it also includes the term
“INJURY” between “Silver” and “Law” as well as the
domain name www.SilverInjuryLaw.com and does not
include the term “GROUP”. The most relevant and
operative difference in the marks is the term “INJURY” in
Applicant’s Mark wherein anyone looking for a law firm or
attorney for a securities or fraud litigation or arbitration
matter would intuitively if not instantly know that
Applicant does not provide these financial related legal
services and therefore would not think or be confused that
Applicant’s law firm is related to or affiliated with the
Cited Registration or Silver Law Group.
Id. at 11-12.

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Applicant notes that its mark “comprises a design mark” featuring “the scales of
justice in white in a red box and the words SILVER INJURY LAW in white over a
white line and www.SilverInjuryLaw.com in white letters below the white line which
are in a white outlined box over a black background.” Id. at 13. Applicant argues that
its design mark “has a distinct look and feel which identifies and differentiates if [sic]
from other law firms, including the Cited Registration,” and that the mark shown in
the ’147 Registration “has its own unique design and look, apart from the words,”
based on a page from the registrant’s website. Id.
The Examining Attorney responds that “the marks are highly similar in look,
sound and commercial impression inasmuch as they both contain ‘SILVER’ and
‘LAW’,” and that “the minute differences of applicant’s website address and
applicant’s ‘INJURY’ and registrant’s ‘GROUP’ are insufficient to overcome the
otherwise existing similarities between the marks.” 10 TTABVUE 4. According to the
Examining Attorney,
[t]he overarching point here is that even looking at the
marks in their entireties, given registrant’s unrestricted
legal services on the face of the registration, consumers
with a general recollection of marks seeking out the
services would be likely to confuse one “Silver . . . Law” for
another. This is especially true since the dominant term
SILVER is identical in each mark and consumers will call
on that dominant term to seek out applicant or registrant.
It would also be reasonable for them to conclude that
“SILVER INJURY LAW” is part of or affiliated with the
“SILVER LAW GROUP,” but merely the division or office
that deals in legal services for “INJURY LAW.”
Id. at 5-6. The Examining Attorney argues that the words in Applicant’s mark are
more significant than the design elements, id. at 6, and that the registrant’s

Serial No. 97772966
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standard-character mark could be styled in the same manner as the words in
Applicant’s composite mark. Id. at 6-7.
In its reply brief, Applicant argues that the word “INJURY” in its mark “is the
dominant distinguishing term because it immediately informs consumers that
Applicant specializes in personal injury representation,” and that the “Examining
Attorney’s theory would effectively grant Registrant exclusive rights to the surname
‘Silver’ combined with the descriptive term ‘Law’ across all legal services regardless
of practice area, which exceeds the proper scope of protection for such wording.” 11
TTABVUE 6.
Marks must be considered in their entireties, but “in articulating reasons for
reaching a conclusion on the issue of confusion, there is nothing improper in stating
that, for rational reasons, more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on consideration of the marks in
their entireties.” Detroit Athletic Co., 903 F.3d at 1305 (quoting In re Nat’l Data Corp.,
753 F.2d 1056, 1058 (Fed. Cir. 1985)). As noted above, the Examining Attorney argues
that SILVER is the dominant portion of both marks, while Applicant argues that the
word INJURY in its mark “is the dominant distinguishing term” in its mark because
it identifies Applicant’s practice specialty. 11 TTABVUE 6.
We agree with the Examining Attorney. In the cited standard-character mark
SILVER LAW GROUP, the word SILVER is the first word in the mark and the words
LAW GROUP that follow SILVER have no source-identifying significance and have
been disclaimed because they merely describe the form of the provider of the

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identified “legal services.” See Miller v. Miller, No. 91184841, 2013 WL 2329829, at
*9 (TTAB 2013) (finding that “‘LAW GROUP’ is a generic designation for a law firm.”).
The “non-source identifying nature of [LAW GROUP] and the disclaimer[ ] thereof
constitute rational reasons for giving those [words] less weight in the analysis.”
Detroit Athletic Co., 903 F.3d at 1305. We find that the lead word SILVER is the
dominant portion of the cited mark.
With respect to Applicant’s mark, “[w]hen a mark comprises both words and a
design, the words are normally accorded greater weight because they are more likely
to be impressed upon a purchaser’s memory and would typically be used by
purchasers to request the goods or services.” Iron Balls Int’l Ltd. v. Bull Creek
Brewing, LLC, No. 92079099, 2024 WL 2844425, at *12 (TTAB 2024) (citing Viterra,
671 F.3d at 1362). This general principle applies here because the only significant
design element in Applicant mark is the “scales of justice in white in a red box,”25
which are a ubiquitous symbol of the United States legal system in which attorneys
provide legal services. Cf. Major League Baseball Players Ass’n v. Chisena, No.
91240180, 2023 WL 2986321, at *4 (TTAB 2023) (in a case involving New York
Yankees star Aaron Judge, the applicant explained that his mark, which included the
scales of justice and a gavel superimposed on a baseball field, connoted that “baseball
is governed by rules and umpires similar to a courtroom proceeding is governed by
laws and judges”) (internal quotation and quotation marks omitted), aff’d, 2026 WL
25 The concentric rectangular designs in Applicant’s mark are “nothing more than . . . non-
descript ‘carrier[s]’ for the words and design.” Sabhnani v. Mirage Brands, LLC, No.
92068086, 2021 WL 6072822, at *16 (TTAB 2021) (citations omitted).

Serial No. 97772966
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60319 (Fed. Cir. Jan. 8, 2026). The scales of justice have no source-identifying
significance in the context of legal services, and would not be used by consumers to
request or refer to the services.
With the exception of the word SILVER, all the wording in Applicant’s mark has
been disclaimed. In view of the disclaimers, the lead word SILVER serves as the
primary identifier of the source of Applicant’s services, and we find that it is the
dominant portion of Applicant’s mark.
The fact that the lead word SILVER dominates both marks is significant because
“consumers typically notice [lead] words first” and they “are likely to make the
greatest impression on consumers.” Detroit Athletic Co., 903 F.3d at 1303 (citations
omitted). We turn now to the required comparison of the marks in their entireties, in
which we will give the shared lead word SILVER greater weight than the other
elements of the marks.
With respect to appearance, because the cited mark SILVER LAW GROUP is a
standard-character mark, “we must consider that the literal elements of the mark
(the words and the letters) may be presented in any font style, size or color, including
the same font, size and color as the literal portions of Applicant’s mark.” In re
Aquitaine Wine USA, LLC, No. 86928469, 2018 WL 1620989, at *5 (TTAB 2018).
“This is because the rights associated with a standard character mark reside in the
wording per se and not in any particular font style, size, or color.” Id. (citing Citigroup
Inc. v. Cap. City Grp. Inc., 637 F.3d 1344, 1353 (Fed. Cir. 2011) (“the registrant is

Serial No. 97772966
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entitled to depictions of the standard character mark regardless of font style, size, or
color, not merely ‘reasonable manners’ of depicting its standard character mark.”)).
Accordingly, we must assume that the registrant could display its mark in the
same font style, size, and color in which the words SILVER INJURY GROUP are
displayed in Applicant’s mark.26 From the standpoint of a consumer with a general
rather than specific mind’s eye recollection of the cited SILVER LAW GROUP mark
in that depiction, who separately encounters Applicant’s mark for legally-identical
services, the marks are very similar in appearance because their literal elements
begin with the word SILVER followed by non-source-identifying words that describe
the form of the provider or the field of the services.
But even if the comparison is between Applicant’s composite mark and the cited
mark in block letters or another font or stylization, the marks are visually similar
because their literal elements begin with the identical word SILVER. Detroit Athletic
Co., 903 F.3d at 1303. The second literal elements of the marks, INJURY LAW and
LAW GROUP, respectively, “are different, and some consumers may notice and recall
the differences,” but the literal elements of the marks “share the same structure,
starting with the dominant [SILVER] element and then add[ing]” wording “to create
26 As discussed above, Applicant cites the registrant’s actual use of its standard-character
mark in a stylized format in arguing that the marks are dissimilar visually. 8 TTABVUE 13.
Because the registrant’s rights in its standard-character mark “reside in the wording per se
and not in any particular font style, size, or color,” Aquitaine Wine, 2018 WL 1620989, at *5,
Applicant cannot rely on the registrant’s current depiction of its standard-character mark,
“which could change at any time.” Cielo e Terra, S.p.A. v. Hoteles y Viñedos del Valle de
Guadalupe S.A. de C.V., No. 91287216, 2026 WL 2624328, at *23 n.40 (TTAB 2026) (citing
Look Cycle Int’l v. Kunshan Qiyue Outdoor Sports Goods Co., No. 92079409, 2024 WL
3739358, at *9 (TTAB 2024) (citing Citigroup, 637 F.3d at 1353)).

Serial No. 97772966
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a [SILVER-]formative mark.” Sage Therapeutics, 2024 WL 1638376, at *6. “This
structure results in marks that look like variations on a [SILVER] theme. This is
important because consumers familiar with the [SILVER LAW GROUP] mark and
the services provided under that mark may view [Applicant’s SILVER-dominated]
mark as an extension of the [SILVER LAW GROUP] mark or as an affiliated branch
of the business that provides services under [Applicant’s SILVER-dominated] mark.”
Id. “The common [‘SILVER’] element of the marks anchors them in a way to the same
theme and creates a risk that consumers will mistakenly assume connections
between the [legally-identical] services provided under the marks. This type of
similarity increases the likelihood of confusion.” Id. We find that the marks are
similar in appearance.
The marks have some differences in sound if they are verbalized as “SILVER LAW
GROUP” and “SILVER INJURY LAW,”27 but those differences are far outweighed by
the fact that “the first and dominant [SILVER] element of each mark will sound
identical.” Id. “The risk here is that consumers will believe that [Applicant and the
registrant] are connected because of their shared use of the word [SILVER], featured
so prominently in their marks used for [legally-identical] services.” Id. We find that
the marks are quite similar in sound.
27 We find it very unlikely that when consumers verbalize Applicant’s mark, they would
include Applicant’s lengthy website address www.silverinjurylaw.com, particularly because
the “Board has acknowledged the ‘penchant of consumers to shorten marks.’” Cielo e Terra,
2026 WL 2624328, at *25 (quoting Iron Balls, 2024 WL 2844425, at *25 (internal quotation
omitted)). If consumers verbalized the respective marks simply as “Silver,” engaging in a
practice that is common when the names of law firms are spoken, the marks would be
identical in sound.

Serial No. 97772966
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Finally, with respect to meaning, both marks are dominated by the word SILVER,
which in the context of legal services would most likely be viewed as the surname of
one or more attorneys in the respective law firms providing the services.28 We find
that the marks are quite similar in connotation and commercial impression because
they are both likely to identify attorneys named Silver as the providers of the
identified legal services.
The marks are similar in appearance, and quite similar in sound and connotation
and commercial impression. The first DuPont factor strongly supports a conclusion
that confusion is likely. Naterra, Inc. v. Bensalem, 92 F.4th 1113, 1119 (Fed. Cir.
2024).
C. Fourth DuPont Factor
The fourth DuPont factor considers the “conditions under which and buyers to
whom sales are made, i. e., ‘impulse’ vs. careful, sophisticated purchasing.” DuPont,
476 F.2d at 1361. Applicant argues that “consumers looking for legal representation
exercise a high level or degree of care, investigation and consideration when selecting
a law firm or lawyer.” 8 TTABVUE 15.29 Applicant further argues that “[a]nyone
28 Pages from Applicant’s website made of record by the Examining Attorney identify Bruce
Silver as one of the attorneys in Applicant’s Professional Association. October 24, 2023 Office
Action at 22-23. The ’147 Registration’s last listed owner is Scott L. Silver, P.A., id. at 7, and
the screenshot from the registrant’s website made of record by Applicant identifies Scott
Silver as a member of the firm. November 14, 2025 Request for Reconsideration at 8.
29 Applicant cites Elizabeth Taylor Cosmetics Co. v. Annick Goutal, S.A.R.L., 673 F. Supp.
1238, 1247 (S.D.N.Y. 1987), for the proposition that “it has been acknowledged and [is]
indisputable that people looking to hire and retain a law firm exercise a much higher degree
of care and investigation than consumers of ordinary products and services.” 8 TTABVUE
15-16. The Elizabeth Taylor Cosmetics case involved perfume consumers, not purchasers of
legal services.

Serial No. 97772966
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looking for a law firm or attorney has a specific legal need and researches those firms
and attorneys that offer a particular type of legal service and spend great time and
effort in investigating and finding a law firm that meets their specific legal need.” Id.
at 16. In its reply brief, Applicant concludes that
[l]egal services are not impulse purchases. Consumers
typically conduct extensive research, review attorney
qualifications and websites, evaluate practice specialties,
and often participate in consultations before retaining
counsel. These realities substantially reduce, if not
outright eliminate, any likelihood of confusion, especially
where the firms practice in wholly different legal
disciplines.
11 TTABVUE 7.
Applicant’s arguments are unsupported by any record evidence, and attorney
argument, no matter how silver-tongued, is “no substitute for evidence.” Cielo e Terra,
2026 WL 2624328, at *135 (quoting Iron Balls, 2024 WL 2844425, at *26 (quoting Cai
v. Diamond Hong, Inc., 901 F.3d 1367, 1371 (Fed. Cir. 2018)). For the reasons
discussed below, the record does not support a finding that consumers of “legal
services in the field of personal injury, car accidents, motorcycle accidents, truck
accidents, wrongful death, bicycle accidents, boating accidents, criminal defense,
DUI, injuries to children, dog bites, premises liability, slip and fall, workplace
accidents, medical malpractice, catastrophic injuries, product liability” would
exercise more than ordinary care in selecting an attorney.
It is common knowledge that many legal services are extremely expensive, and
purchases of such services “are not impulse purchases . . . and would ordinarily be
[made] with a relatively high degree of care.” Jimenez, 2025 WL 3126703, at *7

Serial No. 97772966
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(discussing the purchase of roofing services) (citations omitted). But it is also common
knowledge that legal services provided to clients with personal injury claims are
essentially costless because, as Applicant’s website confirms, personal injury
attorneys “only get paid when we win or settle your case.”30 Indeed, Applicant’s
website urges prospective clients to “REMEMBER, THERE’S NO OBLIGATION!”31
The contingency-fee basis for such services means that there is no immediate or
ongoing financial risk involved in retaining an attorney in a personal injury case.
Moreover, injured consumers appear to be able to engage personal injury
attorneys online at any time, day or night, as confirmed by Applicant’s website, which
provides for a “Free Consultation,” initiated by completing a form, and touts
availability “24/7.”32 Applicant’s website encourages an injured consumer to retain a
personal injury attorney in the immediate aftermath of an injury, when the consumer
may be affected by the injury and in a hurry to find an attorney to obtain
compensation for the injury.
There are surely some personal injury clients who will select a lawyer after some
investigation, but “the applicable standard of care for the likelihood of confusion
analysis is that of the least sophisticated consumer.” Primrose Ret. Cmtys., LLC v.
Edward Rose Senior Living, LLC, No. 91217095, 2016 WL 7655551, at *12 (TTAB
2016) (citing Stone Lion, 746 F.3d at 1325). On this record, we find that the least
30 October 24, 2023 Office Action at 24.
31 Id. at 17.
32 Id. at 24.

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sophisticated potential purchaser of personal injury legal services is unlikely to
exercise more than ordinary care in selecting an attorney, and the fourth DuPont
factor is neutral in our analysis of the likelihood of confusion.
D. Summary of DuPont Factors
The key first and second DuPont factors, and the third factor, strongly support a
conclusion that confusion is likely, while the fourth DuPont factor is neutral. The
services, channels of trade, and classes of purchasers are legally identical, and the
marks, which are both dominated by the name SILVER, are similar in appearance,
and quite similar in sound, and connotation and commercial impression.
We conclude that consumers with a general rather than specific recollection of the
cited standard-character mark SILVER LAW GROUP for unrestricted “legal
services” who separately encounter Applicant’s SILVER-dominated mark for various
personal injury legal services are likely to believe mistakenly that the SILVER LAW
GROUP now provides, or is highlighting its provision of, personal injury legal services
through SILVER INJURY LAW.
Decision: The refusal to register is affirmed.