YOU CREATE. WE PROTECT. confusion with CREATE PROTECT

By Tamera H. Bennettposted March 26, 2008

The TTAB ruled today there is a likelihood of consumer confusion between the trademark YOU CREATE. WE PROTECT. for legal services and the stylized mark CREATE PROTECT for legal services.

If you glance to the top right of your computer screen you will understand the importance of this decision to the writer of this blog.

My firm has used the stylized and non-stylized mark CREATE PROTECT for legal services in interstate commerce since as early as October 15, 2001.  Our trademark application was filed on November 10, 2005 and the registration issued on October 31, 2006.  Attorney Philip Burrus asserted he began using the mark YOU CREATE. WE PROTECT. on August 1, 2005 and he filed a federal trademark application on June 5, 2006.  The services in both applications are identical:  legal services.

It still amazes me the examining attorney never found my application/registration in the search process for Burrus' mark.

Burrus argued consumers would not be confused because he was a male and I am a female, because our offices are located in different geographic regions and in accordance with disciplinary rules we must use our names in advertising/marketing materials:

The TTAB  stated:

Applicant's (Burrus) argument that the services differ because of the obvious differences in the two individuals rendering the services and their different geographic locations is irrelevant.  The services as identified are exactly the same and, as previously stated, opposer's (Bennett) registration is nationwide is scope.

Applicant’s argument that the marks will be distinguishable as actually used because relevant disciplinary rules require the use of an attorney’s name in advertising is unavailing. We must consider the marks as represented in the application and the registration, which is without additional names.

Burrus argued the mark CREATE PROTECT must be read as the _REATE P_OTECT. By dropping out the stylized c in the circle and r in the circle the mark became unpronounceable and could not be confusing with the mark YOU CREATE. WE PROTECT. Further the addition of YOU and WE distinguished the trademarks.

The TTAB stated:

Opposer’s mark, CREATE PROTECT is likely to be viewed as an imperative, so that the viewer will impute the word “you” or “we” before each verb. The copyright symbol in place of a “C” and the trademark registration symbol in place of an “R” in these words look merely like stylized forms of a “C” and “R” respectively and will be viewed as those letters in the context of the words “create” and “protect.”

Considering the marks in their entireties, we find that the sound, appearance and connotations of the marks are substantially similar and, certainly, the overall commercial impressions are more similar than they are dissimilar.