appellant's brief - sturm college of la · appellant's brief. 2012-1114, -1115 (serial...
TRANSCRIPT
111111____i___uu11111u__L_________LL_________u_______11111u___1111____u____i_____u_USFC2012-1114-01
{4C34797D-D329-494F-BDOA-F5 E876491 F56}
{117648}{54-120307:112645}{022712}
APPELLANT'SBRIEF
2012-1114, -1115
(Serial Nos. 77,513,717, 77/513,748)
IN RE COLLEN IP
INTELLECTUAL PROPERTY LAW P.C.,
APPEAL FROM THE
UNITED STATES PATENT AND TRADEMARK OFFICE,TRADEMARK TRIAL AND APPEAL BOARD.
BRIEF OF APPELLANT
Jeffrey A. Lindenbaum
COLLEN IP INTELLECTUAL PROPERTY LAW, P.C.
The Holyoke-Manhattan Building
80 South Highland Avenue
Ossining, New York 10562
(914) 941-5668
Counsel for Appellant Dated: February2_ 2012
THE LEX GROUP Dc • 1825 K Street, N.W. • Suite 103 • Washington, D.C. 20006
(202) 955-0001 • (800) 815-3791 • Fax: (202) 955-0022 • www.thelexgroupdc.com
Form9
FORM9. Cedifi©ateof Interest
RECEIVED
UNITED STATES COURT OF APPEALS FOR THE FEDERAL cmct eFe'-
In re CoIlen IP v.
No. 2012-1114
CERTIFICATE OF INTEREST
Counsel for the (petitioner) (appellant) (respondent) (appellee) (amicus) (name of party)
Jeffrey A. Lindenbaum certifies the following .(use "None" if applicable; use extra sheets
if necessary):
1. The full name of every party or amicus represented by me is:
Co[len IP Intellectual Property Law, P.C.
2. The name of the real party in interest (if the party named in the caption is not the realparty in interest) represented by me is:
_o_
3. All parent corporations and any publicly held companies that own 10 percent or moreof the stock of the party or amicus curiae represented by me are:
4. [] The names of all law firms and the partners or associates that appeared for the partyor amicus now represented by me in the trial court or agency or are expected to appear in thiscourt are:
,Jess M. Collen, Jane F. Collen, Jeffrey A. Lindenbaum, Oren Gelber, Audra Kempj. C ' II¢,, _ p
'/,°1L,ate
_. Signature of counsel
Please Note: All questions must be answeredcc:
JAN1 1 201Z
_t_p_
124
II. TABLE OF CONTENTS
Pa_e
I°
II.
III.
IV.
V.
VI.
VII.
VIII.
IX.
X.
XI°
XII.
XIII.
XIV.
CERTIFICATE OF INTEREST ...................................................................... i
TABLE OF CONTENTS ................................................................................ ii
TABLE OF AUTHORITIES ......................................................................... iii
STATEMENT OF RELATED CASES .......................................................... 1
JURISDICTIONAL STATEMENT ................ ............................................... 1
STATEMENT OF THE ISSUES .................................................................... 1
STATEMENT OF THE CASE ....................................................................... 2
STATEMENT OF THE FACTS ..................................................................... 5
SUMMARY OF THE ARGUMENT ............................................................. 5
ARGUMENT .................................................................................................. 6
A. Standard of Review ............................................................................... 6
B. The Second Meaning of Appellant's Mark is Not Laudatory .............. 6
CONCLUSION AND STATEMENT OF RELIEF SOUGHT .................... 11
ADDENDUM
CERTIFICATE OF FILING AND SERVICE
CERTIFICATE OF COMPLIANCE
ii
IH. TABLE OF AUTHORITIES
CASES
In re Bayer Aktiengesellschaft,
488 F.3d 960 (Fed. Cir. 2007) ......................................................................... 6
In re Gourmet Bakers Inc.,
173 USPQ 565 (TTAB 1972) ....................................................................... 11
In re Int'l Flavors & Fragrances Inc.,
183 F.3d 1361 (Fed. Cir. 1999) ....................................................................... 6
In re K-2 Corp.,
2006 TTAB LEXIS 857 (TTAB 2006) ......................................................... 11
In Re Madson Products, LLC,
2007 WL 2972214 (TTAB 2007) ................................................................ 6-7
In re MicroStrategy Inc.,
2002 TTAB LEXIS 455 (TTAB 2002) ......................................................... 10
In re Nett Designs, Inc.,
236 F.3d 1339 (Fed. Cir. 2001) ................................................................... 7, 9
In re Pacer Tech.,
338 F.3d 1348 (Fed. Cir. 2003) ....................................................................... 6
In re Ralston Purina Co.,
191 USPQ 237 (TTAB 1976) ....................................................................... 10
In re Slokevage,
2006 U.S. App. LEXIS 6893 (Fed. Cir. 2006) .i ............................................. 6
°°°
111
Oreck Holdings, LLC, v. Bissell Homecare, Inc.,
2010 WL 985352 (TTAB 2010) ................................................................... 10
Rexel, lnc. v. Rexel lnt'l. Trading, Corp.,
540 F. Supp. 2d 1154 (C.D. Cal. 2008) .......................................................... 8
STATUTES
15 U.S.C. § 1052 ........................... .......................................................................... 12
15 U.S.C. § 1071(a)(1) ..................... ......................................................................... 1
15 U.S.C. § 1052(e)(1) .......................................................................................... 3, 7
TMEP § 1213.05(c) ........................................................................................ ........... 3
OTHER AUTHORITY
2 McCarthy on Trademarks and Unfair Competition § 11:17 (4th ed. 2012) .......... 8
2 McCarthy on Trademarks and Unfair Competition § 11:19 (4th ed. 2012) .......... 6
iv
IV. STATEMENT OF RELATED CASES
No prior appeal of this trademark refusal has been before this appellate
Court. The matter was appealed to the Trademark Trial and Appeal Board
("TTAB"), which affirmed the refusal and on which decision Appellant now seeks
review from this Court (A1-20). The appeal to the TTAB was titled: In re Collen
IP Intellectual Property Law, P.C., Serial Nos. 77/513,717 and 77/513,748
(Decided: September 8, 2011).
Counsel for Appellant knows of no pending case that will directly affect or
be directly affected by this Court's decision in the pending appeal.
V. JURISDICTIONAL STATEMENT
This Court has jurisdiction to hear this case pursuant to 15 U.S.C.
§ 1071(a)(1), which allows an applicant for a trademark, who is dissatisfied with a
final decision of the Trademark Trial and Appeal Board ("TTAB"), to appeal the
decision to the United States Court of Appeals for the Federal Circuit.
Appellant
decision:
VI. STATEMENT OF THE ISSUES
raises the following issue in the Appeal from the TTAB's
. Whether the TTAB erred in affirming the Examiner's decision to
refuse the trademark applications on the basis of mere descriptiveness.
a. In particular, the issue is did the TTAB err by finding that
although the marks create a double entendre, the second
meaning of the marks A BRAND NAME LAW FIRM and A
BRAND NAME ADVISOR are laudatory.
VII. STATEMENT OF THE CASE
On July 2, 2008, Appellant filed an application to register the mark A
BRAND NAME LAW FIRM for "legal services" in International Class 42, and A
BRAND NAME ADVISOR 1 for "business consultation services, namely, product
and marketing evaluation; advertising services, namely, creating corporate and
product identity for others; creating trademarks for others" in International Class
42 (A24-29, A313-19).
1 This Appeal is of a single decision of the TTAB that jointly refused registration
of the marks: (1) A BRAND NAME LAW FIRM; and (2) A BRAND NAME
ADVISOR. Appellant filed two notices of appeal - one for each application. On
February 22, 2012, this Court granted Appellant's uncontested motion to
consolidate the appeals. Because Appellant maintains that the arguments and
evidence supporting registration are the same for both marks, Appellant, for
convenience purposes, will present arguments with regard to the mark A BRAND
NAME LAW FIRM, and maintains that these arguments apply equally towards themark A BRAND NAME ADVISOR.
The Examining Attorney issued Office Actions refusing to register
Appellant's marks on the basis that the marks are merely descriptive of Appellant's
services under Trademark Act Section 2(e)(1) (A39-42, A328-32). The Appellant
responded explaining that the marks create a double entendre under TMEP Section
1213.05(c), and that the second meaning of Appellant's marks was not descriptive
(A45-48, A332-35).
In a Final Office Action issued on April 13, 2009, the Examiner disagreed
that the marks had two meanings (A53-56, A340-43). The Examiner, rejecting
Appellant's arguments and refusing registration under Trademark Act Section
2(e)(1), reiterated his position that the marks are primarily merely descriptive of
Appellant's services. Id.
The Appellant filed Requests for Reconsideration on October 8, 2009,
offering further explanation of the issue of double entendre and evidence in
support of the double meaning (A75-95, A360-80).
On October 30, 2009, the Appellant's Requests for Reconsideration were
denied and the Examiner issued a Continuation of Final Refusal, stating that no
new facts or reasons were presented that were compelling with respect to the point
at issue (A200-01, A485-86).
Appellant requested and was granted an in-person interview with Managing
Attorney Craig Taylor on November 18, 2009 in Law Office 111. During the
interview, Mr. Taylor invited the Appellant to supply additional evidence in
support of the double entendre. Mr. Taylor at that time also directed that Appellant
file another Request for Reconsideration and a Notice of Appeal, together with the
supplemental evidence produced by Appellant and discussed during the interview.
Pursuant to the interview and the instructions of the Managing Attorney,
Appellant filed a Request for Reconsideration and Notice of Appeal on November
19, 2009 (A216-19, A237-38, A501-04, A522-23).
The Examiner denied Appellant's Request for Reconsideration on December
14, 2009 (A244-45, A529-30). Appellant appealed to the Trademark Trial and
Appeal Board on November 19, 2009 (A237-38, A522-23).
The TTAB affirmed the Examiner's refusal of registration on September 8,
2011, holding that "although applicant's mark has a second meaning, it is a
laudatory descriptive one, and whichever meaning that one would ascribe to the
mark, it is merely descriptive of the identified legal services" (A12). The Board
concluded that "a BRAND NAME LAW FIRM conveys, in addition to the
meaning of a firm that specialized in brand names or trademarks, a second
laudatory descriptive meaning that the law firm is well known or highly regarded"
(114).
4
Appellant now appeals the TTAB decision that the second meaning of the
marks A BRAND NAME LAW FIRM and A BRAND NAME ADVISOR are
laudatory.
VIII. STATEMENT OF THE FACTS
1. The Appellant is a law firm whose practice areas include the field of
intellectual property law (A204-15).
2. The term Brand Name suggests several different meanings, which
include, among others: well known, widely familiar, and household name (A60,
A186-87, A192, A194).
IX. SUMMARY OF THE ARGUMENT
The TTAB erred by finding the second meaning of Appellant's mark to be
merely laudatory. The term "Brand Name" is not a direct, common-language
description of the quality of the Appellant's legal services. The term "A Brand
Name Law Firm" does not present the same immediate impression of Appellant's
services as conveyed by other more commonly-deemed laudatory terms, such as
the "Best Law Firm" or the "Greatest Law Firm." This is because "brand name"
may have an immediate meaning with regard to consumer products (e.g., "brand
name jeans"), but requires some additional thought when used in a different
context, such as in connection with the offering of legal services (or trademark
advisory services). While "Brand Name" will conjure an impression that the firm
may be, among other things, well known or highly regarded, the extra mental leap
of some degree needed to reach this conclusion makes the mark suggestive and not
descriptive.
X. ARGUMENT
A. Standard of Review
Legal determinations of the Trademark Trial and Appeal Board are reviewed
de novo. In re Pacer Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003); In re Slokevage,
2006 U.S. App. LEXIS 6893 (Fed. Cir. 2006); In re Int'l Flavors & Fragrances
Inc., 183 F.3d 1361, 1365 (Fed. Cir. 1999). A finding of descriptiveness is a
question of fact, reviewed under the substantial evidence standard. In re Bayer
Aktiengesellschaft, 488 F.3d 960, 964 (Fed. Cir. 2007).
B. The Second Meaning of Appellant's Mark is Not Laudatory
Appellant's mark A BRAND NAME LAW FIRM is not merely descriptive
because it creates a double entendre. A "mark that connotes two meanings--_ne
possibly descriptive, and the other suggestive of some other association---can be
called suggestive, as the mark is not 'merely' descriptive." 2 McCarthy on
Trademarks and Unfair Competition § 11:19 (4th ed. 2012); In Re Madson
Products, LLC, 2007 WL 2972214 (TTAB 2007) (non-precedential). Here the
parties agree that one meaning of Appellant's mark is that the Appellant provides
legal services and counseling regarding trademarks (i.e., brands) (A329).
Accordingly, this meaning of the mark can be said to be descriptive of the type of
legal services performed by the Appellant.
In refusing registration to Appellant, the Board held that "although
applicant's mark has a second meaning, it is a laudatory descriptive one, and
whichever meaning that one would ascribe to the mark, it is merely descriptive of
the identified legal services." (A12). Specifically, the Board found that "A
BRAND NAME LAW FIRM conveys, in addition to the meaning of a firm that
specializes in brand names or trademarks, a second laudatory descriptive meaning
that the law firm is well known or highly regarded" (A14). 2
The Board erred by Concluding that the second meaning of "A BRAND
NAME LAW FIRM" is laudatory. This Court has held that "[1]audatory marks
that describe the alleged merit of the goods are descriptive because they simply
describe the characteristics or quality of the goods in a condensed form." In re
Nett Designs, Inc., 236 F.3d 1339, 1341 (Fed. Cir. 2001). Citing the leading
2 See also, (A20) ("although we agree that applicant's marks A BRAND NAME
LAW FIRM and A BRAND NAME ADVISOR have a double entendre, because
both meanings for the respective marks are descriptive of the respective services,
the marks are merely descriptive, and prohibited from registration by Section2(e)(1) of the Trademark Act").
7
McCarthy treatise, one court explained that "laudatory marks involve a very direct,
common language description of a product or service's purported quality." Rexel,
Inc. v. Rexellnt'l. Trading, Corp., 540 F. Supp. 2d 1154, 1165 (C.D. Cal. 2008)
(citing, 2 McCarthy at § 11:17). While "BRAND NAME" vaguely suggests
certain characteristics of a law firm's services, it is certainly not the direct,
common language term that would be used to describe the qualities of a law firm.
Indeed, the Trademark Office has not submitted a single instance where the phrase
"Brand Name" was used to describe the quality of a law firm or its Services.
Rather, the phrase was chosen by Appellant because it is a suggestive and a
creative play on the other meaning of"Brand Name" - i.e., trademarks.
In finding the phrase "Brand Name" laudatory, the Board concluded that the
meaning of the phrase is "well known" or "highly regarded" (A14). But a side-by-
side comparison of, for example, the terms "well known" and "brand name" reveal
an important distinction. The phrase "well known" is the direct, common language
term used to describe a firm that is widely recognized. Calling a firm a "brand
name law firm" may ultimately conjure up the idea of being known, but it requires
some imagination to reach that meaning. In other words, although the consumer
may have an immediate impression of the phrase "Brand Name," it only becomes
laudatory once the additional step is taken so that the phrase is translated to
something suggested by the phrase Brand Name, such as "highly regarded,"
8
"signature," "household name," etc. See, In re Nett Designs, Inc., 236 F.3d at 1341
("A term may slide along the continuum between suggestiveness and
descriptiveness depending on usage, context, and other factors that affect the
relevant public's perception of the term"). This intermediary step of thought and
translation is the reason why the mark is suggestive and not descriptive. The
consumer must think about how a law firm can be a "Brand Name" and what that
may connote.
The Appellant has submitted several active registrations from the Principal
Register that contain the terms BRAND NAME which were not considered
descriptive. See, A162-83. For example:
PRS 1ST AND STILL BEST THE BRAND NAME (Reg. No. 1869907)
MARSHALLS.BRAND NAMES FOR LESS.EVERY DAY. (Reg. No.
2094505)
MAKING THE WORLD SAFE FOR BRAND NAMES (Reg. No.
2187585)
THE BRANDNAMES WAREHOUSE (Reg. No. 2784060)
BRAND NAMES YOU KNOW AND TRUST (Reg. No. 2839721)
BRAND NAMES YOU KNOW AND TRUST ... FROM PEOPLE WHO
CARE (Reg. No. 3026866)
(A162-83).
Although "Brand Name" creates an immediate impression, particularly in
the context of consumer goods (e.g., "brand name jeans" or "brand name shoes")
9
this is not a phrase that is associated with law firms. Direct, common language,
laudatory words to describe a law firm would likely include, "highly-skilled,"
"proficient," "professional" "diligent," "specialists," "tenacious," "meticulous" and
"experienced," along with even more common terms such as "good," "great," "the
best," "top" or "No. 1." The phrase "brand name" falls starkly outside this
universe of common language adjectives used to describe the quality of a law
firm's services.
In the case of In re Ralston Purina, the TTAB reversed a refusal of
registration for the mark RALSTON SUPER SLUSH (with SLUSH disclaimed).
The Board found the term SUPER in the context of slush type soft drinks was not
descriptive because it was used "not to describe size or other attributes of the
product, but merely to connote a vague desirable characteristic of quality allegedly
connected with the product." In re Ralston Purina Co., 191 USPQ 237, 238
(TTAB 1976). The same reasoning applies to Appellant's A BRAND NAME
LAW FIRM mark, which conveys an immediate, yet vague desirable characteristic
of the quality or renown of the law firm's services. See also, In re MicroStrateg),
Inc., 2002 TTAB LEXIS 455 (TTAB 2002); Oreck Holdings, LLC, v. Bissell
Hornecare, Inc., 2010 WL 985352 (TTAB 2010).
The Appellant's mark is not a mere combination of descriptive words, but a
thoughtful, intentional, tongue-in-cheek, combination of terms that imparts an
10
incongruous expression that when used in connection with legal services, is
suggestive. As acknowledged by the Board, if doubt exists as to whether a term is
merely descriptive, it should be resolved in favor of the Applicant and the
application should proceed to publication. See, In re Gourmet Bakers Inc., 173
USPQ 565 (TTAB 1972). See also In re K-2 Corp., 2006 TTAB LEXIS 857 at 11
(TTAB 2006).
XI. CONCLUSION AND STATEMENT OF RELIEF SOUGHT
The second meaning of the marks A BRAND NAME LAW FIRM and A
BRAND NAME ADVISOR are suggestive and convey an immediate, yet vague
characteristic of Appellant's services. When considered in connection with its
primary meaning, namely a trademark (or brand) law firm, or an advisor of
trademarks, it is a recognizable play on words that is entitled to registration.
Because the Board erred in finding the marks A BRAND NAME LAW FIRM and
11
A BRAND NAME ADVISOR laudatory, its decision should be reversed and the
applications should proceed to publication. 3
Respectfully submitted,
Je0ffr_ A) Lindenbaum
COLLEN Ie INTELLECTUAL PROPERTY LAW, P.C.
The Holyoke-Manhattan Building
80 South Highland Avenue
Ossining, New York 10562
(914) 941-5668
Counsel for Appellant
3 Appellant notes the dearth of opinions by this Court analyzing the principles
underlying the treatment of double entendre marks by the U.S. Trademark Office.
Although not necessary to conclude that the Board's decision was in error in this
instance (because here the second meaning of Appellant's mark is suggestive),
Appellant posits that even in instances where both meanings are merely
descriptive, a double entendre mark could qualify for registration. This is because
a double entendre mark, by its very nature, invokes a level of creativity and
originality. Even if both meanings are descriptive, it still takes a mental function
to connect the dots and recognize the double entendre. This mental exercise
elevates the mark beyond just "merely descriptive" and satisfies the distinctiveness
requirement of Lanham Act. See, 15 U.S.C. § 1052. As this point raises an issue
of first impression in this Court, there is no controlling precedent, and nothing in
the Lanham Act, that precludes this Court from overturning the earlier decisions of
the TTAB and District Courts that have refused registration of double entendre
marks where the applicant failed to establish that at least one meaning of the mark
was not descriptive.
12
XII. ADDENDUM
Hearing:
June 14, 2001
THIS OPINION IS NOTA I
IPRECEDENT OF THE TI'AB
Mailed:
September S, 2011
DIWITED STATES PATENT AI_D TRADEMARK OFFICE
Trademark Trial and Appeal Board
In re Collen IP Intellectual Property Law, P.C.
Serial Nos. 77513717 and 77513748
Jess M. Collen and Audra Kemp of Collen IP Intellectual
Property Law, P.C. for Collen IP Intellectual Property Law,
p.C. _
Zachary R. Bello, Trademark Examining Attorney, Law Office
iii (Robert Lorenzo, Managing Attorney).
Before Seeherman, Walters and Kuhlke, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Collen IP Intellectual Property Law, P.C. has appealed
from the final refusals of the trademark examining attorney
to register A BRAND NAME LAW FIRM in standard characters
for "legal services," 2 and A BRAND NAME ADVISOR in standard
Mr. Collen and Ms. Kemp have identified themselves as the
attorneys for the applicant. We note that their firm actually is
the applicant.
Application Serial No. 77513717, filed July 2, 2008, based on
Section l(b) of the Trademark Act, 15 U.S.C. § 1051(b) (intent-
to-use). The mark as depicted on the drawing of the application
-1-
Ser Nos. 77513717 and 77513748
characters for "business consultation services, namely,
product and marketing evaluation; advertising services,
namely, creating corporate and product identity for others;
creating trademarks for others. "3 Registration of both
marks has been refused pursuant to Section 2(e) (I) of the
Trademark Act, 15 U.S.C. § i052(e) (i), on the ground that
each mark is merely descriptive of the respective services.
Because of the similarity of the marks, issue and evidence,
one oral hearing with respect to both appeals was held, and
we decide both appeals in this single opinion.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e) (i) of the
Trademark Act, 15 U.S.C. §I052(e) (i), if it forthwith
conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the
goods or services. In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978). A term need not
immediately convey an idea of each and every specific
feature of the applicant's goods or services in order to be
is shown in upper and lower case letters: A brand name law firm.
However, we have followed our normal style for depicting standard
character trademarks by showing the mark in all upper case
letters.
3 Application Serial No. 77513748, also filed on July 2, 2008,
based on an asserted bona fide intention to use the mark in
commerce. Again, although the mark is depicted in the
application as A brand name advisor, we have shown the mark in
all upper case letters in this opinion.
2
-2-
Set Nos. 77513717 and 77513748
considered to be merely descriptive; rather, it is
sufficient that the term describes one significant
attribute, function or property of the goods or services.
In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re
MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a term is
merely descriptive is determined not in the abstract, but
in relation to the goods or services for which registration
is sought, the context in which it is being used on or in
connection with the goods or services, and the possible
significance that the term would have to the average
purchaser of the goods or services because of the manner of
its use; that a term may have other meanings in different
contexts is not controlling. In re Bright-Crest, Ltd., 204
USpQ 591, 593 (TTAB 1979 Moreover, if the mark is
descriptive of any of the goods or services for which
registration is sought, it is proper to refuse registration
as to the entire class. In re Analog Devices Inc., 6
USPQ2d 1808 (TTAB 1988), aff'd without pub. op., 871 F.2d
1097, I0 USPQ2d 1879 (Fed. Cir. 1989).
There are certain preliminary matters that pertain to
both appeals that we must discuss.
In the examining attorney's briefs he states that on
December ii, 2009 he advised the Board that applicant's
notices of appeal were untimely. However, as applicant
3
-3-
Set Nos. 77513717 and 77513748
points out in its reply briefs, "the record does not
reflect any notification of December Ii, 2009 to the Board
regarding the timeliness of Applicant's Appeal." p. 5. In
reviewing the files, we note that the examining attorney
issued a final Office action in each application on
April 13, 2009, and therefore a notice of appeal, to be
timely, should have been filed by October 13, 2009. On
October 8, 2009 applicant filed requests for
reconsideration, each of which included the statement that
"The applicant is filing a Notice of Appeal in conjunction
with this Request for Reconsideration." However, there is
no indication in the Office records that applicant did, in
fact, file notices of appeal at that time. On October 30,
2009, the examining attorney denied applicant's request for
reconsideration. The prosecution history in the Office's
electronic file database includes an entry on October 30,
2009 of _action continuing final." On November 18, 2009,
at a point where the applications should have been deemed
to be abandoned for failure to file a timely notice of
appeal, applicant's attorney had an interview with Craig
Taylor, the then-managing attorney of the law office
handling the applications, and Mr. Taylor, according to
applicant's report of the conversation as set forth in the
requests for reconsideration filed November 9, 2009,
4
-4-
Ser Nos. 77513717 and 77513748
indicated that applicant could submit the supplemental
evidence that applicant's attorney presented to Mr. Taylor
and file appeals with the Board. Office records show that
on November 19, 2009, applicant filed a notice of appeal
for each application through the Board's electronic ESTTA
filing system, and the system automatically generated an
order instituting each appeal and remanding the application
to the examining attorney. The ESTTA filing system will
not accept an untimely appeal. While it is unclear how the
time for filing the appeal was extended, the Office has
treated the appeals filed on November 19, 2009 as timely.
Second, applicant has objected to new evidence set
forth in the examining attorney's briefs. This evidence is
not actually attached to the briefs, but is reported as
part of the text in the briefs. To the extent that the
evidence consists of dictionary definitions, we grant the
examining attorney's request that we take judicial notice
of them. The Board may take judicial notice of dictionary
definitions. University of Notre Dame du Lacv. J. C.
Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982),
aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) .4
4 The better practice in such a situation is that the examining
attorney submit the printout or copy of the dictionary
definition, rather than merely including it as text in the brief.
However, we note that applicant also, in its March 23, 2009
response, provided dictionary definitions as part of the text of
5
-5-
Set Nos. 77513717 and 77513748
However, in his briefs the examining attorney has also, for
the first time, quoted excerpts from various third-party
websites. This material was never properly made of record
during the examination of the applications, nor is it
i
proper matter for judicial notice. See TBMP § 1208.04 (3d
rev. 2011). The examining attorney has also referred for
the first time in his briefs to certain third-party
registrations which were never made of record. No
consideration has been given to the website material or the
third-party registrations. See Trademark Rule 2.142(d)
(the record in the application should be complete prior to
the filing of an appeal).
Third, in both appeal briefs, applicant refers to a
_requirement of the disclaimer in this case." Briefs, p.
14. However, a requirement for a disclaimer of BRAND NAME
is not an issue in these appeals. The sole ground for
refusal is that the applied-for marks as a whole are merely
descriptive, not that a portion of each mark is merely
descriptive and must be disclaimed.
We now turn to the substantive ground for refusal of
the applications, namely, whether the marks are merely
descriptive of the respective services. We consider first
its response, rather than submitting printouts of thedefinitions.
6
-6-
Set Nos. 77513717 and 77513748
the application for A BRAND NAME LAW FIRM for legal
services. It is the examining attorney's position that the
mark is merely descriptive because "brand name" is a
feature, characteristic, function or purpose of applicant's
legal services, that the additional term "law firm" also
describes the legal services, and that when these elements
are combined in the phrase A BRAND NAME LAW FIRM the entire
mark is merely descriptive.
In support of his position, the examining attorney has
submitted, inter alia, definitions of "brand-name" and "law
firm," and webpages advertising applicant's services.
These webpages depict the phrase _Intellectual Property
Law" under "COLLEN IP" and list, among applicant's various
activities, defending a client's trademark, bringing a
trademark infringement claim, and managing over 3,000
trademarks.
There is really no issue that A BRAND NAME LAW FIRM
describes legal services, in that it directly tells
consumers that a major characteristic of the legal services
rendered by applicant involves the protection of brand
names or trademarks. Applicant acknowledges that it is "a
firm that practices the law of Brand Names (Trademarks)."
Response filed March 23, 2009. "Applicant's firm provides
services across a wide range of fields, such as ...trademark
7
-7-
Set Nos. 77513717 and 775137_8
law .... and litigation in all of these disciplines." Brief,
p. 4. "To the extent that Applicant is an Intellectual
Property law firm, with a long history and active practice
in Trademark Law, Applicant acknowledges that it is a
Trademark Law Firm, or a Brand Name Law Firm." Brief, p.
12. Thus, applicant does not dispute that this meaning of
its mark is descriptive.
However, applicant contends that its mark is
registrable because the mark is a double entendre. The
second meaning asserted by applicant is that "brand name"
means "well known or premier" and that _'to say that one is
a 'Brand Name [fill is the blank]' is to say that one is
notable or famous in a particular field." Id. Applicant
has submitted a definition of "brand name," taken from
Merriam-Webster OnLine, www.merriam-webster.com, as meaning
"one having a well-known and usually highly regarded or
marketable name. "5 Applicant contends that the term "BRAND
NAME, in addition to being synonymous with 'trademark,'
s See also the following definitions submitted by applicant and
the examining attorney: From Dictionary.com (based on Random
House Dictionary (2009)--_I. having or being a brand name;
nationally known brand-name food products; 2. Informal. Widely
familiar; well-known: Several brand-name personalities will be
performing at the benefit"; From dictionary.infoplease.com (based
on Random House Unabridged Dictionary (1997) ....3. Informal a
person who is notable or famous, esp. in a particular field: The
reception was replete with brand names from politics and the
arts."
8
-8-
Set Nos. 77513717 and 77513748
[has] another prominent meaning, 'widely familiar,' which
also means 'well-known,' _notable, famous'" and _'household
name.'" Response filed October 8, 2009. As a result,
applicant asserts that its mark connotes _the standard in
the industry." Id.
The evidence submitted by applicant shows that the
term _brand name" is used in the manner indicated by the
latter definitions of _well-known" or "notable," to, as
characterized by applicant, "identify an article, place,
person or thing that is famous, or a 'household word.'"
Brief, p. 5. See, for example: 6
Aggressive newcomer Hayden vs. brand-name
politician Toplikar [title]
Prime buzz, The Star, October 28, 2008
KansasCity.com
Theater Review-"Kentucky Cycle" Makes Impression
on Broadway
In past decisions the Board has criticized applicants and
examining attorneys for "dumping" evidence into the record
without specifically identifying the most relevant evidence in
their briefs. See In re Max Capital Group Ltd., 93 USPQ2d 1243,
1246 (TTAB 2010). Despite this, applicant has submitted over i00
pages of evidence taken from various websites without
highlighting the specific pages or portions of the articles that
it considered relevant. In fact, in its brief, applicant stated
only that _[t]he common understanding of the term 'BRAND NAME' is
also evidenced in the news excerpts submitted for the record by
the Applicant." Brief, p. 7. Applicant is advised that the
Board considers such _dumping" of evidence to be unhelpful and a
waste of the Board's time as the Board must search through these
pages to find anything relevant, and to guess at what applicant
may consider to be particularly useful. _The Board frowns
equally upon an applicant or examining attorney submitting
hundreds of pages of evidence in the hope that, as the Board
wades through it we will find something that is probative." In
re Max Capital Group Ltd., 93 USPQ2d at 1246.
9
-9-
Set Nos. 77513717 and 77513748
...your only brand-name actor is Stacy Keach ....
Los Angeles Times, February 3, 1992
...as Eugene McCarthy, a brand-name politician,
learned when he ran as an independent in 1976 ....
The New York Observer, July 24, 2008
Observer.com
Berkshire Is Still a Brand Name [title]
[article about Berkshire Hathaway]
The New York Times, April 30, 2009
www.nytimes.com
Well, you start with the fact that there isn't a
brand-name actor in the young, good-looking crew.
BusinessWeek, January 18, 2008www.businessweek.com
Seattle FAI arthroscopy surgeons [title]
I found no fault in the other two Seattle
surgeons, but after meeting Dr. Johnston I was
quite confident that I didn't need to spend
$7,500 for a brand-name surgeon to fix my hip.
June 2, 2009
http://help4hips.com
The entire family gathered at Sloan-Kettering in
the office of a brand-name surgeon--the greatest
in America," a _top man," people said.
Thelma & Marie
Vougue [sic], March 2000
He's a Brand Name: Mike Winter [title]
Pharmacists around the world know him as author
of the ever popular textbook Basic Clinical
Pharmacokinetics, soon to be in its fifth edition
and published in English, Spanish and Japanese.
At the UCSF School of Pharmacy students know him
not only as author, but also as top-notch
teacher. His colleagues know him as leader,
mentor, adviser and citizen. Patients and
physicians at the UCSF Medical Center know him as
an exceptional clinician .....
Pharmacy Alumni Association Alumni Voice,
Spring 2009
l0
-10-
Ser Nos. 77513717 and 77513748
It is well-established that if a mark is a double
entendre, that is, has two meanings, one of which is
descriptive but the second one is not, then the mark is not
merely descriptive within the meaning of Section 2(e) (i) of
the Trademark Act. Applicant has cited a number of cases
in which this principle has been applied. For example, in
In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382
(CCPA 1968), the mark SUGAR & SPICE was found not merely
descriptive of bakery products because, although the words
sugar and spice describe ingredients in the products, the
mark also evokes the phrase "sugar & spice and everything
nice" in the nursery rhyme. And in In re National Tea Co.
144 USPQ 286 (TTAB 1965), the mark NO BONES ABOUT IT for
ham not only described that the ham was boneless, but also
had the connotation of the commonly used phrase _no bones
about it. u
Although applicant has argued that its mark is also a
double entendre like the foregoing, we disagree. As noted
in the double entendre cases in which a mark has been found
to be not merely descriptive, it is because it has a
second, nonLdescriptive meaning. However, in the present
case A BRAND NAME LAW FIRM does not have a non-descriptive
meaning. On the contrary, the evidence submitted by
applicant shows that _brand name" also means someone or
Ii
-11-
Ser Nos. 77513717 and 77513748
something of repute or renown. Applicant has said as much:
_The term 'a brand name law firm,' has another meaning,
which is that a firm is well-known," and _a household name
law firm" or "a first-rate law firm." Response filed
October 8, 2009.
Thus, A BRAND NAME LAW FIRM, when used in connection
with legal services, has not only the meaning of a law firm
that specializes in brand name or trademark law, but a law
firm that is known or has a good reputation. In fact,
applicant's evidence shows that the term "brand name" is
used in this manner in connection with doctors and
pharmacists and companies, and the term would be
immediately understood as having the same meaning when
applied to a law firm, i.e., that the law firm itself has a
notable reputation, or is highly regarded or well known.
Thus, although applicant's mark has a second meaning, it is
a laudatory descriptive one, and whichever meaning that one
would ascribe to the mark, it is merely descriptive of the
identified legal services.
We note that applicant has argued that the examining
attorney's assertion, made for the first time in his brief,
that the second meaning of applicant's mark is laudatorily
descriptive is a "new ground for refusal," and that the
application should be remanded to the examining attorney
12
-22-
Ser Nos. 77513717 and 77513748
for further examination "in order to determine whether the
additional ground for refusal should be withdrawn or made
final." Reply brief, p. 6, However, the examining
attorney's argument that the second meaning of applicant's
mark is laudatory is not a new ground for refusal. The
ground for refusal throughout examination has been that the
mark is merely descriptive under Section 2(e) (I) of the
Act. The examining attorney is not precluded from raising,
during appeal, new arguments in support of a ground for
refusal which was timely raised and is a subject of the
appeal. See TBMP § 1217. Applicant has certainly had the
opportunity to argue, and has in fact argued throughout its
prosecution of the application, that its mark is
suggestive. It is also applicant who has asserted,
throughout prosecution, that the mark means that the law
firm is well-known, and that this is a desirable trait, see
response filed October 8, 2009. While applicant asserts
that this meaning is suggestive rather than descriptive,
applicant's statements reflect applicant's recognition that
this meaning of the mark is laudatory. In any event, even
if the examining attorney had net made the argument that
the mark has a laudatory descriptive meaning, the Board may
rely on a different rationale from that argued by the
examining attorney. Id. In other words, regardless of
13
-13-
Ser Nos. 77513717 and 77513748
whether the examining attorney had argued that the second
meaning for the mark is laudatorily descriptive, we can
still make such a finding in determining that the mar]< is
merely descriptive.
As mentioned above, applicant argues that the second
meaning of its mark is only suggestive, not descriptive.
However, because of the evidence that "brand name" is used
in a laudatory manner to describe people or companies
recognized in their respective fields, we find that A BRAND
NAME LAW FIRM conveys, in addition to the meaning of a firm
that specializes in brand names or trademarks, a second
laudatory descriptive meaning that the law firm is well
known or highly regarded.
Applicant has also pointed to several third-party
registrations for marks which include the term BRAND NAME
in which this term was not disclaimed, and which were not
registered under Section 2(f), arguing that these
registrations support its position that the term _brand
name" is not to be viewed as merely descriptive. There are
®
several problems with this argument. First, given
applicant's statements arguing against a requirement for a
disclaimer, see discussion supra, it appears that these
registrations may have been cited for a point that is not
at issue in this appeal. More importantly, applicant seeks
14
-14-
Set Nos. 77513717 and 77513748
to register not BRAND NAME per se, but A BRAND NAME LAW
FIRM. It is not just the words "brand name" that the
examining attorney asserts are merely descriptive, but the
phrase as a whole. As opposed to the mark at issue herein,
the marks in the third-party registrations include non-
descriptive material, so that the entire marks are not
merely descriptive. Further, the third-party registrations
are for what appear to be slogan marks, e.g., MARSHALLS
BRAND NAMES FOR LESS EVERY DAY and MAKING THE WORLD SAFE
FOR BRAND NAMES. Slogans are considered to be unitary
marks and Office practice is that they should not be broken
up for purposes of requiring a disclaimer. See TMEP
§ 1213.05(b) . We note that one of the third-party
registrations submitted by applicant, No. 1869907, is for a
word and design mark, where the phrase THE BRAND NAME
appears to be separate from the other wording (PRS and i st
AND STILL BEST). However, the phrase THE BRAND NAME does
not appear to describe the identified services, but appears
to relate to the other words in the mark, such that the
examining attorney may have treated it as a slogan. In any
event, this single registration is insufficient to
demonstrate that Office practice is inconsistent with
respect to disclaimers of the term BRAND NAME, nor does it
in any way show that applicant's mark is not descriptive.
15
-15-
Ser Nos. 77513717 and 77513748
In short, we find that the mark A BRAND NAME LAW FIRM
immediately conveys that the identified legal services are
performed by a firm of lawyers that specialize in
trademarks and, to the extent that consumers would
understand the mark to convey a double entendre or second
meaning, that meaning is laudatorily descriptive. Because
both meanings of the mar]< are descriptive, the mark is
merely descriptive. Accordingly, we affirm the refusal of
registration of this mark.
This brings us to a consideration of applicant's mark
A BB/hND NAME ADVISOR for "business consultation services,
namely, product and marketing evaluation; advertising
services, namely, creating corporate and product identity
for others; creating trademarks for others."
The examining attorney has submitted the same evidence
as to the meaning of _brand name" that he submitted in the
application for A BRAikID NAME LAW FIRM. He also submitted
definitions of _advisor," including _one who gives advice,"
Dictionary.com, based on Random House Dictionary (2009).
Also of record is an excerpt from the website for
Investment Marketing Inc., www.investmentmarketing.com:
We create intelligent and uncommon marketing
strategies for each firm we work with--strategies
that are unique to your firm, built on
competitive advantages that differentiate you
from others. We establish you as _brand name"
16
-16-
Set Nos. 77513717 and 77513748
advisor, a specialist in untapped but
remunerative niche markets, and build a
compelling narrative to communicate the benefits
of your expertise and services to pre-qualified
audiences.
The evidence submitted by applicant is the same as
that submitted in the application for A BRAND NAME LAW
EIRM, which has been set forth previously in this opinion.
Again, there is no real dispute that one meaning of A
BRAND NAME ADVISOR is descriptive of the services.
Applicant has acknowledged that _brand name _ is a synon_n
for "trademark." Response filed Maxeh 23, 2009.
Applicant's identified services include "creating
trademarks" and _creating product identity"; in effect,
advising on trademarks or brand names_ Applicant "does not
dispute that it gives advice, among other things, in the
field of brand identity," response filed October 8, 2009;
that "Applicant's services include advising on issues of
trademark adoption and use," brief, p. 4; and _acknowledges
that it is a Trademark Law advisor, or a Brand Name
advisor." Brief, p. 12.
The question, then, is whether applicant's mark has a
second, non-descriptive meaning such that it would not be
merely descriptive of the identified services. In this
connection, applicant argues that the mark
17
-17-
Ser _os. 77513717 and 77513748
suggests that Applicant's services are "brand
name," that is to say, "premier," as opposed to
generic or _run of the mill." In the vernacular,
to say that one is a _Brand Name" is to say that
one is notable or famous in a particular field.
Brief, p. 6.
The examining attorney contends that the mark is not a
double entendre _because its descriptive significance as to
commercial impression is more powerful down [sic] double
entendre." Brief, unnumbered p. 5. We interpret this as
saying that the connotation of the mark describing that
applicant provides advising services regarding brand names
so dominates the mark that consumers will not view the mark
as having any other meaning. To the extent that the
examining attorney is correct, and that consumers will not
understand the mark to have a second meaning, the mark is
merely descriptive of brand name or trademark advising
services, since to them the mark would not have a double
entendre, v On the other hand, if consumers understand the
second meaning of the mark as premier advising services or
an advisor who is notable or well known, then the mark is
laudatorily descriptive.
The examining attorney made a similar argument in connection
with the mark A BRAND NAME LAW FIRM: "the double entendre is not
apparent in anyway." Brief, unnumbered p. 5. However, because
one would normally refer to a firm that specializes in trademark
law by the generic term _a trademark law firm," rather than "a
brand name law firm," we find that consumers will recognize the
double entendre for this mark.
18
-18-
Ser Nos. 77513717 and 77513748
We acknowledge that applicant asserts, with respect to
this second meaning, that its mark is suggestive rather
than descriptive, but we are not persuaded by this
argument. The evidence submitted by applicant, and the
dictionary definitions, show that '_brand name" has the
recognized meaning referenced in applicant's statement,
quoted above, i.e., that the services are premier or
performed by an advisor that is notable. Applicant itself
states that the _definitions articulate well the term
_BRAND NAME' used in the sense of notability, or fame," and
that _ [t]he common understating of the term 'BRAND NAME' is
also evidenced in the news excerpts submitted for the
record by the Applicant." Brief, p. 7. To the extent that
consumers consider the phrase A BRAND NAME ADVISOR to have
a second meaning, this laudatory descriptive meaning will
be readily conveyed, such that consumers will immediately
understand that the mark describes applicant's services as
trademark advice being rendered by a highly regarded or
well-known advisor.
Applicant has made essentially the same arguments in
connection with its appeal of the refusal of A BRAND NAME
ADVISOR as it did with A BRAND NAME LAW FIRM, and our
comments with respect to those arguments are equally
19
-19-
Ser Nos. 77513717 and 77513748
applicable here. In short, we do not find applicant's
arguments to be persuasive.
In conclusion, although we agree that applicant's
marks A BRAND NAME LAW FIRM and A BRAND NAME ADVISOR have a
double entendre, because both meanings for the respective
marks are descriptive of the respective services, the marks
are merely descriptive, and prohibited from registration by
Section 2(e) (i) of the Trademark Act.
Decision: The refusals of registration of application
Serial Nos. 77513717 and 77513748 are affirmed.
20
-20-
XIII. CERTIFICATE OF FILING AND SERVICE
I hereby certify that on this 27th day of February, 2012, two bound copies of
the Brief of the Appellant were served via U.S. Mail, postage pre-paid, to the
following:
Raymond T. ChenU.S. Patent & Trademark Office
Post Office Box 1450
Mailstop 8
Alexandria, Virginia 22313
(571) 272-9035
Counsel for Appellee
I further certify that on 27th day of February, 2012, the required number of
copies of the Brief of Appellant were hand filed at the Office of the Clerk, United
States Court of Appeals for the Federal Circuit.
The necessary filing and service were performed in accordance, with the
instructions given me by counsel in thisbe[
THE_LNX2Group Dc
1825 K Street, N.W., Suite 103
Washington, D.C. 20006
(202) 955-0001
XIV. CERTIFICATE OF COMPLIANCE
o This brief complies with the type-volume limitation of Federal Rule of
Appellate Procedure 32(a)(7)(B) or Federal Rule of Appellate Procedure
28.1(e):
[X] this brief contains [2,476] words, excluding the parts of the brief
exempted by Federal Rule of Appellate Procedure 32(a)(7)(B)(iii), or
[ ] this brief uses a monospaced typeface and contains [state the number of]
lines of text, excluding the parts of the brief exempted by Federal Rule of
Appellate Procedure 32(a)(7)(B)(iii)
° This brief complies with the typeface requirements of Federal Rule ofAppellate Procedure 32(a)(5) or Federal Rule of Appellate Procedure 28.1
(e) and the type style requirements of Federal Rule of Appellate Procedure
32(a)(6):
[X] this brief has been prepared in a proportionally spaced typeface using
[Microsoft Word 2007] in [14pt Times New Roman]; or
[ ] this brief has been prepared in a monospaced typeface using [state name
and version of word processing program] with [state number of characters
per inch and name of type style].
Dated: February 27, 2012
Idf_r_y _k. Lindenbaum
Counsel for Appellant
DECLARATION OF AUTHORITY
PURSUANT TO FED. CIR. R. 47.3(d)
I, Danielle Staley, hereby declare under penalty of perjury that I am duly
authorized to sign on behalf of Counsel for Appellant, Jeffrey A. Lindenbaum, as
he is unavailable to do so himself.
Executed: February_ 27, 2012
THE L(F__ Group Dc
1825 K Street, N.W., Suite 103
Washington, D.C. 20006
(202) 955-0001
To Be Filed For:
Jeffrey A. LindenbaumCOLLEN IP INTELLECTUAL PROPERTY LAW, P.C.
The Holyoke-Manhattan Building
80 South Highland Avenue
Ossining, New York 10562
(914) 941-5668
Counsel for Appellant