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K/////E
`
`FULBRIGHT & JAw0RsKI L.L.P.
`
`A REGISTERED LIMITED LIABILITY PARTNERSHIP
`
`8oI PENNSYLVANIA AVENUE, N.W.
`WASHINGTON, D.C. 20004-2623
`WWW.FULBF\’lGHT.COM
`
`J. PAuL WILLIAMSON
`PARTNER
`PWILLIAMsoN@FULBRIGHT.CoM
`
`DIRECT DIAL:
`TELEPHONE:
`I-'Acs|M||_::
`
`(202) 662-4545
`(202) 662-0200
`(202) 662-4343
`
`May 17, 2006
`
`VIA HAND DELIVERY
`
`Office of the Solicitor
`Attention: Nancy Slutter
`Madison Building West
`600 Delaney Street, Suite 08C43-A
`Alexandria, VA 22314
`
`Re:
`
`In re Reed Elsevier; Appeal No. 06-1309
`Working Appendix
`Client-Matter No. MDCA:16l/10301038
`
`Dear Nancy:
`
`._\
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`l_‘,-
`33 :3
`
`P”
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`5?
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`
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`55-,‘
`m
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`c»
`:5:
`
`Further to our phone conversation yesterday afternoon, we are now enclosing a working
`copy of the appendix.
`
`The appendix begins with the Decision from the TTAB, and excludes both the appeal
`brief and reply brief we had filed with the Board.
`I am sure there are other documents in here
`that could have been excluded. We can talk about that further.
`
`I really appreciate your courtesy and help.
`
`Best r
`
`ds,
`
`
`
`illiamson
`
`I
`
`llllllllllll/IllllllllllllIlllllllllllllll/IIIIII
`
`U
`
`o5-17-zoos
`8 nt
`& TMOfc/TM Mallficptot M
`5 P we
`
`JPW/as
`Enclosure
`
`256573l2.l
`
`HOUSTON
`
`NI-:w Yonx - WASHINGTON DC - Ausrm o DALLAS - Los ANGELES o MINNEAPOLIS o SAN ANTONIO
`Duam o Horus KONG o LONDON o Mumcu o RIYADH
`
`BBL
`
`

`
`Prosecution History Ser. No. 75/530,795
`
`
`
`V
`
`TAB N0.
`1
`
`DATE
`02/16/2006
`
`A
`
`l— C!
`
`12/16/2005
`
`DESCRIPTION
`
`M
`
`
`E:I
`.-
`i6 AL WITHD -
`A
`A
`- S ATTORNEY
`EX PARTE APEAL-REFUSAL AFFIRMED
`’
`%
`
`06/14/2005
`
`5 APPEARANCE RECORD
`
`04/18/2005
`03/23/2005
`a
`
`I ORAL EARING SCHEDULED FOR 06/14/2005
`REQUST FOR ORAL HEARING
`REP - RIEF
`
`
`
`
`
`
`
`-
`
`20.
`
`21.
`
`22.
`
`23.
`24.
`
`25.
`
`26.
`
`27.
`
`28.
`
`5
`
`12/03/2002
`
`FINAL REFUSAL MAILED
`
`11/07/2002
`
`RESPONSE TO OFFICE ACTION
`
`05/07/2002
`
`NON-FINAL ACTION MAILED
`
`02/07/2002
`08/07/2001
`
`RESPONSE TO OFFICE ACTION
`' FINAL REFUSAL MAILED
`
`01/14/2000
`
`LETTER OF SUSPENSION MAILED
`
`10/28/1999
`
`RESPONSE TO OFFICE ACTION
`
`04/28/1999
`
`NON-FINAL ACTION MAILED
`
`08/03/1998
`
`
`
`APPLICATION FILED
`
`H
`
`'
`
`I
`
`
`
`25647245.]
`
`- 1 -
`
`
`
`EXAMINERS STATEMENT
`03/03/2005
`JURISDICTION RESTORED TO EXAMINING ATTORNEY '
`01/18/2005
`T
`’ 1/17/2005 A PLICANT’S -
`- 3 = - L BRIEF J J
`
`11/18/2004
`Ex PARTE APPEAL-INSTITUTED
`
`
`
`IlllliiIIIIIII0.
`
`11/18/2004
`
`05/18/2004
`04/13/2004
`01/29/2004
`
`08/12/2003
`
`07/29/2003
`
`07/08/2003
`
`05/23/2003
`
`T
`I
`
`H
`
`H
`
`I
`
`EX PARTE APPEAL RECEIVED AT TTAB
`
`FINAL REFUSAL MAILED
`' EXAINERS AMENDMENT MAILED
`5 RESPNSE TO OFFICE ACTION
`
`NON-FINAL ACTION MAIL RETURNED
`
`NON-FINAL ACTION MAILED
`
`NONFINAL ACTION MAILED
`
`RESPONSE TO OFFICE ACTION
`
`11.
`
`12.
`
`13.
`14.
`15.
`
`16.
`
`17.
`
`I8.
`
`
`
`

`
`

`
`Hearing:
`June 14, 2005
`
`December 15, 2005
`
`This Opinion is
`Citable as Precedent
`°“"° "A3
`
`Mailed:
`
`FULBFIIGHT 8: JAWORSKI. L
`LENITED STATES PATENT AND TRADEMARK OFFICE
`PTDOCKEHNG
`Docketed E] Not Fleq'd ['_'| Confirmation [:1
`
`Initials 2nd
`
`Trademark Trial and Appeal Board
`
`Initials -1st
`
`DEC 2 2 2005
`
`In re Reed Elsevier Properties Inc.
`Nmmw________————u—=
`
`Amnmmfl
`
`Dmemm
`
`Serial No. 75530795
`
`Katherine M. DuBray, Tara M. Vold, and J. Paul Williamson
`of Fulbright & Jaworski L.L.P. for Reed Elsevier
`Properties,
`Inc.
`
`Kathleen M. Vanston, Trademark Examining Attorney, Law
`Office 103 (Michael Hamilton, Managing Attorney).
`
`Before Grendel, Rogers and Drost,
`Administrative Trademark Judges.
`
`Opinion by Rogers, Administrative Trademark Judge:
`
`Reed Elsevier Properties Inc.
`
`[applicant]
`
`initially
`
`applied to register LAWYERS.COM,
`
`in standard character
`
`form, as a mark for services identified as "providing
`
`access to an online interactive database featuring
`
`information exchange in the fields of law,
`
`lawyers,
`
`legal
`
`news and legal services," in Class 42.
`
`The application
`
`sought registration on the Principal Register and was based
`
`
`
`

`
`Ser No. 75530795
`
`on applicant's claim of use of the designation in commerce,
`
`with July 30, 1998 asserted as the date of first use and
`
`first use in commerce.
`
`Examination History/Evidence
`
`The examining attorney refused registration, asserting
`
`that the designation is merely descriptive for the
`
`identified services, because it signifies only that
`
`applicant provides information about
`lawyers via the
`Internet.1 See Lanham Act Section 2(e)(1l,
`§ 15 U.S.C.
`
`1052(e)(1).
`
`In addition,
`
`the examining attorney provided
`
`applicant with information about a prior-filed application
`
`which,
`
`the examining attorney reported, might present a bar
`
`to registration of LAWYERS.COM if the prior-filed
`
`application resulted in issuance of a registration.
`
`In a
`
`subsequent action, however,
`
`the examining attorney stated
`
`that no such refusal would be issued.
`
`In response to the initial refusal under Section
`
`2(e)(1), applicant refused to concede that either LAWYERS
`
`or .COM is descriptive of its services and further argued
`
`that the combination LAWYERS.COM, "considered asua whole H
`
`does not
`
`immediately convey an idea of the ingredients,
`
` _—:———_
`1 As an alternative basis for refusal under Section 2(e)(1),
`examining attorney stated that the designation might be
`deceptively misdescriptive. That refusal, however, was
`subsequently withdrawn and is not a subject of this appeal.
`
`the
`
`
`
`

`
`Ser No. 75530795
`
`qualities and characteristics of these identified
`
`services." Applicant explained that information "about
`
`lawyers is not necessarily the whole or even the primary
`
`emphasis of Applicant's service," and that the composite
`
`designation "is vague, at best,
`
`in terms of conveying any
`
`specific information."
`
`Notwithstanding applicant's argument,
`
`the examining
`
`attorney made the refusal under Section 2(e)(1) final.
`
`Applicant then amended its application to seek registration
`
`on the Principal Register under Section 2(f) of the Lanham
`
`Act, 15 U S.C. §1052(f), but specifically stated that it
`
`was not waiving its right to argue the Section 2(e)(1)
`
`refusal on appeal.
`
`The examining attorney maintained the
`
`refusal under Section 2(e)(1) and rejected applicant's
`
`evidence of acquired distinctiveness as insufficient, but
`
`offered to consider any further evidence of distinctiveness
`
`applicant might later submit.2
`
`Applicant then submitted a declaration from Carol’
`
`Cooper,
`
`the Publisher and Senior Vice President of
`
`Martindale-Hubbell, a division of Reed Elsevier Inc , which
`
`is licensed to use LAWYERS.COM by applicant. This
`
`
`2 Applicant had submitted the declaration of its president and
`results of certain searches of the Internet by its counsel.
`The
`examining attorney suggested applicant submit
`information about
`the type of and expenditures for advertising, samples of
`
`
`
`

`
`Ser No. 75530795
`
`declaration provides specific figures regarding advertising
`
`and sales, among other statements, and reports that
`
`"Nielsen has conducted an independent survey chronicling
`
`the consumer use of the mark."
`
`The declarant asserted that
`
`relevant portions of the survey were attached to the
`
`declaration, but they do not appear in the record.
`
`Without mentioning the apparently missing survey
`
`evidence,
`
`the examining attorney issued another office
`
`action maintaining the refusal of registration under
`
`Section 2(e)(l).
`
`The examining attorney asserted that
`
`LAWYERS COM is generic for the identified services and that
`
`applicant's evidence of acquired distinctiveness was
`
`therefore insufficient to overcome the refusal.
`
`Applicant then amended the application to seek
`
`registration on the Supplemental Register. Applicant also
`
`amended the description of services to delete the word
`
`"lawyers," so that the resulting identification was
`
`"providing access to an online interactive database
`
`featuring information exchange in the fields of law,
`
`legal
`
`news, and legal services."
`
`(In a subsequent examiner's
`
`amendment,
`
`the words "access to" also were deleted from the
`
`identification.) Applicant explained that its amendment of
`
`.______________________________________________________________
`advertising,
`the level of sales of applicant's services, and
`consumer or other statements of recognition.
`
`
`
`

`
`Ser No. 75530795
`
`the application to seek registration on the Supplemental
`
`Register was made "[w]ithout waiving its right to argue" on
`
`appeal against the examining attorney's refusal that
`
`LAWYERS.COM is descriptive.
`
`The examining attorney refused registration on the
`
`Supplemental Register, referencing arguments and evidence
`
`from the previous office action.
`
`In addition,
`
`the
`
`examining attorney asserted that applicant's deletion of
`
`the word "lawyers" from its identification of services was
`
`a "transparent effort" to avoid Board precedent supporting
`
`the refusal and that it was clear from reference to
`
`applicant's specimens of use (reprints of numerous web
`
`pages accessible through the LAWYERS.COM web site) "that
`
`providing information about
`
`lawyers is one of the primary
`
`purposes of the website."
`
`Applicant responded by arguing that while a term may
`
`be descriptive or generic for certain services,
`
`that does
`
`not preclude its registration for other goods or services.
`
`Also, applicant asserted that deletion of the term
`
`"lawyers" from its identification was not, as the examining
`
`attorney had contended, disingenuous, and applicant
`
`explained that it "never argued that its services didn't
`
`extend to providing information about
`
`lawyers, only that
`
`the services now covered by the application don't cover
`
`
`
`

`
`Ser No. 75530795
`
`such activity."
`
`In this response, applicant referenced its
`
`earlier amendment of the application "to seek registration
`
`on the Supplemental Register," stated that the application
`
`"seeks registration of LAWYERS.COM on the Supplemental
`
`Register," and concluded its remarks by stating "this
`
`application is in condition for registration on the
`
`Supplemental Register." Nowhere in the response does
`
`applicant reference an alternative position that
`
`LAWYERS.COM is registrable on the Principal Register, with
`
`or without resort to Section 2(f).
`
`The examining attorney then issued a final refusal to
`
`register the mark on the Supplemental Register, on the
`
`basis that applicant's mark is generic and incapable of
`
`identifying the source of applicant's services. Applicant
`
`filed a notice of appeal.
`
`The examining attorney and
`
`applicant have filed briefs, and an oral hearing was held.
`
`In its reply brief, applicant affirmatively states
`
`that it “does not now dispute that LAWYERS.COM is
`
`descriptive" in connection with its services, and notes
`
`that it had submitted evidence under Section 2(f) and an
`
`amendment to the Supplemental Register in acknowledgment of
`
`the descriptiveness of the designation.3 -While neither the
`
`
`
`____.j___:_::.:.—:.__
`is a concession that
`3 Pursuit of registration under Section 2(f)
`the proposed mark is not inherently distinctive.
`See Yamaha
`
`¢
`
`

`
`Ser No“ 75530795
`
`applicant nor the examining attorney has specifically
`
`discussed applicant's proffer of evidence under Section
`
`2(f), applicant concluded both its main brief and reply
`
`brief by requesting that its proposed mark be allowed to
`
`register "on the Supplemental Register or under Section
`
`2(f)." We find that the question of registrability on a
`
`claim of acquired distinctiveness has been preserved for
`
`appeal. Accordingly, we must determine in the first
`
`instance, whether LAWYERS.COM is generic or otherwise
`
`incapable of designating source.
`
`In making such
`
`determination, we have considered the entire record,
`
`including the two declarations offered by applicant to show
`
`acquired distinctiveness.
`
`If we hold the designation not
`
`to be generic and instead capable of registration,
`
`then we
`
`may specifically discuss the arguments and the quantity of
`
`evidence of acquired distinctiveness.
`
`
`
`.________________.__________________________________.__________________
`International Corp. V. Hoshino Gakki Co., 840 F.2d 1571,
`6 USPQ2d
`1001, 1005 (Fed. Cir. 1988).
`A proposed amendment to seek
`registration on the Supplemental Register, however,
`is not an
`admission that the proposed mark has not acquired
`distinctiveness.
`See 15 U S.C. §1095. Thus, an applicant may
`argue in the alternative that a non—distinctive designation has
`acquired distinctiveness and is registrable on the Principal
`Register or at least is capable of acquiring distinctiveness and
`is registrable on the Supplemental Register.
`See Trademark
`Manual of Examining Procedure §816.04 and Trademark Trial and
`Appeal Board Manual of Procedure §1215.
`
`

`
`Ser No. 75530795
`
`The Record
`
`The record on which we must decide the question of
`
`whether the proposed mark is generic includes a dictionary
`
`definition submitted by the examining attorney of "lawyer"
`
`as "one whose profession is to conduct lawsuits for clients
`
`or to advise as to legal rights and obligations in other
`
`matters."‘ The examining attorney also has included a
`
`definition of "domain name," which explains that a "domain
`
`name"
`
`is an Internet address "in alphabetic form," "must
`
`have at least two parts," and "the part on the right W
`
`identifies the highest subdomain, such as the country (fr
`
`for France, uk for United Kingdom) or the type of
`
`organization (com for commercial, edu for educational,
`
`etc.)."5 In addition,
`
`the examining attorney submitted a
`
`reprint of a web page showing the result of a search for
`
`"com" on searchWebServices.com, which reads "On the
`
`Internet,
`
`‘com’
`
`is one of the top—level domain names that
`
`can be used when choosing a domain name.
`
`It generally
`
` _:._
`‘ The definition appears on a reprint of a web page titled
`Merriam—Webster Online Dictionary.
`The examining attorney,
`the office action that introduced this definition into the
`record, referenced it as having been retrieved from
`www.yourdictionary.com. Applicant did not object to the source
`of the definition and,
`in its brief, stated that it "does not
`dispute that this is one definition of the word lawyer."
`
`in
`
`5 From www.computeruser.com/resources/dictionary/definition.
`
`

`
`I
`
`_ 0
`
`Ser No. 75530795
`
`describes the entity owning the domain name as a commercial
`
`organization." Finally, we take judicial notice of the
`
`following definition of "TLD":
`
`“(Top-Level—Domain) The
`
`highest level domain category in the Internet domain naming
`
`system. There are two types:
`
`the generic top-level domains,
`
`such as .com,
`
`.org, and .netm.” McGraw Hill Computer
`
`Desktop Encyclopedia 977 (9th ed. 2001)
`
`(emphasis added).
`
`To gauge the likely significance of LAWYERS.COM to
`
`prospective consumers or users of applicant's services,
`
`the
`
`examining attorney relies on the numerous pages from
`
`applicant's web site that applicant submitted as specimens.
`
`The examining attorney also relies on reprints of various
`
`web pages from other entities that the examining attorney
`
`views as "evidence demonstrating that web sites devoted to
`
`law,
`
`legal news, and legal services also provide
`
`information about and/or databases of lawyers."
`
`(May 18,
`
`2004 office action,
`
`the last action prior to this appeal)
`
`Also in the record are reprints of web pages submitted
`
`by the examining attorney to show use, by entities other
`
`than applicant, of the following domain names:
`
`www.massachusetts—lawyers.com ("Massachusetts-Lawyers.com
`
`is a Service of the Law Offices of K. William Kyros, PC in
`
`Boston, Massachusetts.
`
`The law firm helping [sic]
`
`lawyers
`
`and their clients use the internet to find qualified legal
`
`
`
`

`
`Ser No. 75530795
`
`counsel."); www.truckerlawyers.com ("Trucker Lawyers Legal
`
`Services for Truckers Nation Wide"); www.new—jersey-
`
`lawyers.com ("Our database covers the entire state of New
`
`Jersey.
`
`Search to find a lawyer in your local area and to
`
`
`suit your specific legal needs."); www connecticut—
`
`lawyers.com ("Connecticut-Lawyers.com is a service that
`
`locates Connecticut Attorneys specific to your needs.");
`
`www.lep—lawyers.com ("Welcome to the Web site of Levy,
`
`Ehrlich & Petriello. This site is designed to provide
`
`information about our firm and the services we offer. m The
`
`information you obtain at this site is not, nor is it
`
`intended to be,
`
`legal advice. You should consult an
`
`attorney for individual advice regarding your own
`
`situation."); collectionlawyers.com ("We have been
`
`collection attorneys for over 20 years.
`
`Find out why our
`
`clients return again and again."); www.medialawyer.com
`
`("International Entertainment, Multimedia & Intellectual
`
`Property Law and Business Network Sponsored by Harris
`
`Tulchin & Associates"); and www.wrongfuldeath—lawyers.com
`
`("Wrongful Death Lawyers is intended to provide up to date
`
`references and resources for Wrongful Death Lawyers.
`
`The
`
`links and resources are provided as a public service for
`
`attorneys and consumers.").5
`
` —
`6 The examining attorney also submitted a reprint of a web site
`
`
`
`10
`
`

`
`Ser No. 75530795
`
`In essence,
`
`the examining attorney contends that these
`
`domain names establish the need of competitors of applicant
`
`to use a generic term, LAWYERS.COM,
`
`in their domain names
`
`for their respective web sites.
`
`As for the evidence applicant has submitted,
`
`there are
`
`various submissions intended to establish acquired
`
`distinctiveness of LAWYERS.COM, specifically,
`
`the two
`
`previously—referenced declarations and certain results of
`
`an internet search by counsel.
`
`In addition, applicant has
`
`proffered information about various registered marks
`
`"composed of terms that can be considered generic in some
`
`contexts, but have still been allowed to register in
`
`connection with a narrower description of goods." Brief,
`
`p. 15. This evidence was obtained from the USPTO TARR
`
`database7, which includes information about pending and
`
`registered trademarks.
`
`Analysis
`
`When a proposed mark is refused registration as
`
`generic,
`
`the examining attorney has the burden of proving
`
`___________________________________________________—_———
`from www. ersonalin'ur la
`ers;com.au but, because the site
`appears to aid those searching for personal injury lawyers
`located in Australia, it is of little,
`if any, relevance to the
`question of how United States Internet users would perceive the
`designation LAWYERS.COM.
`
`7 TARR stands for Trademark Applications and Registrations
`Retrieval.
`
`11
`
`

`
`
`
`Second,
`
`is the term sought to be registered
`
`understood
`
`by the relevant public primarily to refer to that genus of
`
`goods or services?" Ginn, supra, 228 USPQ at 530.
`
`Evidence of the public’s understanding of a term may be
`
`obtained from any competent source,
`
`including testimony,
`
`surveys, dictionaries,
`
`trade journals, newspapers and other
`
`publications.
`
`See Merrill Lynch, supra,
`
`4 USPQ2d at 1143
`
`(Fed. Cir. 1987), and In re Northland Aluminum Products,
`
`Inc , 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
`
`
`12
`
`Ser No. 75530795
`
`genericness by "clear evidence" thereof.
`
`
`See In re Merrill
`
`Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567,
`
`4
`
`USPQ2d 1141, 1143 (Fed. Cir. 1987); see also In re Gould
`
`Paper Corp., 834 F.2d 1017,
`
`5 USPQ2d 1110, 1111 (Fed. Cir.
`
`1987).
`
`The critical issue to determine is whether the
`
`record shows that members of the relevant public primarily
`
`use or understand the term sought to be registered to refer
`
`H. Marvin
`
`to the genus of goods or services in question.
`
`Ginn Corp.
`
`v. International Ass’n of Fire Chiefs, Inc., 782
`
`F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986);
`
`In re Women's
`
`Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB 1992).
`
`Making this determination “involves a two—step inquiry:
`
`First, what is the genus of goods or services at issue?
`
`

`
`Ser No. 75530795
`
`1. The Genus of Services
`
`As for the genus of services involved in this appeal,
`
`the examining attorney focuses on applicant's
`
`identification of services but argues that "providing
`
`information about
`
`law,
`
`legal news and legal services
`
`includes providing information about
`
`lawyers. Accordingly,
`
`the genus of services at issue includes providing
`
`information about lawyers." Brief, p. 6. Applicant, on
`
`the other hand,
`
`focuses less on the identification and
`
`asserts, "the genus for its services may be more accurately-
`
`described as ‘interactive database services focusing on a
`
`variety of types of law—related information '" Brief, p.
`
`5. Neither is quite right, for neither acknowledges the
`
`"online" nature of the identified services”, and applicant's
`
`focus on only "law—related information" does not adequately
`
`account for the identified information services related to
`
`legal services.
`
`In the Magic Wand case,
`
`the Federal Circuit stated, “a
`
`proper genericness inquiry focuses on the description of
`
`services set forth in the [application or] certificate of
`
`_é_?_._.:._.___.—.——
`“ We take judicial notice of the following definition of
`"online":
`"m(2) Said of a person who is actively communicating
`over a network.
`'Online'
`in this sense means your computer is
`connected to a network host or service and you can participate in
`Internet activities such as discussion groups or interactive talk
`sessions." net.s eak the internet dictionar p. 138 (1994).
`
`13
`
`

`
`Ser No. 75530795
`
`registration ” Magic Wand Inc. v. RDB Inc., 940 F.2d 638,
`
`19 USPQ2d 1551, 1552 (Fed. Cir. 1991). Applicant also
`
`reminds us of the Allen Electric case,
`
`in which the Court
`
`of Customs and Patent Appeals stated that "trademark cases
`
`must be decided on the basis of the identification of goods
`
`as set forth in the application."
`
`In re Allen Electric and
`
`Eguipment Co., 458 F.2d 1404, 173 USPQ 689, 690 (CCPA
`
`1972). Finally, applicant also reminds us of two Board
`
`cases that focus on the significance of written
`
`identifications:
`
`In re Vehicle Information Network Inc.,
`
`32 USPQ2d 1542, 1544 (TTAB 1994)
`
`("the question of
`
`registrability must be determined m on the basis of the
`
`goods or services as set forth in the application") and In
`
`("it
`re Datatime Corporation, 203 USPQ 878, 879 (TTAB 1979)
`is the goods as set forth in the application papers that
`
`are determinative of the issue").
`
`The Magic Wand case involved a petition to cancel the
`
`mark TOUCHLESS, on the ground that it was generic for
`
`services identified as "automobile washing services "
`
`The
`
`petitioner in that case attempted to focus on a "relevant
`
`public" unwarranted by the description of services,
`
`specifically, "operators and manufacturers of car.wash
`
`equipment," rather than purchasers of automobile washing
`
`services. Thus,
`
`the Federal Circuit's statement that "a
`
`14
`
`,_________.__
`
`

`
`Ser No. 75530795
`
`proper genericness inquiry focuses on the description of
`
`services set forth in the certificate of registration" must
`
`be read in that context,
`
`i e., as an explanation of the
`
`error in petitioner's attempt to have the Board and,
`
`later,
`
`the Federal Circuit focus on a relevant public not
`
`warranted by the description of services. Further,
`
`the
`
`quoted reference from the Magic Wand case is preceded by
`
`the Federal Circuit's observation that "[t]he description
`
`in the registration certificate identifies the services in
`
`connection with which the registrant uses the mark." Magic
`
`Wand, 19 USPQ2d at 1552.
`
`The Federal Circuit also
`
`observed, "According to the registration,
`
`the mark
`
`TOUCHLESS is used in connection with automobile washing
`
`services "
`
`lg.
`
`(emphasis added). Thus, it is clear that
`
`the analytical focus on the description of services is
`
`based on the premise that the description reflects actual
`
`conditions of use of a mark.
`
`See also,
`
`In re American
`
`Fertility Society, 188 F3d 1341, 51 USPQ2d 1832, 1836 (Fed.
`
`Cir. 1999)
`
`("The PTO must prove:
`
`(1) what the genus of the
`
`services the Society provides is ."), and In re Web
`
`
`Communications, 49 USPQ2d 1478, 1479 (TTAB 1998)
`
`("We agree
`
`with applicant that its services in the broadest sense
`
`would be considered ‘consulting services.‘ But there are
`
`many varieties of consulting services and each would
`
`15
`
`,__.__.____—fi
`
`

`
`Ser No. 75530795
`
`necessarily be further identified as to the particular
`
`subject or focus of the services being offered. Here
`
`applicant has described a major focus of its services in
`
`the specimens of record as ‘publication and communication
`
`via the World Wide Webm.' Applicant's services enable its
`
`customers to achieve this communication by assisting them
`
`in setting up their own Web sites.")
`
`(emphasis added).
`
`We do not view any of the other three decisions on
`
`which applicant relies as stating precepts that run counter
`
`to the premise that an identification is rooted in the
`
`reality of use. Again,
`
`those decisions must be read in
`
`context .
`
`In both Allen Electric and Datatime, each applicant
`
`was arguing that its goods were of a more specific type
`
`than would be apparent
`
`from the identification. As the
`
`Board explained in Datatime, because Section 7(b) of the
`
`Lanham Act bestows upon the owner of a registration the
`
`presumption of use of a mark for all goods or services
`
`identified in a registration,
`
`the question of
`
`registrability must be determined by considering any goods
`
`or services falling within the literal scope of an
`
`identification, and not merely the particular goods or
`
`services an applicant may be marketing at the time when
`
`registrability is determined. These decisions do not run
`
`16
`
`

`
`Ser No. 75530795
`
`counter to the presumption that an identification of goods
`
`or services is rooted in the reality of use but, rather,
`
`explain that the presumption extends to all goods or
`
`services encompassed by an identification.
`
`In the Vehicle Information case,
`
`the applicant was
`
`essentially arguing that the relevant public would perceive
`
`its services as somewhat different from what
`
`they actually
`
`were, given the likely connotation of its mark for that
`
`public.
`
`The Board then focused on the identification in
`
`its discussion of possible meanings consumers might find in
`
`the mark. This is nothing more than an example of the
`
`well—settled rule that likely perception of a mark is not
`
`evaluated as an abstract matter but
`
`in connection with the
`
`identified goods or services.
`
`In accordance with this analytical framework, while we
`
`consider applicant's identification as largely defining the
`
`genus of services involved in this case, we do so on the
`
`premise that the identification is a required element of an
`
`application precisely because it is expected to identify
`
`the goods or services in connection with which an applicant
`
`uses its mark and for which it therefore seeks registration
`
`of the mark. We also note that in the recent
`
`Steelbuilding.com decision, which involved a genericness
`
`refusal,
`
`the Federal Circuit began its analysis of the
`
`17
`
`

`
`Ser No. 75530795
`
`genus by focusing on applicant's amended recitation of I
`
`services [“Computerized on~line retail services in the
`
`field of pre-engineered metal buildings and roofing
`
`systems”], but interpreted the meaning of "computerized on-
`
`line retail services" in light of the actual use being made
`
`by the applicant on its web site.
`
`See In rel
`
`Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1422
`
`(Fed. Cir. 2005):
`
`The applicant defined its goods and
`services,
`in its amended application, as
`“computerized on-line retail services in the
`field of pre-engineered metal buildings and
`roofing systems.” Although the definitions.
`of the applicant and of the Board appear
`nearly identical,
`the parties understand the
`phrase “computerized on-line retail
`services" differently. Applicant sells
`steel buildings on line, but
`the record
`indicates it provides services beyond mere
`sales.
`
`Lg. at 1422.
`
`In the case at hand, we have interpreted the nature of
`
`applicant's ”online interactive database featuring
`information exchange in the fields of law,
`legal news and
`
`legal services" in light of what
`
`the record shows the
`
`database to include and,
`
`therefore, what
`
`type of
`
`information about "law,
`
`legal news and legal services" is
`
`exchanged between applicant and consumers or users of its
`
`website.
`
`18
`
`

`
`Ser No. 75530795
`
`As noted earlier,
`
`the specimens of use which applicant
`
`submitted are copies of web pages from its web site.9 The
`
`first such page appears to be applicant's "home" page
`
`[www lawyers com/site/default] and bears at the top the
`
`exhortation "Locate a Lawyer with lawyers.com!"
`
`The
`
`headline for the page portrays,
`
`in large print,
`
`’"lawyers.com" and adjacent thereto,
`
`in smaller print,
`
`"Your
`
`connection to legal information & resources."
`
`Lower on the
`
`page are links to other web pages, titled, respectively,
`
`"About The Law," "Ask A Lawyer,“ "Hiring A Lawyer" and "Law
`
`Today."
`
`The "About The Law" page presents a list of areas of
`
`law that the viewer can click on to view "informative
`
`articles about the most common consumer areas of law, as
`
`well as background on the judicial system,
`
`important
`
`laws
`
`and cases, and the U.S. Constitution."
`
`The page also
`
`explains to the viewer "After a quick review of the
`
`[selected] article, you'll be better prepared to choose a
`
`lawyer by searching our database "
`
`The "Ask A Lawyer" page explains "This area of
`
`lawyers.com is designed to provide you with a unique forum
`
`in which to ask general questions of our hosting
`
`___________________
`
`in paragraph 3,
`that the Cooper declaration,
`too,
`9 We note,
`attests to use of "LAWYERS.COM in commerce in connection with an
`
`19
`
`r——*—»———
`
`

`
`Ser No. 75530795
`
`attorneys."
`
`The page also explains that the hosting
`
`attorneys are practicing lawyers that maintain listings in
`
`the Martindale-Hubbell Law Directory,
`
`that the information
`
`provided through the page is for educational purposes, and
`
`that the viewer in need of specific legal advice "should
`
`obtain the services of a qualified attorney such as those
`
`listed in the Law Directory."
`
`The "Hiring A Lawyer" page contains information on
`such topics as "Do I Really Need an Attorney?" "Thinking
`
`Things Through," "Starting the Process," "Evaluating Your
`
`Candidates," "What Will it Cost?" "Your Attorney's
`
`Responsibilities to You,
`
`the Client," "When Things Don't Go
`
`As You Expected," and "Legal Resources."
`
`Finally,
`
`the "Law Today" page contains links to
`
`specific articles defining areas of the law,
`
`to cases in
`
`the news or famous cases, and to legal headlines.
`
`We agree with the examining attorney's conclusion that
`
`the specimen web pages applicant submitted demonstrate
`
`“that applicant's information about the law includes
`
`providing information about
`
`lawyers and,
`
`in fact,
`
`is
`
`offered for the express purpose of assisting the individual
`
`in selecting a lawyer." Brief, p. 4; emphasis added.
`
`The
`
`__________:_____________._________———————
`'online interactive database featuring information exchange in
`the fields of law,
`lawyers,
`legal news, and legal services.'"
`
`20
`
`

`
`O
`
`0
`
`Ser No. 75530795
`
`examining attorney argues,
`
`too,
`
`that providing information
`
`about legal news or legal services, particularly as
`
`demonstrated by applicant's web site,
`
`involves providing
`
`information about
`
`lawyers.
`
`Applicant argues, however,
`
`that its deletion of the
`
`word "lawyers" from its identification of services "limited
`
`its covered services" by excising "online services relating
`
`to information exchange in the field of
`
`'lawyers.‘" Brief,
`
`p. 3.
`
`In addition, applicant argues that it "is not
`
`seeking federal registration of its mark in connection with
`
`all of the different types of content or services available
`
`on Applicant's web site" and its mark "is capable of
`
`distinguishing its narrower description of services."
`
`Under the circumstances we find the genus of services
`
`to be providing a web site” with a database of information
`
`covering the identified topics of law,
`
`legal news and legal
`
`services and that a centra1.and inextricably intertwined
`
`element of that genus is information about
`
`lawyers and
`
`information from lawyers.
`
`2. What Will the Relevant Public Understand?
`
`The next question is:
`
`who are the members of the
`
`relevant public for such services, and what will they
`
`_____________________
`
`N The phrase "online interactive databas
`is an apt synonym for "web site."
`
`e" in the identification
`
`21
`
`

`
`Ser No. 75530795
`
`understand when confronted with LAWYERS.COM? We conclude
`
`that members of the relevant public include lawyers who may
`
`be seeking legal information or who may be seeking other
`
`lawyers to whom they may refer clients.
`
`The relevant
`
`public also includes laypersons that may be seeking legal
`
`information,
`
`legal representation, or referrals.
`
`As noted earlier,
`
`the examining attorney has made of
`
`record a dictionary definition of "lawyer" that applicant
`
`concedes is accurate as one definition of the word.
`
`In
`
`addition,
`
`the examining attorney has put into the record
`
`reprints of numerous web pages from web sites that include
`information on the law,
`the nature of legal services and
`
`information about obtaining a lawyer. These include many
`
`of the previously-referenced web sites

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