From: Carruthers, Sue
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`Sent: 4/10/2006 10:14:31 AM
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`To: TTAB EFiling
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`CC:
`
`Subject: TRADEMARK APPLICATION NO. 76636336 - SETTLE MY CLAIM -
`1591A
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`
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`*************************************************
`Attachment Information:
`Count: 2
`Files: settle.jpg, 76636336.doc
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`
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`Sent: 4/10/2006 10:14:31 AM
`
`To: TTAB EFiling
`
`CC:
`
`Subject: TRADEMARK APPLICATION NO. 76636336 - SETTLE MY CLAIM -
`1591A
`
`
`
`*************************************************
`Attachment Information:
`Count: 2
`Files: settle.jpg, 76636336.doc
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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` SERIAL NO:
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`76/636336
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`*76636336*
`BEFORE THE
`TRADEMARK TRIAL
`AND APPEAL BOARD
`ON APPEAL
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`
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`Please provide in all correspondence:
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`1. Filing date, serial number, mark and
` applicant's name.
`2. Date of this Office Action.
`3. Examining Attorney's name and
` Law Office number.
`4. Your telephone number and e-mail
`address.
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`
` APPLICANT:
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`Chester, David M.
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` CORRESPONDENT ADDRESS:
` JOHN D. GUGLIOTTA
` PATENT, COPYRIGHT & TRADEMARK LAW GROUP
` 137 S MAIN ST, STE 202
` AKRON, OH 44308
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`SETTLE MY CLAIM
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` MARK:
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` CORRESPONDENT’S REFERENCE/DOCKET NO: 1591A
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` CORRESPONDENT EMAIL ADDRESS:
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`EXAMINING ATTORNEY’S APPEAL BRIEF
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`INTRODUCTION
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`Applicant has appealed the examining attorney’s final refusal to register “SETTLE MY
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`CLAIM” for services in Classes 35 and 42, on the ground that it is merely descriptive of
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`the services within the meaning of Trademark Act §2(e)(1).
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`Upon further review, the refusal to register on the ground of mere descriptiveness with
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`respect to the Class 35 services only is withdrawn. This brief pertains to the Class 42
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`services only.
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`FACTS
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`Applicant initially applied to register “SETTLE MY CLAIM” for “attorney services,
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`legal services, negotiation of out-of-court settlements, and direct-response and on-line
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`advertising in the fields of attorney services, legal services and negotiation of out-of-
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`court settlements.”
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`In the first office action, the examining attorney refused registration on the Principal
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`Register under Trademark Act §2(e)(1), on the ground that the proposed mark merely
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`describes the services applicant will provide to his clients. As evidence thereof, she
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`attached pages from several websites which advertise attorney services, all of which
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`include the wording “settle my claim” to identify one of the services the attorney offers to
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`his or her clients.
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`She advised applicant that the identification of services included services in both Class 35
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`(direct-response and on-line advertising) and Class 42 (attorney services, legal services
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`and negotiation of out-of-court settlements). She also informed applicant that direct-
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`response and on-line advertising may not be registrable as a service if applicant will
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`merely advertise his own services rather than advertise on behalf of others.
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`In response, applicant paid an additional filing fee and amended the identification to read:
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`“direct response and on-line advertising in the fields of attorney services, legal services,
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`and negotiating out-of-court settlements” in Class 35, and “legal services and attorney
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`services, including litigating in-court settlements and negotiating out-of-court
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`settlements” in Class 42. He did not comment on the examining attorney’s advisory
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`regarding the registrability of advertising services. His primary argument against the
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`mere descriptiveness refusal was that the proposed mark could have numerous meanings.
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`
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`In her final refusal, the examining attorney attached pages from four additional websites
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`obtained through the Google search engine, all of which advertised law firms and
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`prominently featured the phrase “settle my claim.” She reiterated her finding that the
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`proposed mark identifies a service provided by the applicant.
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`ARGUMENT
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`THE PHRASE “SETTLE MY CLAIM” IS MERELY DESCRIPTIVE, UNDER
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`TRADEMARK ACT §2(e)(1), OF LEGAL SERVICES.
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` mark is merely descriptive under Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1), if it
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` A
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`describes an ingredient, quality, characteristic, function, feature, purpose or use of the
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`relevant goods or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir.
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`1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In
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`re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591
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`(TTAB 1979); TMEP §1209.01(b).
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`“SETTLE MY CLAIM” merely describes one of the services (negotiating out-of-court
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`settlements of legal disputes1) which applicant’s law firm will provide.
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`The determination of whether a mark is merely descriptive is considered in relation to the
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`identified goods and/or services, not in the abstract. In re Polo International Inc., 51
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`USPQ2d 1061 (TTAB 1999) (Board found that “Doc” in “DOC-CONTROL” would be
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`understood to refer to the “documents” managed by applicant’s software, not “doctor,” as
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`shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB
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`1987) (“CONCURRENT PC-DOS” found merely descriptive of “computer programs
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`recorded on disk”; it is unnecessary that programs actually run “concurrently,” as long as
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`relevant trade clearly uses the denomination “concurrent” as a descriptor of this particular
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`type of operating system); In re Venture Lending Associates, 226 USPQ 285 (TTAB
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`1985); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985) (“Whether
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`consumers could guess what the product is from consideration of the mark alone is not
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`the test”); TMEP §1209.01(b).
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`Applicant suggests that a descriptiveness refusal would be proper only if the proposed
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`mark were “LEGAL SERVICES” or “ATTORNEY” or “PERSONAL INJURY
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`ATTORNEY.” However, it is not necessary for the mark to tell what the goods or
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`services are. In In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977), the
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`Board held “Burger” descriptive of an electric cooking utensil, because the word
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`1 The examining attorney asks that the Board accept and take judicial notice of the attached definition of
`the word “settle” for purposes of this appeal. TBMP §1208.04.
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`
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`immediately informed ordinary purchasers of the function of the product (to cook
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`hamburgers).
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`
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`One frequently used test of mere descriptiveness is: Upon seeing the mark used in
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`connection with the goods or services, would a purchaser have to exercise a degree of
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`thought and imagination to reach a conclusion as to the nature of the goods or services?
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`If so, the mark is suggestive and registrable on the Principal Register. TMEP
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`§1209.01(a). In re Aid Laboratories, Inc., 223 USPQ 357 (TTAB 1984); In re The Phone
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`Company, Inc., 218 USPQ 1027 (TTAB 1983); In re C. J. Webb Inc., 182 USPQ 63
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`(TTAB 1974). In contrast, a descriptive term immediately tells something about the
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`goods or services. If a consumer were to view the mark “SETTLE MY CLAIM” in
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`conjunction with legal services, that consumer would immediately know that one of the
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`law firm’s functions is to negotiate settlements of legal disputes.
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`
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`In both the first action and the final refusal, the examining attorney attached pages from
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`the websites of several law firms. Each site featured the wording “settle my claim,”
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`referring to a request which a client may make of his attorney. These websites are strong
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`evidence that the proposed mark merely describes a purpose of applicant’s services.
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`Applicant argues that the phrase “settle my claim” “can have numerous, contradictory or
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`ambiguous meaning[s].” However, applicant has not provided any examples of other
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`meanings the phrase may have. Even assuming that there are other meanings,
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`descriptiveness is considered in relation to the relevant goods and/or services. The fact
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`that a term may have different meanings in other contexts is not controlling on the
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`question of descriptiveness. In re Chopper Industries, 222 USPQ 258 (TTAB 1984); In
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`re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); In re Champion International Corp.,
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`183 USPQ 318 (TTAB 1974); TMEP §1209.03(e).
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`Applicant also referred to third-party registrations which include the word “settle.”
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`However, the Trademark Trial and Appeal Board does not take judicial notice of
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`registrations, and the mere submission of a list of registrations does not make these
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`registrations part of the record. In re Delbar Products, Inc., 217 USPQ 859 (TTAB
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`1981); In re Duofold Inc., 184 USPQ 638 (TTAB 1974). To make registrations proper
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`evidence of record, soft copies of the registrations or the complete electronic equivalent
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`(printouts of the registrations taken from the electronic search records of the United
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`States Patent and Trademark Office) must be submitted. TMEP §710.03. See In Re JT
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`Tobacconists, 59 USPQ2d 1080, 1081 n. 2 (TTAB 2001); In re Styleclick.com Inc., 57
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`USPQ2d 1445, 1446 n. 2 (TTAB 2000); Raccioppi v. Apogee Inc., 47 USPQ2d 1368,
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`1370 (TTAB 1998); In re Volvo Cars of North America Inc., 46 USPQ2d 1455 (TTAB
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`1998); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1560 n.6 (TTAB 1996);
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`Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1231-32 (TTAB 1992). Furthermore,
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`third-party registrations are not conclusive on the question of descriptiveness. Each case
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`must be considered on its own merits. A proposed mark that is merely descriptive does
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`not become registrable simply because other similar marks appear on the register. In re
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`Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977); TMEP §1209.03(a).
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`Finally, applicant argues that combinations of merely descriptive words are registrable if
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`the combination evokes a unique commercial impression. However, if each component
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`retains its descriptive significance in relation to the goods or services, the combination
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`results in a composite that is itself descriptive. In re Tower Tech, Inc., 64 USPQ2d 1314
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`(TTAB 2002) (“SMARTTOWER” merely descriptive of “commercial and industrial
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`cooling towers and accessories therefor, sold as a unit”); In re Sun Microsystems Inc., 59
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`USPQ2d 1084 (TTAB 2001) (“AGENTBEANS” merely descriptive of computer
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`software for use in development and deployment of application programs on global
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`computer network); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996)
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`(“FOOD & BEVERAGE ONLINE” merely descriptive of news and information service
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`for the food processing industry); In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994)
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`(“SCREEN FAX PHONE” merely descriptive of “facsimile terminals employing
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`electrophoretic displays”); In re Entenmann’s Inc., 15 USPQ2d 1750 (TTAB 1990), aff’d
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`per curiam, 928 F.2d 411 (Fed. Cir. 1991) (“OATNUT” merely descriptive of bread
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`containing oats and hazelnuts). In this case, the meaning of the unitary phrase “SETTLE
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`MY CLAIM” is clear – it is a client’s request for his attorney to negotiate an out-of court
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`settlement of a legal dispute.
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`CONCLUSION
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`Inasmuch as “SETTLE MY CLAIM,” when used to identify applicant’s legal services,
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`immediately brings to mind a service which will be provided by applicant, the refusal to
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`register “SETTLE MY CLAIM” on the Principal Register should be affirmed.
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`Trademark Act §2(e)(1).
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`Respectfully submitted,
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`
`
`/Sue Carruthers/
`Trademark Attorney
`Law Office 108
`(Andrew Lawrence, Managing Attorney)
`Phone: 571-272-9139
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