From: Bello, Zack
`
`Sent: 5/2/2010 7:32:16 AM
`
`To: TTAB EFiling
`
`CC:
`
`Subject: U.S. TRADEMARK APPLICATION NO. 77513717 - A BRAND NAME
`LAW FIRM - N/A
`
`
`
`*************************************************
`Attachment Information:
`Count: 1
`Files: 77513717.doc
`
`

`
`
` SERIAL NO:
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`77/513717
`
`
`
`
`
`
`*77513717*
`
`
`GENERAL TRADEMARK INFORMATION:
`http://www.uspto.gov/main/trademarks.htm
`
`TTAB INFORMATION:
`http://www.uspto.gov/web/offices/dcom/ttab/index.html
`
`
`
`
`
` MARK: A BRAND NAME LAW FIRM
`
`
`
`
`
`
` CORRESPONDENT ADDRESS:
` JESS M. COLLEN
`
` COLLEN IP INTELLECTUAL PROPERTY LAW, P.C
`
`
` 80 S HIGHLAND AVE
` OSSINING, NY 10562-5615
`
`
` APPLICANT:
` COLLEN IP INTELLECTUAL
`PROPERTY LAW, P.C ETC.
`
`
` CORRESPONDENT’S REFERENCE/DOCKET NO:
` N/A
` CORRESPONDENT E-MAIL ADDRESS:
`
`
`EXAMINING ATTORNEY'S APPEAL BRIEF
`
`
`
`
`
`applicant has appealed the examining attorney’s final refusal to register the mark A
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`BRAND NAME LAW FIRM for “legal Services.” Registration was refused under
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`Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1) because the mark is merely
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`descriptive of the applicant’s services.
`
`ISSUE
`
`Whether the applicant’s mark BRAND NAME LAW FIRM is descriptive of legal
`
`services when the applicant’s law firm specializes in brand name prosecution under
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`Section 2(e)(1), 15 U.S.C. Section 1052(e)(1).
`
`FACTS
`
`

`
`On July 2, 2008, the applicant applied to register the mark BRAN NAME LAW FIRM
`
`for “legal services.”
`
`On October 28, 2008, the examining attorney issued a first action refusing to register the
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`proposed mark under Section 2(e)(1), 15 U.S.C. Section 1052(e)(1) because applicant is a
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`specialist in brand name legal services.
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`On March 3, 2009, the applicant responded and argued against the refusal to register
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`2(e)(1), 15 U.S.C. Section 1052(e)(1).
`
`On April 12, 2009, the examining attorney found the applicant‘s arguments unpersuasive
`
`and issued a final refusal under Section 2(e)(1) of the Trademark Act.
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`On October 8, 2009, the applicant offered more evidence in support of registration
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`without filing an appeal. On November, 19, 2009, the applicant submitted a letter of
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`reconsideration and simultaneously filed a notice of appeal.
`
`On December 11, 2009, the examining attorney notified the Trademark Trial & Appeal
`
`Board that the applicant’s appeal was untimely under 37. C.F.R. Section 2.64(b); TMEP
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`Section 715.03(c). The appeal should have been filed by October 12, 2009.
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`On December 14, 2009, the examining attorney denied the letter of reconsideration after
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`finding the applicant’s arguments unpersuasive. Finally, on February 26, the applicant
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`filed its appeal brief.
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`
`
`ARGUMENT
`
`The law applicable to this refusal is well settled. A mark is merely descriptive if it
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`describes an ingredient, quality, characteristic, function, feature, purpose or use of the
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`specified goods and/or services. TMEP §1209.01(b); see In re Steelbuilding.com, 415
`
`

`
`F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216,
`
`1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).
`
`In the instant case, the applicant’s mark is just a combination of descriptive terms that are
`
`unregistrable on the Principal Register because they describe the nature, function, or
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`purpose of the identified services. According to
`
`http://dictionary.reference.com/browse/brand-name?r=66 , the terms BRAND NAME
`
`refer to;
`
`
`1. a word, name, symbol, etc., esp. one legally registered as a trademark, used by a
`manufacturer or merchant to identify its products distinctively from others of the
`same type and usually prominently displayed on its goods, in advertising, etc.
`2.
`a product, line of products, or service bearing a widely known brand name.
`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.
`
`
`Additionally, the applicant’s addition of the terms LAW FIRM will not change the fact
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`that the mark is unregistrable under Section 2(e)(1), 15 U.S.C. Section 1052(e)(1) of the
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`Trademark Act. A website http://encyclopedia.thefreedictionary.com/law+firm defines a
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`LAW FIRM as
`
`[a] law firm is a business entity formed by one or more lawyers to engage in the practice of law.
`The primary service provided by a law firm is to advise clients (individuals or corporations) about
`their legal rights and responsibilities, and to represent their clients in civil or criminal cases,
`business transactions and other matters in which legal assistance is sought.
`
`Smaller firms tend to focus on particular specialties of the law (e.g. patent law, labor law, tax law,
`criminal defense, personal injury); larger firms may be composed of several specialized practice
`groups, allowing the firm to diversify their client base and market, and to offer a variety of services
`to their clients.[1]
`
`Law firms are organized in a variety of ways, depending on the jurisdiction in which the firm
`practices. Common arrangements include:
`
`• Sole proprietorship, in which the attorney is the law firm and is responsible for all profit,
`loss and liability;
`
`

`
`• General partnership, in which all of the attorneys in the firm equally share ownership and
`liability;
`• Professional corporations, which issue stock to the attorneys in a fashion similar to that of
`a business corporation;
`• Limited liability company, in which the attorney-owners are called "members" but are not
`directly liable to third party creditors of the law firm;
`• Professional association, which operates similarly to a professional corporation or a
`limited liability company;
`• Limited liability partnership (LLP), in which the attorney-owners are partners with one
`another, but no partner is liable to any creditor of the law firm nor is any partner liable for
`any negligence on the part of any other partner. The LLP is taxed as a partnership while
`enjoying the liability protection of a corporation.
`
`
`The examining attorney urges the TTAB to take judicial notice of these dictionary
`
`definitions. “Judicial notice” refers to a court or adjudicating body’s authority to accept
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`as evidence well-known and indisputable facts for the purpose of convenience and
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`without requiring a party’s proof. Black’s Law Dictionary 863 (8th ed. 2004). The
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`Trademark Trial and Appeal Board can take judicial notice of definitions obtained from
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`dictionaries in printed format. In addition, the Board can also take judicial notice of
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`online dictionaries available in printed format or online dictionaries that are readily
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`available and capable of being verified, e.g., dictionaries that are available in specifically
`
`denoted editions via the Internet and CD-ROM. See Fed. R. Evid. 201; 37 C.F.R.
`
`§2.122(a); In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir. 2007); In re Red
`
`Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006); TBMP §1208.04; TMEP §710.01(c).
`
`
`
`The mark just reiterates the applicant services. Relevant consumers will easily decipher
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`the fact that applicant’s mark is nothing but a combination of descriptive terms that
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`describes the nature, function, or purpose of the applicant’s legal services in the field of
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`Trademark or brand name. A mark that merely combines descriptive words is not
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`registrable if the individual components retain their descriptive meaning in relation to the
`
`

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`goods and/or services and the combination results in a composite mark that is itself
`
`descriptive. TMEP §1209.03(d); see, e.g., In re King Koil Licensing Co. Inc., 79
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`USPQ2d 1048 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely
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`descriptive of “beds, mattresses, box springs and pillows”); In re Associated Theatre
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`Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988) (holding GROUP SALES BOX OFFICE
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`merely descriptive of theater ticket sales services). Such a mark is registrable only if the
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`composite creates a unitary mark with a unique, incongruous, or otherwise nondescriptive
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`meaning in relation to the goods and/or services. See, e.g., In re Colonial Stores, Inc.,
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`394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968).
`
`In this case, both the individual components and the composite result are descriptive of
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`applicant’s goods and/or services and do not create a unique, incongruous or
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`nondescriptive meaning in relation to the goods and/or services. Specifically, the mark
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`BRAND NAME LAW FIRM is nothing but a synonym or an alias for a Trademark law
`
`firm specialist. The applicant’s website;
`
`http://brandnameportal.com/services/trademarks.asp also supports examiner’s assertion
`
`that the proposed mark is a greatly descriptive one.
`
`Collen IP protects some of the world's best-known brands. Your brand
`belongs
`here.
`
`
`
`
`
`
`
`
` A Brand Name law firm.
`
` A
`
` trademark is any word, symbol, design, or logo understood by consumers to designate your
`particular product or service. A trademark indicates source. Once you begin using a mark, you
`are the owner of the mark. There are federal and state systems for registration. Registration is
`never required to protect your rights in court against copying of your name or logo.
`
`

`
`Our office manages well over 3,000 trademarks, involving many of the world’s most
`recognized consumer brands. From watches to international fashion, beverages to
`electronics, the trademarks we protect are the brands that consumers purchase and enjoy
`every day. We work hard to help our clients select trademarks that can have lasting impact,
`and to be sure that the name selected is free from confusion with any competitor.
`
`International Trademark Protection
`
`Collen IP is the first step in exporting your company’s goods and services and assuring that
`your intellectual property rights are protected both at home and abroad.
`
`Failure to protect your company’s inventions, brands and other creative assets prior to
`distributing them overseas may result in lost valuable rights to competitors or to
`unscrupulous businesses that take advantage of unsuspecting companies.
`
`Whether you are an American company looking to sell your goods abroad or a company
`outside of the U.S.A. seeking to do business in the United States, it is essential to first identify
`and protect intellectual property rights that are associated with your products.
`
`Protection of intellectual property means the difference between profits and loss - - so it is
`essential to begin the process of worldwide protection. Fill out the International trademark
`form and submit it to us by fax or E-mail. A Collen IP representative will contact you within
`one business day to discuss your international trademark protection needs.
`
`To obtain more information on our trademark services, or to conduct a trademark search, or
`apply for trademark registration.
`
`Click to hear Mr. Collen - Continuing Business Education Training, by SMARTPROS.
`
`
`
`The applicant argues that the mark is registrable based on the principle of double
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`entendre under TMEP Section 1213(c). The applicant’s assertion is misdirected because
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`a double entendre is an expression that has a double meaning, connotation or significance
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`as applied to the goods or services. Here, the applicant’s mark does not fit the Principal
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`enunciated in double entendre because its descriptive significance as to commercial
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`impression is more powerful down double entendre. It is just a regurgitation of the
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`identified services. It is the examiner’s contention that the determination of whether a
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`mark is merely descriptive is considered in relation to the identified goods and/or
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`

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`services, not in the abstract. In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215,
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`218 (C.C.P.A. 1978); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d
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`1061 (TTAB 1999) (finding DOC in DOC-CONTROL would be understood to refer to
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`the “documents” managed by applicant’s software, not “doctor” as shown in dictionary
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`definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (finding
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`CONCURRENT PC-DOS merely descriptive of “computer programs recorded on disk”
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`where relevant trade used the denomination “concurrent” as a descriptor of a particular
`
`type of operating system). “Whether consumers could guess what the product is from
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`consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ
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`365, 366 (TTAB 1985). Relevant consumers will understand that the applicant
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`specializes in brand identity or trademark legal services as depicted on its website.
`
`
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`The applicant cites several cases to support it’s assertion of double entendre. An
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`interesting case the applicant cited is In re Colonial Stores Inc., 394 F.3d 549, 157 USPQ
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`382 (CCPA 1968), where the court found that the mark SUGAR & SPICE for bakery
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`products was a double entendre, because it immediately connoted both the ingredients of
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`bakery products and the well-known nursery rhyme phrase “sugar & spice and everything
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`nice.” Here the applicant’s mark is clearly distinguishable because the double entendre is
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`not apparent in anyway. It merely informs the relevant consumers that applicant is a
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`specialist in the brand name or brand identity practice. Another case the applicant cited is
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`In re National Tea Co., 144 USPQ 286 (TTAB 1965) (NO BONES ABOUT IT) for fresh
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`precooked ham. The court found the mark to be registrable on the Principal Register
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`because it connoted both the fact that the ham was boneless and the commonly used
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`

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`phrase “no bones about it.” The examining attorney again asserts the applicant’s mark is
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`distinguishable from In re National Tea Co., because the phrase BRAND NAME LAW
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`FIRM is usually associated with a law firm that specializes in brand name or Trademark
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`prosecution. Further, the applicant asserts that its mark is comparable to the double
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`entendre the TTAB enunciated in In re Tea & Sympathy, Inc., 88 USPQ2D 1062 (TTAB
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`2008) for “online retail stores services featuring natural herbs and organic products.” In
`
`re Tea & Sympathy, Inc., the applicant played on words. The examining attorney
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`disagrees with the applicant’s comparison. The applicant mark fails to play on any
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`words, it merely informs the relevant consumers that it is a specialist in the brand identity
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`fields of intellectual property. The words BRAND NAME LAW FIRM retain their
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`enormous descriptive significance when it is critically examined.
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`
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`Furthermore, the applicant declares that its mark does suggest its services are “premier”
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`or “famous” or a “first-rate law firm.” Assuming arguendo, that the mark connotes
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`“premier”, “first-rate law firm”, and/or fame, then the examining attorney asserts that the
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`mark is laudatory. Laudatory words or terms that attribute quality or excellence to goods
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`and/or services are considered merely descriptive. TMEP §1209.03(k). Thus, laudatory
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`terms, phrases and slogans are nondistinctive and unregistrable on the Principal Register
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`without proof of acquired distinctiveness. See In re Nett Designs, Inc., 236 F.3d 1339, 57
`
`USPQ2d 1564 (Fed. Cir. 2001) (holding THE ULTIMATE BIKE RACK a laudatory,
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`descriptive phrase that touts the superiority of applicant’s bicycle racks); In re Boston
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`Beer Co., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (holding THE BEST BEER
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`IN AMERICA a laudatory, descriptive phrase for applicant’s beer and ale); In re The
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`

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`Place, Inc., 76 USPQ2d 1467 (TTAB 2006) (holding THE GREATEST BAR a
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`laudatory, descriptive term for applicant’s restaurant and bar since term “greatest”
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`immediately informs prospective purchaser that applicant’s establishment is superior in
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`character or quality when compared to other restaurants and bars); In re Dos Padres, Inc.,
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`49 USPQ2d 1860 (TTAB 1998) (holding QUESO QUESADILLA SUPREME a
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`laudatory, descriptive term for applicant’s cheese). Thus in the alternative, the
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`applicant’s mark remains unregistrable under Section 2(e)(1) of the Trademark Act
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`because it is laudatory.
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`Moreover, the examining attorney asserts that the word BRAND NAME is not being
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`exclusively used by the applicant. Several law firms use the terms for promoting similar
`
`or identical practice in the field of Trademark or brand name as indicated below:
`
`
`
`a) http://www.digital-trademarks.com/
`
`Trademark Registration Services | Trademark Search
`
`Digital Trademarks, a service of the American Trademark law firm of Marcus Stephen
`Harris, trademark lawyer in Chicago, provides a comprehensive suite of US
`trademark and International trademark services for every stage of the lifecycle of
`your brand, product or business name. Trademark registration services include
`corporate brand name searches, logo protection, trademark protection and
`trademark litigation both in the United States and internationally.
`Federal Trademark Search | Trademark Litigation
`
`Why choose Digital Trademarks? We are dedicated to providing you with the customer
`service you deserve. Whether you are applying for trademark registration, licensing an
`existing trademark or enforcing or defending your brand, we are dedicated to meeting
`customer expectations and solving problems within set legal budgets. Almost all of our
`services are provided at fixed fees. We aggressively implement technology at our cost to
`increase efficiency, lower costs and empower our customers during the legal process. We
`are practical business oriented trademark attorneys dedicated to the success of our
`customers’ brands. See for yourself why our customers keep coming back.
`
`b)
` http://www.allbusiness.com/legal/legal-services-lawyers/12306375-1.html.
`
`
`

`
`The Legal 500 U.S., and PLC Which Lawyer? For four straight years Bracewell &
`Giuliani was named the top Houston law firm by leading industry publication
`Trademark Insider Report. Chambers USA recently noted that the firm "has built up its
`trademark filing practice, and for disputes, can ably collaborate with the firm's litigators
`in taking patent, trademark and trade secrets suits to court."
`
`"Bracewell & Giuliani offers the national platform and full service resources that my
`client base requires," Rawls stated. "And the Bracewell & Giuliani brand name is
`something that my clients value. The firm consistently ranks high for both its Texas and
`IP practices and has a strong litigation capability to resolve infringement disputes. Add to
`that Bracewell's international reputation, and it provides my clients with an ideal
`combination of resources to protect their intellectual property assets worldwide."
`
`
`c)
`
`
` http://www.dummies.com/how-to/content/how-to-trademark-your-brand-name.html
`
`
`How to Trademark Your Brand Name
`
`Obtain a trademark if you plan to do business across state or national borders. A
`trademark prevents others from infringing on your business identity by using a similar
`name, logo, or other identifying feature of your brand.
`
`Coming up with a name that appeals to consumers and gaining a nod of approval from
`your trademark attorney is a challenging, frustrating, and even painful process. Part of
`the dilemma is that consumers generally prefer names comprised of familiar words that
`create instant connection and understanding, whereas attorneys prefer unusual and coined
`names — the farther away from any word ever heard before, the better.
`
`Follow this name development and trademarking process used by leading brand
`development specialists:
`
`1. Establish your strategic objective based on your desired brand position and
`character.
`2. Develop anywhere from 500 to 1,000 potential names.
`3. Select your top 50 name choices.
`4. Send your list to an attorney who specializes in naming and trademarking.
`
`The attorney will conduct an initial trademark search in your business arena
`and in related areas of business to determine whether using the name may leave
`you vulnerable to litigation from other brand holders now or in the future. In
`most cases, by the time the drilling’s over, only two or three of your 50 name
`entries end up on a “good chance of approval” list. The price for conducting the
`initial screening for each name usually runs around $25 to $30.
`
`

`
`
`
`
`
`Read more:
`http://74.125.113.132/search?q=cache:OALY9xRd6cEJ:www.dummies.com/how-
`to/content/how-to-trademark-your-brand-
`name.html+brand+name+attorney+%22trademark+%22&cd=19&hl=en&ct=clnk&gl=us
`#ixzz0i5m21kYN
`
`d)
`
`http://www.linkedin.com/answers/using-linkedIn/ULI/634428-11881364
`
`Need a good Trademark Attorney, regarding brand name for potential wos. apparel, any
`suggestions? Email me: mcapobianco5@comcast.net Thanks in advance.
`Location specific: Greater New York City Area
`
`e)
`
`http://www.traverselegal.com/intellectual-property/.
`
`Intellectual Property Law Attorneys : Trademark - Copyright - Patent - Ideas
`Attorneys Handling Patent, Trademark, Service Mark, Copyright & IP
`Enforcement Cases For Clients Worldwide. Traverse Legal's attorneys are recognized
`for their experience, innovation and client service across a range of IP Law issues.
`Protecting intangible property in the on-line world -- including brand names, original
`authorship and innovative ideas -- continues to become more challenging. Our attorneys
`understand the internet, software and underlying technology which is critical to
`protecting your intellectual property. Contact an attorney for more information.
`
`
`
`The widespread use of the terms for identical services indicates that the applicant’s mark
`
`does not deserve to be registered on the Principal Register. Two major reasons for not
`
`protecting descriptive marks are (1) to prevent the owner of a descriptive mark from
`
`inhibiting competition in the marketplace and (2) to avoid the possibility of costly
`
`infringement suits brought by the trademark or service mark owner. In re Abcor Dev.
`
`Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209.
`
`Businesses and competitors should be free to use descriptive language when describing
`
`their own goods and/or services to the public in advertising and marketing materials. See
`
`

`
`In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001). The TTAB should
`
`therefore, affirm the examining attorney’s refusal to register the mark on the Principal
`
`Register.
`
`
`
`Moreover, the applicant further asserts that there are several active registrations on the
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`Principal Register that contain the terms BRAND NAME. This may be so but the
`
`examining attorney is not bound by these prior registrations. Prior decisions and actions
`
`of other trademark examining attorneys in registering different marks have little
`
`evidentiary value and are not binding upon the Office. TMEP §1207.01(d)(vi). Each
`
`case is decided on its own facts, and each mark stands on its own merits. See AMF Inc. v.
`
`Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In
`
`re Int’l Taste, Inc., 53 USPQ2d 1604, 1606 (TTAB 2000); In re Sunmarks, Inc., 32
`
`USPQ2d 1470, 1472 (TTAB 1994). Additionally all the registrations applicant cited are
`
`suggestive and unitary in nature unlike the applicant’s mark that readily informs the
`
`relevant consumer’s of its function or field of legal practice. Also, third-party
`
`registrations are not conclusive on the question of descriptiveness. Each case must be
`
`considered on its own merits. An applied-for mark that is merely descriptive does not
`
`become registrable simply because other similar marks appear on the register. In re
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`Scholastic Testing Serv., Inc., 196 USPQ 517 (TTAB 1977); TMEP §1209.03(a).
`
`
`
` Furthermore, the examining attorney asserts that registration No. 2762964, AMERICA'S
`
`BEST BRAND-NAME RECIPES for “Series of cookbooks”; No. 3730932,
`
`BRANDNAME REAL ESTATE for “Real estate brokerage”; and registration No.
`
`

`
`3048683, UBID.COM THE BRAND NAME MARKETPLACE for “on-line trading
`
`services in which the seller posts products to be auctioned and bidding is done via the
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`Internet; on-line retail store services featuring consumer electronics, computer products
`
`and multimedia entertainment” are more analogous to the issues raised in the instant case.
`
`In all the aforementioned registrations, the wording BEST BRAND were disallowed on
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`the Principal Register for being descriptive. Thus the applicant’s assertion that the mark
`
`is suggestive is totally unsupported by sufficient evidence.
`
`
`
`CONCLUSION
`
`For the foregoing reasons, it is respectfully requested that the refusal to register the
`
`applicant’s mark under Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), be affirmed.
`
`/Zachary R. Bello/
`Trademark Attorney Advisor
`Law Office 111
`USPTO
`571-272-9376
`
`
`
`Craig D. Taylor
`Managing Attorney
`Law Office - 111
`
`
`
`Respectfully submitted,