From: Cataldo, Carolyn
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`Sent: 9/26/2013 4:04:14 PM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. TRADEMARK APPLICATION NO. 85662420 - HOLLYWOOD LAWYERS ONLINE - N/A -
`EXAMINER BRIEF
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`Attachment Information:
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`Count: 1
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`Files: 85662420.doc
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`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
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`*85662420*
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` U.S. APPLICATION SERIAL NO. 85662420
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` MARK: HOLLYWOOD LAWYERS ONLINE
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` CORRESPONDENT ADDRESS:
` NATBONY SUZANNE R.
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`GENERAL TRADEMARK INFORMATION:
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`http://www.uspto.gov/trademarks/index.jsp
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` 2491 PURDUE AVE STE 221
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` LOS ANGELES, CA 90064-5119
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`TTAB INFORMATION:
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`http://www.uspto.gov/trademarks/process/appeal/index.jsp
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` APPLICANT: HOLLYWOOD LAWYERS ONLINE
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` CORRESPONDENT’S REFERENCE/DOCKET NO:
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` N/A
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` CORRESPONDENT E-MAIL ADDRESS:
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` suzanne@lawyer.com
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`EXAMINING ATTORNEY’S APPEAL BRIEF
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`Applicant has appealed the trademark examining attorney’s refusal to register the trademark
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`HOLLYWOOD LAWYERS ONLINE on the ground that it primarily geographically descriptive of the origin of
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`applicant’s services. Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2);
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`FACTS
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`On June 26, 2012, applicant, HOLLYWOOD LAWYERS ONLINE, filed an intent to use trademark
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`application under Section 1(b) seeking registration on the Principal Register of the mark HOLLYWOOD
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`LAWYERS ONLINE for “attorney referrals; providing a web site featuring business information in the
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`form of audio and video interviews, transcripts and other educational materials; providing an online
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`video business directory”. In the first Office action dated October 15, 2012, the examining attorney
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`refused registration of the mark under Section 2(e)(2) of the Trademark Act, 15 U.S.C. 1052(e)(2) on the
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`ground that the mark is primarily geographically. The applicant responded on December 18, 2012
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`arguing against the refusal under Section 2(e)(2). On February 21, 2013, the examining attorney issued
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`a Final Office Action making final the Section 2(e)(2) refusal.
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`The applicant filed the appeal brief on July 25, 2013. The file was forwarded to the examining attorney
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`for statement on July 29, 2013.
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` ISSUE
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`The only issue on appeal is whether applicant’s mark is primarily geographically descriptive under
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`Trademark Act Section 2(e)(2).
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`ARGUMENT
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`APPLICANT’S MARK IS PRIMARILY GEOGRAPHICALLY DESCRIPTIVE UNDER TRADEMARK ACT SECTION
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`2(E)(2).
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`The applicant’s applied to register the mark HOLLYWOOD LAWYERS ONLINE in typed form for “attorney
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`referrals; Providing a web site featuring business information in the form of audio and video interviews,
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`transcripts and other educational materials; providing an online video business directory”.
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`A. The applicant’s mark is primarily geographically descriptive under Trademark Act Section 2(e)(2)
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`because it meets the test set forth in TMEP Section 1210.01(a)
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`A mark is primarily geographically descriptive when the following is demonstrated:
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`(1) The primary significance of the mark is a generally known geographic
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`place or location;
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`(2)
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`The goods and/or services for which applicant seeks registration originate
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`in the geographic place identified in the mark; and
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`(3)
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`Purchasers would be likely to make a goods-place or services-place
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`association; that is, purchasers would be likely to believe that the goods
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`and/or services originate in the geographic place identified in the mark.
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`TMEP §1210.01(a); see In re Societe Generale des Eaux Minerales de Vittel S.A., 824
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`F.2d 957, 959, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987); In re Joint-Stock Co. “Baik,” 80
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`USPQ2d 1305, 1309 (TTAB 2006).
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`With respect to the first prong of the test, the evidence cited by the examining attorney shows
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`that Hollywood is a known geographical location, namely, a district of Los Angeles, CA. The evidence in
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`both the first Office action and the final refusal shows that Hollywood contains multiple definitions of
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`the term Hollywood as a district in Los Angeles California, thus demonstrating that Hollywood denotes a
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`geographic location. Material obtained from the Internet is generally accepted as competent evidence
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`in examination and ex parte proceedings. See In re Rodale Inc.,80 USPQ2d 1696, 1700 (TTAB 2006)
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`(Internet evidence accepted by the Board to show genericness); In re White, 80 USPQ2d 1654, 1662
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`(TTAB 2006) (Internet evidence accepted by the Board to show false connection); In re Joint-Stock Co.
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`“Baik”, 80 USPQ2d 1305, 1308-09 (TTAB 2006) (Internet evidence accepted by the Board to show
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`geographic significance); Fram Trak Indus. v. WireTracks LLC, 77 USPQ2d 2000, 2006 (TTAB 2006)
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`(Internet evidence accepted by the Board to show relatedness of goods); In re Consol. Specialty Rest.
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`Inc., 71 USPQ2d 1921, 1927-29 (TTAB 2004) (Internet evidence accepted by the Board to show that
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`geographic location is well-known for particular goods); In re Gregory, 70 USPQ2d 1792, 1793 (TTAB
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`2004) (Internet evidence accepted by the Board to show surname significance); In re Fitch IBCA Inc., 64
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`USPQ2d 1058, 1060 (Internet evidence accepted by the Board to show descriptiveness); TBMP
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`§1208.03; TMEP §710.01(b). The applicant’s address, according to the Office’s records, is 2491 Purdue
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`Avenue, Suite 221, Los Angeles, California 90064. Thus, the applicant’s address shows a connection of
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`applicant’s address with Hollywood because Hollywood is a district in Los Angeles, CA.
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`Thus, the primary significance of the mark is a generally known geographic place.
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`The addition of generic or highly descriptive wording to a geographic word or term does
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`not diminish that geographic word or term’s primary geographic significance. TMEP
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`§1210.02(c)(ii); see, e.g., In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001) (holding
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`MINNESOTA CIGAR COMPANY primarily geographically descriptive of cigars); In re
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`Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998) (holding CAROLINA APPAREL
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`primarily geographically descriptive of retail clothing store services); In re Chalk’s Int’l
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`Airlines Inc., 21 USPQ2d 1637 (TTAB 1991) (holding PARADISE ISLAND AIRLINES
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`primarily geographically descriptive of the transportation of passengers and goods by
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`air). In this case, applicant has added the highly descriptive wording LAWYERS ONLINE. The term
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`ONLINE refers to applicant’s services which are provided online, and the term LAWYERS refers to the
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`attorney referral services. Thus, the addition of this wording to the geographic term in the mark does
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`not diminish the primary geographic significance of the term HOLLYWOOD.
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`Applicant argued that the mark is not primarily geographically descriptive because the phrase
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`“Hollywood Lawyers Online” does not denote a geographical association and that even if it were
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`established that the wording denotes a geographical association, that the services/place connection has
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`not been established. It is not the examining attorney’s contention that the wording “LAWYERS
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`ONLINE” denotes a geographic location. This is wording that is highly descriptive of applicant’s services,
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`and it does not diminish the geographic significance of the term HOLLYWOOD. The examining attorney
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`has made of record online evidence from Yahoo Travel which describes places to stay and things to do in
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`Hollywood, CA. The internet website entitled “LA TOURIST” states, “Hollywood is a neighborhood in Los
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`Angeles”, and “the town has endeavored to make recent improvements in the areas most visited by
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`tourists, adding a new kind of charm to this interesting neighborhood”. This evidence of record,
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`including the numerous dictionary definitions obtained from the internet, clearly demonstrates that
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`HOLLYWOOD is a well-known geographic location.
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`With regard to the second prong of the test, the applicant argued that that the Board in In re
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`International Taste, Inc., 2000 TTAB LEXIS 44 stated “where a mark ‘has a popular significance apart
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`from its geographical meaning [it] is not, in most cases, ‘primarily’ geographical”. Applicant argued that
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`“the average consumer of online legal services would associate HOLLYWOOD LAWYERS ONLINE with the
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`entertainment aspect of the word rather than the geographic connotation, and that the consumer
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`searching for legal information online would “understand that the provided services were national in
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`character, and that the “Hollywood” aspect of the experience was presentation based”.
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`Unlike in the present case, the mark in In re International Taste denoted an entertainment
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`industry connotation rather than a geographic connotation. The mark in that case was HOLLYWOOD
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`FRIES (with star design) for “French fries” and “fast food restaurants”. The Board stated that the record
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`in that case did not establish to the purchasing public the primary connotation of the term ‘Hollywood’
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`is the particular California town and not the general entertainment industry. Id at p. 5. The Board noted
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`that the addition of the star design in the applicant’s mark further conveyed that the term Hollywood
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`referred to the entertainment industry rather than the town. Id. at p. 6. The Board determined that
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`there was doubt as to the primary geographical significance of the term Hollywood. Id at p. 7-8.
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`This case can be distinguished from In re International Taste because the applicant’s mark is
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`HOLLYWOOD LAWYERS ONLINE for “attorney referrals; Providing a web site featuring business
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`information in the form of audio and video interviews, transcripts and other educational materials;
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`Providing an online video business directory”. The nature of the services indicates that the wording
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`HOLLYWOOD would be in reference to a geographic location. The wording “online” refers to the fact
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`that applicant provides its services via websites, and the directory and referral services indicate that
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`they relate to lawyers and issues located and related to Hollywood, CA. As distinguished from in Re
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`International Taste, applicant’s mark does not contain any additional design elements or other matter
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`that would associate it with the motion picture industry, such as the star design in the referenced case.
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`The evidence of record submitted by the examining attorney demonstrates that there are many search
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`results for Hollywood lawyers. An internet search for “Hollywood Lawyers” yields many websites which
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`reference Hollywood lawyers in the geographic sense of the word with addresses in Los Angeles, CA. It
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`is not uncommon for the term Hollywood to be associated with lawyers who are located in this
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`particular district of Los Angeles. Examples of the search results are as follows:
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` -The screen shot entitled “North Hollywood California Lawyers” states that “LegalMatch can find your
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`prescreened North Hollywood lawyers now”. The article states “North Hollywood is located in the San
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`Fernando Valley, which lies within Los Angeles city limits.” And that “LegalMatch.com will find
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`excellent North Hollywood lawyers for you at no charge…LegalMatch knows North Hollywood lawyers
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`who specialize in these areas, as well as many others”;
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` - The web page entitled “NOLO Law for All” identifies “North Hollywood, California Bankruptcy
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`lawyers, attorneys and law firms” and contains a list of lawyers located in the California including those
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`with addresses in Los Angeles;
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` -The website Legaldefenders.com references “North Hollywood, CA Premier Personal Injury Lawyers
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`serving all Residents in North Hollywood, CA”;
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` -The website “HG.org” identifies a list of West Hollywood, California attorneys, most of whom with
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`addresses in Los Angeles;
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` -The website “Findlaw.com” is entitled “North Hollywood real estate lawyers, North Hollywood real
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`estate attorneys and law firms – California” and lists lawyers who serve North Hollywood, CA
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`The internet evidence of record shows that it is common practice for lawyers to be advertised and
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`identified on the internet by the geographic location of Hollywood, CA, thus it is more likely that
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`relevant purchasers of applicant’s services are looking for lawyers who are located in Hollywood, are not
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`viewing applicant’s online legal information services as being Hollywood, or flashy , in nature. Rather, it
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`is more likely that these consumers are searching for lawyers and information relating to law in the
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`geographic location of Hollywood, CA and are viewing Hollywood in the geographic sense of the term.
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`The examining attorney previously made of record a screenshot from applicant’s website, showing that
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`the subject matter of applicant’s services covers more than just the entertainment industry, which
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`increases the likelihood of consumers associating applicant’s mark with the California district rather than
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`just the entertainment industry.
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`Applicant argued in its brief that “HLO features a strictly web-based platform that offers general
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`legal information regarding nationally-applicable concepts of law” and that “a user must proactively
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`seek out the contents of the website”, and “the relevant HLO consumer base would have a working
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`familiarity or interest with self-help law websites”. However, regardless of the underlying computer
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`technicalities required to produce the end result online legal services information, and the applicant’s
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`argument that relevant users of its website are extra savvy, the services identified by applicant are
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`“attorney referrals; providing a web site featuring business information in the form of audio and video
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`interviews, transcripts and other educational materials; providing an online video business directory”.
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`Relevant consumers can simply type in search parameters in an online search box and hit enter. There is
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`no presumption that the purchasers of applicant’s legal information services are more computer savvy
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`than others and would attribute a different meaning to applicant’s services other than a legal services
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`information site with a business directory and attorney referral service for Hollywood, CA. As shown by
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`the evidence of record, it is not uncommon for websites to identify lawyers and legal services in
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`Hollywood, CA.
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`Applicant also argued that the presentation of its online legal information is Hollywood in the
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`adjective sense of the term. In other words, flashy in the sense of the motion picture industry definition
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`of the term, rather than in the geographic sense of the term. It is the examining attorney’s contention
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`that nothing in the evidence of record demonstrates that relevant consumers would view applicant’s
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`mark or services as being in the Hollywood motion picture sense rather than as denoting a geographic
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`connection because of the common practice of lawyers located in Hollywood, CA to advertise online, as
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`shown by the evidence of record.
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`As to the third prong of the test, applicant argued that a services/place association has not been
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`established. Applicant argued that while one of its offices is located in Los Angeles, CA, that it is a
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`Delaware corporation and that the office is not located in the district of Hollywood. Applicant asserted
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`that its services are offered exclusively online, and thus, originate wherever internet access is received.
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`The examining attorney contends that while online information enables users to access
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`information from virtually any location, and allows the services to be provided beyond any one state’s
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`border lines, applicant’s location is identified in the record as Los Angeles, CA, a district of Hollywood,
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`CA. Applicant argued that none of its offices are located in the district of Hollywood. However, the
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`examining attorney argues that relevant consumers will have a services/place association based on the
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`fact that applicant’s referral and directory services could likely include lawyers located within the district
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`of Hollywood because of applicant’s identified location. In addition, the applicant’s services are in Los
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`Angeles, and while applicant asserts its businesses are not within the district of Hollywood, Hollywood is
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`still a district of Los Angeles, and thus a geographic association would be made.
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`A product that is produced or a service that is provided near the geographic place named in the
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`applied-for mark is sufficient to support a finding that the goods and/or services originate in that
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`geographic location. See, e.g., In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007)
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`(holding YOSEMITE BEER primarily geographically descriptive of beer produced and sold in Merced,
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`California, a city located 80 miles from Yosemite National Park, where the goods originated in an area
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`“located near YOSEMITE”); In re Joint-Stock Co. "Baik," 80 USPQ2d 1305, 1310-11 (TTAB 2006) (holding
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`BAIKALSKAYA, the Russian equivalent of “from Baikal” or “Baikal’s,” primarily geographically descriptive
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`of vodka where applicant was located near Lake Baikal, and applicant did not dispute that it produced
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`vodka from a location near and used water from Lake Baikal); see also Warwood v. Hubbard, 228 USPQ
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`702, 702-03 (Mont. 1985) (holding YELLOWSTONE OUTFITTERS primarily geographically descriptive of
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`outfitting services offered "near Yellowstone Park"). Relevant purchasers in this case are those who are
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`seeking legal information relating to the state of California, or Hollywood, and that it is likely that
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`applicant’s website contains referrals for lawyers located on or near Hollywood, CA. Applicant’s
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`business address is Los Angeles, CA. Consumers will believe there is an association between the services
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`and the place identified in the mark. Therefore, a services/place association has been established
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`CONCLUSION
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`For the foregoing reasons, the refusal to register on the basis of Trademark Act Section 2(e)(2), 15 U.S.C.
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`§1052(e)(2) for the reason that the mark is primarily geographically descriptive should be affirmed.
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` Respectfully submitted,
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`/Carolyn P. Cataldo/
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`Trademark Examining Attorney
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`Law Office 103
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`Phone: 571-272-9207
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`carolyn.pendleton@uspto.gov
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`Michael Hamilton
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`Managing Attorney
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`Law Office 103
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`Respectfully submitted,
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`/Carolyn P. Cataldo/
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`Trademark Examining Attorney
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`Law Office 103
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`Phone: 571-272-9207
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`carolyn.pendleton@uspto.gov
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`Michael Hamilton
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`Managing Attorney
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`Law Office 103