Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA673895
`ESTTA Tracking number:
`05/22/2015
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`85798043
`Doctors on Liens, Inc.
`DOCTORS ON LIENS
`Lee J. Eulgen
`Neal Gerber & Eisenberg LLP
`Two North LaSalle Street
`Chicago, IL 60602
`UNITED STATES
`trademarks@ngelaw.com
`Appeal Brief
`Doctors on Liens - appeal Brief.pdf(66723 bytes )
`Lee J. Eulgen
`leulgen@ngelaw.com, hmann@ngelaw.com, mhoffman@ngelaw.com
`/Lee J. Eulgen/
`05/22/2015
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`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
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`Submission
`Attachments
`Filer's Name
`Filer's e-mail
`Signature
`Date
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In re Application of:
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`Doctors on Liens, Inc.
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`Serial No. 85/798043
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`Filing Date: December 7, 2012
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`Mark: DOCTORS ON LIENS
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`Law Office: 104
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`Examining Attorney:
`Barney L. Charlon
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`APPLICANT’S APPEAL BRIEF FROM FINAL REFUSAL
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`CASES 
`Hunter Publ'g Co. v. Caulfield Publ'g Ltd., 1 USPQ2d 1996 (TTAB 1986) ............................. 18
`In re Am. Online, Inc., 77 USPQ2d 1618 (TTAB 2006) ............................................................ 18
`In re Capital Formation Counselors, Inc., 219 USPQ 916, 919 (TTAB 1983) ........................... 8
`In re Conductive Systems, Inc., 220 USPQ 84 (TTAB 1983)..................................................... 19
`In re Failure Analysis Assocs., 1 USPQ2d 1144 (TTAB 1986) ................................................. 18
`In re Gourmet Bakers, Inc., 173 USPQ at 565 ........................................................................... 19
`In re Industrial Washing Machine Corp., 201 USPQ 953, 956 (TTAB 1979)............................. 8
`In re Merrill, Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d at 1571 ................................... 19
`In re Mine Safety Appliances Co., 66 USPQ2d 1694, 1700 (TTAB 2002) ................................ 15
`In re Noble Co., 225 USPQ 749, 750 (TTAB 1985) .................................................................... 6
`In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005) ..................... 8
`In re Uncle Sam Chemical Co., Inc., 229 USPQ 233, 235 (TTAB 1986) .................................. 14
`Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922, 936 n.15
`(4th Cir. 1995) ......................................................................................................................... 6
`Stuart Spector Designs Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d
`1549, 1575 (TTAB 2009) ..................................................................................................... 16
`Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 209; 54 USPQ2d
`1065, 1068 (2000) ................................................................................................................... 7
`Yamaha Int’l Corp. v. Hoshino Gakki Co., 6 USPQ2d 1001, 1004 (Fed. Cir. 1988) ................... 8
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`Applicant appeals from the refusal under Trademark Act Section 2(e)(1) that the subject
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`mark (the “Mark”) is merely descriptive and under Section 2(f) that Applicant’s claim of
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`acquired distinctiveness is insufficient, made final in the Office Action issued September 28,
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`2014. These determinations were reached in error because Applicant’s Mark merely suggests the
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`type of services provided by Applicant, and the evidence cited by the Examiner does not prove
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`otherwise. In the alternative, should Applicant’s Mark be deemed not to be inherently
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`distinctive, the robust evidence submitted by Applicant establishes that the Mark has developed
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`secondary meaning, such that consumers recognize and identify Applicant and its services,
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`entitling it to registration. The Examiner has failed to consider significant portions of the
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`evidence of record, and has improperly discounted highly impactful evidence under the Section
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`2(f) analysis. As a result, the refusals should be withdrawn and Applicant’s Mark should be
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`allowed to proceed to publication on the Principal Register.
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`BACKGROUND
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`Applicant operates a physician referral network connecting attorneys representing injured
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`individuals with qualified medical professionals who specialize in med/legal evaluations and
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`treatments for personal injury and workers’ compensation cases on a lien basis. For nearly
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`twenty years, Applicant has been an industry leader in the field of physician referral services,
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`and during that time has continuously used its Mark in connection with its services, including
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`those as described in the instant application: “Business marketing services; Marketing services;
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`Marketing services for the medical services of others; Marketing services, namely promoting or
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`advertising the goods and services of others; Providing advertising, marketing and promotional
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`services, namely development of advertising campaigns for doctor referrals in print media, on
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`web pages, and on promotional articles” (the “Services”).
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`Applicant also owns and maintains U.S. Registration No. 2,920,496 for its DOCTORS
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`ON LIENS and Design mark (registered on January 25, 2005 for “marketing and advertising
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`services in the nature of doctor referrals”), which is comprised of the Mark and is now
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`incontestable pursuant to 15 U.S.C. §1065. On December 7, 2012, Applicant filed the instant
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`application for the Mark in standard characters. On April 1, 2013, an Office Action was issued
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`preliminarily refusing to register the Mark on the ground that the Mark is merely descriptive of
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`the Services. On April 1, 2013, Applicant filed a response to the initial Office Action arguing,
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`inter alia, that the Mark does not merely describe Applicant’s Services and amending the instant
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`application to the Supplemental Register. On April 18, 2013, one of Applicant’s competitors
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`lodged a Letter of Protest against the registration of the Mark, contending that printouts
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`reflecting a handful of infringements and errant misuses of Applicant’s long-standing Mark
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`somehow diminish Applicant’s rights. On April 23, 2013, the Examiner issued an Office Action
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`refusing to register the Mark on the Supplemental Register on the ground that it is purportedly
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`generic in relation to Applicant’s Services. On October 22, 2013, Applicant filed a response to
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`the Office Action, arguing the error of the genericness refusal and providing evidence of the
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`Mark’s acquired distinctiveness, as well as concurrently amending the application to the
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`Principal Register.
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`On November 23, 2013, the Examiner issued a further Office Action, reinstating the
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`refusal under Section 2(e)(1). The Office Action also included a single statement, without
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`explanation or addressing the applicable standard, that the Mark appears to be generic in
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`connection with the Services. On February 7, 2014, Applicant filed a response and explicitly
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`stated it would accept registration under Section 2(f) in the alternative, and further argued against
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`the mere descriptiveness refusal under Section 2(e)(1). Applicant also responded to the sole and
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`unsupported statement regarding genericness. On March 3, 2014, the Examiner issued an Office
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`Action asserting Applicant’s evidence of acquired distinctiveness is insufficient. Following the
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`issuance of the March 3, 2014 Office Action, Applicant’s counsel had a telephone conference
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`with the Examiner, during which the Examiner indicated that affidavits from applicant’s
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`competitors acknowledging the distinctiveness and/or source designating function of Applicant’s
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`Mark in the relevant marketplace would be persuasive additional evidence of acquired
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`distinctiveness. On August 29, 2014, Applicant filed a response, drawing attention to the
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`specific evidence of acquired distinctiveness that was overlooked by the Examiner and providing
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`even further evidence of acquired distinctiveness, including the affidavits from Applicant’s
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`competitors that the Examiner requested in the telephone conference. On September 28, 2014,
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`the Examiner issued a final refusal under Trademark Act Section 2(e)(1) that mark is merely
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`descriptive and under Section 2(f) that Applicant’s claim of acquired distinctiveness was
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`insufficient (the “Final Refusal”). This appeal followed.
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`ARGUMENT
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`I.
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`Applicant’s Mark is Inherently Distinctive and Registrable Under Section 2(e).
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`Applicant maintains that its Mark is inherently distinctive now, just as it was in 2005
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`when Applicant received the registration for its DOCTORS ON LIENS and Design mark, and
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`just as it was when Applicant first began using the Mark in connection with the Services more
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`than 20 years ago. Applicant disputes the assertion that the Mark “is widely used in the field of
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`doctor referrals and marketing to describe services such as applicant’s, which involve doctors
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`who work on the basis of liens,” as set forth in the Final Refusal. (Final Refusal, p. 2.) To the
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`contrary, Applicant has provided evidence that the term is not in fact widely used. (See Aug. 29,
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`2014 Resp. to Office Action, Ex. B, the “Rothschild Aff.” at ¶4, and Ex. C, the “Sanders Aff.” at
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`¶3; Oct. 22, 2013 Resp. to Office Action, Ex. 2, the “Sher Aff.” at ¶4, and Ex. 4, the “Hanley
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`Aff.” at ¶5). “Widely used” terms for physician referral network services include terms such as
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`“referral company,” “directory of physicians,” “multi-specialty medical groups, “network of
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`healthcare professionals” and “doctors network.” (See Oct. 22, 2013 Resp. to Office Action, Ex.
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`1, the “First Parker-Sedaka Aff.” at ¶16 and exhibits thereto). The Examiner must consider this
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`evidence of record to determine whether a mark is merely descriptive or whether it is suggestive
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`or arbitrary. See In re Noble Co., 225 USPQ 749, 750 (TTAB 1985). Consequently, the evidence
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`attached of a few errant misuses or infringements does not outweigh the record evidence
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`demonstrating just the opposite.
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`Moreover, Applicant already owns and maintains U.S. Registration No. 2,920,496 for
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`DOCTORS ON LIENS and Design. Because the USPTO did not require the submission of any
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`evidence of secondary meaning during the prosecution of that registration (see Oct. 22 Response
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`at Ex. 9), that federally-registered mark is presumptively distinctive. See Lone Star Steakhouse
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`& Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922, 936 n.15 (4th Cir. 1995) (noting the absence of
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`the notation “2(f)” above the serial number on the bottom right of a registration certificate
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`signifies that evidence of secondary meaning was not required, and, thus, that the USPTO
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`deemed the mark to be suggestive). The non-disclaimed literal elements covered by Registration
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`No. 2,920,496 were not deemed to be merely descriptive of Applicant’s “marketing and
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`advertising services in the nature of doctor referrals,” which are at the heart of the applied-for
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`Services. Likewise, the Mark is not merely descriptive of the Services in the subject application.
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`Indeed, there is nothing about the term DOCTORS ON LIENS that immediately conveys
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`to consumers knowledge about or the scope of Applicant’s Services. While the Mark may
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`convey that the Services have something to do with doctors or liens, it does not instantly convey
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`what that something may be. See TMEP § 1209.01(a) (“a designation does not have to be devoid
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`of all meaning in relation to the goods/services to be registrable”). Thus, the mark should be
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`considered suggestive, and the Section 2(e)(1) refusal should be withdrawn.
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`II.
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`The Record Evidence Establishes Acquired Distinctiveness of the Mark.
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`In the alternative, Applicant’s mark is entitled to registration under Section 2(f) of the
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`Trademark Act based on its acquired distinctiveness. Applicant has developed secondary
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`meaning in its Mark such that it serves as a source-identifier of Applicant’s Services, and
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`Applicant has provided extensive evidence attesting to this fact. Indeed, the record evidence
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`establishes that Mark has been used so as to create secondary meaning, such that “in the minds of
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`the public, the primary significance of [the Mark] is to identify the source of the product rather
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`than the product itself,” entitling the Mark to registration on the Principal Register pursuant to
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`Section 2(f). Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 209, 54 USPQ2d
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`1065, 1068 (2000). Nevertheless, the Examiner has repeatedly and improperly discounted
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`declarations and affidavits, and not considered other types of evidence at all. As a result, the
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`determination that Applicant’s claim of acquired distinctiveness is insufficient should be
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`reversed and the refusal should be withdrawn.
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`Applicant has provided robust evidence establishing acquired distinctiveness of the Mark,
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`entitling it to registration on the Principal Register. In particular, Applicant has submitted: (1)
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`competitor affidavits; (2) consumer and dealer statements of recognition; (3) evidence of
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`extensive use and promotion for more than 20 years; (4) evidence of copying; (5) evidence of
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`sales and revenues reaching tens of millions of dollars; (6) evidence of marketing and advertising
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`expenditures; (7) samples of advertising and promotional materials; and (8) examples of media
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`coverage, including unsolicited press coverage. Consideration of all these factors demonstrates
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`that, under a preponderance of the evidence standard, Applicant has made at least a prima facie
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`case that consumers recognize the DOCTORS ON LIENS Mark as an exclusive source identifier
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`of Applicant and its Services. See In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420,
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`1424 (Fed. Cir. 2005)(“In determining whether secondary meaning has been acquired, the Board
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`may examine copying, advertising expenditures, sales success, length and exclusivity of use,
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`unsolicited media coverage, and consumer studies ... the determination examines all of the
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`circumstances involving the use of the mark.”) and Yamaha Int’l Corp. v. Hoshino Gakki Co.,
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`840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988) (noting preponderance of the evidence
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`standard to prove acquired distinctiveness) and citing In re Capital Formation Counselors, Inc.,
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`219 USPQ 916, 919 (TTAB 1983) (“an applicant need not conclusively establish distinctiveness
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`but need only establish a prima facie case in order to warrant publication of mark for
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`opposition”) and In re Industrial Washing Machine Corp., 201 USPQ 953, 956 (TTAB
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`1979)(“[a] prima facie showing of distinctiveness is all that is necessary for the publication of
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`the application”).
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`Yet, in the face of this substantial and varied evidentiary record, the Examiner has
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`maintained the refusal under Section 2(f), relying on assumptions contrary to the evidence of
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`record, improperly discounting competitor and customer affidavits, and failing to consider the
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`great weight of evidence regarding use, promotion, and consumer perception. Thus, weighing
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`the evidence in its entirety, and with any doubts resolved in favor of Applicant, the record
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`demonstrates that the refusal should be withdrawn and the Mark should be allowed to proceed to
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`publication.
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`The Examiner Improperly Discounted Competitor Affidavits
` and Consumer and Dealer Statements of Recognition.
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`A.
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`The Examiner improperly discounted affidavits from two of Applicant’s competitors, as
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`well as from six consumers and other members of the relevant trade, on the basis that they have a
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`“business relationship” with Applicant by virtue of their respective memberships in an
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`independent trade association, the Consumers Attorneys Association of Los Angeles (CAALA).
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`(Final Refusal, Sept. 28, 2014). Specifically, the Examiner stated that because Applicant has
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`sponsored CAALA’s trade conferences, affidavits from other members of CAALA are entitled to
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`little evidentiary weight. Id. The Examiner similarly disregarded the competitor affidavits as “of
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`limited probative value because they too appear to have a business relationship with applicant as
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`they, along with applicant are listed among CAALA’s exhibitors.” Id.
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`This “business relationship” assumption has no support whatsoever in the evidence of
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`record, nor does it follow logically. To the contrary, both Dr. Carl Rothschild and Sondra
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`Sanders state in their respective declarations that their businesses directly compete with
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`Applicant. (Aug. 29, 2014 Resp. to Office Action, Ex. B, the “Rothschild Aff.” at ¶4, and Ex. C,
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`the “Sanders Aff.” at ¶3). Indeed, the Examiner’s logic would hold that McDonald’s, Burger
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`King, Wendy’s, Chick-fil-A, Dunkin’ Donuts and White Castle have a “business relationship”
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`because they all belong to the National Restaurant Association and sponsor events or exhibit at
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`that trade association’s events and conventions. And, under the Examiner’s logic, a statement by
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`one of these competitors recognizing that BIG MAC identifies McDonald’s or that AMERICA
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`RUNS ON DUNKIN’ identifies Dunkin’ Donuts would have limited probative value because of
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`a so-called “business relationship” resulting from their respective memberships in the
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`independent trade organization. To the contrary, because the companies have competitive
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`interests at odds with each other and would, in fact, benefit from a disadvantage to Applicant,
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`those competitors’ statements should be afforded great–not lesser–weight. Similarly, the two
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`competitor affidavits of recognition here should be afforded great weight, and not summarily
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`dismissed as was done in the Final Refusal.
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`More importantly, there is no evidence to suggest any type of bias from any of the
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`affiants. The Board rejected a similar argument in In re Black & Decker Corp., where the
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`examiner suggested customer affidavits were not persuasive because the declarants had dealt
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`with the applicant: “We disagree with the examining attorney’s assessment that the eight retailer
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`declarations are biased and therefore entitled to little weight. There is simply no evidence to
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`suggest that these retailers were predisposed to say that applicant’s goods are identified by the
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`[mark at issue].” 81 USPQ2d 1841, 1844 (TTAB 2006)(rejecting argument that retailers were
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`subject to bias because of business dealings). The same is true in this instance.
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`Accordingly, the affidavits of both the competitors as well as of those in the trade provide
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`strong evidence of source recognition that the Mark identifies Applicant and its Services. For
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`example, competitor Dr. Carl Rothschild states: “While the Injury Institute has many
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`competitors, I am aware of only one such service that uses the DOCTORS ON LIENS name.
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`When I hear the name DOCTORS ON LIENS, I think of a particular service that provides
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`marketing and referral services for a network of medical professionals – the one owned by
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`Samantha Parker.” Rothschild Aff. at ¶4. Similarly, competitor Sondra Sanders states: “SRS
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`has many competitors, and I am personally familiar with and recognize the DOCTORS ON
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`LIENS name as referring to one particular service with which SRS competes.” Sanders Aff. at
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`¶3. These statements by direct competitors should carry significant weight, attesting to the
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`recognition and renown of the mark as a source-designator signifying Applicant and its services.
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`In the same way, the affidavits from members of the relevant trade recognizing the Mark
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`as designating Applicant and its Services should also be afforded significant weight. For
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`instance, Jayson I. Sher, a doctor of chiropractic, states: “In my experience, everyone in the trade
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`knows who DOCTORS ON LIENS is, and if you asked someone in the trade what or who
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`DOCTORS ON LIENS is, the next words out of their mouth would be, ‘oh, that’s Samantha’s
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`company.’” (Oct. 22, 2013 Resp. to Office Action, Ex. 2 at ¶4.) Likewise, Leo R. Paredes, an
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`attorney in practice for more than 29 years, states: “I … understand DOCTORS ON LIENS to
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`refer to and signify a single and exclusive source for such physician referral services, namely, the
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`company operating under the name DOCTORS ON LIENS.” (Oct. 22, 2013 Resp. to Office
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`Action, Ex. 3 at ¶3.) Safa V. Hodges, another attorney with more than 20 years of experience,
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`states: “When I hear the phrase DOCTORS ON LIENS, I think of Samantha Parker’s directory
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`service operating under that name.” (Oct. 22, 2013 Resp. to Office Action, Ex. 6 at ¶3.) Other
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`attorney consumers attest to the same fact that they recognize the Mark as signifying Applicant
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`and its Services. (See Oct. 22, 2013 Resp. to Office Action, the Friedman Aff., Ex. 7 at ¶3 and
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`the Chudacoff Aff., Ex. 8 at ¶3.)
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`In addition to these consumer statements of recognition, Stuart A. Zanville, the current
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`Executive Director and former Public Relations Manager of the independent bar association
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`CAALA, also attests to Applicant’s exclusive use of the Mark with the Services, as well as
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`consumer recognition in the Mark as a designation of source. (Oct. 22, 2013 Resp. to Office
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`Action, the “Zanville Aff.”, Ex. 5 at ¶4). In particular, Mr. Zanville states that “while I am
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`familiar with many other directory services offering similar services, I am not aware of any
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`similar service that uses the DOCTORS ON LIENS name, or any such service that uses the
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`phrase DOCTORS ON LIENS to refer to a type of services.” Id. He further attests: “based on
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`my experience and personal observation, including my frequent direct interactions with
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`plaintiffs’ attorneys, my responsibilities monitoring and reviewing CAALA’s dedicated online
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`forum, and my direct communications and dealings with many directory services connecting
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`attorneys with medical professionals who accept liens, I have observed that DOCTORS ON
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`LIENS is widely recognized by attorneys and others in the trade as applying to a particular
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`physician referral service, and not to any other service providers or to a category of services.”
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`Id. Moreover, just as with the competitor and consumer affidavits, there is no suggestion of any
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`bias by Mr. Zanville. Indeed, numerous referral and directory services, including Applicant’s
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`competitors, advertise and sponsor events of CAALA (see Zanville Aff. at ¶3); therefore, there
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`would be no reason for Mr. Zanville to risk alienating these businesses by submitting a biased
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`affidavit. Thus, these affidavits of both competitors and consumers stand as strong evidence of
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`Applicant’s success in educating relevant consumers to associate the Mark with Applicant as the
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`source of the Services.
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`The Examiner Failed to Properly Consider Additional
`Robust Evidence Demonstrating Source Recognition.
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`B.
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`The Examiner also failed to consider the significant amount of additional evidence
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`demonstrating Applicant has established consumer recognition of its Services in connection with
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`the Mark (submitted with the Oct. 22, 2013 Resp. to Office Action). Neither the March 3, 2014
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`Office Action nor the Final Action acknowledge, much less, address the majority of evidence1.
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`Rather, the Examiner first erroneously asserted that Applicant submitted only evidence of its use
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`in commerce since 1995 and evidence of its sales figures to support its claim of acquired
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`distinctiveness. (March 3, 2013 Office Action). Then, in the same action, the Examiner
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`1
`The Nov. 23, 2013 Office Action did not address the evidence of acquired distinctiveness,
`claiming it was unclear whether Applicant intended to claim Section 2(f) as a basis for
`registration.
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`neglected to provide any comment on even these two types of evidence, citing only boilerplate
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`statements of law without regard to the facts in this case. Remarkably, the Examiner then called
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`for Applicant to submit the same types of evidence that Applicant had already submitted,
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`namely, the “length and exclusivity of [applicant’s] use of the mark, … the type, expense and
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`amount of advertising under the mark,… and applicant’s efforts … to associate the mark with the
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`source of the goods and/or services, such as unsolicited media coverage…” Id. p. 2. (citations
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`omitted). The Examiner further noted that “[e]vidence of acquired distinctiveness may include
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`specific dollar sales under the mark, advertising figures, samples of advertising, consumer of
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`dealer statements of recognition of the mark as a source identifier, affidavits, and any other
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`evidence that established the distinctiveness of the mark as an indicator of source.” Id. (citations
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`omitted).
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`Even after Applicant drew attention (in the Aug. 29, 2014 Resp. to Office Action) to the
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`vast array of evidence submitted previously, the Examiner still failed to properly address it in the
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`Final Action. In addition to the improper discounting of competitor and consumer affidavits
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`discussed above, the Examiner brushed off the “evidence of high sales figures and significant
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`advertising expenditures for the service at issue.” Final Action, p. 3. The only other evidence
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`noted by the Examiner were articles from PR Newswire, which was only a fraction of the record
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`submitted. Failure to consider the record in its entirety constitutes error. See In re
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`Steelbuilding.com, 75 USPQ2d at 1424 (determination of whether secondary meaning has been
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`acquired “examines all of the circumstances involving use of the mark”).
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`Among the evidence not properly considered by the Examiner:
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`Extensive Use and Promotion.
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`The affidavits of Samantha Parker-Sedaka, the founder and owner of Applicant, detail
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`Applicant’s more than 20 years’ exclusive use and promotion of the Mark in connection with the
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`Services. (Oct. 22, 2013 Resp. to Office Action, Ex. 1, the “First Parker-Sedaka Aff.” and Feb.
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`7, 2014 Resp. to Office Action, Second Affidavit of Samantha Parker-Sedaka.) For the past two
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`decades, Applicant has not only used the Mark in connection with the Services, but also heavily
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`promoted the Mark to engrain in consumers’ minds the association between the two. See In re
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`Uncle Sam Chemical Co., Inc., 229 USPQ 233, 235 (TTAB 1986)(finding declaration attesting
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`to over 18 years of substantially exclusive and continuous use of the mark combined with
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`evidence of considerable sales sufficient to support 2(f) claim). Applicant’s extensive use
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`combined successful promotional measures have resulted in the public recognizing the Mark as
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`the source of the Services.
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`Media Coverage, including Unsolicited Coverage.
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`Applicant’s DOCTORS ON LIENS-branded Services have received unsolicited press
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`coverage, educating the public to associate the Mark with Applicant. For example, Applicant
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`has submitted an article featuring Applicant and its Services, entitled “Medical liens: necessary
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`evil or litigation advantage?,” which appeared in the popular trade publication Plaintiff
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`Magazine. (See First Parker-Sedaka Aff. at ¶ 12 and Ex. H thereto.) The article explains about
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`several business models for third-party services that connect attorneys with physicians, one of
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`which is a referral service such as Applicant’s. See Id. Notably, the article never misuses the
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`term “doctors on liens” to describe these types of services. Rather, the article explains the
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`difference between Applicant, which provides referral services under its DOCTORS ON LIENS
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`Mark, and another competing company, which provides referral services under its POWER
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`LIENS mark. Id. This differentiation between referral services and their respective marks shows
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`how consumers have been educated to associate the Mark with Applicant and its Services,
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`understanding the Mark to be a source-designator.
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`In addition to such unsolicited coverage, Applicant has extensively promoted the Mark
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`through online and print trade publications, including Advocate: Journal of Consumer Attorneys
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`Association for Southern California, Valley Lawyer Magazine, Consumer Attorneys of California
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`Directory, The Gavel, and The National Law Journal Presents Personal Injury Litigators 2014
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`(a Personal Injury Supplement to the Los Angeles Times). Applicant submitted representative
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`pieces of such advertising, which increase the public’s exposure to the Mark. (See First Parker-
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`Sedaka Aff. at ¶10 and Ex. D thereto and Second Parker-Sedaka Aff. at ¶6 and Ex. 2 thereto)
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`These advertisements prominently feature the Mark and connect it to the Services and
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`distinguish the Mark from competitors, thereby creating a commercial impression that Applicant
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`is a single and exclusive source for its Services. See TMEP 1212.06(b)(“The examining attorney
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`must examine the advertising material to determine how the term is being used, the commercial
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`impression created by such use, and what the use would mean to purchasers.”). The
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`advertisements also feature notice of Applicant’s trademark rights, stating the DOCTORS ON
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`LIENS word and Design Marks are trademarks of Applicant, which further serve to educate
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`consumers to associate the Mark with Applicant. See In re Mine Safety Appliances Co., 66
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`USPQ2d 1694, 1700 (TTAB 2002) (noting use of ™ symbol is “evidence of applicant’s attempts
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`and intent to educate the trade and purchasing public” that it regarded mark as trademark).
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`Copying.
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`Copying is evidence of secondary meaning where another has tried to capitalize on
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`established goodwill and confuse consumers. See Stuart Spector Designs Ltd. v. Fender Musical
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`Instruments Corp., 94 USPQ2d 1549, 1575 (TTAB 2009) (noting copying may be evidence of
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`secondary meaning “if the defendant’s intent in copying is to confuse consumers and pass off his
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`product as the plaintiff’s”). That is exactly what has happened in this case. A competitor
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`referral service, Power Liens, and several of its affiliates, have been intentionally misusing the
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`Mark on their own website, in press releases and in trade articles. (First Parker-Sedaka Aff. at
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`¶17). Power Liens has, on at least one occasion, copied the entirety of Applicant’s website under
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`the Mark, and posted it at a confusingly similar URL with a link to the Power Liens primary
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`website. (Oct. 22, 2013 Resp. to Office Action, Affidavit of Cindie Hanley, the “Hanley Aff.”,
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`Ex. 4 at ¶5). Power Liens was founded by an attorney who was a former frequent user of
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`Applicant’s DOCTORS ON LIENS-branded Services, and is now trying to build up its own
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`brand by misappropriating the significant goodwill in Applicant’s Mark. (First Parker-Sedaka
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`Aff. at ¶17; Hanley Aff. at ¶5).
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`Moreover, in an attempt to make an end-run around the proper opposition process, Power
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`Liens filed the Letter of Protest against this Mark with a handful of improper uses, rather than
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`being subject to its burdens and requirements of a formal proceeding. Many of these improper
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`uses, in fact, originated with Power Liens itself. This intentional attempt to try to pass-off on
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`Applicant’s well-established goodwill further supports a finding of acquired distinctiveness.
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`Industry Trade Shows and Sponsorships.
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`For the past 20 years, Applicant has promoted its Mark in connection with the Services
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`by sponsoring programming catering to its core customer base, such as seminars and conferences
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`held by CAALA, the Consumer Attorneys of California, Orange County Trial Lawyers
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`Association, the Los Angeles Trial Lawyers Association and other bar associations and groups.
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`Applicant has submitted representative examples of materials demonstrating Applicant’s
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`sponsorship of various trade shows and other industry programming. For example, a CAALA
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`seminar promotional piece for new attorneys prominently features the Mark as a co-sponsor,
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`along with Lexis-Nexis. Applicant has also promoted it DOCTORS ON LIENS-branded
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`Services by sponsoring legal education events, including the first annual Law and Medicine
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`seminar hosted by Medical Finance and the Western State College of Law Alumni Relations.
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`Other photographs of Applicant’s trade show booth illustrate the promotion of the Mark in
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`connection with the Services. (See First P