This Opinion is not a
`Precedent of the TTAB
`
`
`
`
`
`
`
`Mailed: August 5, 2016
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`In re Marotta
`_____
`
`Serial No. 86087067
`_____
`
`Megan Jeanne of The Corporate Law Group for Paul D. Marotta.
`
`Jonathan R. Falk, Trademark Examining Attorney, Law Office 111,
`Robert L. Lorenzo, Managing Attorney.
`_____
`
`
`Before Taylor, Shaw and Masiello,
`Administrative Trademark Judges.
`
`
`Opinion by Shaw, Administrative Trademark Judge:
`Paul D. Marotta, an individual doing business as The Corporate Law Group
`
`(“Applicant”), seeks registration on the Principal Register of the mark THE
`
`CORPORATE LAW GROUP in standard characters for:
`
`intellectual
`Legal services; Legal services, namely,
`property consulting services in the field of identification,
`strategy, analytics, and invention; Legal services, namely,
`preparation of applications for trademark registration;
`Legal
`services,
`namely,
`providing
`customized
`documentation,
`information, counseling, advice and
`consultation services in all areas of business, securities,
`venture capital, corporate governance, and finance; Legal
`services, namely, providing customized
`information,
`
`

`
`Serial No. 86087067
`
`counseling, advice and litigation services in all areas of
`employment and labor law for both employees and
`employers; Legal services, namely, providing customized
`information, counseling, advice and litigation services in
`all areas of international law; Legal services, namely,
`trademark maintenance services, in International Class
`45.1
`Registration has been refused on the grounds that the mark is generic under
`
`Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1).2 In the event the mark
`
`is not generic, registration also has been refused on the ground that the mark is
`
`merely descriptive and Applicant has not demonstrated that it has acquired
`
`distinctiveness under Section 2(f). Applicant appealed and the case is fully briefed.
`
`We affirm the refusals to register.
`
`I. Genericness Refusal
`Whether a particular term is generic, and therefore cannot be a trademark or
`
`service mark, is a question of fact. In re Hotels.com LP, 573 F.3d 1300, 91 USPQ2d
`
`1532, 1533 (Fed. Cir. 2009). When a proposed mark is refused registration as generic,
`
`the Examining Attorney has the burden of proving genericness by “clear evidence”
`
`thereof. Id.; See also In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567,
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`4 USPQ2d 1141, 1143 (Fed. Cir. 1987); and In re Gould Paper Corp., 834 F.2d 1017,
`
`5 USPQ2d 1110, 1111 (Fed. Cir. 1987).
`
`
`1 Application Serial No. 86087067, filed on October 9, 2013 under Section 1(a) of the
`Trademark Act, alleging a date of first use of the mark in commerce and anywhere of August
`1, 1991.
`2 The Examining Attorney also issued a requirement for Applicant to claim ownership of
`Registration No. 2750351 for the mark THE CORPORATE LAW GROUP and design which
`registered under Section 2(f). The requirement became moot when the mark was cancelled
`on March 14, 2014 for failure to file a Section 8 affidavit.
`
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`Serial No. 86087067
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`The critical issue is to determine whether the record shows that members of the
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`relevant public primarily use or understand the term sought to be registered to refer
`
`to the category or class of goods or services in question. H. Marvin Ginn Corp. v. Int’l
`
`Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986). Making
`
`this determination “involves a two-step inquiry: First, what is the genus of goods or
`
`services at issue? Second, is the term sought to be registered . . . understood by the
`
`relevant public primarily to refer to that genus of goods or services?” Id. Evidence of
`
`the public’s understanding of a term may be obtained from any competent source,
`
`including testimony, surveys, dictionaries, trade journals, newspapers and other
`
`publications. See Merrill Lynch, 4 USPQ2d at 1143, and In re Northland Aluminum
`
`Prods., Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
`
`Additionally, “[a]n inquiry into the public’s understanding of a mark requires
`
`consideration of the mark as a whole. Even if each of the constituent words in a
`
`combination mark is generic, the combination is not generic unless the entire
`
`formulation does not add any meaning to the otherwise generic mark.” In re
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`Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005).
`
`A. The Genus of Applicant’s Services.
`We first determine the proper genus of the services at issue. We agree with
`
`Applicant that the genus is adequately defined by the wording “legal services.”3 See
`
`Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991)
`
`
`3 Applicant’s Br., p. 8; 4 TTABVUE 9.
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`Serial No. 86087067
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`(“[A] proper genericness inquiry focuses on the description of services set forth in the
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`[application or] certificate of registration.”).
`
`The Examining Attorney argues that the genus should be defined more narrowly
`
`as “corporate legal services.”4 This is an unnecessarily narrow genus. It is well settled
`
`that a mark may be refused registration if it is generic for any of the services
`
`encompassed within the genus. In re Reed Elsevier Props., Inc., 77 USPQ2d 1649,
`
`1654 (TTAB 2005) (“[T]he question of registrability must be determined by
`
`considering any goods or services falling within the literal scope of an
`
`identification.”); See In re Wm. B. Coleman Co., 93 USPQ2d 2019 (TTAB 2010)
`
`(holding the genus “lighting fixtures” to encompass electric candles). Thus, the fact
`
`that Applicant has identified its services broadly as “legal services” will not permit
`
`registration if THE CORPORATE LAW GROUP is generic for any services
`
`encompassed by this broad terminology, including more-narrowly defined services
`
`such as “corporate legal services.” See In re Allen Elec. and Equip. Co., 458 F.2d 1404,
`
`173 USPQ 689, 690 (CCPA 1972) (holding SCANNER merely descriptive of goods
`
`broadly identified as “antennas” which encompassed narrower term, “scanning
`
`antennas”).
`
`B. Primary Significance to the Relevant Public
`Next, we must determine whether the primary significance of Applicant’s mark
`
`THE CORPORATE LAW GROUP is understood by the relevant public primarily to
`
`refer to “legal services.” Marvin Ginn, 228 USPQ at 530. The “relevant public” for
`
`
`4 Examining Attorney’s Br. at 4; 6 TTABVUE 5.
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`Serial No. 86087067
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`services is limited to actual or potential purchasers of the services. Magic Wand, 19
`
`USPQ2d at 1552-53. Here, the “relevant public” consists of all persons seeking legal
`
`services, including individuals, businesses, and even other lawyers.5
`
`We now turn to the evidence of record to determine the relevant public’s
`
`understanding of THE CORPORATE LAW GROUP when used in connection with
`
`“legal services.” The Examining Attorney submitted the following excerpts from
`
`third-party law firm web sites showing their use of the phrase THE CORPORATE
`
`LAW GROUP or CORPORATE LAW GROUP to identify the provision of legal
`
`services in the field of business and corporate law:6
`
`1. Walkercorporatelaw.com – The website of the “Walker Corporate Law
`Group, PLLC” which bills itself as “a boutique corporate law firm
`specializing in the representation of entrepreneurs and their companies.”
`2. Gcorplaw.com – The website of the “Galler Corporate Law Group” which
`bills itself as “a boutique law firm based in the Washington, DC area. We
`deliver excellent transactional service and business-centric advice to
`business clients who value practical answers to their thorniest questions.”
`3. Apslaw.com – The website of the law firm Adler Pollock & Sheehan. The
`firm’s website states that its “Business and Corporate Law Group offers
`a broad range of sophisticated business counseling and transactional
`services to a diverse clientele. . . .”
`4. Donovanhatem.com – The website of the law firm Donovan Hatem, LLP.
`The website states that “Donovan Hatem LLP’s Corporate Law Group
`serves clients at all stages of the business lifecycle.” The website frequently
`uses the entire phrase “the corporate law group” while describing the firm’s
`activities:
`In our representation of start-up companies, the Corporate Law
`Group frequently advises the founders of start-ups. . . . Also,
`during this start-up stage, the Corporate Law Group will often
`
`
`5 See Applicant’s specimen submitted with the application and the declarations of nine
`attorney-clients submitted in support of registration with Applicant’s response of June 17,
`2015, pp. 46-63.
`6 Office Actions of January 27, 2014 and July 10, 2015. Emphasis added.
`
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`Serial No. 86087067
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`introduce the company’s founders to our Trusts and Estates
`Group for maximization of their estate planning. . . .
`With respect to our representation of emerging growth
`companies, the Corporate Law Group advises companies
`regarding corporate governance, corporate finance, employment
`and commercial finance matters. . . .
`As the emerging growth company matures into a middle market
`company, the Corporate Law Group provides counsel. . . .
`The Corporate Law Group brings its experience and expertise
`to our representation of start-up, emerging growth and middle
`market companies.
`5. Thegardnerlawgroup.com – The website of the Gardner Corporate and
`Entertainment Law Group. The website uses the entire phrase “the
`corporate law group” while describing the firm’s activities: “The
`Corporate Law Group engages in a general corporate practice and
`represents publicly and privately owned companies.”
`6. Greenbergglusker.com – The website of the law firm Greenberg Glusker.
`The website describes the activities of the firm’s “Corporate Law Group.”
`The website uses the entire phrase “the corporate law group” while
`describing some of the firm’s activities: “Attorneys in the Corporate Law
`Group include the current president of the Association for Corporate
`Growth, Los Angeles Chapter. . . .”
`7. Pearce-durick.com – The website of the law firm Pearce & Durick which
`states: “Pearce & Durick’s Corporate Law Group provides clients with a
`full range of services in support of simple and complex transactions for
`corporations of all sizes and scope.”
`8. Pecklaw.com – The website of the law firm Peckar & Abramson. The
`website uses the entire phrase “the corporate law group” while describing
`the firm’s abilities: “The Corporate Law Group: From M&A to IPOs,
`answers to business and legal questions . . . Peckar & Abramson’s
`Corporate Law Group has the experience and resources to meet your
`needs.”
`9. Pilieromazza.com – The website of the law firm PilieroMazza which states:
`“PilieroMazza is a full service law firm and the members of our Business
`and Corporate Law Group often act as a virtual in-house general counsel
`to these clients.”
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`Serial No. 86087067
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`10. Stark-stark.com – The website of the law firm Stark & Stark which states:
`“Our Business and Corporate Law Group represents businesses from
`sole operators to Fortune 100 corporations.”
`11. Sullcrom.com – The website of the law firm Sullivan & Cromwell which
`states: “Sullivan & Cromwell’s General Practice/Corporate Law Group
`provides integrated advice and service across a spectrum of practice areas
`to clients around the world.”
`12. Maaloufashford.com – The website of the law firm Maalouf Ashford &
`Talbot. The website uses the entire phrase “the corporate law group” while
`describing the firm’s activities: “The Corporate Law group represents
`companies in a variety of industries in connection with corporate, securities
`and business law matters. . . .”
`13. Kmclaw.com – The website of the law firm Kirton McConkie. The website
`uses the entire phrase “the corporate law group” while describing the firm’s
`abilities: “The corporate law group has a collaborative relationship with
`other practice sections in the firm, allowing us to resolve the critical needs
`of emerging and established companies in a continually changing
`marketplace.”
`14. Asantelawgroup.com – The website of the law firm the Asante Law Group
`which describes its “CORPORATE LAW GROUP” as being experienced
`in a number of areas of corporate law.
`15. Mjattorneys.com – The website of the law firm Massillamany & Jeter LLP
`providing information about the firm by identifying the leader of its
`“CORPORATE LAW GROUP.”
`In addition, the Examining Attorney submitted news stories from a variety of
`
`publications where the phrase THE CORPORATE LAW GROUP or CORPORATE
`
`LAW GROUP is used to identify a subgrouping of professionals within an
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`organization:7
`
`16. A book review from the news web site Bloomberg.com which describes an
`author as “a pioneer in developing the concept of the in-house corporate
`law group.”
`
`
`7 Office Actions of December 17, 2014 and July 10, 2015. Emphasis added.
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`Serial No. 86087067
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`17. An article from the Long Island Business News profiling local business
`leaders including one individual who is described as a partner in a
`“Mineola-based law firm’s corporate law group. . . .”
`18. An article from the South Carolina Lawyers Weekly profiling local lawyers,
`and including a quote from one lawyer described as the “chair of the firm’s
`corporate law group.”
`19. An article from The Daily Record of Rochester describing the work of one
`attorney in the “corporate law group of Meltzer, Lippe, Goldstein &
`Breitstone.”
`20. An article from the Cleveland Plain Dealer profiling local lawyers including
`one attorney who is described as a member of his firm’s “business and
`corporate law group and practices in the health care and real estate
`areas.”
`21. An article from the website Cincinnati.com profiling local lawyers, and
`describing one lawyer as the “director of the corporate law group at the
`law firm of Stagnaro, Saba & Patterson. . . .”
`22. An article from the Palm Beach Daily News profiling local lawyers, and
`describing a lawyer’s move to a firm’s “Business and Corporate Law
`Group in its newly opened island office.”
`In addition, the Board takes judicial notice of the following dictionary definitions
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`of the words in the mark, which were not made of record by either party:8
`
`• The – definite article –
`1 a —used as a function word to indicate that a following noun or noun
`equivalent is definite or has been previously specified by context or by
`circumstance
`• Corporate – adjective –
`1 a : formed into an association and endowed by law with the rights
`and liabilities of an individual : incorporated
`b : of or relating to a corporation
`
`• Law – noun –
`1 a (1) : a binding custom or practice of a community : a rule of conduct
`or action prescribed or formally recognized as binding or enforced by a
`controlling authority
` (2) : the whole body of such customs, practices, or rules
`
` (3) : common law
`
`
`
`8 Http://www.merriam-webster.com/dictionary. The Board may take judicial notice of
`dictionary definitions. Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 213 USPQ
`594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
`
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`Serial No. 86087067
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`• Group – noun –
`2 a : a number of individuals assembled together or having some
`unifying relationship
`The Examining Attorney argues that the foregoing web site excerpts and news
`
`articles demonstrate “that the wording ‘CORPORATE LAW GROUP’ in the applied-
`
`for mark means the part of a law practice that specializes in the needs of businesses
`
`and corporations and thus the relevant public would understand this designation to
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`refer primarily to that genus of services because it is a commonly used basic term to
`
`describe this part of a legal practice.”9
`
`In response to the refusal, Applicant submitted declarations of acquired
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`distinctiveness alleging, inter alia, use of the mark since 1991; promotion of the mark
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`through Internet web pages, Twitter, Facebook, LinkedIn, and Yelp; advertising,
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`marketing, and promotional expenditures of over $100,000; sponsorship of and
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`participation in regional events such as the “The Mavericks Surf Contest” and the
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`“Silicon Valley Marathon;” billings of legal services provided under the mark of
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`“several millions of dollars;” ongoing efforts to police potentially infringing use of the
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`mark by others; and a lack of actual confusion with other law firms using the terms
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`“corporate law group.”10 In addition, Applicant submitted twenty-two declarations in
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`support of registration of Applicant’s mark from Applicant’s clients;11 letters from
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`nine attorneys attesting to the professional recognition of Applicant’s mark;12 and
`
`
`9 Examining Attorney’s Br., p. 5; 6 TTABVUE 6.
`10 Applicant’s Response of June 17, 2015, pp. 19-25.
`11 Applicant’s Response of November 25, 2014, pp. 12-54.
`12 Applicant’s Response of June 17, 2015, pp. 46-63.
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`Serial No. 86087067
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`copies of the following third-party registrations purporting to show that similar
`
`marks have been registered for similar services:13
`
`1. Registration No. 3436135 for the mark THE EMPLOYMENT LAW GROUP
`for use in connection with “legal services” (registered under Section 2(f) and
`disclaiming “group”).
`2. Registration No. 2519230 for the mark SOCIAL SECURITY LAW GROUP
`for use in connection with “legal services for individuals seeking social
`security disability and supplemental security income claims” (registered
`under Section 2(f) and disclaiming “law group”).
`3. Registration No. 3105968 for the mark INNOVATION LAW GROUP for
`use in connection with “legal services” (registered under Section 2(f) and
`disclaiming “law group”).
`4. Registration No. 3925182 for the mark WORKERS’ INJURY LAW &
`ADVOCACY GROUP for use in connection with “Association services,
`namely, promoting the interests of attorneys practicing in the field of
`worker’s compensation” (registered under Section 2(f) and disclaiming
`“group”).
`5. Registration No. 4640530 for the mark R&S INTERNATIONAL LAW
`GROUP
`for use
`in connection with “legal services”
`(disclaiming
`“international law group”).
`Applicant argues that “[t]he evidence proffered to show that THE CORPORATE
`
`LAW GROUP is so commonly generic as to be unregistrable falls far short of the clear
`
`showing necessary to meet the Patent and Trademark Office’s burden.”14 We
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`disagree. The Examining Attorney has submitted nearly two dozen examples of use
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`of the term THE CORPORATE LAW GROUP or CORPORATE LAW GROUP by third
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`parties in connection with legal services. For example, the law firms of Donovan
`
`Hatem, The Gardner Corporate and Entertainment Law Group, Greenberg Glusker,
`
`
`13 Id. at 65-83; Registration No. 1644671 for the mark CORPLAW and Registration No.
`3562397 for the mark 866SUE2WIN.COM PERSONAL INJURY LAW GROUP have been
`cancelled. Accordingly, they have not been considered.
`14 Applicant’s Br., p. 12; 4 TTABVUE 13.
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`Serial No. 86087067
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`Peckar & Abramson, Maalouf Ashford & Talbot, and Kirton McConkie all use the
`
`entire phrase THE CORPORATE LAW GROUP to refer to their business law practice
`
`groups. The remainder of the evidence uses the phrase CORPORATE LAW GROUP
`
`as a unitary phrase with the same meaning as Applicant’s mark. The absence of the
`
`article “the” from these examples does not reduce their evidentiary value inasmuch
`
`as the presence of the article “the” in Applicant’s mark does not add any source
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`identifying significance to the mark. See In re Weather Channel, Inc., 229 USPQ 854,
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`856 (TTAB 1986); and In re The Computer Store, Inc., 211 USPQ 72, 74-75 (TTAB
`
`1981). Thus, even the examples of use of CORPORATE LAW GROUP by itself in the
`
`record are relevant. We find these uses of THE CORPORATE LAW GROUP and
`
`CORPORATE LAW GROUP to be generic, i.e., naming an entity that provides legal
`
`services. Indeed, the evidence shows, as in In re Reed Elsevier, that this case “does
`
`not involve a perceived need for others to use a term, but involves a demonstrated
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`use of the term by others.” In re Reed Elsevier, 77 USPQ2d at 1657.
`
`With regard to Applicant’s declarations from clients stating that they recognize
`
`THE CORPORATE LAW GROUP to have source indicating significance, we note that
`
`no amount of evidence can transform a generic phrase into a registrable trademark.
`
`See In re Half Price Books, Records, Magazines, Inc., 225 USPQ 219, 222 (TTAB
`
`1984). See also Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 195
`
`USPQ 281 (7th Cir. 1977).
`
`In addition, the dictionary definitions, while not dispositive, support the finding
`
`that the phrase THE CORPORATE LAW GROUP merely refers to a group of lawyers
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`Serial No. 86087067
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`providing legal services in the field of corporate law. See Merrill Lynch, 4 USPQ2d at
`
`1143 (“Evidence of the public's understanding of the term may be obtained from any
`
`competent source, such as purchaser testimony, consumer surveys, listings in
`
`dictionaries, trade journals, newspapers, and other publications.”).
`
`Citing Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc. dba Watermark
`
`Cruises, 107 USPQ2d 1750, 1753 (TTAB 2013), Applicant argues that “the evidence
`
`proffered by the Examiner, when considered as a whole, shows a mixed record of use
`
`of the phrase ‘corporate law group’ both generically and as part of trademarks or
`
`tradenames.”15 This argument is unpersuasive. Only two of the twenty-two examples
`
`of third-party use of CORPORATE LAW GROUP listed above can be considered to
`
`use the term “as part of trademarks or tradenames.” Moreover, in Alcatraz Media,
`
`the petitioner “submitted no evidence of use . . . of the [entire mark] per se as a generic
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`designation for respondent’s services.” Id. at 1763. Here, the Examining Attorney has
`
`included a number of third-party uses of the entire phrase THE CORPORATE LAW
`
`GROUP to refer to corporate law groups providing legal services. See Merrill Lynch,
`
`4 USPQ2d at 1144.
`
`Applicant nevertheless argues that many of the Examining Attorney’s examples
`
`are from obscure publications or are used by law firms in ways that are not directed
`
`to prospective consumers of legal services.16 But the majority of the third-party uses
`
`are from other law firms and we see no reason why prospective consumers, including
`
`other attorneys, would not be familiar with this usage, especially since Applicant
`
`
`15 Applicant’s Br., p. 12; 4 TTABVUE 13.
`16 Applicant’s Br., p. 13-14; 4 TTABVUE 14-15.
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`Serial No. 86087067
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`admits that these examples appear in the “legal/business press.”17 Nor do we have
`
`any evidence that the publications, such as the Cleveland Plain Dealer, the Long
`
`Island Business News, or the Palm Beach Daily News, are so obscure so as to
`
`diminish their evidentiary value.
`
`Applicant also argues that its ownership of two cancelled registrations for the
`
`same mark and the same services serves as confirmation that the USPTO has already
`
`determined that the mark in question is registrable on the Principal Register under
`
`Section 2(f) for the same services as those now sought.18 Applicant’s argument is
`
`unpersuasive. It is well settled that we must assess each application on its own record
`
`and we are not bound by the decisions of Examining Attorneys in other cases. In re
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`Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
`
`Additionally, registrability must be determined at the time registration is sought. In
`
`re Thunderbird Prods. Corp., 406 F.2d 1389, 160 USPQ 730, 732 (CCPA 1969). The
`
`record in this case convinces us that the applied-for mark is generic for the identified
`
`services.
`
`Similarly, Applicant’s third-party registrations do not support a finding that THE
`
`CORPORATE LAW GROUP is not generic. As discussed above, it is well settled that
`
`we must make our decision in each case on its own merits. “Even if some prior
`
`registrations had some characteristics similar to [another] application, the PTO’s
`
`allowance of such prior registrations does not bind the Board. . . .” Nett Designs, 57
`
`
`17 Id. at 13.
`18 Id. at 20.
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`Serial No. 86087067
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`USPQ2d at 1566; In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635
`
`(Fed. Cir. 2016) (“The PTO is required to examine all trademark applications for
`
`compliance with each and every eligibility requirement, including non-genericness,
`
`even if the PTO earlier mistakenly registered a similar or identical mark suffering
`
`the same defect.”). More importantly, many of the third-party registrations upon
`
`which Applicant relies do not contain the same terms as in Applicant’s mark, disclaim
`
`significant wording, or are not used in connection with legal services. Moreover, these
`
`few third-party registrations are outweighed by the Examining Attorney’s evidence
`
`that THE CORPORATE LAW GROUP is generic when used in connection with legal
`
`services.
`
`Based on the foregoing evidence, we find that there is clear evidence to support a
`
`finding that the relevant public, when it considers the phrase THE CORPORATE
`
`LAW GROUP in connection with legal services, readily understands the phrase to
`
`refer to services of the type identified in the application.
`
`II. Acquired distinctiveness
`Although we have found the phrase THE CORPORATE LAW GROUP to be
`
`generic for Applicant’s services, in the event that Applicant’s mark is found to be not
`
`generic, for completeness, we also determine whether Applicant’s proposed mark may
`
`be registered with a showing of acquired distinctiveness under Section 2(f).
`
`As an initial matter, by applying for registration based on acquired distinctiveness
`
`under Section 2(f), Applicant has conceded that the proposed mark is merely
`
`descriptive and it is Applicant’s burden to prove acquired distinctiveness. Yamaha
`
`Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005-1006 (Fed.
`
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`Serial No. 86087067
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`Cir. 1988); In re Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295 (CCPA
`
`1954) (“[T]here is no doubt that Congress intended that the burden of proof [under
`
`Section 2(f)] should rest upon the applicant”).
`
`As discussed supra, Applicant has been using the mark since 1991. Applicant
`
`promotes the mark through Internet web pages, Twitter, Facebook, LinkedIn, and
`
`Yelp. Applicant states that he has advertising, marketing, and promotional
`
`expenditures of over $100,000. He has sponsored and participated in regional events
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`such as the “The Mavericks Surf Contest” and the “Silicon Valley Marathon.”
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`Applicant’s billings of legal services provided under the mark exceed “several millions
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`of dollars.”19 In addition, Applicant submitted twenty-two declarations in support of
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`registration of Applicant’s mark from Applicant’s clients20 and letters from nine
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`attorneys attesting to the professional recognition of Applicant’s mark. 21
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`The amount and character of evidence required to establish acquired
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`distinctiveness depends on the facts of each case. Roux Labs., Inc. v. Clairol Inc., 427
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`F.2d 823, 166 USPQ 34 (CCPA 1970). Evidence of acquired distinctiveness can
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`include the length of use of the mark, advertising expenditures, sales, survey
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`evidence, and affidavits asserting source-indicating recognition. However, a
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`successful advertising campaign is not in itself necessarily enough to prove secondary
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`meaning. In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999)
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`(claim based on annual sales under the mark of approximately eighty-five million
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`19 Applicant’s Response of June 17, 2015, pp. 19-25.
`20 Applicant’s Response of November 25, 2014, pp. 12-54.
`21 Applicant’s Response of June 17, 2015, pp. 46-63.
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`Serial No. 86087067
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`dollars, and annual advertising expenditures in excess of ten million dollars, not
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`sufficient to establish acquired distinctiveness in view of highly descriptive nature of
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`mark). The ultimate test in determining whether a designation has acquired
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`distinctiveness is Applicant ’s success, rather than its efforts, in educating the public
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`to associate the proposed mark with a single source. In re Redken Labs., Inc., 170
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`USPQ 526, 529 (TTAB 1971) (“It is necessary to examine the advertising material to
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`determine how the term is being used therein, what is the commercial impression
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`created by such use, and what would it mean to purchasers.).
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`More evidence is required where a mark is so highly descriptive that purchasers
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`seeing the matter in relation to the named services would be less likely to believe that
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`it indicates source in any one party. See, e.g., In re Bongrain Int’l Corp., 894 F.2d
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`1316, 1318, 13 USPQ2d 1727, 1729 (Fed. Cir. 1990). Thus, a claim that Applicant has
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`been using the subject matter for a long period of substantially exclusive use may not
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`be sufficient to demonstrate that the mark has acquired distinctiveness. See In re
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`Gibson Guitar Corp., 61 USPQ2d 1948, 1952 (TTAB 2001) (66 years of use
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`insufficient).
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`After a careful review of the record, we find that Applicant has not shown that the
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`phrase THE CORPORATE LAW GROUP has acquired distinctiveness. The evidence
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`of record discussed above clearly establishes that the phrase THE CORPORATE
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`LAW GROUP is highly descriptive and the evidence submitted by Applicant is
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`insufficient to show that the relevant consumers recognize this phrase as a mark. See
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`In re The Paint Prods. Co., 8 USPQ2d 1863, 1867 (TTAB 1988) (declarations must be
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`Serial No. 86087067
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`weighed against the highly descriptive nature of the words that compose the mark).
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`Thus, despite the many years of use and some regional success in promoting the
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`mark, given the highly descriptive nature of the phrase, we do not find that THE
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`CORPORATE LAW GROUP has come to signify the commercial source of the
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`services, but rather continues merely to inform the consumers about the nature of
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`the services.
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`
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`Decision: The refusal to register under Section 2(e)(1) of the Trademark Act on
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`the ground that the mark is generic is affirmed; and the refusal to register on the
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`ground that the mark is merely descriptive and that the evidence is insufficient to
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`show that the mark has acquired distinctiveness under Section 2(f) of the Act also is
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`affirmed.
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