From: Kon, Elissa Garber
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`Sent: 4/5/2016 1:54:48 PM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. TRADEMARK APPLICATION NO. 86302887 - AMERICAN BARRISTER - N/A - EXAMINER BRIEF
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`*************************************************
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`Attachment Information:
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`Count: 1
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`Files: 86302887.doc
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`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
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`U.S. APPLICATION SERIAL NO. 86302887
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`MARK: AMERICAN BARRISTER
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`CORRESPONDENT ADDRESS:
` ROBERT J OLEJAR
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` 11 MOREY LANE
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` RANDOLPH, NJ 07869-4628
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`*86302887*
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`GENERAL TRADEMARK INFORMATION:
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`http://www.uspto.gov/trademarks/index.jsp
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`TTAB INFORMATION:
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`http://www.uspto.gov/trademarks/process/appeal/index.js
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`APPLICANT: Olejar, Robert J.
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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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` OlejarLLP@American-Barrister.com
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`EXAMINING ATTORNEY’S APPEAL BRIEF
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`FACTS
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`On June 6, 2014, the applicant applied to register AMERICAN BARRISTER for the
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`following services in Class 45:
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`Alternative dispute resolution services; Arbitration services; Attorney services; Expert
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`witness services in legal matters in the field of fraud, forensic accounting, money
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`laundering, financial accounting, and legal damages; Legal consultation services; Legal
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`document preparation services; Legal research; Legal services; Litigation consultancy;
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`Litigation services; Litigation support services; Mediation; News reporting and expert
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`legal commentary services in the field of legal news; On-site legal services; Online
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`news reporting and expert legal commentary services in the field of legal news;
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`Providing information relating to legal affairs; Providing information, news and
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`commentary in the field of law; Providing on-line information and news in the field of
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`law
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`The Trademark Examining Attorney refused registration in an Office action issued September 19,
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`2014 because the proposed mark is primarily geographically descriptive of the services under 15 U.S.C.
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`Section 1052(e)(2) and merely descriptive of the provider of the services under 15 U.S.C. Section
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`1052(e)(1), and provided a caveat that the applicant would be required to disclaim the generic term
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`BARRISTER upon amendment to the Supplemental Register or submission of a claim of acquired
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`distinctiveness. The applicant responded to these refusals on March 19, 2015. After telephone and
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`email communications with the applicant concerning the Supplemental Register and acquired
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`distinctiveness, the Trademark Examining Attorney issued a final refusal on April 24, 2015 on the basis of
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`descriptiveness and geographic descriptiveness.
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`On October 23, 2015, the applicant requested reconsideration of the final refusal. After careful
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`consideration of all arguments and evidence, the Trademark Examining Attorney denied reconsideration
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`on November 9, 2015 and this appeal ensued.
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`ARGUMENT
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`1. The Proposed Mark is Geographically Descriptive of the Services
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`AMERICAN BARRISTER is primarily geographically descriptive of the applicant’s
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`services because it denotes the United States as the origin of the applicant’s legal services.
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` For services to originate in a geographic place, the record must show that they are
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`rendered at least in part in the geographic place. See In re Chalk’s Int’l Airline Inc., 21 USPQ2d 1637
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`(TTAB 1991) (holding PARADISE ISLAND AIRLINES primarily geographically descriptive of air
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`transportation services of passengers and/or goods that are performed at least in part on Paradise
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`Island); In re Cal. Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988) (holding CALIFORNIA PIZZA KITCHEN
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`primarily geographically descriptive of restaurant services rendered in California and outside the state as
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`well); In re Opryland USA Inc., 1 USPQ2d 1409 (TTAB 1986) (holding THE NASHVILLE NETWORK primarily
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`geographically descriptive of television production and distribution services provided in Nashville); TMEP
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`§1210.03.
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`AMERICAN is the adjectival form of the word AMERICA, and is defined as: Of or
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`relating to the United States of America or its people, language, or culture. See definitions attached to
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`the April 24, 2015 final refusal. It is well settled that when AMERICA or AMERICAN appears in a mark
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`such that it primarily denotes the country of the United States as the origin of the goods and/or services,
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`then the primary significance is as a geographic location. See In re Monograms Am., Inc., 51 USPQ2d
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`1317 (TTAB 1999); In re BankAmerica Corp., 231 USPQ 873 (TTAB 1986); Am. Diabetes Ass’n, Inc. v. Nat’l
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`Diabetes Ass’n, 533 F. Supp. 16, 214 USPQ 231 (E.D. Pa. 1981), aff’d, 681 F.2d 804 (3d Cir. 1982); TMEP
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`§1210.02(b)(iv).
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`The applicant is an attorney licensed to practice in New Jersey, which is part of
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`AMERICA under its definition. Brief at page 10. The applicant’s place of business is in New Jersey, and
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`his legal services are rendered in New Jersey, as shown by the application and specimen. The applicant
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`acknowledged that he “is an American-based provider of legal services.” March 19, 2015 response at
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`page 3. Therefore, there is no question that the legal services are provided in America.
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`The applicant argues that AMERICAN is not geographically descriptive of its services because “it
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`identifies no location,” and “is simply too broad when used within the United States.” Brief at page 1.
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`This position is specifically refuted by established case law and the evidence of record.
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`The record contains ample evidence that AMERICAN is a geographic indicator in marks used in
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`similar contexts. The evidence includes numerous sample registrations from the Office’s database of
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`registered marks wherein marks with the word AMERICAN followed by the subject matter or the
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`providers of the associated goods/services contained disclaimers of AMERICAN, or were registered on
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`the Supplemental Register or under Section 2(f). This evidence shows clear and consistent Office
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`practice holding such marks as descriptive and/or geographically descriptive of the associated services.
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`For example, there is a plethora of registrations in the Office’s database wherein
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`AMERICAN has been disclaimed, registered on the Supplemental Register or under Section 2(f) for legal
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`and other related services. Clearly, it is common in the industry for legal professionals to use the term
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`AMERICAN to describe the geographic origin of their services as well as the nationality or practice areas
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`of the providers of those services. These include the following sample registrations, provided with the
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`April 24, 2015 final refusal:
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`AMERICAN DEFENSE LAWYERS and design, U.S. Registration No. 3940878, with AMERICAN
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`DEFENSE LAWYERS disclaimed for legal services
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`AMERICAN DEFENSE LAWYERS, U.S. Registration No. 3287179, on the Supplemental Register
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`with a disclaimer of DEFENSE LAWYERS for attorney services
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`AMERICAN LEGAL SERVICES and design, U.S. Registration No. 1825589, with AMERICAN LEGAL
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`SERVICES disclaimed, for providing legal services to the general public
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`AMERICAN ASSOCIATION OF MOTORCYCLE INJURY LAWYERS, U.S. Registration No. 3844412,
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`with a Section 2(f) claim and disclaimer of ASSOCIATION, for association services, namely,
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`promoting the interests of lawyers who have an interest in personal injury and accident law;
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`association services, namely, promoting the interests of lawyers and law professionals;
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`association services; namely promoting the interests of motorcyclists and motorcycle drivers
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`and for legal services, namely, legal services, legal advisory services, provision of legal
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`consultations, legal advice and representation of others in legal matters, legal research, notary
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`public services, and providing information in the field of personal injury and accident law
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`ALI AMERICAN LAW INSTITUTE and design, U.S. Registration No. 3869192, with a Section 2(f)
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`claim as to AMERICAN LAW INSTITUTE, for legal publications and providing online information in
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`the field of legal topics
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`INSTITUTE FOR THE ADVANCEMENT OF THE AMERICAN LEGAL SYSTEM, U.S. Registration No.
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`4378548, with a Section 2(f) claim and INSTITUTE disclaimed, for promoting collaboration within
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`the legal community to achieve improvements and reforms in the legal system and in legal
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`education; Promoting the exchange of information and resources within the legal community to
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`achieve advances in legal system reform and legal education reform; Promoting public
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`awareness of the need for legal system reform and legal education reform; Conducting opinion
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`surveys and providing resulting opinion survey information and analysis of resulting opinion
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`survey information in the fields of legal system reform and legal education reform
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`AMERICAN LEGAL SEARCH and design, U.S. Registration No 2910757, with AMERICAN and LEGAL
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`SEARCH disclaimed for referral and location services regarding placement and identification of
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`prospective placements for attorney positions, permanent and temporary single vacancies and
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`positions, and multiple attorney placements such as firm expansion, consolidation or merger
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`AMERICAN LEGAL NURSE CONSULTANT CERTIFICATION BOARD, U.S. Registration No. 3212527,
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`with LEGAL NURSE CONSULTANT CERTIFICATION BOARD disclaimed and a 2(f) claim as to
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`AMERICAN, for association services, namely, promoting the interests of legal nurse consultants
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`through the establishment of standards for certification, assessment and testing of legal nurse
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`consultants
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`AMERICAN MEDICAL EXPERTS, U.S. Registration No. 4519480, on the Supplemental Register
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`with a disclaimer of MEDICAL, for medical legal consulting
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`AMERICANDISCOVERY, U.S. Registration No. 3687802, on the Supplemental Register for legal
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`services, namely, litigation support, legal research, and legal document review
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`AMERICAN DIVORCE ASSOCIATION FOR MEN, U.S. Registration No. 3760020, registered under
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`Section 2(f) with a disclaimer of DIVORCE ASSOCIATION, for legal services in the field of divorce
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`law; legal services, namely, providing customized information, counseling, advice and litigation
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`services in the field of divorce law.
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`AMERICAN SHAMAN and design, U.S. Registration No. 4423057, with AMERICAN SHAMAN
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`disclaimed for spiritual counseling
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`AMERICAN ADOPTIONS, U.S. Registration No. 4135318, with ADOPTIONS disclaimed and a
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`Section 2(f) claim as to AMERICAN, for Adoption agency; adoption placement; adoption
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`counseling; providing a website featuring information on unplanned pregnancies and adoption
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`AMERICAN TITLE COMPANY and design, U.S. Registration No. 4070488, with AMERICAN TITLE
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`COMPANY disclaimed, for real estate settlement and closing services and insurance services
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`related to real estate transactions, namely, title insurance underwriting, title insurance
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`consultation and title insurance claims processing; real estate escrow services
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`NATIONAL ITALIAN AMERICAN BAR ASSOCIATION REPRESENTING THE ITALIAN AMERICAN LEGAL
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`COMMUNITY and design, U.S. Registration No. 2325450, with a disclaimer for "ITALIAN
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`AMERICAN BAR ASSOCIATION" and "REPRESENTING THE ITALIAN AMERICAN LEGAL
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`COMMUNITY,” for association services, namely, promoting the interests of the Italian-American
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`bar
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`It is the applicant’s position that the Office is not applying the “standards for
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`descriptiveness, geographical or otherwise…consistently” because several registrations included in the
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`Trademark Examining Attorney’s evidence show AMERICAN registered as “standard character marks on
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`the Principal Register.” Brief at 7. These include the following specific registrations, made of record
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`with the April 24, 2015 final refusal:
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`AMERICAN DIVORCE ASSOCIATION FOR MEN, U.S. Registration No. 3760020, registered under
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`Section 2(f) with a disclaimer of DIVORCE ASSOCIATION (referenced above)
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`AMERICAN ASSOCIATION OF MOTORCYCLE INJURY LAWYERS, U.S. Registration No. 3844412,
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`with a Section 2(f) claim and disclaimer of ASSOCIATION
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`AMERICAN ADOPTIONS, U.S. Registration No. 4135318, with ADOPTIONS disclaimed and a
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`Section 2(f) claim as to AMERICAN (referenced above)
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`AMERICAN LEGAL NURSE CONSULTANT CERTIFICATION BOARD, U.S. Registration No. 3212527,
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`with LEGAL NURSE CONSULTANT CERTIFICATION BOARD disclaimed and a 2(f) claim as to
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`AMERICAN (referenced above)
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`INSTITUTE FOR THE ADVANCEMENT OF THE AMERICAN LEGAL SYSTEM, U.S. Registration No.
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`4378548, with a Section 2(f) claim and INSTITUTE disclaimed (referenced above)
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`THE AMERICAN LAWYER, U.S. Registration No. 4529055 with a Section 2(f) claim for Magazine
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`supplements to newspapers in the field of law; Magazines in the field of law; Newsletters in the
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`field of law, Arranging and conducting business conferences; Arranging and conducting trade
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`show exhibitions in the field of law; Arranging and conducting trade shows in the field of law;
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`Conducting trade shows in the field of law; Promoting and conducting trade shows in the field of
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`law and Educational services, namely, conducting classes, seminars, workshops and conferences
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`in the field of law and distribution of training material in connection therewith; Entertainment
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`services, namely, providing webcasts in the field of law; On-line journals, namely, blogs featuring
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`news, information and commentary in the field of law; Providing a website featuring blogs and
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`non-downloadable publications in the nature of articles in the field of law; Providing on-line
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`newsletters in the field of law; Providing on-line publications in the nature of magazines,
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`newspapers, and newsletters in the field of law; Providing online newsletters in the field of law
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`via e-mail
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`THE AMERICAN LAWYER, U.S. Registration No. 3060417 with a Section 2(f) claim for providing
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`online publications, namely, legal and business newspapers, magazines, newsletters, and
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`reports containing articles, editorials, advertisements, data and information for the legal and
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`business industries
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`THE AMERICAN LAWYER, U.S. Registration No. 2263230 with a Section 2(f) claim for legal
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`publications, namely, magazine pertaining to the legal field
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`CUBAN AMERICAN BAR ASSOCIATION, U.S. Registration No. 3120010 with a Section 2(f) claim
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`and a disclaimer of BAR ASSOCIATION for Association services, namely, promoting the interests
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`of attorneys, paralegals, immigrants admitted to practice law abroad and non-lawyer
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`professionals in the legal industry
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`All of the marks cited by the applicant contain Section 2(f) claims of acquired
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`distinctiveness as to the term AMERICAN. This evidence shows that others in the industry use the term
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`AMERICAN to describe the geographic origin of the services and location of the persons performing the
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`services. Thus the evidence upon which the applicant relies in fact fully supports this refusal. The
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`Trademark Examining Attorney concurs with the applicant’s position that its mark must receive similar
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`treatment.
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`2. The Addition of the Generic term BARRISTER Does not Alter the Geographic
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`Significance
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`Adding the generic term BARRISTER to the geographic term AMERICAN does not result
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`in a mark whose commercial impression is greater than the sum of its descriptive parts.
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`BARRISTER is a legal industry term defined as: a lawyer in England or Wales who is
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`allowed to speak in the higher law courts.” September 19, 2014 Office action. The applicant argues that
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`since he is not permitted to perform “Barrister” services in the United States, the mark AMERICAN
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`BARRISTER does not describe the services for which registration is sought. The question is not whether
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`AMERICAN BARRISTER describes “Barrister” services; the question is whether AMERICAN BARRISTER
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`describes the services listed in this application.
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` The determination of whether a mark is merely descriptive is made in relation to an
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`applicant’s goods and/or services, not in the abstract. DuoProSS Meditech Corp. v. Inviro Med. Devices,
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`Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of
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`the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In
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`re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to
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`the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary
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`definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-
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`DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the
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`relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating
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`system). Further, a mark does not need to be merely descriptive of all the goods or services specified in
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`an application. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217,
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`1219 (Fed. Cir. 2012); In re Franklin Cnty. Historical Soc'y, 104 USPQ2d 1085, 1089 (TTAB 2012). “A
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`descriptiveness refusal is proper ‘if the mark is descriptive of any of the [goods or] services for which
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`registration is sought.’” In re The Chamber of Commerce of the U.S., 675 F.3d at 1300, 102 USPQ2d at
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`1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 1040, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)).
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`The applicant is not seeking to register his mark for “Barrister services.” The
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`description of services in this application includes legal and litigation consultation, legal information
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`services, news reporting and expert legal commentary services in the field of legal news and
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`information, news and commentary in the field of law, in addition to other legal services. The word
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`BARRISTER is a generic industry term that refers to a particular type of lawyer in the United Kingdom.
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`The applicant’s services in this application are broad enough to include legal information, news and
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`commentary that feature Barristers or the activities of Barristers, as well as related consultation. The
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`fact that the applicant cannot perform specific “Barrister” duties in American courts does not make this
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`term any less descriptive of the services in this application.
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` It defies logic to grant the applicant a monopoly on the generic industry term BARRISTER to the
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`exclusion of others who have become Barristers. Two major reasons for not protecting descriptive
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`marks are (1) to prevent the owner of a descriptive mark from inhibiting competition in the marketplace
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`and (2) to avoid the possibility of costly infringement suits brought by the trademark or service mark
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`owner. In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209.
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`Businesses and competitors should be free to use descriptive language when describing their own goods
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`and/or services to the public in advertising and marketing materials. See In re Styleclick.com Inc., 58
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`USPQ2d 1523, 1527 (TTAB 2001).
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`3. The Proposed Mark is Merely Descriptive of the Services
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`In addition to being primarily geographically descriptive, the proposed mark merely
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`describes a feature of the listed services, i.e., their provider or source. Trademark Act Section 2(e)(1),
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`15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq. Terms that describe the provider of a
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`product or service may also be merely descriptive of the product and/or service. See In re The Chamber
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`of Commerce of the U.S., 675 F.3d 1297, 1301, 102 USPQ2d 1217, 1220 (Fed. Cir. 2012) (affirming
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`Board’s finding that NATIONAL CHAMBER was merely descriptive of online service providing directory
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`information for local and state chambers of commerce and business and regulatory data analysis
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`services to promote the interest of businessmen and businesswomen); In re Major League Umpires, 60
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`USPQ2d 1059, 1060 (TTAB 2001) (holding MAJOR LEAGUE UMPIRE merely descriptive of clothing, face
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`masks, chest protectors and shin guards); TMEP §1209.03(q).
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`Simply put, the applicant is an AMERICAN BARRISTER, because he is a United States
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`citizen who is also admitted to practice in the United Kingdom as a Barrister. No mental leap is required
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`to reach that conclusion when viewing the proposed mark in connection with the proposed services. The
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`fact that the applicant has encountered potential clients who are unfamiliar with the duties of a
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`Barrister does not detract from its clear meaning in this industry.
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`AMERICAN as used in this mark immediately tells consumers that the advertised legal
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`and legal information services are performed in America, under the American legal system, that they
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`pertain to the American legal system and that, in this instance, they are performed by an American
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`lawyer. The fact that American lawyers obtain licenses in individual states or that many legal matters
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`call for representation by an attorney licensed to practice in a designated state, does not change the
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`common industry use of the term AMERICAN in connection with legal services provided in or under the
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`laws of this country. For example, the applicant, based and licensed in New Jersey, is free to counsel
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`clients in other states about trademark matters and may represent clients in other states before the U.S.
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`Patent and Trademark Office in regard to trademark matters. Indeed, AMERICAN in this context refers
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`to attorneys admitted to practice in one of the states that form the United States of America.
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`Moreover, the online legal information services, legal news services, legal affairs information services
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`and news reporting services are broad enough to include services provided in the United States
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`featuring issues relevant to American laws and the American legal industry. This is especially so when
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`information services are provided online, which would render them available across the United States,
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`even if they are written in or uploaded from a particular state.
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`AMERICAN, when used in this context, also immediately tells consumers that the advertised
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`legal services are to be provided under the American system of law. There are multiple examples of
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`groups of attorneys in the United States promoting advancement of practices under the American legal
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`system. The record contains several sample websites that show others using the term AMERICAN
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`descriptively to allude to the subject matter of the American legal system, American lawyers who work
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`within that system and the geographic origin of the related legal services. These include the following
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`sample excerpts, submitted with the April 24, 2015 final refusal:
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`The mission of the American Lawyers Alliance is to promote understanding of the American legal
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`system through our national network of lawyers’ spouses. The ALA strives to provide a
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`communication network to bring our unique strengths to the preservation and enhancement of
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`the American legal system, and to preserve the integrity of our legal heritage through citizenship
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`education.
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`http://webcache.googleusercontent.com/search?q=cache:ry9Q8bWRjEMJ:americanlawyersauxi
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`liary.org/+&cd=7&hl=en&ct=clnk&gl=us
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`The American Bar Association is one of the world’s largest voluntary professional
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`organizations, with nearly 400,000 members and more than 3,500 entities. It is
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`committed to doing what only a national association of attorneys can do: serving our
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`members, improving the legal profession, eliminating bias and enhancing diversity, and
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`advancing the rule of law throughout the United States and around the world.
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`Founded in 1878, the ABA is committed to supporting the legal profession with practical
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`resources for legal professionals while improving the administration of justice,
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`accrediting law schools, establishing model ethical codes, and more. Membership is
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`open to lawyers, law students, and others interested in the law and the legal profession…
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`If you have passed the bar and are licensed as a U.S. attorney, we welcome you to
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`join the ABA as a Lawyer member.
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`http://www.americanbar.org/about_the_aba.html
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`AILA [American Immigration Lawyers Association] is the only legal association in the United
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`States for immigration attorneys. More than 13,500 immigration lawyers are members of AILA.
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`http://www.ailalawyer.com/
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`Annual Survey of American Law
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`Founded in 1942, the New York University Annual Survey of American Law is a
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`student-edited journal at New York University School of Law. The Annual Survey is
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`NYU's second-oldest legal journal and was originally compiled by NYU faculty
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`members as a comprehensive annual reference to developments in American law.
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`Now a quarterly publication, the Annual Survey continues its dedication to exploring
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`contemporary legal developments in the United States from a practice-oriented
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`perspective. Annual Survey articles analyze emerging legal trends, interpret
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`significant recent court decisions and legislation, and explain leading legal scholars'
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`and judges' perspectives on current legal topics. The journal is widely distributed
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`throughout the world, giving lawyers both inside and outside the United States
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`insight into American law and legal issues.
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`http://webcache.googleusercontent.com/search?q=cache:Z-oz8bW-
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`_gJ:www.law.nyu.edu/journals/annualsurveyofamericanlaw+&cd=10&hl=en&ct=clnk&gl=us
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`The U.S. Legal System: A Short Description (Federal Judicial Center)
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` The U.S. Constitution establishes a federal system of government. The constitution gives
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`specific powers to the federal (national) government. All power not delegated to the federal
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`government remains with the states. Each of the 50 states has its own state constitution,
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`governmental structure, legal codes and judiciary.
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`http://www.fjc.gov/public/pdf.nsf/lookup/U.S._Legal_System_English07.pdf/$file/U.S._Legal_Syst
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`em_English07.pdf.
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`Adding the generic term BARRISTER to AMERICAN does not alter the descriptive nature of the
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`mark. The applicant maintains that BARRISTER is not descriptive because American consumers cannot
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`avail themselves of his Barrister services in the United States. As outlined earlier, this term is generic for
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`specific legal services in the United Kingdom and the applicant simply cannot be granted a monopoly on
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`this term, to the exclusion of other legal practitioners who have passed the requirements to become a
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`Barrister.
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`Moreover, the applicant’s international expertise and affiliation as a Barrister would
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`be of interest to potential clients with legal needs in the United States and the United Kingdom. The
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`Trademark Examining Attorney provided evidence that other professionals market themselves as
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`“American Barristers,” where they are American by birth and have passed the requirements to become
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`Barristers. See evidence submitted with April 24, 2015 final refusal, and November 9, 2015 denial of
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`reconsideration. Further, the record contains evidence that many law firms have offices and associated
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`counsel in multiple countries, including the United Kingdom, to assist clients with international legal
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`needs. See Id. Thus, the fact that the applicant is a Barrister tells consumers his professional legal skills
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`and affiliations.
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`The applicant’s use of this term is by no means arbitrary. The website excerpts in the
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`record prominently promote this “biographical fact.” For example, the applicant’s business card states
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`that the applicant is “Pursuing Justice on Both Sides of the Pond,” which suggests that he can represent
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`clients in both the United States and the United Kingdom. See business card provided as a specimen.
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`Indeed, the applicant has displayed a photograph of himself in his distinguished Barrister gown on the
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`page of his website that lists his practice areas, education and professional affiliations. The first
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`professional title listed is Barrister (England and Wales), followed by Counsellor at Law (NJ), Certified
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`Public Accountant (NJ) and Certified Fraud Examiner (Int’l). See excerpt from
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`http://www.americanbarrister.net/lawyers/, attached to November 9, 2015 denial of reconsideration.
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`The applicant listed “Honourable Society of the Middle Temple,” the Inn by whom the applicant was
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`called to the Bar in the U.K. Resp. at 9.
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`The applicant clearly markets himself as having passed the rigorous requirements to
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`achieve the respected status as a Barrister. This title lends an air of prestige and touts his additional
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`international legal expertise, which could set him apart from other practitioners in the minds of
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`consumers. While he may not be able to practice as a Barrister in the United States, he clearly markets
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`himself as a Barrister, using this term in a laudatory sense, to convey that he is highly educated, skilled
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`and accomplished. This term is merely descriptive of the provider because he performs the legal and
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`other related services in the application, as an individual, and he is an American Barrister. The applicant
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`cannot keep others from using what amounts to a generic term in the legal industry that he uses to
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`promote his legal skills and accomplishments on his own website, and to distinguish him from other
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`lawyers who are not also Barristers. It strains credulity to believe that the applicant included this
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`information so prominently, with a photograph of himself in the garb of a Barrister, in an effort to
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`confuse prospective clients about the services he provides. It is clearly used to describe and enhance
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`the applicant’s skills in the legal field.
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`CONCLUSION
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`The Trademark Examining Attorney respectfully requests that the Board affirm her final refusal
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`to register the mark on the Principal Register because the proposed mark is geographically descriptive of
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`the services under 15 U.S.C. Section 1052(e)(2), and merely descriptive of the services under 15 U.S.C.
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`Section 1052(e)(1).
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`Respectfully submitted,
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`/Elissa Garber Kon/
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`Examining Attorney, Law Office 106
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`phone: 571-272-9181
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`email: elissagarber.kon@uspto.gov
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`Mary I. Sparrow
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`Managing Attorney
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`Law Office 106
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