PTO Form 1960 (Rev 9/2007)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Request for Reconsideration after Final Action
`
`The table below presents the data as entered.
`
`Input Field
`
`Entered
`
`SERIAL NUMBER
`
`86302887
`
`LAW OFFICE
`ASSIGNED
`
`MARK SECTION
`
`LAW OFFICE 106
`
`MARK
`
`http://tmng-al.uspto.gov/resting2/api/img/86302887/large
`
`LITERAL ELEMENT
`
`AMERICAN BARRISTER
`
`STANDARD
`CHARACTERS
`
`USPTO-GENERATED
`IMAGE
`
`YES
`
`YES
`
`MARK STATEMENT
`
`The mark consists of standard characters, without claim to any particular font
`style, size or color.
`
`EVIDENCE SECTION
`
`        EVIDENCE FILE NAME(S)
`
`       ORIGINAL PDF
`FILE
`
`       CONVERTED PDF
`FILE(S)
`       (15 pages)
`
`evi_9624225055-
`20151023223022675935_._86302887TrademarkAppealBrief.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\028\86302887\xml15\RFR0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\028\86302887\xml15\RFR0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\028\86302887\xml15\RFR0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\028\86302887\xml15\RFR0005.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\028\86302887\xml15\RFR0006.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\028\86302887\xml15\RFR0007.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\028\86302887\xml15\RFR0008.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\028\86302887\xml15\RFR0009.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\028\86302887\xml15\RFR0010.JPG
`
`       
`       
`       
`       
`       
`       
`       
`       
`

`

`\\TICRS\EXPORT16\IMAGEOUT16\863\028\86302887\xml15\RFR0011.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\028\86302887\xml15\RFR0012.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\028\86302887\xml15\RFR0013.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\028\86302887\xml15\RFR0014.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\028\86302887\xml15\RFR0015.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\028\86302887\xml15\RFR0016.JPG
`
`DESCRIPTION OF
`EVIDENCE FILE
`
`Appeal Brief
`
`SIGNATURE SECTION
`
`RESPONSE
`SIGNATURE
`
`/Robert J. Olejar/
`
`SIGNATORY'S NAME
`
`Robert J. Olejar
`
`SIGNATORY'S
`POSITION
`
`Owner
`
`SIGNATORY'S PHONE
`NUMBER
`
`201-400-8351
`
`DATE SIGNED
`
`AUTHORIZED
`SIGNATORY
`
`CONCURRENT
`APPEAL NOTICE
`FILED
`
`10/23/2015
`
`YES
`
`YES
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`Fri Oct 23 22:44:16 EDT 2015
`
`TEAS STAMP
`
`USPTO/RFR-96.242.250.55-2
`0151023224416272443-86302
`887-540ad6a5caafe252c9498
`5fb172d961fe99a3afd9eee25
`4b4a88651b7b24ffbdf7-N/A-
`N/A-20151023223022675935
`
`PTO Form 1960 (Rev 9/2007)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Request for Reconsideration after Final Action
`To the Commissioner for Trademarks:
`
`       
`       
`       
`       
`       
`       
`

`

`Application serial no. 86302887 AMERICAN BARRISTER(Standard Characters, see http://tmng-
`al.uspto.gov/resting2/api/img/86302887/large) has been amended as follows:
`
`EVIDENCE
`Evidence in the nature of Appeal Brief has been attached.
`Original PDF file:
`evi_9624225055-20151023223022675935_._86302887TrademarkAppealBrief.pdf
`Converted PDF file(s) ( 15 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`Evidence-9
`Evidence-10
`Evidence-11
`Evidence-12
`Evidence-13
`Evidence-14
`Evidence-15
`
`SIGNATURE(S)
`Request for Reconsideration Signature
`Signature: /Robert J. Olejar/     Date: 10/23/2015
`Signatory's Name: Robert J. Olejar
`Signatory's Position: Owner
`
`Signatory's Phone Number: 201-400-8351
`
`The signatory has confirmed that he/she is not represented by either an authorized attorney or Canadian
`attorney/agent, and that he/she is either: (1) the owner/holder ; or (2) a person(s) with legal authority to
`bind the owner/holder; and if an authorized U.S. attorney or Canadian attorney/agent previously
`represented him/her in this matter, either he/she has filed a signed revocation of power of attorney with the
`USPTO or the USPTO has granted the request of his/her prior representative to withdraw.
`
`The applicant is filing a Notice of Appeal in conjunction with this Request for Reconsideration.
`
`Serial Number: 86302887
`Internet Transmission Date: Fri Oct 23 22:44:16 EDT 2015
`TEAS Stamp: USPTO/RFR-96.242.250.55-2015102322441627
`2443-86302887-540ad6a5caafe252c94985fb17
`2d961fe99a3afd9eee254b4a88651b7b24ffbdf7
`-N/A-N/A-20151023223022675935
`
`        
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Serial No.
`
`86302887
`
`Mark:
`
`AMERICAN BARRISTER
`
`Attorney: Applicant Pro Se
`
`Address:
`
`11 Morey Lane
`Randolph, NJ 07869-4628
`
`AND APPEAL BOARD
`
`ON APPEAL
`
` BEFORE THE TRADEMARK TRIAL
`
`Applicant: Robert J. Olejar (Esq.)
`
`
`Applicant appeals the Trademark Examining Attorney’s refusal to register the
`
`trademark AMERICAN BARRIS TER on the grounds that it is merely descriptive within the
`
`meaning of §2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), and primarily geographically
`
`descriptive within the meaning of §2(e)(2) of the Trademark Act, 15 U.S.C. §1052(e)(2).
`
`I.
`
`PROCEDURAL HISTORY:
`
`On June 6, 2014, Applicant filed a Trademark/Service Mark Application for the
`
`mark AMERICAN BARRISTER, for services all within Class 045, and identified as:
`
`online information and news in the field of law.
`
`Alternative dispute resolution services; Arbitration services; Attor—
`ney services; Expert witness services in legal matters in the field of
`fraud, forensic accounting, money laundering, financial account—
`ing, and legal damages; Legal consultation services; Legal docu-
`ment preparation services; Legal research; Legal services; Litiga-
`tion consultancy; Litigation services; Litigation support services;
`Mediation; News reporting and expert legal commentary services
`in the field of legal news; Onsite legal services; Online news re-
`porting and expert legal commentary services in the field of legal
`news; Providing information relating to legal affairs; Providing in-
`formation, news and commentary in the field of law; Providing
`
`

`

`On September 19, 2014, the Examining Attorney filed an Office Action refitsing registration on
`
`the Principal Register on the grounds that “the proposed mark is geographically descriptive and
`
`merely descriptive of the goods/services.” On March 19, 2015, Applicant filed a timely
`
`Response to Office Action. On April 24, 2015, the Examining Attorney filed the Final Action,
`
`maintaining and making final the refusals set forth in the Office Action on the same grounds,
`
`giving rise to this Appeal.
`
`II. THE EVIDENTIARY RECORD:
`
`Most of the exhibits attached to either the Office Action or the Final Action are of
`
`the same type, copies of USPTO Trademarks issued, all beginning With or including the word
`
`AMERICAN, summarized in the below table.
`
`
`Disclaimers
`Substantive
`No.
`Register
`Type of
`Geographic
`
`
`Term
`Term
`Mark
`
`
`
`Design
`Immi gration
`(Statue of
`gration Lawyers
`Lawyers Associ-
`Association
`ation
`Liberty)
`
`Plus Words
`
`American
`
`American Immi-
`
`Security Group
`
`American
`
`Security Group
`
`Design
`(Black Cir—
`cle, Flag,
`Eagle,
`Swords)
`
`Plus Words
`
`Defense Lawyers Defense Lawyers Stande
`American
`Supplemental
`
`Character
`
`American
`None
`Supplemental
`Stylized
`Discovery
`
`OneWord
`
`American
`
`Divorce Associ-
`ation for Men
`
`ALI
`
`Divorce
`Association
`
`Principal
`
`Standard
`Character
`
`Plus Words
`
`
`
` The American Law Institute Institute Design Principal
`
`
`
`
`
`Principal
`
`Principal
`
`
`
`
`
`

`

`
`
`Disclaimers
`Substantive
`Reg'ster
`Type of
`
`Term
`Mark
`
`Association of
`
`Association
`
`Principal
`
`Design
`(Graphic of
`a Truck)
`
`Plus Words
`
`Principal
`
`Design
`(Eagle &
`Flag) Plus
`
`Words
`
`Title Company
`
`American Title
`
`Company
`
`Principal
`
`Standard
`Principal
`Adoptions
`Adoptions
`
`Character
`
`Standard
`Character
`Motorcycle In-
`
`jury Lawyers
`Defense Lawyers American
`Defense Lawyers
`
`
` Iranian American Bar Association Iranian American Design Principal
`
`
`
`
`
`Design
`(Stylized
`Rose) Plus
`
`Words
`
`Shaman
`
`American
`Shaman
`
`Principal
`
`Standard
`American
`Supplemental
`Medical Experts
`
`Character
`
`The American
`Lawyer
`Supplemental
`Typed
`
`Drawing
`
`The American
`Lawyer
`Principal
`Typed
`
`Drawing
`
`American
`Principal
`Typed
`Lawyer Media
`
`Drawing
`Standard
`The American
`Principal
`Lawyer
`
`Character
`
`National
`
`Italian AInerican
`Bar Association
`
`“Italian American
`Bar Association”
`
`Representing the
`Italian AInerican
`
`Legal
`Community
`
`and “Represent-
`ing the Italian
`American Legal
`Community”
`
`Principal
`
`Design
`(Lady
`Justice)
`Plus Words
`
`LABA
`
`Bar Association
`
`(Star) Plus
`Words
`
`

`

`
`
`
`
`
`
`Design
`(Scales of
`Justice)
`
`Plus Words
`
`American
`
`Legal Services
`ALS
`
`American Legal
`Services
`
`Legal Search
`
`“American”, “1e—
`
`Legal Nurse
`Consultant Cer-
`tification Board
`
`Legal Nurse
`Consultant Cer-
`tification Board
`
`Principal
`
`Principal
`
`Standard
`Character
`
`Principal
`
`Design
`(Scales of
`gal search”, and
`Justice)
`“representation of
`
`Plus Words
`scales ofjustice”
`
`Advancement of
`the American
`
`Legal System
`
`The exhibits relating to the mark JACKSONVILLE DIVORCE LAWYER and
`
`CLEVELAND’S INJURY LAWYER are irrelevant as the proposed mark is not that specific.
`
`The exhibit relating to the mark DRONE LAW Y ER is also irrelevant for obvious reasons.
`
`Also included as exhibits to the Final Action are screen shots of American law—
`
`yers practicing in British law firms, all of whom are Solicitors, not Barristers. There is also in-
`
`cluded a screen shot purporting to be a web page belonging to a former US. Sailor now practic-
`
`
`
`
`
`
`
` Institute for the Institute StandardCharacter Principal
`
`
`
`Disclaimers
`Substantive
`Reg'ster
`Type of
`Geographic
`
`
`Term
`Term
`Mark
`
`Asian American
`
`Bar Association
`ofNew York
`
`Asian American
`Bar Association
`of New York
`
`Principal
`
`Design
`(Dark
`Square
`w/Flower
`
`inside)
`
`Plus Words
`
`Standard
`Cuban-American Bar Association Bar Association
`Principal
`
`Character
`
`Standard
`Bar Association
`Russian American Bar Association
`Supplemental
`
`Character
`
`ing as a Barrister in England. The web page lists his credentials with no mention of any US. law
`
`

`

`schools or admission to any US. state Bar. Apparently, he is, as most Barristers, admitted to the
`
`Bar of England and Wales, but not licensed to practice law in the United States. Neither has any
`
`relevance to the issues before this tribunal; the USPTO cannot grant a trademark in England, nor
`
`does the Application seek such a mark.
`
`The exhibits attached to Applicant’s TEAS Plus Application are PDFs of Appli—
`
`cant’s business card (front and back), his business card holder and a screen shot of Applicant’s
`
`American Barrister web site home page.
`
`III. ARGUMENT:
`
`5
`
`between Barristers, Solicitors and Attorneys. They contain language like “admitted to practice in
`
`As the Final Action merely makes final the refusals of the Office Action, Appli-
`
`cant relies on the arguments made in his Response to Office Action along with the following ad—
`
`ditions necessitated by additional arguments appearing in the Final Action.
`
`A. The Mark Is Not Merely Descriptive of the Services Provided
`
`1. The Office Actions Confuse Barristers with Solicitors and Attorneys
`
`One of the major problems with both Office Actions is that no distinction is made
`
`the US. as well as other countries”, “offices and associated counsel in multiple countries”, “li—
`
`censed to practice law in the US. as well as other countries”, without distinguishing between
`
`Barristers on the one hand, and Solicitors and Attorneys on the other. For example, the term
`
`“counsel” is used to refer generically to lawyers in multiple countries. Yet, as noted below, in
`
`England and Wales, the word “counsel” refers only to Barristers.
`
`The distinction is important to this Application. As noted below, the services de-
`
`scribed in the Application can be performed by either an Attorney, a Solicitor, and some by a
`
`layman. But, no service ordinarily performed by, and customarily associated with, Barristers is
`
`

`

`This distinction, or, more accurately, the failure to distinguish among them, is im-
`
`portant to this appeal. The overriding theme of the Office Action and the Final Action is that the
`
`word BARRISTER is merely descriptive of the service offered. Applicant conclusively proves
`
`below that the stated legal services are provided by Attorneys in the U.S. and Solicitors in the
`
`UK. The listed services are not performed by Barristers in the U.K., and there are no Barristers
`
`practicing as such in the US. The term BARRISTER is a biographical fact of the Applicant, but
`
`not a description of the services offered in New Jersey by the Applicant. The services offered,
`
`BARRISTER, are completely unconnected to the geographic reference, ABIERICAN.
`
`The confusion among the three types of legal service provider is also apparent in
`
`the Attachments to the Final Action. Applicant objects to the submission of screen shots of web
`
`sites of American lawyers, also licensed in Europe and England, as irrelevant to the Within appli—
`
`cation: Jonathan Charles Capp, “admitted to practice law in Europe and the United States”; Opti-
`
`mus Law Group, “American attorneys and practising English solicitors”; and Helen Franzese, “a
`
`dual qualified lawyer in both the U.S. and the UK.” The reason for offering this evidence is to
`
`show that others in the legal profession use their admission in multiple jurisdictions to market
`
`within application. Further, none are of the lawyers cited in the Final Action appear to be Barris—
`
`listed anywhere in the application. In fact, the words court, advocacy, trial and appeal, the core
`
`of what a Barrister does, do not even appear in the Application. As a result the term
`
`BARRISTER does not describe any of the services stated in the Application.
`
`ters.
`
`their services. There is absolutely no nexus between another lawyer’s marketing strategy and the
`
`

`

`2. Barristers Distinguished from Solicitors and Attorneys
`
`Based on the arguments in both Office Actions, it appears necessary to devote
`
`some time and space to the difference between Barristers, Solicitors and Attorneys.
`
`profession.
`
`A. KRALIER, Bewigged and Bewildered? l (2011). There is a huge difference between the
`
`functions of Barristers and Solicitors and the services provided by each.
`
`Unlike in America. . .the English legal profession is what is
`referred to as a “split profession”. This means that there are two
`types of English lawyer: solicitors and barristers. Solicitors are
`overwhelmingly the primary legal professionals in that there are
`more of them, cases come to them first, and they are the more im-
`portant in the vast majority of cases. There are about 110,000 so-
`licitors in England and Wales as compared with about 15,000 bar—
`risters. Of these barristers, 3,000 are at the Employed Bar and the
`rest are self-employed....[W]hile lawyers in the US are called at-
`torneys, that term has not been used in the UK. since the nine—
`teenth century. . .[C]ounsel is another word for barrister or barris—
`ters. . .and the Bar. . .is the collective term for all barristers and their
`
`exchange disclosure materials (discovery), and attend settlement conferences and arbitration or
`
`The key to understanding the interaction between barristers
`and solicitors is knowing that, normally speaking, clients (ordinary
`people who are not lawyers) cannot go directly to barristers for
`help, but must go to solicitors. Solicitors can then get a barrister
`involved if appropriate. The Bar is a “referral profession’; as one
`author put it, solicitors are ‘the GPs of the legal profession’, leav-
`ing barristers as the specialists
`
`...Much lower court litigation and non—court litigation (such as ar—
`bitration) is also handled by solicitors.
`
`Id. at 2. Solicitors also perform virtually all transactional work, such as buying a house, drafting
`
`contracts, tax advice, etc., with Barristers completely out of the picture until a dispute arises
`
`which the Solicitor cannot resolve by other means. Ibid. In practice, Solicitors interview the lay
`
`client, send out the pre-action letters to the adverse party or Solicitor, draft and file the pleadings,
`
`

`

`mediation. It is only after all attempts at settlement have failed, that the Solicitor advises the cli—
`
`ent that a Banister is needed to conclude the matter in court.
`
`Barristers are specialists in three root areas that set them apart from Solicitors.
`
`First, within their relevant fields of litigation, Barristers are the specialists, experts on specific
`
`points of law. Second, Barristers are specialists in court practice and procedure, including trial
`
`tactics and the rules of evidence. Third, Barristers are specialists in courtroom advocacy, argu-
`
`ing and presenting cases in court. Id. at 3.
`
`The differences between Barristers and Solicitors do not stop there. Solicitors
`
`practice in law firms, often with large numbers of Solicitors with ranks and departments, much
`
`like their American counterparts. In fact, many large US. law firms have offices in London and
`
`elsewhere in Europe with the same hierarchy and dozens, some with hundreds, of lawyers.
`
`These are firms of Solicitors, not Barristers. In fact, so similar are American Attorneys to British
`
`set of chambers has its own clerk’s office which fields calls fiom Solicitors and assigns cases to
`
`Solicitors that New Jersey recently joined three dozen other states in becoming a recognized ju-
`
`risdiction with the Solicitors Regulatory Agency. Lawyers licensed in those states can apply to
`
`the SRA and be licensed to practice as a Registered Foreign Lawyer in England and Wales, in
`
`other words, Solicitors, without examination. The purpose was to make it easier for attorneys
`
`with a New Jersey law license to relocate to England or Wales and continue to practice law in
`
`those countries.
`
`This is in sharp contrast to Barristers, the vast majority of which are sole practi-
`
`tioners, practicing in a set of chambers, which is little more than an office sharing arrangement.
`
`Each set of chambers is occupied by Barristers engaged in a few related areas of practice. Each
`
`

`

`each of the Barristers in that set of chambers. In London, the buildings that house most cham—
`
`bers are owned by London’s four Inns of Court. The overwhelming source of revenues for the
`
`Inns of Court is rent from Barristers. Finally, Barristers are regulated by the Bar Standards
`
`Board, which has absolutely nothing to do with Solicitors.
`
`Just as the American Bar Association and the state and county bar associations act
`
`as trade associations for American Attorneys, the General Council of the Bar of England and
`
`Wales, commonly referred to as the Bar Council, serves that function for Barristers. The Law
`
`Society is the trade association for Solicitors. Id. at 15.
`
`9
`
`Barrister is Bencher, an earned title. However, it is also customary for each Inn to award the title
`
`In the U.S., we think of courtroom advocacy as a separate skill; in England and
`
`Wales, it’s a separate profession! They’re called Barristers. Barristers can only be Called to the
`
`Bar of England and Wales by one of London’s four Inns of Court, all beginning with “The Hon-
`
`ourable Society of”. They are: Lincoln’s Inn, Gray’s Inn, The Inner Temple and The Middle
`
`Temple. Applicant was Called to the Bar by the Middle Temple, the most American-fiiendly
`
`Inn, boasting five signers of the Declaration of Independence, and seven signers of the Constitu—
`
`tion. The exclusive right of Call to the Bar extends even to the Crown; not even the monarch has
`
`the authority to Call anyone to the Bar.
`
`In fact, the reverse is actually true. Within each Inn, the rank immediately above
`
`Honorary Bencher to distinguished non-members and royalty. Prince William is an Honorary
`
`Bencher of the Middle Temple, as was his mother, Princess Diana, as is US. Supreme Court
`
`Chief Justice John Roberts and former US. Attorney General Eric Holder. Though they were all
`
`Called to the Bar as Honorary Benchers, none are Barristers. That title must be earned on your
`
`feet; that’s the way Applicant and every other Barrister did it going back almost 700 years.
`
`

`

`3. The Mark Does Not Describe the Services Listed in the Application
`
`It is clear that the major thing that sets Barristers apart from Solicitors is their spe-
`
`cialization in courtroom advocacy, tactics, practice and procedure, be it trial or appellate, all of
`
`which are conspicuously absent from the Application. Nor is BARRISTER descriptive of the
`
`term “attorney services”; as noted above, the word “attorney” has not been used in England for
`
`more than a century. Therefore, the term BARRISTER does not describe any service listed in
`
`the Application.
`
`The Final Action states:
`
`law. When used in connection with the services listed in this ap—
`plication, ANIERICAN BARRISTER immediately tells consumers
`that the applicant, i.e., the provider of the stated services, is an
`AMERICAN by nationality and a BARRISTER by profession.
`
`In this case, AMERICAN BARRISTER immediately de-
`scribes key features of the services and the person who provides
`them. . .The services include various legal services, such as alterna—
`tive dispute resolution, arbitration, attorney services, expert wit-
`ness services in legal matters, legal consultation and document
`preparation and litigation support, in addition online legal news re—
`porting, expert legal commentary services, providing news and in-
`formation in the field of law and online information in the field of
`
`No U.S. court recognizes Barristers as licensed legal service providers; nor are there any English
`
`Final Action, (p.5?). That is absolutely not true! None of the listed services have anything do
`
`with services rendered by a Barrister, as shown above, and as actually argued in the Final Action.
`
`“The record contains the following definition of a BARRISTER: a
`lawyer in England or Wales who is allowed to speak in the higher
`law courts.”
`
`Final Action, (p.9?). In the Application, there is absolutely no mention of England or Wales, or
`
`higher law courts, or any courts at all. None of the legal services listed in the application are
`
`provided by Barristers in England and Wales; as noted above, that is the province of Solicitors.
`
`

`

`or Welsh higher law courts situated anywhere in the US. Finally, the services relating to legal
`
`commentary and news reporting are often done by laymen on both sides of the Pond.
`
`B. The Mark Is Not Primarily Geographically Descriptive of the Stated Services
`
`The Final Action states:
`
`The meaning of this term (referring to AMERICAN) must be ana-
`lyzed in the context of the stated services. Determining the de—
`scriptiveness of a mark is done in relation to an applicant’s ser-
`vices, the context in which the mark is being used and the possible
`significance the mark would have to the average purchaser because
`of the manner of its use or intended use. . .Descriptiveness of a
`mark is not considered in the abstract.
`
`11
`
`Final Action (pp.5-6). Registration was also refused on the grounds that the mark is primarily
`
`geographically descriptive. Not true. That could be true if we were in England and Applicant
`
`wanted to trademark the name, "English Barrister" or "British Barrister". Or, if we were in
`
`Australia and Applicant wanted to trademark the name, "Australian Barrister" or "Aussie
`
`Barrister". In both those cases the term is descriptive because Barristers are recognized in those
`
`countries, among others. The same might be true if Applicant wanted to trademark the name
`
`"American Solicitor" in the United States. We do have Solicitors in the States, as evidenced by
`
`the lawyers for the USPTO in the Newbridge Cutlery case, all of whom were Solicitors, some
`
`bearing the title Associate Solicitor, all of whom are, in fact, American Solicitors. We even have
`
`a Solicitor General of the United States.
`
`But, in the US, there are no Barristers. They is no licensing of Barristers any—
`
`where in the States, and, as far as Applicant knows, no lawyers in in any level of American gov-
`
`ernment bear the title, "Barrister". There are no Barristers or Associate Barristers in the USPTO
`
`or any other federal agency, and no Barrister General of the United States. Barristers are simply
`
`unrecognized in American jurisprudence; "American Barrister" does not exist as a matter of law.
`
`

`

`It is the same as the term "American King"; there is no such thing. George Washington was of—
`
`fered the job and he turned it down.
`
`When someone reads "American Barrister" on Applicant’s business card, there
`
`are invariably one of two reactions. Lawyers usually say something like, "American Barrister?
`
`What the Hell is that?" Laymen simply ask, "What's a Barrister?" One native Japanese woman
`
`asked if Applicant was a bartender. Having studied Japanese, Applicant knows spoken Japanese
`
`is phonetically based, and the Japanese make no attempt to pronounce foreign words correctly;
`
`she apparently confused BARRISTER with "barista", those who make exotic coffee concoctions
`
`at places like Starbucks. No one relates it to the specialized skill of courtroom advocacy, which,
`
`as a separate profession is a foreign concept, both literally and figuratively.
`
`When the average American purchaser of legal services needs a lawyer, she will
`
`either get a recommendation from a friend, or do an online search by the type of lawyer needed,
`
`i.e., criminal defense, personal injury, real estate, tax, etc. No one on this side of the Pond is go-
`
`12
`
`ing to say, "I need a Barrister." No, they are going to say something like, "I need a good [area of
`
`law] lawyer." Why? Because Barristers don't exist here. And if Barristers did exist in the U.S.,
`
`people would go to Solicitors first. As a result, most Americans don’t know what a Barrister is
`
`or does, and many have never even heard the word Barrister, or Solicitor for that matter.
`
`Put simply, Barristers do not provide legal services on this side of the Pond, attor-
`
`neys do. Applicant’s license as an Attorney at Law of the State of New Jersey should not be
`
`confused with his degree as a Barrister in England and Wales. (It is actually a degree, the degree
`
`of Utter Barrister.) Applicant can appear in New Jersey courts, not because he is a Barrister, but
`
`because Applicant is a New Jersey Attorney. But, Applicant is not seeking to trademark the
`
`name "New Jersey Attorney", or even "American Attorney".
`
`

`

`This Application process is a perfect example. If Applicant were a mere Barrister
`
`of a lay client, he would be turned away. Why? Because neither tribunal recognizes Barristers;
`
`only lawyers admitted to practice before a Federal court may appear before this tribunal, and
`
`only those admitted to practice before the Court of Appeals for the Federal Circuit may appear in
`
`that court.
`
`attempting to appear before this tribunal or the Court of Appeals for the Federal Circuit on behalf
`
`13
`
`Two words, each having meaning when used separately, may mean nothing when
`
`juxtaposed in the same phrase. The phrase "American King", is a prime example. There is no
`
`doubt that Americans exist, and some countries still have heads of state called kings. But there is
`
`no such thing as an "American King", and there never was. King George III was the King of
`
`England when the 13 original states were colonies. He was never an American King.
`
`The same is true of the phrase "American Barrister". Americans, of course, exist,
`
`and some countries separately educate, license and regulate Barristers, but the U.S. is not one of
`
`them. There is no such thing as an "American Barrister" and there never was. Even John
`
`Adams, who successfully defended the British soldiers in the so-called "Boston Massacre", was
`
`not a Barrister. Educated at Harvard, not at one of London’s Inns of Court, he appeared as lead
`
`trial counsel in a case in which the prosecuting authority was actually The Crown. Being a Bar—
`
`rister was never a requirement for to practice before any court on this side of the Pond, American
`
`or British. It hasn't change in 248 years. We still don't recognize Barristers.
`
`As quoted in Applicant’s Response to Office Action, “The word “primarily”
`
`should not be overlooked, for it is not the intent of the federal statute to refuse registration of a
`
`mark where the geographic meaning is. . .Imconnected with the goods.” McCarthy on Trademarks
`
`and Unfair Competition, Fourth Edition, §14:28.
`
`

`

`The bottom line is that Barristers do not and cannot provide legal services any—
`
`legal services to the American public in exchange for monetary compensation. My right to offer
`
`legal services to the American public is solely dependent on my good standing as a member of a
`
`state Bar, not because I was Called to the Bar of England and Wales. On this side of the Pond, I
`
`am not a Barrister by profession; Barrister is a biographical fact, just like Marine. I merely offer
`
`the services of a New Jersey Attorney.
`
`where in America. "American Barrister" is not and cannot be descriptive of any entity that offers
`
`BARRISTER accorded any right to provide legal services in America. There is simply no such
`
`C. AMERICAN Standard Character Marks Listed on the Principal Register
`
`A review of the above summary of the Attachments to the Office Actions indi-
`
`cates that there are several stande character service marks, beginning with or including the
`
`word AMERICAN, which are listed on the Principal Register. The substantive part of each of
`
`those marks, Divorce Association for Men, Association of Motorcycle Injury Lawyers,
`
`Adoptions, Legal Nurse Consultant Certification Board, and Institute for the Advancement of the
`
`American Legal System, are all things which exist in the United States. The same is true of “Bar
`
`Association” and “Lawyer” as used in “Cuban-American Bar Association” and “The American
`
`Lawyer” (a legal publication), also standard character marks on the Principal Register.
`
`Apparently the word “American” is not primarily geographically descriptive and
`
`the substantive words are not merely descriptive. Yet, the substantive words accurately describe
`
`the service actually provided in the geographic mass called America.
`
`In sharp contrast, as noted throughout the Application process and this appeal, the
`
`term BARRISTER does not describe any of the services listed in the Application, nor is a
`
`

`

`thing as a BARRISTER in the American legal profession. As a result, the substantive word
`
`BARRISTER does not describe any service provided in the geographic mass called America.
`
`As noted elsewhere herein, as Barristers are accorded no rights to appear in any
`
`U.S. court, no one in need of legal services is going to look for a Barrister. They will look for a
`
`lawyer experienced in a particular subject area of law. Accordingly, the term AMERICAN
`
`BARRISTER is useless to the average American in need of a lawyer.
`
`Accordingly, AMERICAN BARRISTER should be accorded the same privilege
`
`as AMERICAN ADOPTIONS and AMERICAN DIVORCE ASSOCIATION FOR MEN, and
`
`the other above-mentioned standard character marks, and listed on the Principal Register.
`
`IV.
`
`CONCLUSION:
`
`In view of the foregoing, it is clear that the mark AMERICAN BARRISTER is
`
`not merely descriptive Within the meaning of §2(e)(l) of the Trademark Act, 15 U.S.C.
`
`§1052(e)(l), nor primarily geographically descriptive within the meaning of §2(e)(2) of the
`
`Trademark Act, 15 U.S.C. §1052(e)(2), of the services stated in the Application. The mark
`
`AMERICAN BARRISTER is arbitrary and registrable on the Principal Register. Applicant re-
`
`spectfully requests that above refusals to register the mark be reversed.
`
`Olej arLLPgd) American-Barristerxom
`
`is/ Robert .I. Olejar
`Robert J. Olejar, Esq, Applicant Pro Se
`11 Morey Lane
`Randolph, NJ 07869-4628
`(201) 400—8351
`
`Respectfully submitted,
`
`Dated: October 23, 2015
`
`