This Opinion is not a
`Precedent of the TTAB
`
`
`
`
`
`Mailed: October 19, 2018
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`In re Michael Moureau Wilson
`_____
`
`Serial No. 87240575
`_____
`
`Joshua Gerben and Eric J. Perrott of Gerben Law Firm PLLC,
`for Michael Moureau Wilson.
`Meghan Reinhart, Trademark Examining Attorney, Law Office 108,
`Steven Berk, Managing Attorney.
`
`
`Before Ritchie, Kuczma and Adlin,
`Administrative Trademark Judges.
`
`_____
`
`
`Opinion by Kuczma, Administrative Trademark Judge:
`Michael Moureau Wilson (“Applicant”) seeks registration on the Principal
`
`Register of OUR LAWYERS ARE DOCTORS (in standard characters) for:
`
`“Legal services,” in International Class 45.1
`The Trademark Examining Attorney refused registration of Applicant’s applied-
`
`for mark on the following grounds: (1) it is a slogan or term that does not function as
`
`
`1 Application Serial No. 87240575 was filed on November 17, 2016, based upon Applicant’s
`claim of first use anywhere and first use in commerce since at least as early as January 1,
`2001.
`
`

`

`Serial No. 87240575
`
`
`
`a service mark to indicate the source of Applicant’s services, Trademark Act Sections
`
`1-3 and 45, 15 U.S.C. §§ 1051-1053, 1127; (2) it merely describes a feature or
`
`characteristic of Applicant’s services, Trademark Act Section 2(e)(1), 15 U.S.C. § 1052
`
`(e)(1); and (3) Applicant’s allegation of five years’ use of the applied-for mark is
`
`insufficient to show acquired distinctiveness because the applied-for mark is highly
`
`descriptive.
`
`After the Examining Attorney made the refusals final, Applicant appealed to this
`
`Board. We affirm the refusals to register.
`
`A. Does the Applied-For Mark Function as a Mark?
`
`We begin by considering whether Applicant’s applied-for mark functions as a
`
`service mark to indicate the source of Applicant’s services. Trademark Act Sections
`
`1-3 and 45, 15 U.S.C. §§ 1051-1053, 1127. To be registrable as a service mark, the
`
`applied-for mark must identify the source of the services recited in the application
`
`and distinguish them from the services of others. “Implicit in this definition is a
`
`requirement that there be a direct association between the mark sought to be
`
`registered and the [services] specified in the application, that is, that the mark be
`
`used in such a manner that it would be readily perceived as identifying the specified
`
`[services] and distinguishing a single source or origin for the [services].” In re
`
`Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992); see also In re
`
`Roberts, 87 USPQ2d 1474, 1478 (TTAB 2008). Not every word or symbol which
`
`appears in connection with an entity’s services functions as a service mark. In re
`
`Safariland Hunting, 24 USPQ2d at 1381; In re Remington Prods. Inc., 3 USPQ2d
`
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`

`

`Serial No. 87240575
`
`
`
`1714, 1715 (TTAB 1987). Whether the slogan functions as a service mark depends on
`
`how it would be perceived by the relevant public. In re Eagle Crest, Inc., 96 USPQ2d
`
`1227, 1229 (TTAB 2010); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862 (TTAB
`
`2006). “The more commonly a [slogan or term] is used, the less likely that the public
`
`will use it to identify only one source and the less likely that it will be recognized by
`
`purchasers as a trademark [or service mark].” In re Hulting, 107 USPQ2d 1175, 1177
`
`(TTAB 2013) (quoting In re Eagle Crest, 96 USPQ2d at 1229).
`
`According to the Examining Attorney, the applied-for mark OUR LAWYERS ARE
`
`DOCTORS consists of terms that are commonly used by those in Applicant’s trade to
`
`merely convey information about their services.2
`
`The Examining Attorney’s position is supported by the following evidence showing
`
`that firms offering legal services provided by lawyers who are also doctors commonly
`
`use the terms “lawyers” and “doctors” together, sometimes using the identical
`
`language to that in Applicant’s proposed mark:
`
`• Kline & Specter webpage sub-headline stating “The
`Doctor/Lawyer Team” with the text beginning “Kline &
`Specter, PC, has five lawyers who are also doctors . . .”
`(March 2, 2017 Office Action, TSDR 4)3
`• LAWMD.COM webpage stating in the first paragraph
`“many of our lawyers are doctors as well as skilled trial
`lawyers” (March 2, 2017 Office Action, TSDR 5)
`• Sacks, Leichter & Roskin webpage stating in a sub-
`headline near the top of the page “One of the Few Law
`Firms Where The Lawyers Are All Board Certified
`Physicians or Doctors,” also mentioning “Our medical
`
`2 Examining Attorney’s Appeal Brief (6 TTABVUE 6).
`3 References to the TSDR database are to the downloadable .pdf version.
`
`- 3 -
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`

`

`Serial No. 87240575
`
`
`
`malpractice lawyers are all board certified physicians or
`doctors . . . ” and “one of the only medical malpractice
`law firms in the United States where the lawyers are
`all board certified physicians or doctors” (March 2, 2017
`Office Action, TSDR 6)
`• CHH Cirignani Heller Harman webpage stating in a
`sub-headline “A Firm With Attorneys Who Are Also
`Board-Certified Physicians” and also mentioning that
`“two of our lawyers are also doctors” (March 2, 2017
`Office Action, TSDR 7)
`• Cullan & Cullan M.D., J.D. webpage stating in sub-
`heading “Nursing Home Lawyers who are also Doctors”
`and in the text “Our lawyers are also doctors . . .” and
`“Our AV rated lawyers are also doctors . . . ”; a box near
`the bottom of the page is entitled “Working with
`Nursing Home Lawyers who are also Doctors” (March
`2, 2017 Office Action, TSDR 8)
`• Gershon Willoughby & Getz webpage
`from
`<www.medical malpracticedoctors.com> has section
`beginning “Our lawyers are doctors” (May 26, 2017
`Office Action, TSDR 8)
`• Mahoney Law Firm webpage has the heading “A
`Lawyer Who is Also a Doctor” above the entry for
`“Attorney Dennis Mahoney” who “is also a licensed
`medical doctor.” (See February 28, 2018 Office Action,
`TSDR 8)
`• Nudelman & Associates webpage with the headline
`“Sometimes you need a lawyer who is also a doctor.” and
`then follows that with information that firm’s attorney,
`Mitchell S. Nudelman is a lawyer and a doctor
`(February 28, 2018 Office Action, TSDR 10)
`• Ramji Law Group webpage with heading “Lawyer &
`Doctor” “The Lawyer who is also a Doctor.” (February
`28, 2018 Office Action, TSDR 12)
`• Schwalben Law Firm webpage contains sub-heading
`“Legal Assistance From A Lawyer Who Is A Doctor”
`(February 28, 2018 Office Action, TSDR 14)
`
`- 4 -
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`

`

`Serial No. 87240575
`
`
`
`• Ted A. Greve & Associates website contains sub-
`heading “Talk to the Lawyer Who is Also a Doctor” and
`also notes later in another page that firm has “A lawyer
`who is also a doctor” (February 28, 2018 Office Action,
`TSDR 18, 20)
`• Law Offices of John C. Dorn webpage contains the
`wording “Who better than a lawyer who is also a doctor
`to have on your side.” (February 28, 2018 Office Action,
`TSDR 22)
`• The Rich Firm PC website stating “Several of our
`lawyers are also doctors . . . ” (February 28, 2018 Office
`Action, TSDR 24)
`• Florida Trial MD webpage states “. . . who better to have
`on your side that a lawyer who is also a medical doctor?”
`and
`that
`its
`trial
`team consists of both
`“a
`lawyer/medical doctor and a Board Certified Civil Trial
`Lawyer” (February 28, 2018 Office Action, TSDR 27)
`• Jack Tolliver, M.D. webpage contains the sub-heading
`“Our Unique Doctor-Lawyer Medical Malpractice
`Experience,” describes the lawyer at the firm as “a
`doctor and personal injury lawyer” and has a link
`entitled “The Lawyer-Doctor edge” (February 28, 2018
`Office Action, TSDR 28)
`• RossFellerCasey law firm webpage contains the sub-
`heading “Our Team of Ivy League Educated Doctors”
`and describes its team as “consist[ing] of two of the
`nation’s leading physicians – one of whom is also a
`lawyer” (February 28, 2018 Office Action, TSDR 31)
`Since it is common for lawyers to promote their legal services by advertising that they
`
`are also doctors, the Examining Attorney argues that the applied-for mark OUR
`
`LAWYERS ARE DOCTORS merely conveys an informational message about
`
`Applicant’s business, and does not distinguish Applicant’s services from those of
`
`others.
`
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`

`

`Serial No. 87240575
`
`
`
`Applicant contends that it uses OUR LAWYERS ARE DOCTORS in a manner
`
`calculated to project a single source or origin for his services,4 arguing that the
`
`evidence “does not ‘demonstrate a competitive need for others to use’ this term”
`
`because only a “de minimus” number of attorneys who are physicians “use the phrase
`
`‘our lawyers are doctors’ in their practice.”5
`
`Applicant further argues that competitors would not be prejudiced by the
`
`registration of his applied-for mark because none of the evidence uses the exact
`
`phrase OUR LAWYERS ARE DOCTORS, citing for example, “CONSULT WITH AN
`
`ATTORNEY WHO HAS ALSO PRACTICED MEDICINE” and “TALK TO THE
`
`LAWYER WHO IS ALSO A DOCTOR.”6 Applicant’s argument ignores Gershon
`
`Willoughby & Getz’s webpage, which uses the exact phrase, as well as the several
`
`firms that use very similar phrases.
`
`
`4 Applicant’s Appeal Brief (4 TTABVUE 5).
`5 Applicant’s Appeal Brief (4 TTABVUE 7). Applicant argues that for a phrase, like the
`applied-for mark, to never act as a source identifier, requires overwhelming evidence which
`is a very high standard of proof for the USPTO to establish that his mark fails to function as
`a service mark. Applicant also argues that this case presents a “mixture of evidence” that
`does not rise to the required clear evidence showing that the phrase is incapable of trademark
`protection. Moreover, any doubt regarding failure to function should be resolved in
`Applicant’s favor. Applicant’s Appeal Brief (4 TTABVUE 5). However, the cases cited by
`Applicant in support of his argument include In re Trek 2000, 97 USPQ2d 1106 (TTAB 2010)
`and In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143
`(Fed. Cir. 1987). Those cases, unlike the present case, involved marks that were refused
`registration as generic terms. Here, Applicant’s mark is refused because the manner in which
`the applied-for mark is being used does not support a finding that potential consumers would
`perceive it as a trademark. See In re Niagara Frontier Services, Inc., 221 USPQ 284 (TTAB
`1983) (WE MAKE IT, YOU BAKE IT! held not merely descriptive, but refusal based on failure
`to function as a service mark affirmed).
`6 Applicant’s Appeal Brief (4 TTABVUE 6) citing to February 28, 2018 Final Office Action at
`TSDR 14, 18. The page at TSDR 14 cited by Applicant also contains a subtitle entitled “Legal
`Assistance From A Lawyer Who Is A Doctor,” providing another example of the close
`association of “Lawyer” and “Doctor” by law firms involved in personal injury claims.
`
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`

`

`Serial No. 87240575
`
`
`
`Additionally, Applicant notes that his search of the phrase “our doctors are lawyers”
`
`brings up three “hits” showing third parties using the phrase in their advertising.7
`
`Since Applicant did not provide any information regarding either the terms used in
`
`his search request, or all of the search results identified by the search, the three
`
`results he identified have been considered, but are necessarily limited.
`
`Looking at all of the evidence showing that lawyers commonly tout that they are
`
`also doctors, whether or not the exact phrase OUR LAWYERS ARE DOCTORS is
`
`used, we find that the proposed mark merely informs consumers that attorneys
`
`providing Applicant’s legal services are also doctors. There is nothing unusual about
`
`the phrase, its meaning or the way in which it is presented in connection with the
`
`identified legal services. Consumers will not perceive the applied-for mark as
`
`identifying the source of Applicant’s services. Rather, they will understand the
`
`wording to mean that Applicant’s lawyers are doctors.
`
`Applicant argues that consumers are used to seeing the phrase “OUR _____ ARE
`
`_____” as a trademark or service mark despite the fact that it has some informational
`
`
`7 The references are mentioned in Applicant’s February 6, 2018 Response to Office Action. In
`the Response, Applicant notes that the first reference is an advertisement for an attorney
`stating that “Two of our lawyers are doctors.” See <http://leadinglawyers.com/attyprofile.cfm
`?TOCUID=1067497>. The second reference is for a competitor’s ad using “the phrase ‘OUR
`LAWYERS ARE MEDICAL DOCTORS’ prominently in the header” followed by use of “Our
`lawyers are doctors. . . .” to begin a paragraph in the text. See <https://medical
`malpracticedoctors.com/washington-birth-injury-malpractice-lawyers/>. However, a copy of
`one page from that website containing the language “Our Lawyers are Medical Doctors,” was
`attached to the Response. The third reference is a page from <lawmd.com was also submitted
`with the Response, TSDR 6, 35-36.
`
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`

`Serial No. 87240575
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`
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`context, citing registered trademarks using “this type of structure on the Federal
`
`Register, including:”8
`
`PEOPLE ARE OUR POWER, Reg. No. 4988402
`
`YOUR RESULTS ARE OUR REPUTATION, Reg. No. 5096697
`
`SPECIALISTS ARE OUR SPECIALTY, Reg. No. 5049519
`
`OUR PEOPLE ARE EVERYTHING, Reg. No. 5046691
`
`KIDS ARE OUR WORLD, Reg. No. 4638536
`
`BARGAINS ARE OUR BUSINESS, Reg. No. 4988167
`
`AT EDC - ENZYMES ARE OUR BUSINESS, Reg. No. 4861845
`
`AGENTS ARE OUR PRIORITY, Reg. No. 4772348
`
`FUR, FEATHER, OR SCALES... PETS ARE OUR PURPOSE!, Reg. No.
`4708183
`
`HEARTS ARE THE CORE OF OUR PRACTICE, Reg. No. 4217841
`
`OUR BALLS ARE HARDER, Reg. No. 3876979
`
`SOLUTIONS ARE OUR BUSINESS, Reg. No. 5316450
`
`OUR BOWLS ARE BETTER THAN THEIRS, Reg. No. 4243557
`
`UNDERLAYMENTS ARE OUR BUSINESS, Reg. No. 4291471
`
`OUR BOARDS ARE BETTER, Reg. No. 4175491
`
`OUR PRODUCTS ARE STRONG, BUT OUR STRENGTH IS IN OUR
`PEOPLE., Reg. No. 3684482
`
`OUR LEADS ARE SWEET, Reg. No. 3865652
`
`
`8 Applicant’s Appeal Brief (4 TTABVUE 9). Registration No. 4040615 for the mark PEOPLE
`ARE OUR MOST IMPORTANT ASSETS! was cancelled on May 25, 2018 and has not been
`considered.
`
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`Serial No. 87240575
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`
`
`OUR OPPORTUNITIES ARE ALWAYS GROWING, Reg. No. 4347062
`
`OUR ASSETS ARE LIQUID, Reg. No. 3853506
`
`“OUR CLIENTS ARE OUR FUTURE,” Reg. No. 3461797
`
`“OUR EMPLOYEES ARE OUR FUTURE,” Reg. No. 3466660
`
`OUR FRANKFURTERS ARE TASTIER THAN FILET MIGNON, Reg. No.
`2653734
`
`
` OUR CUSTOMERS ARE THE COOLEST, Reg. No. 2740048
`
`These marks are different than Applicant’s mark. Only twelve of them have the
`
`same format as Applicant’s mark, and of those twelve, only four are comprised of “Our
`
`_____ Are _____.” As noted by the Examining Attorney, one of those registered marks
`
`consists entirely of descriptive wording, namely, “OUR BOARDS ARE BETTER” and
`
`is a laudatory term registered under § 2(f). The three remaining registered marks are
`
`suggestive and, as such, are not analogous to Applicant’s descriptive mark (see B.
`
`Merely Descriptive discussion below). Moreover, Applicant’s proposed mark contains
`
`two nouns both of which describe the same person, while none of the marks on which
`
`Applicant relies do so. In any event, each case must be decided on its own merits.
`
`Even if the marks in the cited registrations have some characteristics similar to
`
`Applicant’s applied-for mark, those registrations do not bind the Examining Attorney
`
`or the Board. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
`
`2001).
`
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`

`

`Serial No. 87240575
`
`
`
`Finally, Applicant argues that the wording of his asserted mark is physically
`
`separate from the other textual matter.9 Applicant’s specimen shows the applied-for
`
`mark featured in the upper-right hand corner with the words OUR and ARE in gray
`
`lettering, and LAWYERS and DOCTORS in white lettering; Applicant contends that
`
`nothing else on the website uses this alternative coloring scheme; and it is not used
`
`in text within a paragraph or even below the practice name (shown below is the top
`
`portion
`
`of
`
`the
`
`full webpage
`
`submitted
`
`as Applicant’s
`
`specimen):
`
`
`Applicant argues that OUR LAWYERS ARE DOCTORS “is set-aside from all
`
`informational matter, occupies its own real estate on the website and establishes
`
`itself as a source-identifier to consumers.”10 Applicant concludes that his “[c]lients
`
`perceive ‘Our Lawyers are Doctors’ as a source identifying phrase for legal services,
`
`pointing directly to Applicant.”11 However, there is no evidence showing the
`
`perception of Applicant’s clients. More importantly, the placement of the proposed
`
`
`9 Applicant’s Appeal Brief (4 TTABVUE 9).
`10 Applicant’s Appeal Brief (4 TTABVUE 10).
`11 Applicant’s Appeal Brief (4 TTABVUE 11).
`
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`Serial No. 87240575
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`
`
`mark is not enough in itself to establish that it serves as a source identifier when it
`
`is so commonly used, informative and descriptive.
`
`Even though a slogan may be used in the sale or advertising of services, it is not
`
`registrable unless it is used as a mark, namely, in a manner clearly calculated to
`
`project to purchasers or prospective purchasers encountering the notation in question
`
`in the applicable marketplace environment a single source or origin of the services in
`
`question. In re Morganroth, 208 USPQ 284, 287 (TTAB 1980). The more generalized
`
`or commonplace and widely used the matter is, the more likely it would be perceived
`
`as merely informational and the less likely it would be perceived as indicating the
`
`source of the relevant goods/services. See In re Eagle Crest, 96 USPQ2d at 1229.
`
`It is well settled that statements including informational slogans that would
`
`ordinarily be used in business or in the particular trade or industry are not
`
`registrable. See In re Hulting, 107 USPQ2d at 1177 (“No More RINOs!” conveys a
`
`political slogan devoid of source-identifying significance and fails to function as a
`
`mark); In re Eagle Crest, 96 USPQ2d at 1232 (ONCE A MARINE, ALWAYS A
`
`MARINE would not be perceived as a trademark but rather as an informational
`
`slogan “to express support, admiration or affiliation with the Marines”); In re Volvo
`
`Cars of N. Am., Inc., 46 USPQ2d 1455, 1460-61 (TTAB 1998) (DRIVE SAFELY not
`
`registrable because it would be perceived only as an everyday, commonplace safety
`
`admonition and not as a trademark for “automobiles and structural parts therefor”);
`
`In re Manco, Inc., 24 USPQ2d 1938, 1942 (TTAB 1992) (THINK GREEN and design
`
`not registrable because it would be perceived only as an informational slogan
`
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`

`Serial No. 87240575
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`
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`encouraging environmental awareness and not as a trademark for weather stripping
`
`and paper products). Based on the evidence submitted by the Examining Attorney
`
`showing fairly widespread use of similar phrases in advertising for legal services,
`
`Applicant’s applied-for mark would be perceived as a merely informational slogan.
`
`B. Merely Descriptive
`
`In the alternative, registration of the applied-for mark was refused on the ground
`
`that if Applicant’s Mark does function as a trademark, then it is merely descriptive
`
`of Applicant’s services. We address this refusal in the event our decision is appealed.
`
`A term is merely descriptive within the meaning of § 2(e)(1) of the Trademark Act,
`
`15 U.S.C. § 1052(e)(1), if it immediately conveys knowledge of a quality,
`
`characteristic, function, feature, purpose or use of the goods or services with which it
`
`is used. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217,
`
`1219 (Fed. Cir. 2012); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
`
`1987). Whether a particular term is merely descriptive must be determined not in the
`
`abstract, but in relation to the goods or services for which registration is sought, the
`
`context in which the term is used, and the possible significance that the term is likely
`
`to have to the average prospective purchaser encountering the goods or services in
`
`the marketplace. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831
`
`(Fed. Cir. 2007); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218
`
`(CCPA 1978); In re Phoseon Technology Inc., 103 USPQ2d 1822, 1823 (TTAB 2012).
`
`It is settled that the question is not whether someone presented with only the applied-
`
`for mark could guess the identified services. Rather, the question is “whether
`
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`Serial No. 87240575
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`
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`someone who knows what the [services] are will understand the mark to convey
`
`information about them.” DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd.,
`
`695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (citing In re Tower Tech Inc.,
`
`64 USPQ2d 1314, 1316-17 (TTAB 2002)); In re Swatch Group Management Services
`
`AG, 110 USPQ2d 1751, 1762 n.54 (TTAB 2014).
`
`A descriptive term immediately and directly conveys some information about the
`
`services. See Stoncor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 111
`
`USPQ2d 1649, 1652 (Fed. Cir. 2014) (citing DuoProSS Meditech v. Inviro Med.
`
`Devices, 103 USPQ2d at 1755). If, on the other hand, OUR LAWYERS ARE
`
`DOCTORS requires imagination, thought, and perception to arrive at the qualities
`
`or characteristics of the services, then the mark is suggestive. In re MBNA America
`
`Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003); In re Franklin
`
`County Historical Society, 104 USPQ2d 1085, 1087 (TTAB 2012).
`
`A combination of descriptive words may result in an arbitrary unitary designation
`
`which is registrable. Whether a term, such as OUR LAWYERS ARE DOCTORS, may
`
`achieve registration depends on whether, in combination, a new and different
`
`commercial impression is achieved and/or the term so created imparts a bizarre or
`
`incongruous meaning as used in connection with the goods or services. In re Nat’l
`
`Shooting Sports Foundn., Inc., 219 USPQ 1018, 1020 (TTAB 1983); see also Roux
`
`Labs., Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (CCPA 1970) (“The mere fact
`
`that a combination of words or a slogan is adopted and used by a manufacturer with
`
`the intent Clairol has manifested here—that it identify its goods and distinguish
`
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`Serial No. 87240575
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`
`
`them from those of others—does not necessarily mean that the slogan accomplishes
`
`that purpose in reality.”).
`
`Here, as shown in Applicant’s specimen, the terms “lawyers” and “doctors”
`
`immediately convey information about Applicant’s legal services, i.e., the services are
`
`provided by lawyers/doctors (lawyers who are also doctors). Thus, the terms “lawyers”
`
`and “doctors” describe features or characteristics of Applicant’s legal services. That
`
`Applicant’s website refers to “Dr. Michael M. Wilson M.D., J.D.” in large letters near
`
`the top of the specimen underscores the descriptive significance of OUR LAWYERS
`
`ARE DOCTORS in relation to the services at issue. Consumers do not have to exercise
`
`“mature thought or follow a multi-stage reasoning process” to determine the
`
`characteristics of Applicant’s services. In re N.C. Lottery, 123 USPQ2d 1707, 1710
`
`(Fed. Cir. 2017) (commercial context demonstrates that a consumer would
`
`immediately understand the intended meaning of FIRST TUESDAY; the evidence
`
`shows that the mark is less an identifier of the source of goods or services and more
`
`a description of a feature or characteristic of those goods or services); In re Phoseon
`
`Tech., 103 USPQ2d at 1826. No imagination, thought or perception is needed to
`
`understand the nature of Applicant’s services. As set forth in Applicant’s specimen:
`
`“The Distinguishing Factor of Our Washington DC Medical Malpractice Team…Our
`
`principal attorney Michael Wilson is both a lawyer and a physician, with legal
`
`and medical degrees from . . . .” Therefore, when viewed in relation to the recited legal
`
`services Applicant’s proposed mark is merely descriptive. In short, the evidence of
`
`record leaves no doubt that the wording OUR LAWYERS ARE DOCTORS merely
`
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`Serial No. 87240575
`
`
`
`describes Applicant’s legal services which are provided by lawyers who are also
`
`doctors.
`
`Alternatively, Applicant submits a claim of acquired distinctiveness under § 2(f)
`
`of the Trademark Act, 15 U.S.C. § 1052(f), based solely on use of the applied-for mark
`
`for at least five years.12 While Applicant argues that the applied-for mark has
`
`acquired distinctiveness “as shown by over 13 years of use and the extensive goodwill
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`built up by Applicant,”13 use of the mark “by over 13 years” and “extensive goodwill”
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`is unsupported by any evidence. Applicant’s claim of distinctiveness based on at least
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`five years of use is unpersuasive. As shown in the specimen and discussed above,
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`Applicant advertises and offers legal services by lawyers who are also doctors.
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`Accordingly, the term OUR LAWYERS ARE DOCTORS is so descriptive of
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`Applicant’s services that much more than an affidavit of “at least five years of use” is
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`required to show that the applied-for mark has become distinctive of Applicant’s
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`services. Applicant’s § 2(f) claim of acquired distinctiveness is therefore not
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`acceptable to overcome the § 2(e)(1) merely descriptive refusal. In re La. Fish Fry
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`Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1265 (Fed. Cir. 2015) (Board acted
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`within its discretion in not accepting applicant’s allegation of five years’ use given the
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`highly descriptive nature of the mark, as statute does not require the USPTO to
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`accept five years’ use as prima facie evidence of acquired distinctiveness); In re
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`12 See July 27, 2017 Response to Office Action at TSDR 2. We note that claiming
`distinctiveness in the alternative is not an admission that the proposed mark is not
`inherently distinctive. In re Mine Safety Appliances Co., 66 USPQ2d 1694, 1695 n.3 (TTAB
`2002).
`13 Applicant’s Appeal Brief (4 TTABVUE11).
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`- 15 -
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`

`

`Serial No. 87240575
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`
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`Thacker, 228 USPQ 961, 963 (TTAB 1986) (the term “SPORTING ARMS
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`ORDNANCE TECHNICIAN” held highly descriptive so a “simple” affidavit of use
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`was insufficient to show that the mark had become distinctive of applicant’s services).
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`Even if Applicant was the only user of OUR LAWYERS ARE DOCTORS (and the
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`evidence reveals he is not), that does not negate the highly descriptive nature of the
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`wording or suffice to establish acquired distinctiveness. Apollo Med. Extrusion Techs.,
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`Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1854 (TTAB 2017); see also In
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`re Bailey Meter Co., 102 F.2d 843, 41 USPQ 275, 276 (CCPA 1939); In re Fat Boys
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`Water Sports LLC, 118 USPQ2d 1511, 1514-15 (TTAB 2016); In re Carlson, 91
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`USPQ2d 1198, 1203 (TTAB 2009).
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`Decision: The refusals to register Applicant’s applied-for mark OUR LAWYERS
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`ARE DOCTORS under § 2(e)(1) are affirmed. Additionally, Applicant has not
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`established that the applied-for mark has acquired distinctiveness under § 2(f) of the
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`Trademark Act.
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`- 16 -
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`