From: Reinhart, Meghan
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`Sent: 7/3/2018 9:53:58 AM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. TRADEMARK APPLICATION NO. 87240575 - OUR LAWYERS ARE DOCTORS - 06128-0001 -
`EXAMINER BRIEF
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`*************************************************
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`Attachment Information:
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`Count: 1
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`Files: 87240575.doc
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`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
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`U.S. APPLICATION SERIAL NO. 87240575
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`MARK: OUR LAWYERS ARE DOCTORS
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`CORRESPONDENT ADDRESS:
` ERIC PERROTT
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` GERBEN LAW FIRM PLLC
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`*87240575*
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`GENERAL TRADEMARK INFORMATION:
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`http://www.uspto.gov/trademarks/index.jsp
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` 1050 CONNECTICUT AVE NW SUITE 500
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` WASHINGTON, DC 20036
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`TTAB INFORMATION:
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`http://www.uspto.gov/trademarks/process/appeal/index.js
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`APPLICANT: Wilson, Michael Moureau
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`CORRESPONDENT’S REFERENCE/DOCKET NO:
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` 06128-0001
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`CORRESPONDENT E-MAIL ADDRESS:
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` jgerben@gerbenlawfirm.com
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`EXAMINING ATTORNEY’S APPEAL BRIEF
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`STATEMENT OF THE CASE
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`Applicant has appealed the undersigned examining attorney’s final refusal to register the mark
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`“OUR LAWYERS ARE DOCTORS” on the grounds that it is a slogan/terms that does not function as a
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`service mark to indicate the source of applicant’s legal services and to identify and distinguish them
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`from others. Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127.
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`In addition, applicant has appealed the final refusal to register the mark on the grounds that it is
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`(1) merely descriptive of a feature or characteristic of applicant’s legal services, and (2) has not acquired
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`distinctiveness in connection therewith. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), (f); see
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`TMEP §§1209.01(b), 1209.03 et seq.
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`FACTS
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`Applicant filed its application on November 17, 2016, seeking registration of the mark “OUR
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`LAWYERS ARE DOCTORS” in connection with “legal services”.
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`On March 2, 2017, the examining attorney issued an Office Action in which registration of
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`applicant’s mark was refused on the grounds that the mark is a slogan/terms that does not function as a
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`service mark to indicate the source of applicant’s services and to identify and distinguish them from
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`others.
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`Applicant responded to that Office Action on May 3, 2017, by submitting arguments relating to
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`the failure to function refusal.
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`On May 26, 2017, after consideration of applicant’s arguments and further review of the file, the
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`examining attorney continued the failure to function refusal and also issued a new refusal, namely, a
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`Section 2(e)(1) Merely Descriptive refusal on the grounds that “OUR LAWYERS ARE DOCTORS” merely
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`described a feature and/or characteristic of applicant’s legal services.
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`Applicant responded on July 27, 2016, by submitting a Section 2(f) Claim of Acquired
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`Distinctiveness and asserting that the mark had become distinctive of the legal services through the
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`applicant’s substantially exclusive and continuous use of the mark in commerce for at least the five
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`years immediately prior to date of submitting the claim.
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`On August 21, 2017, the examining attorney issued an Office Action that rejected the claim of
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`acquired distinctiveness because the allegation of five years use was insufficient to demonstrate that
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`the relevant public would understand the primary significance of the mark as identifying the source of
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`applicant’s legal services rather than just identifying/describing the services themselves. In addition, the
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`Section 2(e)(1) Merely Descriptive refusal and the failure to function refusal were continued and
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`maintained.
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`Applicant responded on February 6, 2018, by submitting arguments relating to the failure to
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`function refusal and the rejection of the Section 2(f) Claim of Acquired Distinctiveness.1 Applicant did
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`not present arguments as to the Section 2(e)(1) Merely Descriptive refusal.
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`On February 28, 2018, the examining attorney issued a Final Office Action wherein the failure to
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`function refusal, the Section 2(e)(1) Merely Descriptive refusal and the rejection of the Section 2(f) Claim
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`of Acquired Distinctiveness were all continued and made final.
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`On May 17, 2017, applicant filed its ex parte appeal and appeal brief with the Trademark Trial
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`and Appeal Board and, on that same date, the file was then forwarded to the examining attorney for the
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`preparation of this Reply Brief.
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`ISSUE
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`The following three issues are presented in this appeal:
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`(1) Does the mark “OUR LAWYERS ARE DOCTORS” function as a service mark, under Sections
`1, 2, 3 and 45 of the Trademark Act, to indicate the source of applicant’s legal services
`and to identify and distinguish them from others?
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`(2) Has the mark “OUR LAWYERS ARE DOCTORS” acquired distinctiveness under Section 2(f)
`of the Trademark Act?
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`(3) Is the mark “OUR LAWYERS ARE DOCTORS” merely descriptive, under Section 2(e)(1) of
`the Trademark Act, when used in connection with legal services?
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`1 Although applicant stated that its attached arguments were for both the failure to function refusal and the rejection
`of the Section 2(f) claim, only the failure to function refusal was specifically addressed in those arguments.
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`ARGUMENT
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`A. THE MARK "OUR LAWYERS ARE DOCTORS" DOES NOT FUNCTION AS A SERVICE MARK,
`UNDER SECTIONS 1, 2, 3 AND 45 OF THE TRADEMARK ACT, TO INDICATE THE SOURCE OF
`APPLICANT'S LEGAL SERVICES AND TO IDENTIFY AND DISTINGUISH THEM FROM OTHERS.
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`Slogans and terms that are merely informational in nature, such as statements or laudatory
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`phrases about goods and/or services ordinarily used in business or in a particular trade or industry, are
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`not registrable. See In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010). Determining whether
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`the slogan or term functions as a trademark or service mark depends on how it would be perceived by
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`the relevant public. In re Eagle Crest, Inc., 96 USPQ2d at 1229; In re Aerospace Optics, Inc., 78 USPQ2d
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`at 1862; TMEP §1202.04. “The more commonly a [slogan or term] is used, the less likely that the public
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`will use it to identify only one source and the less likely that it will be recognized by purchasers as a
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`trademark [or service mark].” In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle
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`Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04(b).
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`In this case, the applied-for mark, “OUR LAWYERS ARE DOCTORS”, is a slogan or term that does
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`not function as a trademark or service mark to indicate the source of applicant’s services and to identify
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`and distinguish them from others. Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127.
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`Specifically, the applied-for mark consists of terms that are commonly used by those in applicant’s
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`particular trade or industry to merely convey information about applicant’s or similar goods and/or
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`services. See In re Boston Beer Co., 198 F.3d 1370, 1372-74, 53 USPQ2d 1056, 1058-59 (Fed. Cir. 1999)
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`(holding THE BEST BEER IN AMERICA for beer and ale a common claim of superiority and incapable of
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`registration); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1864 (TTAB 2006) (holding SPECTRUM for
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`illuminated pushbutton switches information about the multiple color feature of the goods and
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`incapable of registration); In re Melville Corp., 228 USPQ 970, 971 (TTAB 1986) (holding BRAND NAMES
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`FOR LESS for retail clothing store services a common promotional phrase and incapable of registration);
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`TMEP §1202.04(a).
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`The following evidence of record shows that these terms are commonly used by those in
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`applicant’s particular trade or industry to indicate that the offered legal services are provided by lawyers
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`who are also doctors.
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`• Webpage from Kline & Specter states that it has “five lawyers who are also doctors” (See March
`2, 2017, Office Action, TSDR p. 2)
`• Webpage from LAWMD.COM states that “many of our lawyers are doctors as well as skilled trial
`lawyers” (See March 2, 2017, Office Action, TSDR p. 3)
`• Webpage from Sacks, Leichter & Roskin states that “[o]ur medical malpractice lawyers are all
`board certified physicians or doctors” (See March 2, 2017, Office Action, TSDR p. 4)
`• Webpage from CHH Cirignani Heller Harman states that it is “[a] firm with attorneys who are also
`board-certified physicians” and also that “two of our lawyers are also doctors” (See March 2,
`2017, Office Action, TSDR p. 5)
`• Webpage from Cullan & Cullan M.D., J.D. states that they are “Nursing Home Lawyers who are
`also Doctors” and “Our AV rated lawyers are also doctors” (See March 2, 2017, Office Action, TSDR
`p. 6)
`• Webpage from Gershon Willoughby & Getz states that “Our lawyers are doctors” (See May 26,
`2017, Office Action, TSDR p. 5)
`• Webpage from Mahoney Law Firm has the heading “A Lawyer Who is Also a Doctor” above their
`entry for “Attorney Dennis Mahoney” who “is also a licensed medical doctor” (See February 28,
`2018, Office Action, TSDR p. 2-4)
`• Webpage from Nudelman & Associates state that “sometimes you need a lawyer who is also a
`doctor” and then follows that with evidence that firm’s attorney, Mitchell S. Nudelman is a lawyer
`and a doctor (See February 28, 2018, Office Action, TSDR p. 6-7)
`• Webpage from Ramji Law group Webpage contain the wording “ The Lawyer who is also a Doctor”
`(See February 28, 2018, Office Action, TSDR p. 8-9)
`• Webpage from Schwalben Law Firm contains the wording “Legal Assistance From A Lawyer Who
`Is A Doctor” (See February 28, 2018, Office Action, TSDR p. 10-13)
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`• Webpage from Ted A. Greve & Associates contains the wording “Talk to the Lawyer who is Also a
`Doctor” and also “A lawyer who is also a doctor” (See February 28, 2018, Office Action, TSDR p.
`14-16)
`• Webpage from Law Office of John C. Dorn contain the wording “Who better than a lawyer who is
`also a doctor to have on your side” (See February 28, 2018, Office Action, TSDR p. 17-18)
`• Webpage from The Rich Firm PC states that “Several of our lawyers are also doctors” (See
`February 28, 2018, Office Action, TSDR p. 19-22)
`• Webpage from Florida Trial MD states that its trial team consists of both “a lawyer/medical doctor
`and a Board Certified Civil Trial Lawyer” (See February 28, 2018, Office Action, TSDR p. 23)
`• Webpage from Jack Tolliver, M.D. describes the lawyer at the firm as “a doctor and personal injury
`lawyer” and contain the heading “Our Unique Doctor-Lawer Medical Malpractice Experience”
`(See February 28, 2018, Office Action, TSDR p. 24-26)
`• Webpage from RossFellerCasey contains the wording “Our Team of Ivy League Educated Doctors”
`and describes its team as “consist[ing] of the nation’s leading physicians – one of whom is also a
`lawyer” (See February 28, 2018, Office Action, TSDR p. 27-29)
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`Because consumers are accustomed to seeing the terms in applicant’s mark used in this manner, when
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`they are applied to applicant’s services, consumers would perceive them merely as informational matter
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`indicating that the lawyers providing the legal services are also doctors. Thus, this slogan or term would
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`not be perceived as a mark that identifies the source of applicant’s services.
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`Applicant argues that, because the exact phrase “our lawyers are doctors” does not appear on
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`all the website evidence of record in this case that the evidence “does not ‘demonstrate a competitive
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`need for others to use’ this [phrase]’”. See Brief at p. 6. However, the evidence clearly demonstrates
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`that this wording is used either in this exact way or in similar ways to informationally communicate to
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`consumers that the attorneys providing the legal services being offered are also doctors. Therefore,
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`consumers will not view the applied-for mark as identifying the source of applicant’s services but will,
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`instead, see the wording as informing them that applicant’s lawyers are doctors. The examining
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`attorney respectfully disagrees with applicant’s assertions that “consumers need something more [than
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`the wording OUR LAWYERS ARE DOCTORS] to get ‘informational matter’ from the Applicant’s mark”;
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`consumers would readily understand that the legal services are being rendered by lawyers who work for
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`applicant and who are also doctors.
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`In addition, applicant argues that because there are other trademarks that have registered and
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`contain phrases that are formatted as “OUR ___ ARE ___”, consumers are used to seeing this type of
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`phrase as a trademark. However, of the 24 third party registrations referenced by applicant in support
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`of this argument, only 12 are formatted in this way and, of those, only four consist of just four terms like
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`applicant’s, namely, in exactly the format referenced by applicant (i.e. “OUR ___ ARE ___”). Only one of
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`the marks in the third party registrations consist entirely of descriptive wording, namely, “OUR BOARDS
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`ARE BETTER” and it is descriptive because it is laudatory. The rest of the marks in the third party
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`registrations are suggestive and, as such, are not analogous to the mark in the present application.
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`Finally, applicant argues that it “does not use the phrase in a generic or descriptive use and only
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`uses it as a trademark” and that “[c]lients perceive [the mark] as a source identifying phrase for legal
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`services, pointing directly to Applicant.” See Brief at p. 10. The examining attorney respectfully
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`disagrees with applicant’s conclusions in this regard. The fact that applicant has the wording on the top
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`right of its website does not render generic/descriptive wording non-generic/non-descriptive. There is
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`other source-identifying information on the website, e.g. the name “Dr. Michael M. Wilson, M.D., J.D.”,
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`that consumers would look to when attempting to determine source and looking at the webpage.
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`Furthermore, contrary to the applicant's assertions, it is apparent that the use of the phrasing on the
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`applicant's webpage further reinforces the lack of functionality by the other wording in the area,
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`specifically a phone number to call and more informational wording "Call for a Free Consultation." See
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`November 17, 2016 Application, TSDR p. 3.
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`B. THE MARK "OUR LAWYERS ARE DOCTORS" HAS NOT ACQUIRED DISTINCTIVENESS UNDER
`SECTION 2(F) OF THE TRADEMARK ACT.
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`Applicant asserted a claim of acquired distinctiveness under Trademark Act Section 2(f) based
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`on applicant’s use of the mark in commerce with applicant’s services for more than five years prior to
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`the date on which the claim is made. See 15 U.S.C. §1052(f). However, as the evidence from the
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`websites referenced above in the Failure to Function section demonstrate, the allegation of five years’
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`use, or even thirteen year as shown by the dates of use, is insufficient to show acquired distinctiveness
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`because the applied-for mark and the terms contained therein is/are highly descriptive of applicant’s
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`legal services. See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336-37, 116 USPQ2d 1262, 1265 (Fed.
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`Cir. 2015); Alacatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1765 (TTAB 2013);
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`TMEP §1212.05(a).
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`An applicant bears the burden of proving that a mark has acquired distinctiveness under
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`Trademark Act Section 2(f). In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1335, 116 USPQ2d 1262, 1264
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`(Fed. Cir. 2015) (citing In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir.
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`2005)); TMEP §1212.01. “To show that a mark has acquired distinctiveness, an applicant must
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`demonstrate that the relevant public understands the primary significance of the mark as identifying the
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`source of a product or service rather than the product or service itself.” In re Steelbuilding.com, 415
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`F.3d at 1297, 75 USPQ2d at 1422. Section 1212 of the TMEP states that “[t]hree basic types of evidence
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`may be used to establish acquired distinctiveness under §2(f) for a trademark or service mark: (1) Prior
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`Registrations: A claim of ownership of one or more active prior registrations on the Principal Register of
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`the same mark for goods or services that are sufficiently similar to those identified in the pending
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`application (37 C.F.R. §2.41(a)(1); see TMEP §§1212.04–1212.04(e)); (2) Five Years’ Use: A verified
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`statement that the mark has become distinctive of the applicant’s goods or services by reason of the
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`applicant's substantially exclusive and continuous use of the mark in commerce for the five years before
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`the date on which the claim of distinctiveness is made (37 C.F.R. §2.41(a)(2); see TMEP §§1212.05–
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`1212.05(d)); and (3) Other Evidence: Other appropriate evidence of acquired distinctiveness (37 C.F.R.
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`§2.41(a)(3); see TMEP §§1212.06–1212.06(e)(iv))”.
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`In the present case, applicant’s claim of acquired distinctiveness based on more than five years’
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`use in commerce is insufficient to show acquired distinctiveness of the applied-for mark because it
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`merely informs and describes to consumers that the providers of applicant’s legal services are not only
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`lawyers but are lawyers who are also doctors.
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`The amount and character of evidence required to establish acquired distinctiveness under
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`Trademark Act Section 2(f) depends on the facts of each case and particularly on the nature of the mark
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`sought to be registered. In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1018 (TTAB 2017) (citing
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`Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (C.C.P.A. 1970); In re Hehr Mfg. Co.,
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`279 F.2d 526, 528, 126 USPQ 381, 383 (C.C.P.A. 1960)); see TMEP §1212.05(a). More evidence is
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`required where a mark is so highly descriptive that purchasers seeing the matter in relation to the
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`named services would be less likely to believe that it indicates source in any one party. See In re Gen.
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`Mills IP Holdings II, LLC, 124 USPQ2d at 1018 (citing In re Bongrain Int’l (Am.) Corp., 894 F.2d 1316, 1317
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`n.4, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990)). As discussed above and also discussed below in the
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`refusal relating to the Section 2(e)(1) Merely Descriptive refusal, the mark “OUR LAWYERS ARE
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`DOCTORS” is so highly descriptive that more than a claim of five, or even thirteen, years use must be
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`shown/provided in order to demonstrate that the mark has acquired distinctiveness as source indicating
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`wording in the eyes of the consuming public. The applicant has provided no such evidence, other than
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`the applicant's declaration, of acquired distinctiveness. Though the phrase "Our Lawyers are Doctors"
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`may connote to the relevant consumers that the attorneys referred to in this general context are also
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`physicians, the applicant must show that the relevant public would understand the proposed mark to
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`refer to their attorneys. There is nothing in the record to prove this claim.
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`C. THE MARK "OUR LAWYERS ARE DOCTORS" IS MERELY DESCRIPTIVE, UNDER SECTION 2(e)(1)
`OF THE TRADEMARK ACT, WHEN USED IN CONNECTION WITH APPLICANT’S LEGAL
`SERVICES.
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`A mark is merely descriptive if it describes an ingredient, quality, characteristic, function,
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`feature, purpose, or use of an applicant’s services. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783
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`F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015).
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`Generally, if the individual components of a mark retain their descriptive meaning in relation to
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`the services, the combination results in a composite mark that is itself descriptive and not registrable. In
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`re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64
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`USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d).
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`Only where the combination of descriptive terms creates a unitary mark with a unique,
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`incongruous, or otherwise nondescriptive meaning in relation to the services is the combined mark
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`registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re
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`Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
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`In this case, both the individual components and the composite result are descriptive of
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`applicant’s services and do not create a unique, incongruous, or nondescriptive meaning in relation to
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`the services.
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`Specifically, in this case, the term “OUR” is “a form of the possessive case of we used as an
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`attributive adjective”, the term “LAWYERS” means “person[s] whose profession is to represent clients in
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`a court of law or to advise or act for clients in other legal matters” and the term “DOCTORS” means “a
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`person licensed to practice medicine, as a physician, surgeon, dentist, or veterinarian”. See dictionary
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`definitions from www.dictionary.com, May 26, 2017, Office Action, TSDR p. 2-5. When combined, no
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`new commercial impression is created. Instead, the mark immediately indicates to consumers that the
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`applicant’s “legal services” are provided by persons (1) who belong to/work for the applicant, (2) whose
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`profession is to advise or act for clients in legal matters or to represent clients in courts of law and (3)
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`who are also licensed to practice medicine. See, e.g., the websites referenced above in the Failure to
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`Function section that evidence third party use of these words in connection with the same similar
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`services to indicate that the persons providing the offered legal services (1) work for the company/law
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`firm offering the services, (2) are lawyers (i.e. their profession is to advise or act for clients in legal
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`matters or to represent clients in courts of law) and (3) are also licensed to practice medicine.
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`Applicant argues that “the phrase ‘OUR LAWYERS ARE DOCTORS does not give enough
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`information for the relevant consumer to believe that the phrase ‘merely describes’ Applicant’s legal
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`services” and that consumers are likely to see the mark and “require a logical leap to “the lawyers at this
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`law firm have their M.D. and work on malpractice claims”. See Brief at p. 11. For all the
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`aforementioned reasons, the examining attorney respectfully disagrees with applicant’s conclusions in
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`this regard and asserts that consumers will immediately perceive the mark as indicating that the lawyers
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`at applicant’s firm are doctors (i.e. have their M.D.).
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`CONCLUSION
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`Therefore, for the foregoing reasons, the wording "OUR LAWYERS ARE DOCTORS" is
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`a slogan/terms that does not function as a service mark to indicate the source of applicant's legal
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`services and to identify and distinguish them from others, is merely descriptive of applicant’s legal
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`services and has not acquired distinctiveness such that the relevant public would understand the
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`primary significance of the mark as identifying the source of applicant's legal services rather than
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`just identifying/describing the services themselves. Accordingly, it is respectfully requested that
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`the refusal to register applicant's mark be affirmed
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`Respectfully submitted,
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`/Meghan Reinhart/
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`Trademark Examining Attorney
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`Law Office 108
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`(571) 272-2943
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`meghan.reinhart@uspto.gov
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`Steven Berk
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`Acting Managing Attorney
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`Law Office 108
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