From: Hussain, Tasneem
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`Sent: 6/1/2022 11:08:34 AM
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`To: TTAB EFiling
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`CC:
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`
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`Subject: U.S. Trademark Application Serial No. 90359013 - CALL US, WE CAN HELP - 1-62351 - Request
`for Reconsideration Denied - Return to TTAB - Message 1 of 2
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`*************************************************
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`Attachment Information:
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`Count: 15
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`Files: e.jpg, f.jpg, g.jpg, h.jpg, i.jpg, j.jpg, k.jpg, l.jpg, m.jpg, n.jpg, o.jpg, p.jpg, q.jpg, r.jpg, 90359013.doc
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`Unite d State s Pate nt and Trade mark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
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`
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`U.S. Application Serial No. 90359013
`
`
`
`Mark: CALL US, WE CAN HELP
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`
`
`Correspondence Address:
` RICHARD S. MACMILLAN
`
` MACMILLAN, SOBANSKI & TODD, LLC
`
` 720 WATER STREET
`
` ONE MARITIME PLAZA, 5TH FLOOR
`
` TOLEDO, OH 43604
`
`Applicant: Gallon, Takacs & Boissoneault Co., L.P.A ETC.
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`
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`Reference/Docket No. 1-62351
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`
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`Correspondence Email Address:
`
` mst@mstfirm.com
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`REQUEST FOR RECONSIDERATION
`
`AFTER FINAL ACTION
`
`DENIED
`
`Issue date: June 01, 2022
`
`
`
`The Office has reassigned this application to the undersigned trademark examining attorney.
`
`
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`

`

`Applicant’s re que st for re conside ration is de nie d. See 37 C.F.R. §2.63(b)(3). The trademark
`examining attorney has carefully reviewed applicant’s request and determined the request did not:
`(1) raise a new issue, (2) resolve all the outstanding issue(s), (3) provide any new or compelling
`evidence with regard to the outstanding issue(s), or (4) present analysis and arguments that were
`persuasive or shed new light on the outstanding issue(s). TMEP §§715.03(a)(ii)(B), 715.04(a).
`
`
`Specifically, applicant’s only response was to amend the application to specify a Section 1(b) filing basis
`which obviates the Specimen Refusal but not the Trademark Act Sections 1, 2, 3, and 45 Refusal. A
`Failure to Function refusal is not contingent on use or intent to use but is based on the nature of the
`mark itself. This refusal applies to a Section 1(b), 44, or 66(a) application when there is sufficient
`evidence showing that consumers are accustomed to seeing the slogan or term used in an informational
`manner in connection with the relevant services from many different sources. TMEP §1202.04. Thus, in
`this case, the refusal is maintained and continued. See below for details.
`
`
`
`FAILURE TO FUNCTION
`
`
`
`Registration is refused because the applied-for mark is a slogan that does not function as a service mark
`to indicate the source of applicant’s services and to identify and distinguish them from others.
`Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127. In this case, the applied-for mark
`is a slogan that is widely used in legal field to merely convey information about applicant’s or similar
`services. See In re Boston Beer Co., 198 F.3d 1370, 1372-74, 53 USPQ2d 1056, 1058-59 (Fed. Cir. 1999)
`(holding THE BEST BEER IN AMERICA for beer and ale a common claim of superiority and incapable of
`registration); In re Melville Corp., 228 USPQ 970, 971 (TTAB 1986) (holding BRAND NAMES FOR LESS for
`retail clothing store services a common promotional phrase and incapable of registration); TMEP
`§1202.04(a).
`
`
`
`Slogans and terms that are merely informational in nature, such as statements or laudatory phrases
`about services ordinarily used in business or in a particular trade or industry, are not registrable. See In
`re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010). Determining whether the slogan or term
`functions as a trademark or service mark depends on how it would be perceived by the relevant public.
`In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1150 (TTAB 2019) (citing D.C. One Wholesaler, Inc. v.
`Chien, 120 USPQ2d 1710, 1713 (TTAB 2016)); In re Eagle Crest, Inc., 96 USPQ2d at 1229; TMEP §1202.04.
`“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, Inc., 96 USPQ2d at 1229);
`TMEP §1202.04(b).
`
`
`
`The evidence previously attached to the May 24, 2021 Office Action from Johnson Law Group, Mahaney
`& Pappas, LLP, Doty Law Firm, Cohen, Placitella & Roth, Sierra Law Group, Stanger Stanfield Law,
`WayneWright Lawyers, and Facebook (featuring an advertisement from the Law Offices of Corredor &
`
`

`

`Hussein, P.A. websites) shows that this slogan “CALL US” followed by “WE CAN HELP” is widely used in
`the legal field to indicate that prospective consumers of legal services may reach out to the providers of
`these services via telephone:
`
`
`
`
`
`Johnson Law Group: “Call Us… We Can Help” near the telephone number
`•
`• Mahaney & Pappas, LLP: “Need Legal Help? Call Us. We Can Help.”
`• Doty Law Firm: “Thinking of Filing for Bankruptcy? Call Us. We Can Help.”
`• Cohen, Placitella & Roth: “Call Us. We Can Help” near the telephone number
`• Sierra Law Group: “So if you are caring for an older adult or simply are concerned about their
`welfare – call us – we can help.”
`• Stanger Stanfield Law: “Call Us. We Can Help” near the telephone number
`Law Offices of Corredor & Hussein, P.A.: “Are you looking to purchase a new home? Call us, we
`•
`can help!”
`• Wayne Wright Lawyers: “Call Us. We Can Help” near the telephone number multiple times.
`
`The evidence previously attached to the November 23, 2021 Final Office Action from the Racine Olson,
`Barberis, Zorrilla & Silvestrini, Andersen Morse & Linthorst, and Giroux Trial Attorneys websites show
`the same:
`
`
`
`
`
`• Giroux Trial Attorneys: “Call Us. We Can Help”
`• Andersen Morse & Linthorst: “If you have been injured and you are not sure what steps to take
`next, call us. We can help.”
`• Zorrilla & Silvestrini: “Call Us. We Can Help”
`• Barberis: “If you need an experienced family law lawyer with extensive court experience and
`expertise in mediation and collaborative law, call us – we can help.”
`• Racine Olson: “Call Us. We Can Help”
`
`Because consumers are accustomed to seeing this slogan used in this manner, when it is applied to
`applicant’s services, they would perceive it merely as informational matter indicating that applicant is
`available via telephone to assist consumers. Thus, this slogan would not be perceived as a mark that
`distinguishes applicant’s services from those of others and identifies the source of applicant’s services.
`
`
`
`In applicant’s response, applicant argues that the presence of marks on the register containing the word
`“CALL” for similar services shows that the applied-for mark is registrable. This argument is inapposite.
`The wording in applicant’s mark is purely informational with no distinguishing content that renders the
`mark registrable; the same cannot be said for all of the referenced registered marks. Further, the
`majority of the referenced registrations were registered in 2016 and earlier, meaning that these
`registrations were registered five or more years ago. “Trademark rights are not static.” In re
`Thunderbird Prods. Corp., 406 F.2d 1389, 1391, 160 USPQ 730, 732 (C.C.P.A. 1969). Eligibility for
`registration must be determined on the basis of the facts and evidence in the record at the time
`registration is sought, which includes during examination and any related appeal. In re Chippendales
`
`

`

`USA Inc., 622 F.3d 1346, 1354, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010); In re Morton-Norwich Prods., Inc.,
`671 F.2d 1332, 1344, 213 USPQ 9, 18 (C.C.P.A. 1982); In re Thunderbird Prods. Corp., 406 F.2d at 1391,
`160 USPQ at 732.
`
`
`
`As explained above, and shown in the previously attached evidence, applicant’s mark fails to function as
`it is purely informational. The phrase in the mark is used widely by those providing the types of services
`applicant provides in a non-source indicating manner. Additional evidence is attached herein which
`confirms that the wording in this mark is completely informational and merely instructs clients seeking
`legal services to contact the law firm because it can assist them in their legal matters:
`
`
`
`
`
`•
`
`• Manley Traeger: “Whether you grew up here or are new to the area, call an experienced lawyer
`at Manley Traeger today to discuss your real estate issue or purchase/sale transaction. The initial
`visit/call is free. Call us, we can help.”
`• Peterson Law Offices: “Call Us. We Can Help” near the telephone number
`• Warner Law Offices: “Car accidents in Wichita can be devastating. If you feel overwhelmed, call
`us. We can help.”
`Injury Smart Law: “The insurance process can be frustrating and that’s why we can help you
`navigate it. Call us, we can help!”
`• Roberts & Roberts: “We are proud of the high percentage of our current clients who were
`recommended to us by our former clients. Call us. We can help.”
`• Bache & Lynch Attorneys At Law: “Call Us - We Can Help.”
`Law Offices of Peter M. Anderson: “Call Us. We Can Help.”
`•
`• Banks & Jones: “If you’re injured in a crash with a semi, call us. We can help.”
`• MOBO Law: “You need an attorney's guidance to determine whether you have a valid claim. Call
`us — we can help.”
`• Eisenberg, Rothweiler, Winkler, Eisenberg & Jeck: “Even if your injury is not on this list, call us. We
`can help.”
`• Heimerl & Lammers: “Call Us - We Can Help You”
`• Helmer, Conley & Kasselman, P.A.: “If you have a question, be sure to call us – we can help.”
`• Heilman Law Group, PA: “If you have experienced a bad outcome with your lawsuit and would
`like to speak with an attorney regarding your appeal rights, call us. We can help you. ”
`• Schmid Law Offices: “call us. We can help.” multiple times
`• Cardillo & Corbett: “Call Us, We Can Help” near the telephone number
`• Dygert, Wright, Hobbs & Hernandez: “Call us! We can help.”
`• Serious Injury Law Group: “Do you or a loved one need to talk with a Serious Injury Lawyer today?
`Call us, We can help!”
`• Watkins, Boyer, Gray & Curry – PLLC: “Even if you don't own much, it's a good idea to consult with
`an estate planning attorney to ensure you have the appropriate measures in place if you should
`die or become incapacitated. Call us, we can help.”
`• Pinkham & Associates APLC: “If you or anyone you know needs advice about their divorce or
`family or legal matter, call us, we can help.”
`• Kurtz & Blum, PLLC: “If you were permanently revoked for multiple moving violations during a
`period of revocation and you are approaching eligibility for a hearing, call us, we can help. ”
`
`

`

`Applicant’s own specimen of record uses the phrase “CALL US, WE CAN HELP” at the end of a
`commercial advertising legal services. The phrase is not used to indicate the source of those legal
`services, and is instead used to convey information. Consumers wishing to utilize applicant’s legal
`services may call applicant for assistance. The phrase is used to convey information not to indicate the
`source of the services. As the overwhelming evidence demonstrates, the phrase “CALL US, WE CAN
`HELP” is used by many third parties to convey the message that clients should contact them so that they
`can help.
`
` A
`
` “service mark” is a word, name, symbol, device or any combination thereof used by a merchant to
`identify their services and distinguish them from services provided by others, and to indicate the source
`of merchant’s services. 15 U.S.C. §1127; TMEP §1301.
`
`
`
`Whether a designation functions as a mark depends on the commercial impression it makes on the
`relevant public; that is, whether purchasers would be likely to regard it as a source-indicator for the
`services. See In re Keep A Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017) (quoting In re Eagle Crest
`Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)); TMEP §1301.02. The specimen and any other relevant
`evidence of use is reviewed to determine whether an applied-for mark is being used as a service mark.
`See In re Keep A Breast Found., 123 USPQ2d at 1879 (quoting In re Eagle Crest Inc., 96 USPQ2d at 1229);
`TMEP §1301.02.
`
`
`
`Not every designation used in the advertising or performance of services functions as a service mark,
`even though it may have been adopted with the intent to do so. In re Keep A Breast Found., 123
`USPQ2d at 1879 (quoting Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB
`1973)); see TMEP §1301.02. A designation can only be registered when purchasers would be likely to
`regard it as a source-indicator for the services. TMEP §1301.02; see In re Moody’s Investors Serv. Inc., 13
`USPQ2d 2043, 2047-49 (TTAB 1989).
`
`
`
`In this case, the phrase “CALL US, WE CAN HELP” does not identify or point to a single source in a service
`mark manner and as such, the refusal is maintained and continued.
`
`
`
`An applicant may not overcome this refusal by amending the application to seek registration on the
`Supplemental Register if applicant files an acceptable Amendment to Allege Use or asserting a claim of
`acquired distinctiveness under Section 2(f). TMEP §1202.04(d); see In re Eagle Crest, Inc., 96 USPQ2d at
`1229.
`
`
`
`Accordingly, the following refusal made final in the Office action dated November 23, 2021 are
`maintained and continued:
`
`

`

`
`
`
`
`
`
`• Failure to Function
`
`See TMEP §§715.03(a)(ii)(B), 715.04(a).
`
`
`
`In light of the amendment to a Section 1(b) filing basis, the following refusal made final in that Office
`action are obviated:
`
`
`
`
`
`
`
`• Specimen Refusal
`
`See TMEP §§715.03(a)(ii)(B), 715.04(a).
`
`
`
`If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be
`notified to resume the appeal. See TMEP §715.04(a).
`
`
`
`If applicant has not filed an appeal and time remains in the six-month response period, applicant has
`the remainder of that time to (1) file another request for reconsideration that complies with and/or
`overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to
`the Board. TMEP §715.03(a)(ii)(B). Filing a request for reconsideration does not stay or extend the time
`for filing an appeal. 37 C.F.R. §2.63(b)(3); see TMEP §715.03(c).
`
`
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`
`
`/Ms. Tasneem Hussain/
`
`Trademark Examining Attorney
`
`Law Office 118
`
`tasneem.hussain@uspto.gov (preferred)
`
`571.272.8273
`
`
`
`

`

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`9 ADDRESS
`1225 KenPratt Blvd, Suite 214
`Longmont, CO 80501
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`CONTACT
`phone: (303) 444 - 1505
`northern colorado: (970) 482 - 2222
`email: info@coloradotruckaccidents.com
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`Saturday — Sunday: Closed
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`1225 Ken Pratt Blvd
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`‘Longmont,CO§0504
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`industry matters. At Colorado Truck Accidents, we help people injured in semi, 18-wheeler and othertrucking crashes, understanding the nuanceoftrucking law and how to fight big commercial trucking carriers. Learn more aboutus to determineif we can help you. Send us a message.Please note that sending a messagethroughthis website
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`Schedule a Free Consultation
`There are a lot of considerationsin finding the best truck accident lawyersin Colorado,whocanserve ourlocal community and beyond.Experience matters, knowl
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`720-806
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`https://coloradopersonalinjury.com/contact/
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`Bache & Lynch
`ATTORNEYS AT LAW
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`about
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`practice
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`FREE CONSULTATION © 520.293.5300
`results
`injury center
`contactus
`client portal
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`Our Commitment to Our Clients
`Wetake a limited numberof cases so wecanget to knowourclients personally
`andinvestthe time and resources necessary to win.
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`Having beenraised in farming and working-class families, we know howtoroll up
`oursleeves and go to workfor you.
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`We will fight for you, to get you the compensation you deserve.
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`We know howto deal with insurance companies - we usedto workfor them.
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`Call Us - We Can Help.
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`ng|Disclaimer & Terms of Use
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`10:36:36 AM 6/1/2022
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`https://tucsonpersonalinjurylaw.com/
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`Fighting for families whose lives have been turned upside by a crash
`Did you knowthere were 10,429 crashes in Knox County alone,
`in 2017? Almost 2,200 people sustained injuries, and 37 peoplelosttheir lives. The numbers
`are lowerthan they were in 2016, but that doesn’t meanourroadsare all that muchsafer
`Whenyou're hurt, and yourcaris trashed, and you're not sure howyou're goingto paythebills while you’re out of work, don’t panic: we're here. Our auto
`accident lawyers have been handling Knoxville’s toughest crashes casesfor years. We havetheskills to take on complex claims stemming from
`* Car crashes. Single-car accidents, multi-car pileups, drunk and dangerousdrivers: we handle themall. There’s no claimtoo big for us to handle, and no
`injury claim to small that we don't giveit ourfull attention.
`* Truck accidents. Commercialtrucks can weigh up to 80,000Ibs whenthey'reall loaded up.Acollision with a big-rig can tum deadly — fast
`
`* Motorcycle wrecks. We're a big fanof bikes aroundhere. (T. Scott Jones holds a few world recordsfor racing.) We also knowthatriders are more likely
`to sustainlife-altering injuriesif they're hit by anothervehicle
`Distracted drivers. You see them through the window. They’re texting at red lights, or looking at the GPS while swerving around on the howefe
`shoving foodin their mouths. A distracted driver is a dangerousdriver, and we makesurethat they are heldliable whenthey hurt others.
`Defective products. Takata has recalled millions of cars for exploding airbags. Jeeps sometimesjust...
`fall out of gear. Tesla’s self-driving cars caused a
`fatal accident a few years ago. Whenthere’s a defective partin your car,
`truck or bike,
`andthat part leads to aninjury, we'll make sure the responsible
`party is held accountable.
`We don’t just help driversandriders, either. Over the years, we’ve helped cyclists, pedestrians, ATV riders, and passengers—in their friends’ cars and in
`ridesharing vehicles — who werehurt in a crash. We work with people whose property has been destroyed, whofacelives in wheelchairs, and wholive in
`chronic pain after a so-called “fender-bender.” We haven't hada crash caseyetthat we couldn't handle.
`
`their jobs, their
`awayfromlosing everything:
`They say mostpeople are one serious
`cars, even theroofs over their heads. Whenyou havesustained aninjury because of someoneelse’s
`negligence, our teamsnapsinto action. We routinely handle complexclaimsarising from
`
`. Defective and faulty products cause thousandsofinjuries each year. We'll
`fight to hold the manufacturer, designer and/orretailer responsible for your losses.
`Property owners needsto keeptheir property safe.
`If you get hurt, they could
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`LET'S CHAT - WE'RE ONLINE
`PecRSaes
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`Uae
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`TEXT US
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`10:45:51 AM 6/1/2022
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`https://www.banksjones.com/
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`Estates and Trusts
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`EIN @ecN
`ticaluaeBaceoeny
`Real Estate Law
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`COB Rieteaten should conflict develop. Ourthird-party review ensures you have someonelookingout for your best
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`interest in construction, as well as real estate matters.
`¢ Defects & Disputes — New constructionorjust discovered problems? Ourattorneysfight to see
`homeowners compensated for the problem. We have argued bothsides of these disputes, so you will
`have anattorney who knows whatto expect and beready to defend you against overzealous
`plaintiffs’ attorneys.
`¢ Education — Webelieve in the empowermentof education. Ourfirm conducts seminars for
`constructioncontractors on need-to-know lawsinCalifornia and Nevadato protecttheir
`businesses. We offer a packet of essential and convenient contracts andinstruction onproperuse,
`ready andavailable when you need them.
`¢ Licensure Issues — Our attorneyswill assist in navigating through problemswitha required
`contractorlicense and determine solutions.
`¢ Liens — If a homeownerfails to pay you for work completed, contractors may have the option of
`filing a property lien. To recoverthe debt, the lienis a claim to the homeowner's property. You need
`an attorney's guidanceto determine whether you havea valid claim. Call us — we can help.
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`Locations in California & Nevada to Serve You
`
`Ourfirm beganin Truckee, California, and has expandedtoincludeoffices Truckee, Sacramento, Reno,
`Zephyr Cove/South Lake Tahoe, and Chico to meet the demand for ourservices. Send us an e-mail or
`call 530-214-8700, 916-447-0529, or 775-624-9480 to set up a meeting andseefirsthand why clients
`hold our lawyersin high regard.
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`NEED OUR HELP?
`10:47:37 AM 6/1/2022
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`https://www.mobolaw.com/Our-Services/Construction-Law.html
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`CommonTypes ofPersonal Injury Cases
`because our experiencedtrial attorneys spent four yearsin litigation, took 250 depositions, and reviewed 1.5 million
`
`Identifying all responsible parties
`*
`* Gathering compelling evidenceto build a strong claim
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`Handling communications withall parties so you can focus on your recovery
`* Accurately assessing thefull extent of your damagesby accounting for the current losses you have suffered, as well
`asthe lifelong impactof yourinjuries
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`* Fighting for maximum compensation on your behalf
`
`DCUAOog
`
`Co-founderand senior shareholderof ourlawfirm,
`PteaMule EL)eye-LoCeceaTCeLtALU
`ROUmlWeeeeteea ole
`BUTTTe(om CeleMESSIUCR PeersCre Co}
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`CRUE Ss AUCSTR
`someofthe largest verdicts in Pennsylvania.
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`The dedicated personalinjury lawyers from Eisenberg, Rothweiler, Winkler, Eisenberg & Jeck,P.C. help individuals who have
`beeninjuredin the following types of accidents
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`ven if your injury is noton thislist, call us. We can help.
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`MEET OUR ATTORNEYS
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`CATASTROPHIC INJURY
`
`Noteveryfirm is equipped to handle complex, catastrophic personalinjury cases. Catastrophic injury cases often involve
`severe, permanentinjuries that changevictims’lives forever or even cause their death. A successful outcomein these types
`of cases often depends on havingthe right mindset, specialized skills, and substantial resources.
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`Our trial attorneys have represented numerous clients in these complex cases. For example, we recovered $101million after
`a parking garage collapsekilled five people and seriously injured another 30. This record-breaking result was possible
`
`StewartJ. Eisenberg
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`Meaade
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`ae
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`KennethM.Rothweiler
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`documents andfoundthat the building was constructed withoutthe necessary steel to connect thefloorsto the walls.
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`Catastrophicinjuries can be caused in many ways. Thelists below provide someof the most commontypesof catastrophic
`injuries and their causes. However, there are many more.
`It is best to speak with oneof ourqualified catastrophic injury
`attorneys whowill evaluate your claim.
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`* Amputation or Loss of Limb
`* Blindness
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`* Severe Burn Injuries
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`* Spinal Cord InjuryLawyers
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` * Traumatic Brain / HeadInjuries
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`10:48:46 AM 6/1/2022
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`
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`Daniel Jeck
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`https://www.erlegal.com/practice-areas/personal-injury-lawyer/
`
`
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`NancyJ. Winkler
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`Fredric S. Eisenberg
`
`ented
`MaCi) ad
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`Life insurance coverage to securechild support
`Enforcing a child support judgment
`Retrieving child support arrearages
`Someparents mistakenly think that a changein their circumstances automatically changes the support obligationsin the existing court order.Ifyour
`circumstances change, you mustbring a motionto the court for a modification in child support obligations. Otherwise,youareviolating the court's orderif
`youdo notpay yourchild supportobligations.Ignoring the issuewill only makeit worse. Get help from oneof ourfamily law attorneys at Heimerl & Lammers
`to help younavigate child support issues today.
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`CALL US — WE CAN HELP YOU
`Ourfamily lawexperienceis your best asset in resolving your Minnesotachild support issues. Whether youwantto modify a child support order orcollect
`unpaidchild support, the Minnesota family lawattorneys at Heimerl & Lammersare available to help you. Call our Minneapolis or Saint Pauloffices at (612)
`294-2200 for a free andfriendly consultation. Youcan also schedule your consultation using the contactformonthissite
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`OUR FAMILY LAW ATTORNEYS
`The family law attorneys at Heimer! & Lammers havestrong roots in the Minneapolis / St. Paul communityand are dedicated to helping