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`This Opinion is Not a
`Precedent of the TTAB
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`Mailed: March 25, 2024
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`In re Richard M. Russell
`_____
`
`Serial No. 90432695
`_____
`
`
`Richard M. Russell, Esq., pro se.
`
`Justine Levy, Trademark Examining Attorney, Law Office 128,
`Travis Wheatley, Managing Attorney.
`
`_____
`
`
`Before Kuhlke, Lykos and Lynch,
`Administrative Trademark Judges.
`
`
`Opinion by Lynch, Administrative Trademark Judge:1
`
`
`1 Citations to the prosecution file refer to the USPTO’s Trademark Status & Document
`Retrieval (“TSDR”) system. Citations to the record and briefs include references to
`TTABVUE, the Board’s online docketing system.
`
`
`
`Serial No. 90432695
`
`I. Background
`
`Richard M. Russell (“Applicant”) seeks to register on the Principal Register the
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`proposed mark WE’RE HERE TO HELP WITH YOUR LEGAL NEEDS! in standard
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`characters for “legal services”2 in International Class 45.3
`
`Applicant described the specimen of use, shown below, as “mark used on Internet
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`marketing”:
`
`
`
`The Examining Attorney has finally refused registration on the grounds that the
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`proposed mark: fails to function as a service mark under Sections 1, 2, 3 and 45 of the
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`Trademark Act, 15 U.S.C. §§ 1051-1053, 1127; is merely descriptive under Section
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`2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1); and is likely to cause confusion
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`with Registration No. 4790098, under Section 2(d) of the Trademark Act, 15 U.S.C.
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`§1052(d).
`
`For the reasons set forth below, we affirm the refusal to register under Sections 1,
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`2, 3 and 45, and do not reach the other grounds for refusal. See, e.g., In re DTI P’ship
`
`
`2 The application included the following miscellaneous statement: “Any use of a similar mark
`is necessarily geographic and geographically far from applicant’s use.” December 30, 2020
`Application at TSDR 1. Any attempt to seek a concurrent use registration must comply with
`Trademark Rule 2.42, 37 C.F.R. § 2.42, which Applicant’s statement does not. See also 37
`C.F.R. § 2.99 (regarding concurrent use proceedings).
`
`3 Application Serial No. 90432695 was filed December 30, 2020, based on an alleged use in
`commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
`
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`Serial No. 90432695
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`LLP, 67 USPQ2d 1699, 1702 (TTAB 2003) (affirmance of requirement for information
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`was sufficient basis to refuse registration; Board did not reach merits of refusal under
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`Section 2(e)(1)).
`
`II. Failure to Function
`
`A. Legal Background
`
`The [Trademark] Act conditions the registrability of any
`mark on its ability to distinguish an applicant’s goods and
`services from those of others. See 15 U.S.C. §§ 1052, 1053.
`In other words,
`it
`is a threshold requirement of
`registrability that the mark “identify and distinguish” the
`goods and services of the applicant from those of others, as
`well as “indicate the source” of those goods and services.
`[15 U.S.C.] § 1127; Jack Daniel’s Props., Inc. v. VIP Prods.
`LLC, 599 U.S. 140, 146, 143 S. Ct. 1578, 216 L. Ed. 2d 161
`(2023) (“[A] trademark is not a trademark unless it
`identifies a product’s source (this
`is a Nike) and
`distinguishes that source from others (not any other
`sneaker brand).”); Abitron Austria GmbH v. Hetronic Int’l,
`Inc., 600 U.S. 412, 429, 143 S. Ct. 2522, 216 L. Ed. 2d 1013
`(2023) (Jackson, J., concurring) (“It is clear beyond cavil
`that what makes a trademark a trademark under the
`Lanham Act is its source-identifying function.”).
`
`In re Go & Assocs., LLC, 90 F.4th 1354, 2023 USPQ2d 1337, at *2 (Fed. Cir. 2024).
`
`We must assess whether Applicant’s proposed mark, WE’RE HERE TO HELP
`
`WITH YOUR LEGAL NEEDS!, functions as a mark based on whether the relevant
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`public, i.e. purchasers or potential purchasers of the recited legal services, would
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`perceive WE’RE HERE TO HELP WITH YOUR LEGAL NEEDS! as identifying the
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`source or origin of such services. See e.g., id. (the relevant inquiry “typically focuses
`
`on how the mark is used in the marketplace and how it is perceived by consumers”);
`
`In re Texas With Love, LLC, 2020 USPQ2d 11290, at *2 (TTAB 2020) (“Whether the
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`Serial No. 90432695
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`term … falls within this definition and functions as a mark depends on whether the
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`relevant public, i.e., purchasers or potential purchasers of Applicant’s goods [or
`
`services], would perceive the term as identifying the source or origin of Applicant’s
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`goods [or services].”). In this case, because there are no limitations to the channels of
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`trade or classes of consumers, the relevant consuming public comprises all potential
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`purchasers of the identified legal services, and therefore includes members of the
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`general public. See In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, at *5 (TTAB
`
`2019); cf. CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983)
`
`(applying this principle in the likelihood of confusion context).
`
`Describing “helpful” guidance from the Board, the Federal Circuit noted the
`
`Board’s holding that “matter that ‘merely convey[s] general information about the
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`goods or services or an informational message’” fails to function as a source identifier.
`
`In re Vox Populi Registry Ltd., 25 F.4th 1348, 2022 USPQ2d 115, at *3 (Fed. Cir.
`
`2022). “Where the evidence suggests that the ordinary consumer would take the
`
`words at their ordinary meaning rather than read into them some special meaning
`
`distinguishing the goods and services from similar goods and services of others, then
`
`the words fail to function as a mark.” In re Ocean Tech., Inc., 2019 USPQ2d 450686,
`
`at *3 (TTAB 2019).
`
`B. Evidence and Analysis
`
`The Examining Attorney argues that the proposed mark “fails to function as a
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`trademark because the wording is merely informational and constitutes a
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`Serial No. 90432695
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`commonplace slogan.”4 As support, the Examining Attorney relies on a Thomson
`
`Reuters’ Legal online article referring to “clients’ legal needs”5 in connection with
`
`legal services, along with the following third-party law firms’ uses of the wording in
`
`the proposed mark, or nearly identical wording:
`
`The Baker Burton & Lundy website states: “WE’RE HERE
`TO HELP WITH YOUR LEGAL NEEDS,” noting,
`“[w]hether dealing with new opportunities or facing an
`unexpected problem, seeking
`legal advice can be
`intimidating. That’s why we’re here. At Baker, Burton &
`Lundy, we do our best to solve your problem and take the
`stress out of navigating the legal system.”6
`
`The Terry Jessop & Bitner Facebook page states,
`“[s]ometimes, our problems require the help of others. We
`salute and honor those who step up to help. We’re here to
`help with your legal needs.”7
`
`The Carroll Law Firm, LLC website states, “We’re Here to
`Help With Your Legal Needs. Whether you’re starting a
`business, handling family affairs, or struggling with the
`home damage recovery process, we’re here to help you.”
`The webpage then lists three types of legal services –
`property damage, family law, and small business legal.8
`
`An article titled “Keep Your Divorce Off Social Media:
`Here’s Why” on the Patton & Pittman Attorneys at Law
`website concludes with, “Need more advice about using
`social media during your divorce? Call (931)361-4477 to
`speak with our Clarksville divorce lawyers. We’re here to
`help with your legal needs.”9
`
`
`4 14 TTABVUE 2 (Examining Attorney’s Brief).
`
`5 October 19, 2022 Office Action at TSDR 8.
`
`6 Id. at 2 (bakerburtonlundy.com) (capitalization in original).
`
`7 Id. at 3 (facebook.com/TerryJessopBitner/).
`
`8 Id. at 4 (serenalaw.com).
`
`9 Id. at 5 (pattonandpittman.com).
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`
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`Serial No. 90432695
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`The website of Fitzpatrick Zimmerman & Rose, LPA,
`Attorneys at Law states, “We are a firm BELIEVER IN
`JUSTICE And We’re Here To Help With Your Legal
`Needs.”10
`
`The Vanderpool Law Firm, PC website states, “Personal
`injury cases can have devastating effects on individuals
`and their families. Vanderpool Law Firm, PC has helped
`countless injury victims obtain the compensation they
`deserve. We are here to help you with your legal needs.”11
`
`The Janzen Legal Services website includes the following
`statement: “WE ARE HERE TO HELP YOU WITH YOUR
`LEGAL NEEDS. Give us a call for a free consultation or to
`schedule an appointment to meet with one of your
`attorneys.”12
`
`The Ashmore Law Firm, P.C. website states, “Has a loved
`one died and you need to Probate the Estate? Do you need
`a will? Have you been in an accident? Need a Divorce in
`Texas? We are here to help you with your legal needs. “13
`
`The Cornerstone Law Firm website states, “Our attorneys
`are deeply knowledgeable and client-focused. Preparing
`wills and drafting contracts, offering vigorous criminal
`defense, initiating and defending civil lawsuits – each of
`these is part of a broad practice that allows this firm to
`serve Berks County’s legal needs. We’re here to help you
`with your legal needs.”14
`
`Applicant repeatedly characterizes the third-party uses as merely a “handful” of
`
`examples,15 and asserts that “[s]uch minimal results are insufficient to establish that
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`the applied-for mark is ‘ordinary’” as in the DRIVE SAFELY case relied on by the
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`10 Id. at 6 (fzrlaw.com).
`
`
`
`11 May 10, 2023 Office Action at TSDR 2 (vanderpoollaw.net).
`
`12 Id. at 4 (ruggedlaw.com).
`
`13 Id. at 5 (ashmorelaw.com).
`
`14 Id. at 7 (cornerstonelaw.us).
`
`15 12 TTABVUE 6, 7 (Applicant’s Supplemental Brief).
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`- 6 -
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`
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`Serial No. 90432695
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`Examining Attorney, In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1466, 1460-61
`
`(TTAB 1998). Applicant also contends that because the third-party uses are “on
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`interior web pages” or relatively less prominent than other wording or graphics, this
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`diminishes their probative value.16
`
`We reject Applicant’s arguments and find that the record in its entirety
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`demonstrates that consumers would perceive Applicant’s use of WE’RE HERE TO
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`HELP WITH YOUR LEGAL NEEDS! as an informational indication of the
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`availability of legal services from Applicant. We find the quantity and quality of
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`examples – which fall squarely within the context of Applicant’s recited legal services
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`and which reflect a consistent meaning – persuasive to show the informational nature
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`of the wording.17 And we agree with the Examining Attorney, who cited In re
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`Duvernoy & Sons, Inc., 212 F.2d 202, 101 USPQ 288, 289 (CCPA 1954) (finding
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`“‘Consistently Superior’ is merely an adjunct [to the more prominently used trade
`
`name], operating in the shadow thereof, to indicate to purchasers that appellant’s
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`goods are always superior in quality”), that any less prominent usage by third-parties
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`aligns with, rather than detracts from, the informational significance of WE’RE
`
`HERE TO HELP WITH YOUR LEGAL NEEDS!.
`
`
`16 Id. at 7. See also April 18, 2023 Response to Office Action at TSDR 2-4.
`
`17 In its argument against the Section 2(d) refusal, Applicant submitted a screenshot of a
`Google video search of “we’re here to help’ law,” noting that “many law firms” use that phrase
`with their firm name. April 18, 2023 Response to Office Action at TSDR 9, 11. As the
`Examining Attorney stated, this “shows that consumers merely understand this wording as
`a commonly understood phrase used in connection with legal services.” May 10, 2023 Office
`Action at TSDR 1.
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`Serial No. 90432695
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`The evidence of the meaning of wording in the mark, and the use of the same or
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`almost identical phrase by third-party competitors shows the message that
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`consumers would understand when encountering Applicant’s proposed mark. “It is
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`clear from how the term is used by multiple third parties that [the term] merely
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`conveys a well-recognized concept or sentiment.” See Texas With Love, 2020 USPQ2d
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`11290, at *3.
`
`Applicant’s specimen is consistent with the informational nature of the proposed
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`mark, as we find that consumers would view the much larger and more prominent
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`wording RUSSELL LAW FIRM as the source of the services, and would understand
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`WE’RE HERE TO HELP WITH YOUR LEGAL NEEDS! to convey the availability
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`(WE’RE HERE) to perform the legal services the consumer viewing the specimen
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`might require (TO HELP WITH YOUR LEGAL NEEDS).18 “If the nature of a
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`proposed mark would not be perceived by consumers as identifying the source of a
`
`good or service, it is not registrable.” Go & Assocs., 2023 USPQ2d 1337, at *3 (citing
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`Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 599 U.S. at 145).
`
`Considering Applicant’s proposed mark in its entirety, in light of the record as a
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`whole in this appeal, we find that consumers would not perceive WE’RE HERE TO
`
`HELP WITH YOUR LEGAL NEEDS! as a source-indicator for “legal services.”
`
`
`18 The presence of the exclamation point does not change the impression or significance of the
`otherwise informational statement. See In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d
`1082, 1085 (Fed. Cir. 2014) (“This case is, ... like ‘most cases[,] where the addition of an
`exclamation point does not affect the commercial impression of a mark.’”).
`
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`
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`Serial No. 90432695
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`Decision: We affirm the refusal to register Applicant’s proposed mark under
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`Sections 1, 2, 3 and 45 of the Trademark Act, 15 U.S.C. §§ 1051-53 and 1127, on the
`
`ground that it fails to function as a mark. We therefore need not reach the other
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`grounds for refusal.
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`- 9 -
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