This Opinion is Not a
`Precedent of the TTAB
`
`
`
`
`
`
`
`Mailing: March 6, 2018
`
`
`Hearing: February 28, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`Larry Pitt & Associates, P.C.
`v.
`Lundy Law, LLP
`_____
`
`Opposition No. 91210158
`_____
`
`Jacqueline M. Lesser of Baker & Hostetler LLP,
`for Larry Pitt & Associates, P.C.
`Manny D. Pokotilow of Caesar Rivise, PC,
`for Lundy Law, LLP.
`
`
`Before Bergsman, Goodman and Pologeorgis,
`Administrative Trademark Judges.
`
`_____
`
`
`Opinion by Bergsman, Administrative Trademark Judge:
`Lundy Law, LLP (“Applicant”) seeks registration on the Principal Register of the
`
`mark REMEMBER THIS NAME (in standard characters) for “legal services,” in
`
`Class 45.1
`
`
`1 Application Serial No. 85767757 was filed on October 31, 2012, under Section 1(a) of the
`Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and
`use in commerce since at least as early as May 16, 2011.
`
`
`Precedent of the TTAB
`
`
`
`
`
`
`
`Mailing: March 6, 2018
`
`
`Hearing: February 28, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`Larry Pitt & Associates, P.C.
`v.
`Lundy Law, LLP
`_____
`
`Opposition No. 91210158
`_____
`
`Jacqueline M. Lesser of Baker & Hostetler LLP,
`for Larry Pitt & Associates, P.C.
`Manny D. Pokotilow of Caesar Rivise, PC,
`for Lundy Law, LLP.
`
`
`Before Bergsman, Goodman and Pologeorgis,
`Administrative Trademark Judges.
`
`_____
`
`
`Opinion by Bergsman, Administrative Trademark Judge:
`Lundy Law, LLP (“Applicant”) seeks registration on the Principal Register of the
`
`mark REMEMBER THIS NAME (in standard characters) for “legal services,” in
`
`Class 45.1
`
`
`1 Application Serial No. 85767757 was filed on October 31, 2012, under Section 1(a) of the
`Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and
`use in commerce since at least as early as May 16, 2011.
`
`
`
`Opposition No. 91210158
`
`Larry Pitt & Associates, P.C. (“Opposer”) filed an Amended Notice of Opposition
`
`against the registration of Applicant’s mark on the ground that REMEMBER THIS
`
`NAME does not function as a service mark under Sections 1, 2, 3 and 45 of the
`
`Trademark Act, 15 U.S.C. §§ 1051, 1053, and 1127.2
`
`In its Answer to the Amended Notice of Opposition, Applicant admitted that (1)
`
`Opposer has used the phrase “REMEMBER THIS NUMBER” over its toll free
`
`number as one means of instructing potential clients to remember the telephone
`
`number of Opposer’s business, (2) it is a law firm operating in Pennsylvania and its
`
`advertising normally contains the name of the firm or its toll free number, (3) it filed
`
`subject application Serial No. 85767757, and (4) it filed suit against Opposer charging
`
`that Opposer’s use of REMEMBER THIS NUMBER is an infringement of Applicant’s
`
`REMEMBER THIS NAME; but Applicant dismissed the suit. Applicant denied the
`
`remaining salient allegations in the Amended Notice of Opposition.
`
`
`2 24 TTABVUE.
`Opposer initially filed a Notice of Opposition against the registration of Applicant’s mark
`under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the grounds that
`REMEMBER THIS NAME is merely descriptive or generic when used in connection with
`legal services. However, in the Board’s October 31, 2014 Order granting Applicant’s motion
`for summary judgment on the issues of whether its mark is generic or merely descriptive
`when used in connection with legal services, the Board allowed Opposer time to file an
`amended notice of opposition setting forth a claim that Applicant’s mark REMEMBER THIS
`NAME does not function as a service mark under Sections 1, 2, 3 and 45 of the Trademark
`Act, 15 U.S.C. §§ 1051, 1052, 1053 and 1127. 23 TTABVUE.
`
`- 2 -
`
`
`
`Opposition No. 91210158
`
`I. Evidentiary Issues
`
`A. Applicant’s motion to introduce testimony after the close of trial.
`
`On January 19, 2018, well after the close of trial and briefing, Applicant filed a
`
`“Motion To Enter Further Evidence Into Notice of Reliance.”3 In essence, Applicant
`
`filed a motion to reopen its testimony period to introduce newly discovered evidence.
`
`Applicant seeks to introduce the declaration of Lauren Cohen, Applicant’s Director of
`
`Strategic Marketing, including a copy of Ms. Cohen’s Facebook page announcing that
`
`she is leaving Applicant. One of the people responding to her announcement wrote
`
`“Remember The Name!!” Applicant argues that the evidence could not have been
`
`introduced earlier because it was not posted until January 19, 2018.
`
`Opposer objects to the Cohen Declaration on the grounds that material submitted
`
`outside of a party’s testimony period should be given no consideration and that
`
`Opposer has had no opportunity to cross examine either Lauren Cohen or the person
`
`responding to her Facebook post.4
`
`The Trademark Rules provide for a trial order setting the time for each party to
`
`introduce testimony or other evidence.
`
`The Trademark Trial and Appeal Board will issue a trial
`order setting a deadline for each party’s required pretrial
`disclosures and assigning to each party its time for taking
`testimony and presenting evidence (“testimony period”).
`No testimony shall be taken or evidence presented except
`during the times assigned, unless by stipulation of the
`
`
`3 105 TTABVUE.
`4 107 TTABVUE 2.
`
`- 3 -
`
`
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`Opposition No. 91210158
`
`parties approved by the Board, or upon motion granted by
`the Board, or by order of the Board.
`Trademark Rule 2.121(a), 37 C.F.R. § 2.121(a).
`
`Trademark Board Manual of Procedure (TBMP) § 509.01(b)(2) (June 2017)
`
`provides that:
`
`If a party files a motion to reopen its testimony period to
`introduce newly discovered evidence, the moving party
`must show not only that the proposed evidence has been
`newly discovered, but also that the evidence could not have
`been discovered earlier through the exercise of reasonable
`diligence. However, even if a sufficient showing of due
`diligence has been made, the Board will not automatically
`reopen a party’s testimony period for introduction of new
`evidence. The Board must also consider such factors as the
`nature and purpose of the evidence sought to be brought in,
`the stage of the proceeding, and prejudice to the nonmoving
`party. (footnotes omitted).
`Trademark Rule 2.123(a)(1), 37 C.F.R. § 2.123(a)(1), provides that a party may
`
`introduce the testimony of a witness through an affidavit or declaration, filed during
`
`that party’s testimony period, subject to the right of the adverse party to cross
`
`examine the witness. Considering the stage of this proceeding, allowing Applicant to
`
`introduce Ms. Cohen’s declaration requires us to reopen Applicant’s testimony period
`
`so that Opposer may cross examine the witness. Moreover, because the declarant
`
`whose statement is purportedly probative is not Ms. Cohen, we would have to permit
`
`Opposer to depose the declarant of the statement at issue. It is much too late in the
`
`proceeding to permit a reopening of Applicant’s testimony period especially because
`
`the evidence at issue, consumer perception, is the type of evidence that Applicant
`
`should have introduced during its testimony period. See Canadian Tire Corp. v.
`
`Cooper Tire & Rubber Co., 40 USPQ2d 1537, 1539 (Comm’r 1996) (“The nature and
`
`- 4 -
`
`
`
`Opposition No. 91210158
`
`purpose of the evidence sought to be added, the stage of the proceeding, the adverse
`
`party’s right to a speedy and inexpensive determination of the proceeding and the
`
`need for closure once the trial period has been completed (barring some compelling
`
`reason to reopen), are all factors which must be considered by the Board in
`
`determining a motion to reopen such as this.”).
`
`Moreover, the evidence sought to be introduced, one response to a Facebook
`
`posting, does not have significant probative value to justify reopening trial. That is,
`
`the new evidence is not likely to cause a different result or affect the outcome of this
`
`case.
`
`Any further delay will prejudice Opposer. This case has been pending since April
`
`2013, there has been a motion for summary judgment, and the parties have had more
`
`than four years to take discovery and present trial evidence. It is time to move this
`
`case forward for a final determination on the merits. See Harjo v. Pro-Football Inc.,
`
`45 USPQ2d 1789, 1790 (TTAB 1998).
`
`Applicant’s motion to reopen its testimony period to introduce the declaration of
`
`Lauren Cohen and accompanying exhibit is denied.
`
`
`
`- 5 -
`
`
`
`Opposition No. 91210158
`
`B. Applicant’s motions to strike portions of the Ross Fishman testimony
`deposition and expert report.
`
`Opposer has introduced the testimony deposition and Amended Expert Report of
`
`Ross Fishman.5 Mr. Fishman is a marketing consultant specializing in the
`
`development of strategies and creative marketing for law firms.6
`
`Fundamentally we do three things: We are sort of a
`strategy and branding firm, mostly representing law firms,
`but other professional services, and other kinds of
`companies as well. We do the strategy, branding, and then
`developing the collateral materials in support of those
`brands, um, which include these days, um, websites, um,
`as well as print ads, brochures, the full range of marketing
`collateral materials. And also do a lot of marketing
`training, firm in trades (phonetic), and keynote speeches.7
`Despite the Board’s finding that Mr. Fishman is qualified as a marketing expert
`
`in the field of law firm advertising, not as an expert in trademark law,8 Opposer
`
`engaged Mr. Fishman to render his opinion regarding the following topics:
`
`1. The use of the phrase REMEMBER THIS NAME;
`
`2. Whether REMEMBER THIS NAME may be considered a trademark;
`
`3. Whether the specimen of use filed with Applicant’s application showing use of
`
`REMEMBER THIS NAME functions as a trademark; and
`
`4. Whether REMEMBER THIS NAME is capable of functioning as a trademark.9
`
`
`5 71 TTABVUE.
`6 Fishman Dep. Exhibit 2 (Amended Expert Report of Ross Fishman) (71 TTABVUE 130).
`7 Fishman Dep., p. 8 (71 TTABVUE 9).
`8 23 TTABVUE 4-5.
`9 Fishman Dep. Exhibit 2 (Amended Expert Report of Ross Fishman) (71 TTABVUE 130).
`
`- 6 -
`
`
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`Opposition No. 91210158
`
`Applicant filed a series of motions to strike portions of the Fishman testimony
`
`deposition and Amended Expert Report,10 as well arguing in its brief that Mr.
`
`Fishman’s testimony and Amended Expert Report should be given little weight
`
`because they exceed the subject matter about which he is qualified to testify.11
`
`The Board is responsible for determining whether the subject of this opposition,
`
`the phrase REMEMBER THIS NAME, is capable of functioning as a service mark,
`
`and whether the specimen filed with Applicant’s application shows use of
`
`REMEMBER THIS NAME as a service mark. Edwards Lifesciences Corp. v. VigiLanz
`
`Corp., 94 USPQ2d 1399, 1402 (TTAB 2010); Fisons Ltd. v. UAD Laboratories, Inc.,
`
`219 USPQ 661, 663 (TTAB 1983).
`
`[A]bsent a competently designed and executed survey of a
`cross-section of customers and prospective customers of the
`products or services involved, the deciding tribunal must
`make its own subjective evaluation of what the average
`consumer will perceive the mark to be as he encounters
`them in the actual or hypothetical … marketing arena.
`Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d at 1402 (quoting The
`
`Mennen Co. v. Yamanouchi Pharm. Co., Ltd., 203 USPQ 302, 305 (TTAB 1979)); see
`
`also Anheuser-Busch Inc. v. Holt, 92 USPQ2d 1101, 1106 (TTAB 2009); Ferro Corp.
`
`v. Nicofibers, Inc., 196 USPQ 41, 45 (TTAB 1977) (“understanding of the marks must
`
`be determined in light of the relevant purchasing sector and not that of linguistic
`
`experts or those familiar with the meaning or derivation of words”).
`
`
`10 62 TTABVUE, 67 TTABVUE, and 85 TTABVUE.
`11 Applicant’s Brief, p. 28 (96 TTABVUE 33).
`
`- 7 -
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`
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`Opposition No. 91210158
`
`In a similar situation, a witness was qualified as an expert in the field of travel
`
`writing and journalism based on her professional experience as a travel writer and
`
`editor and, therefore, was “qualified as an expert as to how to convey travel
`
`information to readers and potential tourists, and how travel writers believe such
`
`information will be perceived and understood.” However, the witness was not
`
`qualified to render an opinion regarding consumer perception. The Board expressly
`
`stated that the opinion of the purported expert witness may not “serve as a substitute
`
`for the Board’s judgment on the legal claim before us.” Alcatraz Media Inc. v.
`
`Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1757 (TTAB 2013), aff’d mem., 565
`
`F.App’x 900 (Fed. Cir. 2014).
`
`Because Mr. Fishman is qualified as an expert in legal marketing, he is qualified
`
`to testify as to how to convey legal marketing information to consumers and how
`
`practitioners in the field of legal marketing believe such information will be
`
`perceived. Mr. Fishman, however, is not qualified to testify regarding consumer
`
`perception. Accordingly, we have treated his testimony as an expert as explained
`
`above and have accorded his testimony the appropriate probative value.
`
`Likewise, we limit the testimony of Harlan Schillinger, Applicant’s expert witness
`
`on legal marketing, to how to convey legal marketing information to consumers and
`
`how legal marketing practitioners believe such information will be perceived.12
`
`
`12 79 TTABVUE.
`
`- 8 -
`
`
`
`Opposition No. 91210158
`
`C. Evidence improperly submitted through notices of reliance.
`
`The types of evidence admissible by notice of reliance are identified in Trademark
`
`Rules 2.122(d)(2) (registration owned by a party to a proceeding), 2.122(e)(1) (printed
`
`publications and official records), 2.122(e)(2) (Internet materials) and 2.120(k)
`
`(discovery depositions, initial disclosures, and answers to interrogatories and
`
`requests for admission). See Trademark Rule 2.122(g), 37 C.F.R. § 2.122(g).
`
`We may not consider the document entitled “Case Study: Lundy Law” by Expert
`
`Technology Associates (63 TTABVUE 60) analyzing Applicant’s advertising. There is
`
`no evidence or testimony that the case study appears in books or periodicals available
`
`to the general public in libraries or in general circulation among the relevant public
`
`as required by Trademark Rule 2.122(e)(1). Accordingly, it is not the type of document
`
`that may be introduced through a notice of reliance.
`
`We may not consider the video and audio excerpts from Health Alert advertising
`
`introduced by Opposer purporting to feature video and audio of third-party use of
`
`REMEMBER THIS NAME (63 TTABVUE 88) nor may we consider the recording
`
`introduced by Applicant purporting to feature the use of REMEMBER THIS NAME
`
`(74 TTABVUE 699), as neither is the type of evidence that may be filed through a
`
`notice of reliance. There is no provision in the rules for the introduction of audio and
`
`video tapes through a notice of reliance.
`
`Finally, we may not consider the email communications from Tami Sortman,
`
`Applicant’s Creative Director, regarding advertising for REMEMBER THIS NAME
`
`- 9 -
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`Opposition No. 91210158
`
`because email communications are not evidence that may be introduced through a
`
`notice of reliance.13
`
`II. The Record
`
`The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
`
`37 C.F.R. § 2.122(b), Applicant’s application file.14 The record also includes the
`
`following testimony and evidence:
`
`A. Opposer’s testimony and evidence.
`
`1.
`
`Notice of reliance on the following items:
`
`a.
`
`b.
`
`Applicant’s responses to Opposer’s first set of interrogatories;15
`
`Applicant’s responses to Opposer’s first set of requests for
`
`admission;16
`
`c.
`
`Applicant’s responses to Opposer’s request for production of
`
`documents;17
`
`
`13 64 TTABVUE 3-4 (designated confidential).
`14 Accordingly, it was not necessary for Opposer to file a copy of the application in its first
`notice of reliance.
`Also, it was not necessary for Opposer to introduce its rebuttal notice of reliance
`(89 TTABVUE) because Opposer previously introduced those discovery responses in its first
`notice of reliance discussed below (63 TTABVUE). “When evidence has been made of record
`by one party in accordance with these rules, it may be referred to by any party for any purpose
`by the Federal Rules of Evidence.” Trademark Rule 2.122(a), 37 C.F.R. § 2.122(a). See, e.g.,
`Nazon v. Ghiorse, 119 USPQ2d 1178, 1181 n.6 (TTAB 2016) (“Once evidence is properly of
`record, it may be relied on by any party for any purpose.”).
`15 63 TTABVUE 9-25.
`16 63 TTABVUE 26-40.
`17 63 TTABVUE 41-54. Opposer did not include any documents.
`Responses to document production requests are admissible solely for the purpose of showing
`that that a party has stated that there are no responsive documents. See City Nat’l Bank v.
`OPGI Mgt. GP Inc./Gestion OPGI Inc., 106 USPQ2d 1688, 1674 n.10 (TTAB 2013).
`
`- 10 -
`
`
`
`Opposition No. 91210158
`
`d.
`
`Applicant’s supplemental responses to Opposer’s request for
`
`production of documents;18
`
`e.
`
`Online articles purporting to advise businesses to choose
`
`memorable names;19
`
`f.
`
`Excerpt from third-party websites purportedly showing use of
`
`REMEMBER THIS NAME;20
`
`g.
`
`Discovery deposition of Tami Sortman, Applicant’s Creative
`
`Director;21 and
`
`h.
`
`Discovery deposition of L. Leonard Lundy, Applicant’s Managing
`
`Partner;22 and
`
`2. Testimony deposition of Ross Fishman, Opposer’s expert witness in the
`
`field of legal marketing;23 and
`
`
`18 63 TTABVUE 55-59.
`19 63 TTABVUE 62-87.
`20 63 TTABVUE 92-115.
`21 64 TTABVUE 4-72 (Confidential). Opposer filed a redacted version of the Tami Sortman
`discovery deposition posted at 110 TTABVUE 3-203.
`Opposer unnecessarily introduced the entire discovery deposition of Tami Sortman. For
`example, the speaking objections at pages 41, 114, 123 and 127 (64 TTABVUE 14, 33-36) do
`not add anything to our understanding of the facts. The Board rules of practice and procedure
`provide that a party may introduce any part of a discovery deposition through a notice of
`reliance. Trademark Rule 2.120(k)(3)(i), 37 C.F.R. § 2.120(k)(3)(i). Yet, we would be remiss if
`we did not add that although Opposer believed that we should suffer through the entire
`deposition, Opposer did not include the exhibits about which the witness was asked to testify.
`22 64 TTABVUE 73-135 (Confidential). A copy of the Lundy deposition with the confidential
`designation removed was posted at 110 TTABVUE 205-267.
`23 71 TTABVUE. Applicant filed motions to strike, inter alia, Fishman Testimony Deposition
`Exhibit 3 (62 and 67 TTABVUE). Because we do not rely on those exhibits, we need not decide
`Applicant’s motions.
`
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`
`
`Opposition No. 91210158
`
`3.
`
`Rebuttal testimony declaration of Ross Fishman.24
`
`B. Applicant’s testimony and evidence.
`
`1.
`
`Notice of reliance on the following items:
`
`a.
`
`Copies of third-party registration prosecution history files showing
`
`the registration of marks that purportedly have characteristics
`
`similar to REMEMBER THIS NAME;25 and
`
`b.
`
`Printout from Avvo.com purportedly profiling Ross Fishman,
`
`Opposer’s expert witness in the field of legal marketing;26
`
`2. Testimony deposition of L. Leonard Lundy, Applicant’s Managing
`
`Partner;27
`
`3. Testimony deposition of Tami Sortman, Applicant’s Creative Director;28
`
`and
`
`4.
`
`Testimony deposition of Harlan Schillinger, Applicant’s expert witness
`
`in the field of legal marketing.29
`
`III. Standing
`
`Standing is a threshold issue that must be proven by the plaintiff in every inter
`
`partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270,
`
`
`24 88 TTABVUE.
`25 74 TTABVUE 8-692.
`26 74 TTABVUE 693-698.
`27 76 TTABVUE. The portions of the Lundy deposition designated confidential are posted on
`77 TTABVUE.
`28 78 TTABVUE.
`29 79 TTABVUE.
`
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`
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`Opposition No. 91210158
`
`111 USPQ2d 1058, 1062 (Fed. Cir. 2014); see also Lipton Indus., Inc. v. Ralston
`
`Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982) (“The facts regarding
`
`standing … are part of [a plaintiff’s] case and must be affirmatively proved.
`
`Accordingly, [plaintiff] is not entitled to standing solely because of the allegations in
`
`its petition.”). To prove its standing to oppose the registration of a phrase that
`
`allegedly does not function as a mark, an opposer may show it is engaged in the
`
`manufacture or sale of the same or related goods or services as those listed in the
`
`applicant’s application; that is, that the opposer has the right to use the wording in
`
`marketing its services. See Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468,
`
`1487 (TTAB 2017) (“Opposer has standing to opposer registration of Applicant’s
`
`claimed mark because it competes directly with Applicant in the general utility
`
`engine business, and thus has a reasonable basis for a belief that it would be damaged
`
`if Applicant’s claimed mark were registered.”); D.C. One Wholesaler, Inc. v. Chien,
`
`120 USPQ2d 1710, 1712 (TTAB 2016) (because the parties are competitors, opposer
`
`has standing to pursue a claim that the subject matter sought to be registered does
`
`not function as a mark); Univ. Book Store v. Univ. of Wisc. Bd. of Regents, 33 USPQ2d
`
`1385 (TTAB 1994) (operators of stores which sell merchandise imprinted with the
`
`mark sought to be registered have standing to oppose); cf. Apollo Med. Extrusion
`
`Techs., Inc. v. Med. ExtrusionTechs., Inc., 123 USPQ2d 1844, 1848 (TTAB 2017);
`
`Anheuser-Busch Inv. v. Holt, 92 USPQ2d 1101, 1103 (TTAB 2009); Plyboo Am., Inc.
`
`v. Smith & Fong Co., 51 USPQ2d 1633, 1634 (TTAB 1999); Nature’s Way v. Nature’s
`
`- 13 -
`
`
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`Opposition No. 91210158
`
`Herbs, 9 USPQ2d 2077, 2080 (TTAB 1989); Binney & Smith Inc. v. Magic Marker
`
`Indus., Inc., 222 USPQ 1003, 1010 (TTAB 1984).
`
`Opposer, in its brief, did not address standing as an element of its case.30 Our
`
`review of the record yields the following evidence relevant to Opposer’s standing:
`
`• Applicant, in its Answer, admitted that (1) “Opposer has used the phrase
`
`‘REMEMBER THIS NAME’ over its toll free number as one means of
`
`instructing potential clients to remember the telephone number of
`
`Opposer’s business,” and (2) Applicant filed suit against Opposer, charged
`
`that the use of the mark REMEMBER THIS NUMBER was an
`
`infringement of REMEMBER THIS NAME, but dismissed the suit.31
`
`• Applicant’s response to Opposer’s Interrogatory No. 19.
`
`State with specificity where, when and how Applicant first
`became aware of Opposer’s use of the phrase REMEMBER
`THIS NAME in Opposer’s advertising.
`Response
`… Applicant states that on January 24, 2013 an employee
`reported to Applicant that she saw someone else using the
`mark REMEMBER THIS NAME. The employee did not
`remember who. Applicant requested that she return to the
`place where she saw the advertisement and find the nature
`of the law firm using the mark. The employee took a picture
`of the advertisement located on the inside of SEPTA bus
`with her cell phone. The advertisement was that of
`Opposer. The advertisement did not use Applicant’s mark
`
`
`30 Applicant, in its brief, did not address whether Opposer has standing. At the oral hearing,
`Applicant initially contested Opposer’s standing but subsequently conceded that it did not
`contest Opposer’s standing.
`31 Applicant’s Answer ¶¶ 7 and 18 (25 TTABVUE 3 and 5).
`
`- 14 -
`
`
`
`Opposition No. 91210158
`
`REMEMBER THIS NAME, rather, it used the mark,
`REMEMBER THIS NUMBER.32
`• Testimony deposition of Ross Fishman, Opposer’s expert witness.
`
`Q.
`
`Are you familiar with, um, either law firm in this
`particular case, Larry Pitt & Associates or Lundy
`Law?
`I was not familiar with them before getting involved
`in this case.33
`• Ross Fishman’s Amended Expert Report.
`
`A.
`
`Larry Pitt & Associates, like other law firms[,] uses the
`phrase “Remember this number.” This advertising always
`and only refers to the firms’ number – 1-888-PITT LAW.
`Many personal injury firms have a phone number related
`to the firm’s name.
`
`*
`*
`*
`Just as some law firms, besides Lundy Law, use the phrase
`“Remember this name,” other firms use the phrase
`“Remember this number.” See attachment B.34
`Attachment B includes a copy of Opposer’s website advertising Opposer’s worker’s
`
`compensation, personal
`
`injury, social security disability,
`
`immigration and
`
`employment law legal services.35
`
`• Harlan Schillinger Rebuttal Expert Report:
`
`firm
`law
`injury
`Unlike the third party personal
`advertisements cited by Mr. Fishman, the advertisement
`of Larry Pitt & Associates, the Opposer, uses the phrase
`“REMEMBER THIS NUMBER” which is analogous to the
`Lundy Law mark REMEMBER THIS NAME in that both
`
`32 63 TTABVUE 22.
`33 Fishman Testimony Dep., p. 26 (71 TTABVUE 27).
`34 Fishman Testimony Dep., Exhibit 2 (Amended Expert Report) (71 TTABVUE 135).
`35 71 TTABVUE 163-166.
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`Opposition No. 91210158
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`phrases are taglines which include words that do not
`suggest calling the firm.36
`This evidence is sufficient to establish that Opposer renders legal services in the
`
`field of personal injury law and is a competitor of Applicant and, therefore, has
`
`standing to pursue this opposition.
`
`IV. Whether REMEMBER THIS NAME functions as a service mark?
`
`Section 45 of the Trademark Act, 15 U.S.C. § 1127, defines a “Service mark” as
`
`“any word, name, symbol, or device, or any combination thereof—(1) used by a person
`
`… to identify and distinguish the services of one person … from the services of others
`
`and to indicate the source of the services, even if that source is unknown.” It is well
`
`settled that not every designation that is placed or used on a product necessarily
`
`functions as a trademark for said product and not every designation adopted with the
`
`intention that it perform a trademark function necessarily accomplishes that
`
`purpose. D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d at 1713; In re Eagle Crest
`
`Inc., 96 USPQ2d 1227, 1229 (TTAB 2010). The critical inquiry in determining
`
`whether a designation functions as a mark is how the designation is perceived by the
`
`relevant public. Id.; see also In re Phoseon Tech. Inc., 103 USPQ2d 1822, 1827 (TTAB
`
`2012); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862 (TTAB 2006) (“the mark
`
`must be used in such a manner that it would be readily perceived as identifying the
`
`specified goods and distinguishing a single source or origin for the goods. … The mere
`
`fact that a designation appears on the specimen of record does not make it a
`
`
`36 Schillinger Testimony Dep. Exhibit 51 (79 TTABVUE 44).
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`- 16 -
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`Opposition No. 91210158
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`trademark. … A critical element in determining whether matter sought to be
`
`registered as a trademark is the impression the matter makes on the relevant public.”
`
`(citations omitted)).
`
`Opposer argues that REMEMBER THIS NAME “is simply an instruction for the
`
`consumer to remember the name and number of” Applicant37 and, as such, it is simply
`
`an ordinary slogan without any independent source identification, such as “Call
`
`Today,” “No fee unless we win,” or “Injured? We can help.”38 In this regard, Opposer
`
`contends that even Applicant’s witnesses have testified that “‘REMEMBER THIS
`
`NAME’ only makes sense if it is used in connection and association with the 1-800-
`
`LUNDYLAW name and phone number.”39
`
`The specimen filed with the application displays REMEMBER THIS NAME on a
`
`photograph of a bus advertisement reproduced below:
`
`
`
`
`37 Opposer’s Brief (92 TTABVUE 5).
`38 Opposer’s Brief (92 TTABVUE 21-22).
`39 Opposer’s Brief (92 TTABVUE 26) (citing Sortman Testimony Dep., p. 58 (78 TTABVUE
`59) (the telephone number is the most important thing to remember) and Schillinger
`Testimony Dep., p. 13 (79 TTABVUE 14) (REMEMBER THIS NAME is used to get
`somebody’s attention as a reference to Applicant)).
`
`- 17 -
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`
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`Opposition No. 91210158
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`Applicant introduced examples of advertisements displaying REMEMBER THIS
`
`NAME through the Tami Sortman Testimony Deposition. Representative examples
`
`of those advertisements are reproduced below:
`
`• An advertisement at the Philadelphia Soul Arena Football arena:40
`
`• A poster on a PATCO or SEPTA train:41
`
`
`
`
`
`
`40 Sortman Testimony Dep., p. 11 and Exhibit 16 (78 TTABVUE 12 and 94).
`41 Sortman Testimony Dep., p. 14 and Exhibit 19 (78 TTABVUE 15 and 97).
`
`- 18 -
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`
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`Opposition No. 91210158
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`• Sign over an entrance inside Wells Fargo Center arena:42
`
`
`Ross Fishman, Opposer’s legal marketing expert, made the following observation
`
`in his expert report:
`
`“Remember this name” represents the objective of the
`advertisement, not the identity of the brand. The
`advertisement is designed to encourage people to know the
`brand – “Lundy Law.” The use of the phrase reflects that
`which Lundy Law wants to achieve, that viewers of its
`advertisements will remember Lundy Law.43
`*
`*
`*
`The phrase “Remember this name” as used by Lundy Law
`is designed to drive potential clients to the Lundy Law
`name.”44
`
`
`42 Sortman Testimony Dep., p. 24 and Exhibit 28 (78 TTABVUE 25 and 106).
`43 Ross Fishman Testimony Exhibit 2 (71 TTABVUE 134).
`44 Ross Fishman Testimony Exhibit 2 (71 TTABVUE 135).
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`- 19 -
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`Opposition No. 91210158
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`Harlan Schillinger, Applicant’s
`
`legal marketing expert, observed
`
`that
`
`REMEMBER THIS NAME is a “‘call to action’ to remember the name ‘Lundy Law.’”45
`
`… Not only did [REMEMBER THIS NAME] create name
`recognition for the personal injury services of Lundy Law,
`it focused the potential client of the firm on who was
`providing the legal services.46
`Mr. Fishman stated in his expert report that REMEMBER THIS NAME is
`
`comparable to other terms used in advertisements both within and outside the legal
`
`industry to “drive the potential client to the brand name.”47 Mr. Fishman attached
`
`copies of news articles and advertisements listed below to corroborate his point:
`
`• Adweek (adweek.com) (June 25, 2013) reporting on the use of “REMEMBER MY
`
`NAME” to advertise the final episodes of Breaking Bad;48
`
`• All In One Restoration website (URL illegible) using REMEMBER OUR NAME
`
`in a banner across the top of a webpage;49
`
`• Bryant Miller Olive law firm website (URL not included) using the tagline “Our
`
`Name Is Easy To Remember. Our Work Is Hard To Forget”;50
`
`• The FaceBook page of PhysioWorld Ltd. using “Remember this name
`
`PhysioWorld Ltd.”;51 and
`
`
`45 Harlan Schillinger Testimony Exhibit 51 (79 TTABVUE 43).
`46 Harlan Schillinger Testimony Exhibit 51 (79 TTABVUE 43).
`47 Fishman Amended Expert Report (71 TTABVUE 134).
`48 Fishman Amended Expert Report (71 TTABVUE 158-160).
`49 Fishman Amended Expert Report (71 TTABVUE 161).
`50 Fishman Amended Expert Report (71 TTABVUE 162).
`51 Fishman Amended Expert Report (71 TTABVUE 232).
`
`- 20 -
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`Opposition No. 91210158
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`• S/Magazine excerpt (stylemagazine.com) entitled “Remember This Name:
`
`Achok Majak,” an article introducing a new model.52
`
`There is no question that REMEMBER THIS NAME may be considered a slogan,
`
`tagline, or a “call to action” used in Applicant’s advertising. The issue is whether
`
`REMEMBER THIS NAME as used by Applicant performs the function of a service
`
`mark by signifying to purchasers the source of the legal services being offered by
`
`Applicant. D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d at 1716; In re Paramount
`
`Pictures Corp., 213 USPQ 1111, 1115 (TTAB 1982). REMEMBER THIS NAME is one
`
`feature of Applicant’s advertising comprising (i) INJURED? (ii) REMEMBER THIS
`
`NAME and (iii) 1-800-LUNDY LAW where 1-800-LUNDY LAW is the prominent
`
`element of the advertisements and REMEMBER THIS NAME is the least prominent
`
`element. “While a trademark or service mark need not be displayed in any particular
`
`size or degree of prominence, the important question is whether, when it is noticed,
`
`it will be understood as indicating the origin of the goods or services.” In re Royal
`
`Viking Line A/S, 216 USPQ 795, 797 (TTAB 2982) (citing In re Singer Mfg. Co.,
`
`255 F.2d 939, 118 USPQ 310, 312 (CCPA 1958) (“The important question is not how
`
`readily the mark will be noticed, but whether, when it is noticed, it will be understood
`
`as indicating origin of the goods.”). As was noted by the Commissioner of Patents and
`
`Trademarks in Ex parte National Geographic Society, 83 USPQ 260 (Comm’r. Pat.
`
`1949):
`
`This [definition of trademark] contemplates use in such a
`manner as to fulfill that function and clearly does not
`
`52 Fishman Amended Expert Report (71 TTABVUE 233).
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`Opposition No. 91210158
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`contemplate that the public will be required or expected to
`browse through a group of words, or scan an entire page in
`order to decide th
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