throbber
THIS DECISION IS NOT A
`PRECEDENT OF THE TTAB
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`
`
`Before Kuhlke, Lykos, and Hightower,
`Administrative Judges.
`
`By the Board:
`
`
`Lundy Law, LLP (“Applicant”) seeks to register the mark REMEMBER
`
`THIS NAME, in standard characters, for “legal services” in International
`
`Class 45.1
`
`On April 10, 2013, Larry Pitt & Associates, P.C., (“Opposer”) filed a notice
`
`of opposition opposing the registration of Applicant’s mark on the grounds of
`
`genericness and mere descriptiveness.2
`
`
`1 Application Serial No. 85767757, filed on October 31, 2012, based upon an
`allegation of use in commerce under Section 1(a) of the Trademark Act, claiming
`May 16, 2011 as both the date of first use and the date of first use in commerce.
`2 The Board notes that, on the ESTTA filing cover sheet of Opposer’s notice of
`opposition, Opposer has identified genericness under Section 23 of the Trademark
`Act and mere descriptiveness under Section 2(e)(1) of the Trademark Act as grounds
`for opposition. Because Applicant has applied to register its mark on the Principal
`Register, Opposer’s claim of genericness falls within Section 2(e)(1) of the
`Trademark Act not Section 23 which governs the registrability on the Supplemental
`Register. In view thereof, reference to Section 23 is sua sponte stricken. The Board
`further notes, as discussed more fully infra, that Opposer’s pleading includes
`allegations which may be construed as a claim that Applicant’s involved mark does
`not function as a service mark.
`
`
`
`
`
`
`
`
`
`
`
`Mailed: October 31, 2014
`
`Opposition No. 91210158
`
`Larry Pitt & Associates, P.C.
`
`v.
`
`Lundy Law, LLP
`
`
`
`GCP
`
`
`
`
`

`
`Opposition No. 91210158
`
`
`On May 14, 2013, Applicant filed an answer to the notice of opposition
`
`denying the salient allegations asserted therein.
`
`This proceeding now comes before the Board for consideration of (1)
`
`Applicant’s motion for summary judgment on Opposer’s asserted claims of
`
`genericness and mere descriptiveness, and (2) Applicant’s motion to strike
`
`certain portions of an expert report submitted by Opposer in response to
`
`Applicant’s motion for summary judgment. Both motions are fully briefed.
`
`Applicant’s Motion To Strike
`
`We first turn to Applicant’s motion to strike certain portions of the expert
`
`witness report of Mr. Ross Fishman submitted in support of Opposer’s
`
`response to Applicant’s motion for summary judgment. In support thereof,
`
`Applicant contends that certain statements made by Mr. Fishman in his
`
`expert witness report are either (1) legal conclusions which Mr. Fishman is
`
`not qualified to make, or (2) unsubstantiated, unauthenticated expert opinion
`
`by a person not qualified to give such an opinion. In particular, Applicant
`
`objects to the statements made by Mr. Fishman regarding whether or not
`
`Applicant’s mark is a service mark, as well as statements regarding First
`
`Amendment considerations and the application of Federal Trade Commission
`
`rules and regulations in conjunction with trademark law.
`
`In response, Opposer contends that, as a marketing professional, Mr.
`
`Fishman is qualified to opine on how consumers of legal services perceive the
`
`marketing and branding of law firm clients, particularly since a trademark is
`
`
`
`2
`
`

`
`Opposition No. 91210158
`
`a brand and source indicator. Opposer also maintains that, as indicated in
`
`Mr. Fishman’s curriculum vitae, he has extensive experience analyzing
`
`branding and source indicators for law firms, including personal injury firms,
`
`such as Applicant’s. In view thereof, Opposer argues that Mr. Fishman has
`
`the expertise to offer his competent, reliable, and objective opinions on the
`
`subject matter of the report in order to guide the trier of fact on the issue of
`
`genericness or mere descriptiveness.
`
`Fed. R. Evid. 702, made applicable to Board proceedings by Trademark
`
`Rule 2.116(a), provides:
`
`A witness who is qualified as an expert by knowledge, skill, experience,
`
`training, or education may testify in the form of an opinion or otherwise if:
`
`(a) the expert’s scientific, technical, or other specialized knowledge will
`help the trier of fact to understand the evidence or to determine a fact in
`issue;
`(b) the testimony is based on sufficient facts or data;
`(c) the testimony is the product of reliable principles and methods; and
`(d) the expert has reliably applied the principles and methods to the facts
`of the case.
`
`
`Rule 702 does not specify any particular means for qualifying an expert,
`
`requiring only that the witness possess the “knowledge, skill, experience,
`
`training, or education” necessary to “assist” the trier of fact. Fed. R. Evid.
`
`702; Notes of Advisory Committee of Proposed Rule.3 However, as explained
`
`
`3 In 2000, Fed. R. Evid. 702 was amended in response to the Supreme Court’s decision in
`Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993) (“Daubert”), and to the
`subsequent cases applying Daubert, including Kumho Tire Co. v. Carmichael, 526 U.S. 137
`(1999) (“Kumho”). Committee Notes on Rules – 2000 Amendment. As the Supreme Court
`stated in Daubert, the trial court must determine whether the proposed expert possesses “a
`
`
`
`3
`
`

`
`Opposition No. 91210158
`
`in the advisory committee notes to Rule 702, “[i]f the witness is relying solely
`
`or primarily on experience, then the witness must explain how that
`
`experience leads to the conclusion reached, why that experience is a sufficient
`
`basis for the opinion, and how that experience is reliably applied to the facts.”
`
`At the outset, we note that while Applicant has moved to strike certain
`
`portions of Ms. Fishman’s expert report, we observe by way of analogy that
`
`the Board does not ordinarily strike testimony taken in accordance with the
`
`applicable rules on the basis of substantive objections; rather, such objections
`
`are considered by the Board in its evaluation of the probative value of the
`
`testimony at final hearing. Cf. Alcatraz Media Inc. v. Chesapeake Marine
`
`Tours Inc., 107 USPQ 1750, 1755 (TTAB 2013) (internal citations omitted).
`
`Thus, in accordance with our practice, we have not stricken any portions of
`
`the expert witness report offered by Mr. Fishman.
`
`Following a careful review of Mr. Fishman’s expert witness report, we find
`
`that Mr. Fishman is qualified as a marketing expert in the field of law firm
`
`advertising. That being said, the Board agrees with Applicant that certain
`
`statements regarding the ultimate conclusions of law made by Mr. Fishman
`
`in his expert report should be given no consideration. See, e.g., Steiger
`
`Tractor, Inc. v. Steiner Corp., 221 USPQ 165, 169 (TTAB 1984); The Mennen
`
`Co. v. Yamanouchi Pharm. Co., 203 USPQ 302, 305 (TTAB 1979).
`
`
`reliable basis in the knowledge and experience of [the relevant] discipline.” Daubert, 509 U.S.
`at 592.
`
`
`
`4
`
`

`
`Opposition No. 91210158
`
`
`Accordingly, the Board has given no consideration to any legal conclusions
`
`made by Mr. Fishman in his expert report for which he is not qualified to
`
`make.4 The determination of whether a mark is generic or merely descriptive
`
`in terms of trademark law lies within the province of the courts and the
`
`Board to decide, and not an “expert” on such issues.
`
`With regard to the remainder of the statements made by Mr. Fishman in
`
`his expert witness report which are contested by Applicant, the Board will
`
`give the appropriate probative value, if any, to such statements based upon
`
`Mr. Fishman’s stated qualifications.
`
`Applicant’s Motion For Summary Judgment
`
`We next turn to Applicant’s motion for summary judgment. In support
`
`thereof, Applicant maintains that there are no genuine disputes of material
`
`fact that its subject REMEMBER THIS NAME mark is not generic or merely
`
`descriptive for its legal services. Specifically, Applicant argues that the mark
`
`REMEMBER THIS NAME is not the genus for legal services, nor are legal
`
`services the primary significance of REMEMBER THIS NAME to the public.
`
`Further, Applicant contends that its REMEMBER THIS NAME mark has
`
`been, and continues to be, used and promoted in such a manner so as to make
`
`it both known to consumers and to have consumers associate it with
`
`
`4 The Board notes that Mr. Fishman’s qualifications, as set forth in his expert
`witness report, do not qualify him to testify as an expert in trademark law,
`constitutional law, or the rules and regulations promulgated by the Federal Trade
`Commission.
`
`
`
`5
`
`

`
`Opposition No. 91210158
`
`Applicant and its legal services as a source identifier. In view thereof,
`
`Applicant argues that its mark is not merely descriptive of its legal services.
`
`Applicant also maintains that none of the components of its REMEMBER
`
`THIS NAME mark is generic or even descriptive of Applicant’s legal services.
`
`Further, Applicant contends that the existence of third-party registrations for
`
`marks containing phrases and slogans having an admonition
`
`to
`
`“REMEMBER” something demonstrates that the USPTO routinely allows
`
`trademarks with such phrases and slogans to be registered on the Principal
`
`Register without a showing of acquired distinctiveness. Finally, Applicant
`
`maintains that Opposer has not produced any information or documents
`
`pursuant to Applicant’s discovery requests which would demonstrate that
`
`Applicant’s REMEMBER THIS NAME mark is either generic or merely
`
`descriptive of Applicant’s legal services.
`
`In support of its motion for summary judgment, Applicant has submitted
`
`the declaration of its managing partner, namely, L. Leonard Lundy, who
`
`states that Applicant’s use of its subject REMEMBER THIS NAME mark for
`
`legal services began on May 16, 2011 and since that time the mark has been
`
`used extensively and continuously by Applicant. Mr. Lundy’s declaration
`
`also introduces the following exhibits: (1) copies of photographs displaying
`
`advertisements of Applicant’s REMEMBER THIS NAME mark displayed on
`
`buses, subway cars, banners at ballparks, and train stations, (2) copies of
`
`photographs of marketing materials upon which the mark REMEMBER
`
`
`
`6
`
`

`
`Opposition No. 91210158
`
`THIS NAME has been used to advertise Applicant’s services, (3) copies of
`
`photographs of t-shirts advertising Applicant’s legal services under the
`
`REMEMBER THIS NAME mark, and (4) copies of slides depicting
`
`screenshots from a television commercial used by Applicant to advertise its
`
`legal services under its REMEMBER THIS NAME mark.
`
`Applicant has also submitted the declaration of Applicant’s Legal
`
`Assistant and Secretary, Magdelena Lozada, who introduces the following
`
`exhibits: (1) the current file history of Applicant’s involved application, (2)
`
`copies of third-party registrations for alleged slogan marks that contain the
`
`term REMEMBER, (3) dictionary definitions of the terms “remember,” “this,”
`
`and “name” obtained from the online version of the Merriam-Webster
`
`dictionary, (4) a copy of the notice of opposition, (5) copies of Applicant’s first
`
`set of interrogatories and Opposer’s responses thereto, and (6) Opposer’s
`
`responses to Applicant’s second set for interrogatories.
`
`In response to Applicant’s motion for summary judgment, Opposer
`
`initially contends that Applicant has failed to meet its initial burden of
`
`demonstrating that there are no genuine disputes of material fact that its
`
`REMEMBER THIS NAME mark is not generic or not merely descriptive and
`
`that it is therefore entitled to judgment in its favor as a matter of law.
`
`Specifically, Opposer argues that the fact that the examining attorney
`
`approved Applicant’s mark for publication is not conclusive evidence of
`
`registrability since the Board is not bound by the decisions of an examining
`
`
`
`7
`
`

`
`Opposition No. 91210158
`
`attorney during ex parte prosecution. Second, Opposer contends that the
`
`existence of third-party registrations for slogans that include the term
`
`“remember” without a showing of secondary meaning is immaterial on the
`
`issues of genericness or descriptiveness since the Board is not bound by other
`
`registrations for such marks but must decide each case on its own merits.
`
`Third, Opposer maintains that Applicant has submitted no evidence which
`
`demonstrates that its involved mark has acquired distinctiveness; instead,
`
`Opposer contends that Applicant merely relies on argument that the common
`
`phrase is inherently distinctive. Lastly, Opposer contends that Applicant’s
`
`argument that its mark functions as a service mark because it appears in
`
`large lettering in Applicant’s advertisements and in certain instances the
`
`mark appears in different colors is without merit.
`
`Even if Applicant has satisfied its initial burden, Opposer maintains that
`
`genuine disputes of material fact remain which would preclude the
`
`disposition of this case by way of summary judgment. With regard to its
`
`asserted genericness claim, Opposer contends that other law firms routinely
`
`use phrases to ask consumers to remember their names and telephone
`
`numbers. Further, Opposer maintains that such instructive phrases above a
`
`name or telephone number are essential to law firm advertising and the use
`
`of such instructive phrases is a generic concept that is widespread in the legal
`
`community. Opposer also contends that while there may be other ways for a
`
`law firm to encourage consumers to remember their names, the sheer fact
`
`
`
`8
`
`

`
`Opposition No. 91210158
`
`that other equally generic phrases are available for competitive use does not
`
`mean that Applicant may claim exclusive rights to a particular generic
`
`phrase.
`
`With respect to its mere descriptiveness claim, Opposer contends that
`
`consumers faced with multiple law firms look to the name of the law firm for
`
`source identification, not statements such as “CALL TODAY,” “NO FEE
`
`UNLESS WE WIN,” “INJURED? WE CAN HELP.” Opposer maintains these
`
`slogans, like Applicant’s mark REMEMBER THIS NAME, are common
`
`instructional phrases with no independent source indication. In view thereof,
`
`Opposer argues that allowing Applicant’s REMEMBER THIS NAME mark to
`
`register would improperly give Applicant the exclusive rights to this
`
`instructional phrase to the detriment of other law firms or businesses who
`
`similarly may request that consumers remember their own business names
`
`and telephone numbers. Furthermore, Opposer maintains that Applicant’s
`
`own documents demonstrate that Applicant’s REMEMBER THIS NAME
`
`mark is a slogan merely intended to help support making its law firm name,
`
`LUNDY LAW, more memorable to potential consumers. Additionally,
`
`Opposer contends that Applicant has failed to establish that its REMEMBER
`
`THIS NAME mark has acquired distinctiveness.
`
`
`
`9
`
`

`
`Opposition No. 91210158
`
`
`Finally, Opposer argues that Applicant’s REMEMBER THIS NAME does
`
`not function as a service mark because Applicant’s mark merely constitutes a
`
`common instruction rather than a source identifier.5
`
`In support of its response to Applicant’s motion for summary judgment,
`
`Opposer has submitted the declaration of one of its attorneys, namely,
`
`Jacqueline M. Lesser, which introduces the following exhibits: (1) Applicant’s
`
`responses to Opposer’s first set of interrogatories, (2) Applicant’s responses to
`
`Opposer’s first set of requests for admissions, (3) Applicant’s responses and
`
`objections to Opposer’s requests for production of documents, (4) Applicant’s
`
`supplemental responses and objections to Opposer’s Document Request Nos.
`
`3, 8, 11, 14, 18 and 19, (5) a copy of an article entitled Case Study: Lundy
`
`Law of Expert Technology Associates, (6) certain confidential documents
`
`produced by Applicant, (7) articles downloaded from the internet on law firms
`
`and memorable names, and (8) downloads from HEALTH ALERT advertising
`
`for REMEMBER THIS NUMBER.
`
`Opposer has also submitted the declaration of Opposer’s Office Manager,
`
`Phyllis Meloff, who declares, inter alia, that (1) she is responsible for
`
`overseeing all of the advertising for Opposer, (2) Opposer’s advertisements
`
`
`5 The Board notes that Opposer also argues that that Applicant is not using its
`REMEMBER THIS NAME mark alone but only in conjunction with the wording
`“INJURED?.” Opposer, however, has not pleaded non-use of the applied-for mark as
`a ground for opposition. Accordingly, this argument has been given no consideration
`in our determination inasmuch as a party may not avoid summary judgment by
`contending genuine disputes of material fact exist as to issues not raised in the
`pleadings. See Perma Cream Enterprises, Inc. v. Preco Industries Limited, 23
`USPQ2d 1134, 1135 n.2 (TTAB 1992).
`
`
`
`10
`
`

`
`Opposition No. 91210158
`
`bear the name of the law firm and the firm’s toll free number, (3) the
`
`intended purpose of the advertising is that consumers will remember the
`
`name and telephone of Opposer’s law firm when seeking legal representation,
`
`(4) in her 22 years of experience, she has reviewed the advertising of other
`
`law firms in the Philadelphia area and is familiar with the goals of such law
`
`firms in their advertising, (5) it is common for law firms that advertise
`
`publicly to request that potential clients remember them and call them, and
`
`(6) Opposer uses the phrase REMEMBER THIS NUMBER in its advertising
`
`so that potential customers will remember them and call them.
`
`Finally, Opposer has also submitted the expert witness report of Ross
`
`Fishman in support of its response to Applicant’s motion for summary
`
`judgment.
`
`
`Decision
`
`A party is entitled to summary judgment when it has demonstrated that
`
`there are no genuine disputes as to any material facts, and that it is entitled
`
`to judgment as a matter of law. Fed. R. Civ. P. 56(a). The evidence must be
`
`viewed in a light favorable to the nonmoving party, and all justifiable
`
`inferences are to be drawn in the nonmovant’s favor. Opryland USA Inc. v.
`
`Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir.
`
`1992).
`
`Upon careful consideration of the arguments and evidence presented by
`
`the parties, and drawing all inferences with respect to Applicant’s motion in
`
`
`
`11
`
`

`
`Opposition No. 91210158
`
`favor of Opposer as the nonmoving party, we find that there are no genuine
`
`disputes of material fact that Applicant’s REMEMBER THIS NAME mark is
`
`not generic for or merely descriptive of Applicant’s recited legal services for
`
`the reasons discussed below.
`
`With regard to Applicant’s motion for summary judgment on the issue of
`
`genericness, a generic term identifies a type of goods or services and not the
`
`source of such goods or services. Louis Altman & Malla Pollack, 3 CALLMAN
`
`ON UNFAIR COMPETITION, TRADEMARKS & MONOPOLIES § 18.3 (4th ed.
`
`2014). A determination that a term is generic requires evidence showing the
`
`genus of the goods or services at issue and an understanding by the relevant
`
`public that the term refers primarily to that genus of goods or services. See
`
`H. Marvin Ginn Corp. v. International Ass'n of Fire Chiefs, Inc., 782 F.2d
`
`987, 228 USPQ 528 (Fed. Cir. 1986). Evidence of the relevant public’s
`
`understanding of a term may be obtained from any competent source,
`
`including direct testimony of consumers, consumer surveys, newspapers,
`
`magazines, dictionaries, catalogs, and other publications. See In re Merrill
`
`Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d. 1567, 4 USPQ2d 1411 (Fed.
`
`Cir. 1987) and In re Northern Aluminum Products, Inc., 777 F.2d 1556, 227
`
`USPQ 961 (Fed. Cir. 1985).
`
`After careful consideration of the evidentiary submissions presented by
`
`each party, we find that Applicant has met its burden of establishing that no
`
`genuine disputes of material fact exist and that its involved REMEMBER
`
`
`
`12
`
`

`
`Opposition No. 91210158
`
`THIS NAME mark is not generic for legal services. More specifically, under
`
`the first part of the Ginn two-part genericness test, we find that the genus of
`
`the services at issue in this proceeding is “legal services,” i.e., the services
`
`recited in the involved application. See Magic Wand Inc. v. RDB Inc., 940
`
`F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991). Under the second part of
`
`the Ginn test, we find that REMEMBER THIS NAME is not understood by
`
`the relevant public primarily to refer to the rendering of legal services.
`
`Indeed, there is no evidence of record that suggests that the phrase
`
`“REMEMBER THIS NAME” is the name for the provision of legal services.
`
`In short, there is no evidence to establish that REMEMBER THIS NAME
`
`is perceived by the relevant public as a generic term. Rather, the evidence
`
`establishes that there is no genuine dispute of material fact and, as a matter
`
`of law, the phrase REMEMBER THIS NAME is not generic for legal services.
`
`In view thereof, Applicant’s motion for summary judgment on the grounds
`
`that its applied-for mark REMEMBER THIS NAME is not generic for “legal
`
`services” is GRANTED. See, e.g., In re American Fertility Society, 51
`
`USPQ2d 1832, 1837 (Fed. Cir. 1999); In re Merrill Lynch, Pierce, Fenner, and
`
`Smith Inc., supra; and Taylor Brothers, Inc. v. The Pinkerton Tobacco
`
`Company, 231 USPQ 412 (TTAB 1986).
`
`Accordingly, Opposer’s claim of genericness under Section 2(e)(1) is hereby
`
`dismissed with prejudice.
`
`
`
`13
`
`

`
`Opposition No. 91210158
`
`
`We next turn to the mere descriptiveness ground. A term is merely
`
`descriptive of goods or services, within the meaning of Section 2(e)(1) of the
`
`Trademark Act of 1946, 15 U.S.C. § 1052(e)(1), if it forthwith conveys an
`
`immediate idea of an ingredient, quality, characteristic, feature, function,
`
`purpose or use of the goods or services. In re Abcor Development Corp., 588
`
`F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A term need not immediately
`
`convey an idea of each and every specific feature of the applicant’s goods or
`
`services to be merely descriptive; rather, it is sufficient that the term
`
`describes one significant attribute, function or property of the goods or
`
`services. In re H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB 1982); In re
`
`MBAssociates, 180 USPQ 338, 339 (TTAB 1973). Whether a term is merely
`
`descriptive is determined not in the abstract, but in relation to the goods or
`
`services for which registration is sought; the context in which it is being used
`
`on or in connection with the goods or services, and the possible significance
`
`that the term would have to the average purchaser of the goods or services
`
`because of the manner of its use; that a term may have other meanings in
`
`different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591,
`
`593 (TTAB 1979). In other words, the question is not whether someone
`
`presented with only the mark could guess what the goods or services are.
`
`Rather, the question is whether someone who knows what the goods or
`
`services are will immediately understand the mark as directly conveying
`
`information about them (i.e., whether someone familiar with Applicant’s legal
`
`
`
`14
`
`

`
`Opposition No. 91210158
`
`services will understand the involved REMEMBER THIS NAME mark to
`
`convey information about the legal services). In re Tower Tech Inc., 64
`
`USPQ2d 1314, 1317 (TTAB 2002); In re Patent & Trademark Services Inc., 49
`
`USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Association of
`
`Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings
`
`Corp., 226 USPQ 365, 366 (TTAB 1985). “On the other hand, if one must
`
`exercise mature thought or follow a multi-stage reasoning process in order to
`
`determine what product or service characteristics the term indicates, the
`
`term is suggestive rather than merely descriptive.” In re Tennis in the
`
`Round, Inc., 199 USPQ 496, 497 (TTAB 1978); see also In re Shutts, 217
`
`USPQ 363, 364-65 (TTAB 1983); In re Universal Water Systems, Inc., 209
`
`USPQ 165, 166 (TTAB 1980).
`
`Applicant has pointed out in in its motion for summary judgment that
`
`there is no evidence that its REMEMBER THIS NAME mark immediately
`
`describes a characteristic, quality or feature of its legal services. Applicant
`
`also argues that Opposer has failed to show that Applicant’s involved mark is
`
`descriptive of its legal services or conveys any information to the average
`
`purchaser about the nature, function, or purpose of Applicant’s legal services.
`
`Because Applicant has pointed out that there is no evidence of mere
`
`descriptiveness in connection with its legal services to prove Opposer’s case,
`
`the burden shifted to Opposer to establish that a genuine dispute of material
`
`fact remains for trial on the question of descriptiveness. See Celotex Corp. v.
`
`
`
`15
`
`

`
`Opposition No. 91210158
`
`Catrett, 477 U.S. 317, 325 (1986); Sweats Fashions, Inc. v. Pannill Knitting
`
`Co., Inc., 833 F.2d 1560, 1563, 4 USPQ2d 1793, 1796 (Fed. Cir. 1987).
`
`Opposer has not met its burden, however, as it has simply not presented
`
`any evidence that Applicant's REMEMBER THIS NAME mark is merely
`
`descriptive of legal services, i.e., that Applicant’s mark describes the quality,
`
`characteristic, feature, function, or purpose of Applicant’s legal services.
`
`Instead, Opposer essentially contends that Applicant’s mark does not
`
`function as a source indicator because it is merely a common instructional
`
`phrase. Accordingly, Applicant's motion for summary judgment on Opposer's
`
`claim of mere descriptiveness is GRANTED. In view thereof, Opposer’s
`
`claim of mere descriptiveness is dismissed with prejudice.
`
`Although the Board has granted Applicant’s motion for summary
`
`judgment on Opposer’s asserted claims of genericness and mere
`
`descriptiveness, the Board nevertheless notes that Opposer’s pleading
`
`contains certain allegations which may be construed as a claim that
`
`Applicant’s mark is not registrable because it does not function as a service
`
`mark, i.e., does not function as source indicator for Applicant’s recited legal
`
`services under Sections 1, 2, 3 and 45 of the Trademark Act. Specifically, in
`
`Paragraph 10 of Opposer’s pleading, Opposer alleges that “[a]pplicant’s
`
`purported mark REMEMBER THIS NAME, if not generic, is at best merely
`
`descriptive insofar as it is nothing more than an instruction to potential
`
`clients to remember the name of Applicant’s law firm, Lundy Law, and such
`
`
`
`16
`
`

`
`Opposition No. 91210158
`
`therefore is not capable, itself, of identifying and distinguishing a single
`
`source.” (emphasis added). Moreover, in Paragraph 12 of Opposer’s pleading,
`
`Opposer alleges that “[a]pplicant’s specimen of use for REMEMBER THIS
`
`NAME merely uses the term as an instruction in the body of the ad and does
`
`not show the use of the phrase as a trademark, or source identifier.”
`
`(emphasis added).
`
`We additionally note that, in response to Applicant’s motion for summary
`
`judgment, Opposer is, in effect, arguing that Applicant’s REMEMBER THIS
`
`NAME mark does not function as a source indicator because it is merely an
`
`instructional advertising phrase.
`
`In view thereof, Opposer is allowed until twenty (20) days from the
`
`mailing date of this order in which to file and serve an amended notice of
`
`opposition which properly sets forth a claim that Applicant’s REMEMBER
`
`THIS NAME does not function as a service mark under Sections 1, 2, 3 and
`
`45 of the Trademark Act,6 failing which the opposition will be dismissed with
`
`prejudice.
`
`
`6 See, e.g., In re T.S. Designs, Inc., 95 USPQ2d 1669 (TTAB 2010) (holding
`CLOTHING FACTS merely an informational phrase and not a source identifier
`based on the likely consumer perception of the phrase used on a clothing label in
`connection with manufacturing information reminiscent of the “Nutrition Facts”
`label required
`for
`food products by the United States Food and Drug
`Administration); and In re Remington Products, Inc., 3 USPQ2d 1714 (TTAB 1987)
`(PROUDLY MADE IN USA used on electric shavers is not used as a trademark, but
`merely to tell the buyer the place the product was made).
`
`
`
`17
`
`

`
`Opposition No. 91210158
`
`
`In turn, Applicant is allowed twenty (20) days from the date indicated
`
`on the certificate of service of Opposer’s amended notice of opposition in
`
`which to file and serve its answer to Opposer’s amended pleading.
`
`Trial Schedule
`
`Proceedings are resumed. Discovery remains open. Trial dates are reset
`
`as follows:
`
`Expert Disclosures Due
`Discovery Closes
`Plaintiff's Pretrial Disclosures Due
`Plaintiff's 30-day Trial Period Ends
`Defendant's Pretrial Disclosures Due
`Defendant's 30-day Trial Period Ends
`Plaintiff's Rebuttal Disclosures Due
`Plaintiff's 15-day Rebuttal Period Ends
`
`
`1/15/2015
`2/14/2015
`3/31/2015
`5/15/2015
`5/30/2015
`7/14/2015
`7/29/2015
`8/28/2015
`
`In each instance, a copy of the transcript of testimony, together with
`
`copies of documentary exhibits, must be served on the adverse party within
`
`thirty days after completion of the taking of testimony. Trademark Rule
`
`2.l25.
`
`Briefs shall be filed in accordance with Trademarks Rules 2.128(a) and
`
`(b). An oral hearing will be set only upon request filed as provided by
`
`Trademark Rule 2.129.
`
`
`
`
`
`18

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