Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`91210158
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`Plaintiff
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`Larry Pitt & Associates, P.C.
`JACQUELINE M LESSER
`WOODCOCK WASHBURN LLP
`2929 ARCH STREET CIRA CENTRE, 12TH FLOOR
`PHILADELPHIA, PA 19104-2891
`UNITED STATES
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`trademarks@woodcock.com, j|esser@woodcock.com, jda|e@woodcock.com
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`Other Motions/Papers
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`Jacqueline M. Lesser
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`trademarks@woodcock.com, j|esser@woodcock.com, jda|e@woodcock.com
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`/Jacqueline M. Lesserl
`10/31/2013
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`Memorandum of Law In Support of Larry Pitt & Associates‘ Motion under Rule
`56(d).PDF(175925 bytes )
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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA568365
`ESTTA Tracking number:
`10/31/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91210158
`Plaintiff
`Larry Pitt & Associates, P.C.
`JACQUELINE M LESSER
`WOODCOCK WASHBURN LLP
`2929 ARCH STREET CIRA CENTRE, 12TH FLOOR
`PHILADELPHIA, PA 19104-2891
`UNITED STATES
`trademarks@woodcock.com, jlesser@woodcock.com, jdale@woodcock.com
`Other Motions/Papers
`Jacqueline M. Lesser
`trademarks@woodcock.com, jlesser@woodcock.com, jdale@woodcock.com
`/Jacqueline M. Lesser/
`10/31/2013
`Memorandum of Law In Support of Larry Pitt & Associates' Motion under Rule
`56(d).PDF(175925 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`LARRY PITT & ASSOCIATES, P.C.
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`Opposition No 91210158
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`Opposer,
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`v.
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`LUNDY LAW, LLP
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`Applicant
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`MEMORANDUM OF LAW IN SUPPORT OF LARRY PITT & ASSOCIATES’
`MOTION UNDER RULE 56(d)
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`Pursuant to Rule 56(d) of the Federal Rules of Civil Procedure and 37 C.F.R.
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`§2.127(e)(1), Opposer, Larry Pitt and Associates (“Opposer” or “Larry Pitt”) hereby
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`moves for an order to: 1) defer or deny the motion for summary judgment of Applicant,
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`Lundy Law LLP (“Applicant” or “Lundy Law”) as premature pursuant to Fed. R. Civ. P.
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`56(d)(1); or 2). to issue an Order to allow time for Opposer to obtain declarations and
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`take additional discovery to respond to the motion, pursuant to Fed. R. Civ. P. 56(d)(2);
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`or 3) to make any other ruling consistent with Rule 56(d)3.
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`I. PROCEDURAL BACKGROUND RELEVANT TO THIS MOTION
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`Larry Pitt has opposed Applicant’s attempt to register REMEMBER THIS NAME on the
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`grounds that the phrase is merely descriptive, if not generic, and that it fails to function as a
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`trademark. Indeed, it is Opposer’s position that no trademark rights should accrue to the
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`common instructional phrase: REMEMBER THIS NAME which Applicant concedes always
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`precedes its name: Lundy Law, as in “INJURED? REMEMBER THIS NAME: LUNDY LAW”
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`which Applicant uses so that potential clients “recall” and recognize its name. Declaration of
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`Jacqueline M. Lesser, Esq., dated October 31, 2013 (“Lesser Decl.”) ¶¶4 and 5; Interrogatory
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`Response No. 6 and Admission 1.
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`At issue is the right of third party law firms to direct their own potential clients to
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`remember their own law firms’ names, or their own law firms’ telephone numbers, as is the
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`practice with most, if not all, personal injury attorneys. Prior to the filing of this Opposition,
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`Lundy Law, in fact, moved to enjoin Opposer’s use of the similarly generic phrase REMEMBER
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`THIS NUMBER based on Lundy Law’s purported rights in REMEMBER THIS NAME. Lesser
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`Decl. ¶2.
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`Initial disclosures were due July 19, 2013 and discovery is set to close on December 16,
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`2013. No extensions to the discovery and trial schedule have been sought at this point in the
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`proceedings. Applicant served its formal responses and objections to Opposer’s First Set of
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`Interrogatories, First Request for Production of Documents, and First Requests for Admission on
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`September 10th, and filed its motion for summary judgment 2 ½ weeks later, without providing
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`either promised production; or permitting Opposer to object to Applicant’s deficient responses.
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`Lesser Decl. ¶¶3-5. Moreover, no depositions have as yet been noticed – the September 10th
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`discovery responses provided the first notice of potential witnesses, other than Applicant’s
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`principal, Leonard Lundy, who is first identified in the September 10th responses as one of the
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`people involved in coming up with the phrase REMEMBER THIS NAME. Lesser Decl. ¶4;
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`Interrogatory Response Nos. 1 and 2. While Leonard Lundy submitted a declaration in support
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`of Applicant’s summary judgment motion, Opposer has not had an opportunity to test either the
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`veracity of Leonard Lundy’s statements made in his summary judgment declaration, or to
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`examine Leonard Lundy (or the other persons first identified in the September 10th discovery
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`responses) regarding the creation and use of the REMEMBER THIS NAME slogan or on any
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`other matter.
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`II. APPLICANT’S SUMMARY JUDGMENT MOTION IS PREMATURE
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`The true purpose of Lundy Law’s summary judgment motion is simply to freeze
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`discovery, and to deny Larry Pitt an opportunity for adequate discovery to support its evidentiary
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`burden of proofs in the opposition proceeding. However, a plaintiff should not be "'railroaded'
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`by a premature motion for summary judgment.” Celotex Corp. v. Catrett, 477 U.S. 317, 326,
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`106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986). Without question, Applicant’s summary judgment
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`motion – filed a mere 2 ½ weeks after first identifying potential discovery witnesses, and prior to
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`promised production of documents – is premature. The Board is especially mindful of the
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`“railroading” of nonmovants by premature summary judgment motions or the improper entry of
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`summary judgment when the nonmoving party has not had an opportunity to exercise pretrial
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`discovery. See Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23
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`U.S.P.Q. 1471 (Fed Cir. 1992); Keebler Co. v. Murray Bakery Products, 866 F.2d 1386, 9
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`U.S.P.Q. 2d 1736 (Fed. Cir. 1989). This case before the Board now exemplifies the very
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`“railroading” of which the Board disapproves. The majority of discovery requested in the
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`accompanying Lesser Declaration is of existing, pending discovery requests, or foreseeable
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`follow up discovery by way of depositions of Lundy Law employees or third parties who have
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`worked with Lundy Law. It is appropriate for Opposer to request that either the motion for
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`summary judgment be denied or deferred, or that discovery be allowed before it responds to the
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`motion since the parties are in the middle the discovery period, and Opposer still awaits
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`production – failing which it will move to compel. Indeed, although requests have been served,
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`Lundy Law has refused any production on matters of distinctiveness. Lesser Decl. ¶¶ 3; 4 and 7
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`(i)1. Similarly, although requests have been served, Lundy Law has refused any discovery on
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`genericness. Lesser Decl. ¶¶3 and 4; Interrogatory Response No. 16; Responses to Document
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`Requests Nos. 13 and 20. Moreover, to the extent that persons have been identified in response
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`to Opposer’s first set of discovery requests, because of the timing of the summary judgment
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`motion, Larry Pitt has been unable to schedule depositions.
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`a. Opposer is entitled to discovery on genericness, descriptiveness and functionality.
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`Lundy Law’s argument essentially is that as a matter of law, Opposer cannot prove that
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`the slogan REMEMBER THIS NAME (concededly, used always with the name to be
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`remembered2) is generic, merely descriptive, and simply fails to function as a trademark.
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`However, it is a factual issue whether REMEMBER THIS NAME is a generic phrase.
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`See, In re Pennington Seed, Inc., 466 F.3d 1053, 1056, 80 U.S.P.Q. 2d 1758 (Fed. Cir. 2006);
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`Rock & Roll Hall of Fame v. Gentile Prods., 134 F.3d 749, 753 (6th Cir. 1998) (genericness is an
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`issue of fact). Generic terms are incapable of functioning as a trademark, a term may not be
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`registered if due to its inherent nature or manner of use, the mark does not function as a
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`trademark. TMEP Section 1202.
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`Whether the phrase REMEMBER THIS NAME is merely descriptive is also a question
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`of fact. DuoPross Meditech Corp. v. Inviro Medical Devices Ltd. 103 U.S.P.Q. 1753, 1756
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`1 Lundy Law has refused to produce any documents that would support its claimed acquired
`distinctiveness since the parties have agreed that there would be no protective order entered in
`this case. Typical evidence would be advertising, promotional figures in support of such a
`slogan. Lundy Law has in the past made its advertising and promotional figures generally and
`publicly available on the PTO website without any confidentiality limitation.Since this type of
`material has not been considered by Lundy Law as confidential in the past, one can only presume
`that Lundy Law’s failure to produce this information in support of its claimed distinctiveness
`really means it has no financials to support this claim.
`2 Lesser Decl. ¶3; Document Request No. 18.
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`(Fed. Cir. 2012). In a descriptiveness analysis,“[t]he question is whether someone who knows
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`what the goods or services are will understand the mark to convey information about them.” In
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`re Tower Tech Inc., 64 U.S.P.Q. 2d 1314, 1316-17 (TTAB 2002). Slogans such as REMEMBER
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`THIS NAME are descriptive where they are commonly used in the relevant industry. In re
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`Melville Corp., 228 U.S.P.Q. 970, 971-971 (TTAB 1986). See also, TMEP 1209.3(p) (terms that
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`describe a function or purpose may be merely descriptive or generic); and likewise, slogans such
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`as REMEMBER THIS NAME in common industry use are not registrable. See, TMEP
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`1209.3(s). Applicant has argued that REMEMBER THIS NAME is “inherently distinctive.” See
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`Motion at 16. Opposer is entitled discovery of Applicant’s claimed inherent distinctiveness, and
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`the lack of descriptiveness and lack of genericness of the advertising phrase.
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`Lundy Law’s argument that the Examining Attorney has approved REMEMBER THIS
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`NAME without requiring a claim under 2(f) does not end the distinctiveness inquiry – it is well
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`settled that the Board is not bound by the decisions of Examining Attorneys. See Superbakery
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`Inc. v. Benedict, 96 U.S.P.Q. 2d 1134, 1135 (Fed. Cir. 2010); Cineplex Odeon Corp. v. Fred
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`Wehrenberg Circuit of Theatres Inc., 56 U.S.P.Q. 2d 1538, 1541 (TTAB 2000). Despite the
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`weak arguments, Larry Pitt must still respond to Lundy Law’s points that its slogan is not
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`generic and is both distinctive or has acquired distinctiveness through consumer identification,
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`and requires further discovery to do so.
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`b. Lundy Law has refused to produce discovery
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`Although Applicant’s claim of inherently distinctive and nongeneric is specious, at best,
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`Larry Pitt is entitled to discovery on the following subjects for its response to the motion.
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` Discovery on creation of REMEMBER THIS NAME from Applicant and its identified
`advertising and marketing personnel, including drafts of mock ups, notes, memorandum,
`and third party discovery of the identified advertising and marketing persons.
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` Discovery on consumer association of REMEMBER THIS NAME.
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` Discovery on distinctiveness of REMEMBER THIS NAME.
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` Discovery of any consumer perceptions of the phrase REMEMBER THIS NAME as a
`mark, as a descriptive or generic phrase, and on grounds that the phrase fails to function
`as a trademark.
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`Thus far, Lundy Law has refused production on these topics. Given Lundy Law’s
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`position that the phrase functions as a mark, and that the phrase is not merely descriptive,
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`Opposer is entitled to discovery on the creation and use of the phrase. See e.g. T. Marzetti Co. v.
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`Roskam Baking Co., 102 U.S.P.Q.2d 1801, 1804 (6th Cir. 2012) (Texas Toast found generic for
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`croutons based on discovery of trademark owner’s own documents). Tellingly, Lundy Law has
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`refused to produce any documents relating to communications on the development and creation
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`of its slogan, stating that “Applicant further objects to this Request to the extent that developing
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`a response to this Request would be oppressive, unduly burdensome, unreasonably expensive
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`and/or would require an unreasonable investigation on the part of Applicant.” Lesser Decl. ¶3;
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`Response to Document Request No. 11. And although Applicant has agreed to produce
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`nonprivileged or documents which are not work product “regarding or concerning the creation of
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`the tag line phrase REMEMBER THIS NAME,” no documents have been forthcoming, and it is
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`unclear what documents would be deemed privileged or work product. Id.
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`Lundy Law makes the broad statement that the phrase REMEMBER THIS NAME is
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`neither generic nor descriptive because the individual words “remember” and “name” are not
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`defined as “law firm” in a dictionary. However, the inquiry does not end there, and Larry Pitt is
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`entitled to test this assertion through discovery, in particular, given that there are entire
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`categories of marks that have been deemed “descriptive” although the marks do not immediately
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`describe the product or service in question.3 Tellingly, Lundy Law has refused to produce any
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`documents to support its contention that REMEMBER THIS NAME is not merely descriptive,
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`other than the advertisements that are attached to the Leonard Lundy declaration, and Lundy
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`Law characterizes the production request as “unreasonable”. Lesser Decl. ¶3; Response to
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`Document Request No. 18. Larry Pitt should be entitled to question Lundy Law about this.
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`Further, on the issue of descriptiveness, Larry Pitt is entitled to discovery on “whether
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`someone who knows what the goods or services are will understand the mark to convey
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`information about them.” In re Tower Tech Inc., 64 U.S.P.Q. 2d 1314, 1316-17 (TTAB 2002),
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`accord DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., 695 F.3d 1247, 103
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`U.S.P.Q.2d 1753, 1757 (Fed. Cir. 2012). Applicant has also argued in its motion, that its slogan,
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`if not inherently distinctive, has acquired distinctiveness -- that “Lundy Law’s mark
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`REMEMBER THIS NAME has been, and continues to be, used and promoted in such a manner
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`so as to make it both known to consumers and to have consumers associate it with Lundy Law
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`and its services as an identifier of source.” Motion at 15. Larry Pitt has the right to test this bold
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`and unsupported assertion through discovery. None of this discovery has been produced at this
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`point.
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`3 See e.g. Ringling Bros.-Barnum & Bailey v. Celozzi-Ettelson, 855 F. 2d 480, 481 (7th Cir.
`1988) (“the Greatest Show on Earth” descriptive of circus); Co-Rect Prod, Inc. v. Marvy!Adver.
`Photo, 780 F. 2d 1324, 1331-32 (8th Cir. 1985) (advertising expression “he can save you enough
`money to pay his own salary” descriptive of bartending product); Sparknet Commc’n L.P. v.
`Bonneville Int’l Corp., 386 F. Supp. 2d 965, 977(N.D. Ill. 2005) (“whatever we want”
`descriptive for radio station, despite registration); K Merchandise Mart, Inc. v. Kmart Corp., 81
`F. Supp. 2d 923, 929 (C.D. Ill. 2000) (“Changing for a better day” descriptive of plaintiff’s retail
`business – plaintiff failed to offer any evidence of secondary meaning, relying on its
`characterization of its mark as “suggestive”); Stop & Shop Supermarket Co. v. Fullerton Corp.,
`943 F. Supp. 120, 122 (D. Mass. 1996) (“It’s that simple” for a supermarket deemed descriptive);
`Reed v. Amoco Oil Co, 611 F. Supp. 9, 13 (M.D. Tenn. 1984) (“goin the extra mile”
`descriptive of a tire dealership).
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`That Applicant’s real intention is simply to avoid the discovery process and railroad Larry
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`Pitt is highlighted by Lundy Law’s own papers. Lundy Law cites Larry Pitt’s discovery response
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`and objection to Applicant’s Interrogatory No. 5 that at this point in the proceeding, Opposer
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`need not identify all of the documents upon which it intends to rely insofar as the request is
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`“premature in that the opposition and discovery are in its initial stages.” By moving for
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`summary judgment at this juncture, while acknowledging that Opposer seeks additional
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`discovery, Lundy Law essentially admits that its motion is premature.
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`III. CONCLUSION
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`For the foregoing reasons as detailed above, and in attached declaration of Jacqueline M.
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`Lesser submitted herewith, Opposer requests that the Board, pursuant to Fed. R. Civ. P.56(d) and
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`37 C.F.R. §2.127(e)(1) defer considering the motion or deny it; or alternatively, allow time to
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`obtain affidavits, declarations or discovery; or alternatively, issue any appropriate order.
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`Respectfully submitted,
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`Nancy Frandsen, Esq.
`Jacqueline M. Lesser, Esq.
`Washburn Woodcock LLP
`Cira Centre, 12th Floor
`2929 Arch Street
`Philadelphia, PA 19104-2891
`Tel: 215-568-3100
`Fax: 215-568-3439
`nfrandsen@woodcock.com
`jlesser@woodcock.com
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`Attorneys for Opposer, Larry Pitt & Associates
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`Dated: October 31, 2013
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 31st day of October, 2013, I caused a true and correct copy of
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`the foregoing MEMORANDUM OF LAW IN SUPPORT OF LARRY PITT & ASSOCIATES’
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`MOTION UNDER FED.R.CIV.P. 56(D) to be served by First Class mail upon counsel for
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`Applicant, Lundy Law, LLP at:
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`Manny D. Pokotilow
`Caesar Rivise, Bernstein, Cohen & Pokotilow Ltd.
`1635 Market Street
`11th Floor – Seven Penn Center
`Philadelphia, PA 19103-2212
`mpokotilow@crbcp.com
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`/s/ Jacqueline M. Lesser
`Jacqueline M. Lesser