`
`Subject:
`
`Sent:
`Sent As:
`
`GABRIELLE MORLOCK(IPDocket@swlaw.com)
`U.S. Trademark Application Serial No. 97441932 - LEGALLEADZ - -
`87973.00300
`May 31, 2024 01:29:00 PM EDT
`tmng.notices@uspto.gov
`
`Attachments
`
`screencapture-4legalleads-com-17169038815901
`screencapture-thelegalleads-com-17169039378111
`screencapture-www-nolo-com-leads-17169039648061
`screencapture-www-uplead-com-legal-leads-17169040702011
`screencapture-www-clio-com-blog-best-lead-generation-services-lawyers-reviews-
`17169043685801
`screencapture-leadingresponse-com-legal-17169044329171
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application Serial No. 97441932
`
`Mark: LEGALLEADZ
`
`Correspondence Address:
`Gabrielle Morlock
`Snell & Wilmer LLP
`One East Washington Street
`Suite 2700
`Phoenix AZ 85004
`United States
`
`Applicant: Simpleforce Corp.
`
`Reference/Docket No. 87973.00300
`
`Correspondence Email Address: IPDocket@swlaw.com
`
`
`
`
`
`
`REQUEST FOR RECONSIDERATION AFTER FINAL ACTION DENIED
`
`Issue date: May 31, 2024
`
`Applicant’s request for reconsideration is denied. See 37 C.F.R. §2.63(b)(3). Applicant's amended
`identification of services is accepted and made of record. The trademark examining attorney has
`carefully reviewed applicant’s request and determined the request did not: (1) raise a new issue, (2)
`resolve all the outstanding issue(s), (3) provide any new or compelling evidence with regard to the
`outstanding issue(s), or (4) present analysis and arguments that were persuasive or shed new light on
`
`
`
`the outstanding issue(s). TMEP §§715.03(a)(ii)(B), 715.04(a).
`
`Accordingly, the mere descriptiveness refusal made final in the Office action dated October 30, 2023
`is maintained and continued.
`
`See TMEP §§715.03(a)(ii)(B), 715.04(a).
`
`Section 2(e)(1) - Descriptive Refusal
`Registration is refused because the applied-for mark merely describes a feature of applicant’s services.
`Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
`
` A
`
` mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature,
`purpose, or use of an applicant’s goods and/or services. TMEP §1209.01(b);
`see In re
`Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820
`F.2d 1216, 1217-18, 3 USPQ2d 1009, 1009-10 (Fed. Cir. 1987).
`
` A
`
` novel spelling or an intentional misspelling that is the phonetic equivalent of a merely descriptive
`word or term is also merely descriptive if purchasers would perceive the different spelling as the
`equivalent of the descriptive word or term. See In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 526 &
`n.9, 205 USPQ 505, 507 & n.9 (C.C.P.A. 1980) (holding “QUIK-PRINT,” phonetic spelling of “quick-
`print,” merely descriptive of printing and photocopying services); In re Calphalon Corp., 122 USPQ2d
`1153, 1163 (TTAB 2017) (holding “SHARPIN”, phonetic spelling of “sharpen,” merely descriptive of
`cutlery knife blocks with built-in sharpeners); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009)
`(holding “URBANHOUZING,” phonetic spelling of “urban” and “housing,” merely descriptive of real
`estate services); TMEP §1209.03(j).
`
`
`
`Here, applicant seeks to register them mark, LEAGALLEADZ, for "Software as a service (SaaS)
`services featuring software for marketing and identifying potential legal clients, generating referrals for
`legal cases between other law firms and lawyers, and managing multiple case opportunities and
`evaluating for quality and case conversion potential, and for sharing of fees and other consideration."
`
`
`The term "LEADS" is an intentional misspelling of the term "LEADS." The previously sent definitions
`shows that "LEADS" means "a potential opportunity." The attached evidence shows that "legal leads"
`refers to potential client contact information. Thus, the wording merely describes that applicant offers
`referrals as potential client opportunities in the legal field, specifically in the form of a referral.
`
`Applicant argues that the combinations of terms in its mark makes the mark suggestive because it does
`not immediately describe the applicant's services. “Whether consumers could guess what the product
`[or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226
`USPQ 365, 366 (TTAB 1985). The question is not whether someone presented only with the mark
`could guess what the goods and/or services are, but “whether someone who knows what the goods
`and[/or] services are will understand the mark to convey information about them.” DuoProSS Meditech
`Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012)
`(quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)); In re Mueller Sports. Med.,
`Inc., 126 USPQ2d 1584, 1587 (TTAB 2018). Here, someone that knows what applicant's services are
`would immediately recognize that the mark describes a feature of the services, namely, that they can be
`used for finding potential client contact information in the legal field.
`
`
`
`
`
`“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the
`applicant’s goods or services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370,
`1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d
`1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if a mark describes only one significant
`function, attribute, or property. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102
`USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see In re Oppedahl & Larson LLP, 373
`F.3d at 1173, 71 USPQ2d at 1371.
`
` A
`
` mark does not need to be merely descriptive of all the goods or services specified in an application.
`In re Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir.
`2012); In re Zuma Array Ltd., 2022 USPQ2d 736, at *5-6 (TTAB 2022). “A descriptiveness refusal is
`proper ‘if the mark is descriptive of any of the [goods or] services for which registration is sought.’” In
`re Chamber of Commerce of the U.S., 675 F.3d at 1300, 102 USPQ2d at 1219 (quoting In re
`Stereotaxis Inc., 429 F.3d 1039, 1040, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)).
`
`
`Applicant also argues that its mark is not a word in the English language. The fact that an applicant
`may be the first or only user of a merely descriptive designation does not necessarily render a word or
`term incongruous or distinctive where, as in this case, the evidence shows that the applied-for mark is
`merely descriptive. See In re Zuma Array Ltd., 2022 USPQ2d 736, at *16-17 (TTAB 2022) (quoting In
`re Fallon, 2020 USPQ2d 11249, at *11 (TTAB 2020)); In re Fat Boys Water Sports LLC, 118 USPQ2d
`1511, 1514 (TTAB 2016); TMEP §1209.03(c).
`
`Here, the attached and previously sent information shows that "leads" refers to potential business
`referrals. Applicant's identification indicates that its services can be used for "generating referrals for
`legal cases between law firms and lawyers." Thus, the wording merely describes a feature of the
`services, namely that the service can be used for generating leads in the legal field.
`
`Applicant argues that any doubt regarding the mark’s descriptiveness should be resolved on applicant’s
`behalf. E.g., In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1571, 4 USPQ2d 1141,
`1144 (Fed. Cir. 1987); In re Zuma Array Ltd., 2022 USPQ2d 736, at *8 (TTAB 2022) (quoting In re
`Fallon, 2020 USPQ2d 11249, at *8 (TTAB 2020)). However, in the present case, the evidence of
`record leaves no doubt that the mark is merely descriptive.
`
`Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by
`submitting evidence and arguments in support of registration.
`
`Advisory: Supplemental Register
`Although an amendment to the Supplemental Register would be an appropriate response to this
`refusal(s) in an application based on Trademark Act Section 1(a) or 44, such a response is not
`appropriate in the present case. The instant application was filed under Section 1(b) and is not eligible
`for registration on the Supplemental Register until an acceptable amendment to allege use meeting the
`requirements of 37 C.F.R. §2.76 has been timely filed. 37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.
`
`If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the
`application effective filing date will be the date applicant met the minimum filing requirements under
`37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).
`In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO
`records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
`
`
`
`
`If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will
`be notified to resume the appeal. See TMEP §715.04(a).
`
`
`
`
`/Matt Einstein/
`Matt Einstein
`Examining Attorney
`LO115--LAW OFFICE 115
`(571) 272-8251
`Matt.Einstein@USPTO.GOV
`
`
`
`
`
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`Lawyer Marketing >ervices
`Martindale-Nolo provides legal marketing services to help law
`firms obtain more clients. Our services include legal lead
`generation, premium profile listings and more.
`View our Lawyer Marketing Services >
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`SNOLO
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`Be part of the Largest Legal Network
`PraMElo lakeea etemaltelatedaraiatetnaeiiaelee
`Nolo's portfolio of legal website properties includes some of the
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`View Legal Network
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`Leads in 55+ Areas of Practice
`Getleads delivered to your in-box from 5+different legal practice areas, including criminal defense, divorce, SSDI and more.
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`PersonalInjury
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`a Criminal Defense
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`ep? Bankruptcy (oS0)Auto Accidentv DUI
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`View all Areas of Practice >
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`Readthe C
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`Getting the leads to start flowing
`WhenRyanBeachstartedhisfirm, he had a limited budget to
`persuadehesitant consumersthatfiling for bankruptcy wastheir
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`leads he needed, see how he changedhis marketing mix to
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`€
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`How it works:
`
`
`
`1e
`
`Aconsumer has a legal issue
`and needs to hire a lawyer
`aneeearehee Gnlinetetind’a
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`problem.
`
`PersonalInjury Attorneys in my Area
`
`
`
`oe
`
`https://www.nolo.com> legal-eneyclopedia > finding-p...
`Finding a PersonalInjury Lawyer - Nolo
`Howto connectwith theright attorneyfor you and your personalinjury claim.
`https://www.nolo.com > lawyers > personal-injury
`Personal Injury Lawyers
`PersonalInjury Lawyers. Get the compensation you deserve. We've helped 285clientsfind
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`Name 2.
`Name
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`The consumer lands on one
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`legal network and fills out a
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`Case Details
`Details of your case
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`John Dough
`408.555.1215
`john.dough@email.com
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`Summary
`John Doeis looking for a personal injury attorney to help
`them fight a caseofslip andfall.
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`Area of Incident
`Hudson County, NJ
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`August 2021
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`Readyto start getting new leads?
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`I'm an attorney
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`
`Here's How to Generate Legal Leads(for
`Attorneys)
`Will Cannon
`
`Last updated on May10, 2024
`
`Table of Contents
`
`A
`
`If you're an attorney, you need legalleadslike anyone else. Luckily, there are many ways te
`generate the legal leads you need.
`
`Here, we'll go through the best ways to generate legalleads, both free and paid. We'll review
`and compare tools and techniques to generate legal leads. That way, you'll be able to choose
`the best method of generatingall the legal leads you need.
`
`Let's getstarted.
`
`WhatAre Legal Leads?
`Legalleads usually refer to users’ contactinformation who could become potential clients for
`an attorney or alegalfirm.
`
`These leads usually have at least the person's name andinformation. Better legal leadswill
`also offer a complete profile of the person to allow users to tailor their marketing strategy
`toward them
`Inese leadsusually Nave At least tne persons name anainrormamion. setter egal leaas wil
`also offer a complete profile of the person to allowusersto tailor their marketing strategy
`toward them
`
`
`
`Since legal leads can often be converted intolife-long customers, good legal leads can be
`expensive to generate. Multiple tools can help users generate legal leads at lowerprices, often
`sacrificing data and lead quality in exchange for a lowerprice.
`
`Legal Leads for Attorneys: How DoesThis
`Work?
`
`There are multiple tools and techniques to generate legalleads for attorneys. Users can
`generate leads through paid solutions, marketing efforts, or a combination of both.
`
`Paid solutions are the fastest way to generate legal leads, although they can quickly become
`expensive. These solutions include pay-per-click (PPC) advertisement, website, and content
`marketing, as well as lead generation tools. Whereas marketing and advertisement count on
`users to make the first step, lead generation tools can proactively and effectively generate
`legal leads.
`
`Users may also generate legal leads through free techniques,like referrals, content creation,
`search engine optimization, and more. While these techniques are often cheap and can be
`effective, they will likely take longer to generate leads.
`
`HowtoFind (or Buy) Legal Leads
`Here are someof the best ways to find er buy leadsin the legal categary
`
`Lead Generation Software
`
`UpLead
`
`Procucts
`
`Prong OurDota
`
`Revoms
`
`AboutUs
`
`& toe c=
`
`B2B Prospecting with ee
`95% Data Accuracy
`4
`re i il
`bad se buyers anatlow:
`eurarerteeon ny
`go:
`
`0
`
`
`
`Google %F0repbox
`
`amazon Bivicoos GSD
`
`
`
`
`
`Lead generation softwareis a great option to generate legal leads quickly. You can
`immediately get the leads you need with them, making them key for smaller or new firms.
`
`With tools like UpLead, you must look for leads who match the persona of someone wholikely
`needslegalservices. Simply use UpLead's searchcriteria to searchits database of more than
`155 million leads. Once you've collected the needed leads, you can engage them through
`personalized marketing strategies. Or search for Attorney Email Lists here.
`
`UpLead allows you to browseits comprehensive database using multiple searchcriteria to find
`the right users or businesses needinglegal cissistance.Justfilter searches to find potential
`individuals or businesses according to their location, companysize, job title, and technology.
`That way, you can quickly find userslikely to need legalservices and proactively offer your
`services to them.
`
`With UpLead,you also payfar less per lead than with PPC ads,referral systems, and many
`othertools and techniques used to generate leads.
`
`Unlike many other lead generation tools, UpLead helps you generate qualified legal leads with
`data you cantrust. UpLead's data is backed by a 95% accuracy guarantee,andit verifies all
`emails in real time before downloading ther. That way, you know you're only paying for the
`highest-quality leads.
`
`You can also use UpLead's vibrantprofiles to quickly and organically get to know yourleads,
`which will help to develop a strong attorney-client relationship.
`
`Already havealist of leads? Use UpLead to enrich your data to easily segment your audience
`and tailor your email marketing efforts according to their persona and userintent.
`
`Try UpLead todayandseeif it's a good fit for you
`
`Start Your 7-Day Free UpLeadTrial
`Lead generation doesn't have to be all that painful. With UpLead, you can easily
`connectwith high-quality prospects and leads to grow your compeiny.
`
`Email Address
`
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`Experienced lawyersare
`ready to help.
`
`Find a laveyer Getadvice
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`As oneofthe largest legal lead generationtools, Avvo uses multiple online marketing methods
`to attract users needing legal advice to their websites and connect them to lawyers and law
`firms.
`
`Avvo offers afree Q&A service to get answers tosimple legal queries fromlawyers as a free
`consultation.
`It also features a lawyer directoryfor new clients to find attorneys and lawfirms
`that are convenient for them
`
`Theplatform also offers a novel lawyer review system, allowing potential legalclients to get
`insight from others who have used the legal services they seek
`
`These features allow attorneys to cannectwith quality leads. However, the platform has gotten
`into trouble because ofits limited rating system, and Awo signs lawyers upwithout their
`consent. Once they've been added, getting deletedis not an option
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`These downsides often leadattorneys to look for more open and personalized solutions to
`access exclusive legal leads.
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`Unbundled Attorney
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`Pe ee) Peer ert
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`Another tool specializing in quality leads for attorneys is UnbundledAttorney. This small
`company offers unbundled legal services and only serves certain practice areas.
`
`Since the platformoffers exclusive leads for attorneys, users don't have to worry about another
`law firm competing for the same lead. The platform also focuses on lead education, which
`helps diminish the cost per lead
`
`However,its limited scope makesit useful only to certain kinds of attorneys, andits higher
`
`
`
`prices may alselimit the kind of lawfirmtt
`
`
`
`an benefit from its services
`
`Social Networks
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`tH Explore
`@ Settings
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`Kirkland & Ellis
`‘PXGrkland Ea
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`aw fm wthvethan8,000 attomeys representing
`dlionts, Content mayinclattmeyadvertising
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`25,5KFolowors
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`Social networl
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`W firm, big or
`mall, to connect with theright attorney leads
`and position their services to provide legal advice to the nght clients.
`
`Medio
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`kes
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`With social media, you canpositionyourfirm to ensure potential clients remember it whenthey
`needlegal help. They canalso be usedto proactively look for attorneyleadsbyoffering
`services to users looking for compensation for a personalinjury or thoselikely to suffer from an
`auto accident.
`
`
`Althoughsocial networks maynotprovide lead generation inall areas, they're still an effective
`legal marketing tool.
`
`Quora
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`Quora
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`we
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