Friday, August 26, 2005

TTAB Finds "TRAFFIC LAW CENTER" Registrable under Section 2(f), but with Disclaimer

The Board gave Applicant Robin Sullivan the green light to register the mark TRAFFIC LAW CENTER for "legal services." It reversed the PTO's Section 2(e)(1) mere descriptiveness refusal, finding that the mark has acquired secondary meaning. The Board did, however, require disclaimer of the generic term "traffic law." In re Sullivan, Serial No. 76202254 (August 18, 2005) [not citable].

St. Louis, Missouri

Applicant Sullivan sought registration under Section 2(f), thereby conceding that his mark is merely descriptive. He proved use of the mark since 1989, providing services to more than 110,400 clients (there are a lot of bad drivers in Missouri), and garnering revenues of more than $20 million in the 1990-2002 period (he could quadruple that in Boston alone). He spent more than $3 million in advertising during roughly the same period.

The Examining Attorney argued that, because Sullivan uses other designations in conjunction with TRAFFIC LAW CENTER -- e.g., TLC, the design of a stop sign, and the phrase TRAFFIC LAW CENTER OF SULLIVAN & ASSOCIATES -- his evidence did not show secondary meaning for the precise mark in question.

The Board, however, noted that Sullivan prominently displays the designation TRAFFIC LAW CENTER at his various locations. The appearance of the stop sign "does not detract from the source-indicating impact of the prominently-displayed wording TRAFFIC LAW CENTER." Moreover, Sullivan's alphabetical telephone book listings appear as TRAFFIC LAW CENTER, not TLC. Affidavits from three media sales managers in the St. Louis area confirmed that Applicant's services are rendered under the TRAFFIC LAW CENTER mark and are "heavily advertised."

The Board found that Sullivan's evidence, "especially his sales figures under the mark, the number of clients ..., and applicant's advertisements which prominently feature the mark," sufficed to show that TRAFFIC LAW CENTER has acquired secondary meaning.

Robin Sullivan, Esq.

The Board pooh-poohed the PTO's claim that the mark is "highly descriptive" and therefore must meet a heightened 2(f) standard of proof. The Examining Attorney relied on the fact that "several other lawyers or law firms around the country ... use TRAFFIC LAW CENTER in rendering their services." But the Board found that each of those uses was "in a proprietary manner, i.e., as a trade name or service mark, not use in a descriptive manner."

Finally, the Board ruled that, based on Applicant's own usage in his appeal briefs and in his license agreement, the term "Traffic Law" is generic for Sullivan's services. It allowed Sullivan thirty days to submit a disclaimer, failing which his mark will not be registered.

TTABlog comment: The Board may have been a bit precipitous in pooh-poohing the PTO's evidence of third-party use. The Examining Attorney also relied on such usage to show that Sullivan was not the exclusive user of the subject mark, surely a prerequisite to secondary meaning. The Board never mentioned the third-party evidence in this light. Sullivan contended that those uses were remote from his, but the Examining Attorney pointed out that Sullivan was seeking a nationwide registration, not a geographically-restricted one.

Text Copyright John L. Welch 2005.


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