Thursday, October 11, 2007

"THE TRADEMARK GROUP" Generic for Trademark Services, Says TTAB

The Board closed the barn door on Marnie Wright Barnhorst in her attempt to register the phrase THE TRADEMARK GROUP for "intellectual property consultation in the field of trademarks; legal services in the field of trademark law." The Board found the phrase to be generic or, alternatively, merely descriptive and lacking in acquired distinctiveness. In re Barnhorst, Serial No. 78480554 (October 2, 2007) [not precedential].

Examining Attorney Carrie Achen submitted dictionary definitions of "trademark" and "group," and third-party website and Lexis/Nexis evidence showing use of the phrases "the trademark group" and "trademark group" to identify trademark consultation and legal services. She maintained that this evidence demonstrated that "prospective consumers would immediately understand the wording in the mark describes that applicant offers trademark legal services provided by a group of attorneys."

Applicant Barnhorst submitted a number of declarations, twelve of which were from foreign agents and had "no probative value" on the issue of the perception of U.S. consumers. The remaining six were from local businessmen and lawyers, asserting "their personal view of the phrase THE TRADEMARK LAWYER and their opinion as to its relevance to the trade." She also submitted promotional material and offered evidence that revenues have amounted to more than $11 million over the 1997-2006 time period, while advertising expenditures exceeded $100,000. She also pointed to a now-expired Supplemental Registration as evidence of the phrase's capability to be a distinctive trademark.

The Board found "clear evidence" that the phrase is generic, noting that "[h]ere, we have evidence of use of the phrase THE TRADEMARK GROUP by entities that provide the same or very similar services as applicant's consultation and legal services in the field of trademarks." Even if, as Applicant asserted, she were the first user of the phrase, that "does not justify registration if the only significance conveyed by the term is merely descriptive." [TTABlog comment: or generic?]

Turning to the alternative ground for refusal, Applicant conceded that the mark is merely descriptive by applying for registration under Section 2(f). The Board noted that the more descriptive a mark, the higher the standard of proof required under Section 2(f). Here, given the highly descriptive nature of the phrase, Applicant's proof of acquired distinctiveness was "insufficient."

In sum, the Board affirmed both the genericness refusal and, in light of Applicant's failure to prove acquired distinctiveness, the alternative mere descriptiveness refusal.

TTAB comment: In every law firm in the country that has even a part-time trademark person, doesn't the firm trumpet the capabilities of its "trademark group"?

BTW: what is that little symbol at the upper right corner of Applicant's logo? I don't think it's the ® symbol.

Text Copyright John L. Welch 2007.


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