Precedential No. 2: TTAB Sustains Section 2(e)(4) Surname Opposition to "MILLER LAW GROUP" for Legal Services

This Miller's tale had quite an unhappy ending for applicant Michele Ballard Miller. The Board sustained an opposition to her application to register MILLER LAW GROUP for legal services [LAW GROUP disclaimed], finding the alleged mark to be primarily merely a surname under Section 2(e)(4), and lacking in acquired distinctiveness. The non-surname meanings of "miller " (a mill operator or a moth) did not eclipse the surname significance of the word when used in the context of legal services. Mitchell Miller, a Professional Corp. dba Miller Law Group, P.C. v. Michele Ballard Miller, 105 USPQ2d 1615 (TTAB 2013) [precedential].

Primarily merely a surname? Applying its standard surname test, the Board first found that "Miller" is a common surname. It is the sixth most frequently-occurring surname in the 2000 U.S. Census (1,127,803 occurrences), and it is a common surname in the legal profession. Even applicant admitted that "Miller" is a common surname.

The fact that applicant's surname is Miller "strengthens the inference that the public will perceive the term as a surname."

The Board took judicial notice of the definitions of "miller" as "one that operates a mill" and "any of various moths having powdery wings." However, in the context of applicant's services, the surname significance of "Miller" is its primary significance.

The question is not whether a mark having surname significance might also have a non-surname significance, but whether, in the context of the goods or services at issue, that non-surname significance is the mark's primary significance to the purchasing public, thus eclipsing and relegating the mark's surname significance to secondary rather than primary status.

Finally, the Board not surprisingly found that "Miller" has the "look and feel" of a surname, given that it is the sixth most common surname in this country.

In sum, the evidence was overwhelming that the primary significance of "Miller" to the relevant public is that of a surname. The addition of the phrase LAW GROUP to MILLER did not change its primary significance. "Considered as a whole and in light of the preponderance of evidence," the Board found that MILLER LAW GROUP is primarily merely a surname under Section 2(e)(4).

Acquired distinctiveness? A Section 2(e)(4) surname refusal may be overcome by proof of acquired distinctiveness under Section 2(f). Applicant's evidence showed use of the applied-for mark since 1998, with growing revenues and tens of thousands of dollars spent on marketing.

Opposer used the mark MILLER LAW GROUP, P.C. since 2007, on letterhead, signage, etc. Opposer also provided evidence of third-party use of MILLER in connection with legal services: at least seven users in addition to opposer and applicant. The State Bar of California included 274 active attorneys with the surname MILLER, and San Francisco alone has 68. With MILLER being the sixth most common surname, "it is reasonable to assume that there are additional legal practitioners that use MILLER in connection with legal services, and that the record only reflects a small sampling of those users."

Although applicant has used the applied-for mark continuously since 1998, "it is clear from the record that applicant has not established that her use of MILLER is substantially exclusive as required by Section 2(f)." In addition, applicant had consented to use and registration of the surname MILLER by three additional parties in connection with certain legal services.

Moreover, applicant has not, and it would appear cannot in good faith, submit a verified statement with an affidavit or signed declaration under 37 C.F.R. § 2.20 that the mark has become distinctive of her legal services through her “substantially” exclusive use in commerce.

The Board therefore found that the neither the surname MILLER nor the applied-for mark MILLER LAW GROUP has acquired distinctiveness with respect to legal services.

And so the Board sustained the opposition.

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Text Copyright John L. Welch 2013.