Precedential No. 22: TTAB Affirms Geographical Descriptiveness Refusal of HOLLYWOOD LAWYERS ONLINE for Online Referral Services

The Board affirmed a Section 2(e)(2) refusal to register the mark HOLLYWOOD LAWYERS ONLINE, finding it to be primarily geographically descriptive of "attorney referrals; providing a web site featuring business information in the form of audio and video interviews, transcripts and other educational materials; providing an online video business directory." Applicant argued that HOLLYWOOD referred to the entertainment industry, not the geographical location, but the Board disagreed. In re Hollywood Lawyers Online, 110 USPQ2d 1852 (TTAB 2014) [precedential].

Map of Hollywood (click on photo for larger picture)
Applicant insisted that the relevant consumers of online legal services would associate "Hollywood" with the entertainment aspect of the word. It relied particularly on the Board's decision in In re Taste International, 53 USPQ2d 1604 (TTAB 2000), reversing a Section 2(e)(2) refusal to register the mark shown here, for french fries and fast food restaurants, in view of the non-geographic meaning of  HOLLYWOOD, emphasized by the accompanying star design. The Board, however, distinguished this case from Taste International because the addition of the words LAWYERS ONLINE does not point to the entertainment industry connotation of HOLLYWOOD, but instead immediately describes applicant's services. The Board observed that geographic descriptiveness, like mere descriptiveness, must be evaluated in the context of the goods or services at issue.

When confronted with the phrase HOLLYWOOD LAWYERS ONLINE for attorney referral services, a web site featuring business information in the form of audio and video interviews, or online business directories, the immediate perception is an online database of Hollywood-based attorneys and businesses and websites featuring information about such businesses.

The record included examples of websites directed to the availability of lawyers in Hollywood, demonstrating that consumers are exposed to use of the term HOLLYWOOD in a geographic manner with these types of services. And contrary to applicant's assertion, the inclusion of the word ONLINE does not necessarily connote that the services are national in scope, but only that the services are offered online. Nothing in the record demonstrate that relevant consumers would view applicant's services as relating to the motion picture industry, rather than denoting a geographic connection.

The question, then, was whether there is an association between the services and the place named in the mark. Hollywood is a district of Los Angeles, and applicant's address is in Los Angeles, but not in the Hollywood district. However, when services are provided near the place named in the mark, that may be sufficient to support a finding that the services originate in the named geographic location: e.g., YOSEMITE BEER was found to be geographically descriptive for beer sold in Merced, California, ninety miles from Yosemite National Park. Moreover, the evidence showed that Hollywood is a well-known geographic location.

Although applicant may not specifically refer Hollywood-based attorneys or cater to customers in Hollywood, that does not alter that perception of the location of the services. Even if the services were rendered to an out-of-state consumer, that consumer would still understand that the services originated in Hollywood.  The Board noted in dictum that, if the facts were to establish that the services originated from a different location than Hollywood, that may simply indicate that the mark is primarily geographically deceptively misdescriptive under Section 2(e)(3).

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TTABlog comment: So maybe applicant should put some stars next to the mark, and re-file?

Text Copyright John L. Welch 2014.