Wednesday, June 15, 2005

TTAB Finds "LEMONLAW.COM" Merely Informational, Generic For Legal Services

The Board squeezed the juice out of a Pennsylvania law firm's attempt to register LEMONLAW.COM as a service mark for "legal services." In re Kimmel & Silverman, P.C., Serial No. 76233689 (May 25, 2005) [not citable]. Not only did the firm's specimen advertisements fail to show proper use of the term as a mark, but the Board also found the term to be generic, and if not generic, devoid of secondary meaning.

The Board first affirmed the refusal under Sections 1, 2, 3, and 45 of the Trademark Act because the specimens of use "do not show LEMONLAW.COM as a mark but only as an element of what would be perceived as informational matter, i.e., a listing of applicant's web site address." Noting the size and placement of the alleged "mark," the Board agreed with the PTO that In re Eilberg, 49 USPQ2d 1955 (TTAB 1998), is controlling.

As to genericness, the Board found, based on the record evidence, that "lawyers and laypersons alike considering the term 'lemon law' in conjunction with the class or genus 'legal services' will immediately consider it to be the name of a field of law as well as a legal practice specialty." Although "legal services" may encompass a broad range of legal practice specialties, that does not render the term "non-generic" for the practice of lemon law. See In re CyberFinancial.Net, Inc., 65 USPQ2d 1789 (TTAB 2002) [BONDS.COM generic for financial information services].

Applicant argued that LEMONLAW.COM is similar to 1-888-M-A-T-R-E-S-S, found to be non-generic in In re Dial-A-Mattress Operating Corp., 57 USPQ2d 1807 (Fed. Cir. 2001). But the Board disagreed, noting that, under Board precedent, LEMONLAW.COM is a compound word whereas 1-888-M-A-T-R-E-S-S is "conceptually closer to a phrase." See In re Martin Container, Inc., 65 USPQ2d 1058 (TTAB 2002). Under In re Gould, 5 USPQ2d 1110 (Fed. Cir. 1987), the PTO carried its burden of proving genericness of a compound word by means of evidence of the genericness of the components "lemon law" and ".com".

For the sake of completeness, assuming arguendo that the term at issue were merely descriptive, the Board also considered Applicant's Section 2(f) claim of acquired distinctiveness. The law firm offered a statutory 5-year declaration of use, and pointed to its ownership of a federal registration for 1-800-LEMON-LAW. As to the former, the Board noted that the declaration was not direct evidence of distinctiveness, but merely allows an inference of secondary meaning, an inference the Board refused to make. As to the prior registered mark, it is not the legal equivalent of the term at issue here, and therefore no "transfer" of secondary meaning is appropriate. (Compare In re Dial-A-Mattress, supra.)

TTABlog comment: On the genericness issue, see also the recent citable Board decision (blogged here) in In re Eddie Z's Blinds and Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005), finding BLINDSANDDRAPERY.COM to be generic.

TTABlog query: Ok, we know that lemon law is a legal specialty. What about lime law?

Text ©John L. Welch 2005. All Rights Reserved.


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