Wednesday, September 28, 2011

TTAB Affirms Mere Descriptiveness Refusal of "A BRAND NAME LAW FIRM," Finding Double Entendre Argument Unappealing

The Board affirmed two Section 2(e)(1) refusals, finding the mark A BRAND NAME LAW FIRM to be merely descriptive of "legal services," and A BRAND NAME ADVISOR merely descriptive of "business consultation services, namely, product and marketing evaluation; advertising services, namely, creating corporate and product identity for others; creating trademarks for others." Do you get the double entendre? In re Collen IP Intellectual Property Law, P.C., Serial Nos. 77513717 and 77513748 (September 18, 2011) [not precedential]. [Affirmed by the CAFC per curiam under Fed. Cir. R. 36, October 9, 2012]

Examining Attorney Zachary R. Bellow contended that "brand name" is a "feature, characteristic, function or purpose of applicant's legal services," that "law firm" merely describes the services, and that the combination is merely descriptive.

There was no real dispute that the meaning of the mark A BRAND NAME LAW FIRM is descriptive. However, Applicant contended that the mark is a double entendre because BRAND NAME has another prominent meaning: it means widely familiar, well-known notable, famous, a household name, "the standard in the industry."

The Board noted that if a mark is a double entendre, i.e., if it has two meanings, the mark is not merely descriptive under Section 2(e)(1). Examples: SUGAR & SPICE for bakery products; NO BONES ABOUT IT for boneless ham; KICK ASS for donkey spurs. [I made up that third one -ed.]

The Board, however, found no such double entendre in A BRAND NAME LAW FIRM. In the cases where the Board has found a double entendre, the second meaning is not descriptive. Here, A BRAND NAME LAW FIRM does not have a non-descriptive meaning.

A BRAND NAME LAW FIRM, when used in connection with legal services, has not only the meaning of a law firm that specializes in brand name or trademark law, but a law firm that is known or has a good reputation. *** Thus, although applicant’s mark has a second meaning, it is a laudatory descriptive one, and whichever meaning that one would ascribe to the mark, it is merely descriptive of the identified legal services.

The Board noted that regardless of whether the Examining Attorney had contended that the second meaning for the mark is "laudatorily descriptive," the Board can still make such a finding because it "may rely on a different rationale from that argued by the examining attorney" in considering the Section 2(e)(1) ground for refusal.

As to the second mark, the evidence was the same as with the first mark. Again there was no real dispute that A BRAND NAME ADVISOR describes the services. The Examining Attorney (apparently) argued that this mark does not have a second meaning that consumers will recognize. The Board, however, found that if consumers do recognize a second meaning, that meaning again is merely descriptive for the same reasons as stated above.

And so the Board affirmed the refusals.

TTABlog comment: Hmmm. How does A BRAND NAME BLOG sound?

Text Copyright John L. Welch 2011.


At 1:27 PM, Anonymous Anonymous said...

Am I alone in thinking law firms' apparent desire to register hopelessly weak taglines is a waste of time and money?

I find it particularly humorous when it's an IP firm registering various taglines that involve hopelessly weak terms relating to creativity/inventiveness/etc.

At 7:47 AM, Anonymous Anonymous said...

It passes the inner "cute" test, which is my informal double-entendre -o-meter. When I was examining, I would not have issued the 2(e)(1). I do think it's a waste of time and money, but think the Board got it wrong here. Since I have a few decisions pending before the Board right now and I know at least some of my interloc. friends read this, I won't put my name....but this is a bad decision.....


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