Wednesday, December 05, 2012

Finding Applicant's Section 2(f) Evidence Insufficient, TTAB Affirms Mere Descriptiveness Refusal of FOR THE INJURED for Legal Services

Rookie Judge Susan J. Hightower penned her first TTAB opinion in this appeal from a refusal to register the mark FOR THE INJURED for legal services. Applicant did not appeal from Examining Attorney Henry A. Zak's refusal on the ground of mere descriptiveness, but it did appeal from the PTO's determination that its evidence of acquired distinctiveness under Section 2(f) was insufficient. The Board agreed with the PTO as to Section 2(f), and so the Section 2(e)(1) refusal remained intact. In re Gordon & Doner, P.A., Serial No. 77821445 (November 19, 2012) [not precedential].

Applicant submitted various types of evidence under 2(f). It claimed ownership of a prior registration for TRIAL LAWYERS FOR THE INJURED, but that evidence had two major flaws: that registration does not cover the same mark, and it was erroneously issued on the Principal Register.

Applicant also claimed that its mark has been in substantially exclusive and continuous use for more than five years, but the problem for Applicant was that its mark is "highly descriptive." Applicant admitted that its mark is used in connection with legal service "directed to those individuals that are injured." Moreover, the Examining Attorney submitted website excerpts showing that other law firms use the phrase "for the injured" in a descriptive or informational manner. When a mark is highly descriptive, a "five-year" statement is not alone sufficient to satisfy Section 2(f).

Applicant also provided advertising figures and third-party declarations. However, it did not provide any of the advertisements and therefore it was impossible for the Board to assess their impact on consumers. The four form declarations, each apparently from a professional with whom Applicant does business rather than from a consumer of legal services, were insufficient to prove secondary meaning for Applicant's highly descriptive mark.

Finally, Applicant submitted three third-party registration for marks containing the phrase "for the injured," but the Board pointed out that each case must be judged on its own merits, and a merely descriptive mark will not be registered on the Principal Register just because other such marks appear on the Register.

And so, because the Section 2(f) evidence was found to be inadequate, the refusal to register under Section 2(e)(1) survived.

Text Copyright John L. Welch 2012.


At 1:55 PM, Anonymous Anonymous said...

Would anything short of a full-blown consumer survey have satisfied the TTAB?

At 1:58 PM, Blogger Gene Bolmarcich said...

Perhaps a double-entendre argument. "Not only do we work for the injured, but we're all for them!". Hey, these are injury lawyers! (j/k to all my injury lawyer friends!)


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