Tuesday, March 12, 2013

Another Surnamed Law Firm Bites the TTAB Dust

We just had a precedential surname decision involving the MILLER LAW GROUP [TTABlogged here], and now comes The Simmons Firm, seeking to register the mark shown below for "legal services" [FIRM and LAW CORPORATION disclaimed]. Another Simmons Firm opposed, claiming the applied-for mark to be primarily merely a surname, and lacking in secondary meaning. Same result: opposition sustained. Simmons Browder Gianaris Angelides and Barnerd, LLC v. The Simmons Firm, ALC, Opposition No. 91199120 (February 21, 2013) [not precedential].

The Board wasted little time in finding SIMMONS to be primarily merely a surname. Applicant conceded same, and the record evidence confirmed the concession. Simmons was the 103rd most common surname in the 2000 Census. It is the surname of applicant's founder. There was no evidence that Simmons has anything other than surname significance. and it has the "look and sound" of a surname.

Applicant's argument turned on the fifth Benthin factor: whether the stylization of the mark is sufficiently distinctive to cause the mark "not to be perceived primarily merely as a surname."

The Board, however, found the stylization to be minimal, and did not "result in a mark separate and apart from the literal elements." Moreover, applicant owns a Supplemental Registration for the same stylized mark. Since Section 23 prohibits registration of inherently distinctive marks on the Supplemental Register, this was an admission by applicant (at the time of registration) that the mark was not distinctive.

And so the Board concluded that the applied-for mark is primarily merely a surname under Section 2(e)(4).

Applicant claimed, alternatively, that the mark had acquired distinctiveness. The Board observed that applicant "bears a heavy burden" in establishing acquired distinctiveness for a surname in the field of legal services:

[L]awyers and law firms typically are identified by surnames. Thus, registration of a surname for legal services “could hinder the creation of new law firms . . . and the ability of individuals to practice law in their chosen field without changing their names” – a result that would not be in the public interest. J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 13:2 (4th ed. 2012).

Applicant's evidence under Section 2(f) was "minimal." In fact it was less that the unsuccessful evidence in the Miller case. For example, there was no evidence regarding gross revenues, marketing expenditures, advertisements, articles or publications by or about the firm or its attorneys, speaking events, newsletters, or any of the other stuff that law firms churn out.

Moreover, as in Miller, opposer and others have an interest in using, and do use, the surname Miller in connection with their legal services. There are four other law firms using the surname Simmons, and 60 attorneys in California and 20 in Illinois with that surname. In short, applicant failed to prove, as required by Section 2(f), that its use of SIMMONS has been substantially exclusive.

The Board concluded that the surname SIMMONS had not acquired distinctiveness for applicant's legal services.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.


At 4:30 PM, Blogger Unknown said...

Seems like it was an intense defense to the opposition:

"We also note Ross G. Simmons’ characterization of certain portions of Mr. Kirkland’s testimony as “misstatements of fact” that are “fabricated”, and containing matters “the law of perjury is supposed to be for.” While a party should inform the Board when it believes there are problems with its adversary’s evidence, it was not necessary for Mr. Simmons to level a charge of perjury against Mr. Kirkland."

Seems like Mr. Simmons skin was pretty upset with the opposer... Was he surprised he was opposed? Did he not Google search "Simmons Law firm" before he filed and see the other firms pop up before his on the Google rankings? It was an ill advised battle to take on in my opinion.


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