Tuesday, August 09, 2016

TTAB Finds "THE CORPORATE LAW GROUP" Generic for ... Guess What?

The TTAB squelched Paul D. Marotta's attempt to register the designation THE CORPORATE LAW GROUP for various legal services, on the ground of genericness. For the sake of completeness, the Board also considered and rejected Marotta's claim that the term was registrable under Section 2(f). In re Marotta, Serial No. 86087067 (August 6, 2016) [not precedential].

Genericness: The Board agreed with Applicant Marotta that the genus of services is "legal services." Examining Attorney Jonathan R. Falk urged that the genus should be "corporate legal services," but the Board saw no need to narrow the genus since a term is generic for the genus if it is generic for any of the services encompassed within the genus.

As to the consuming public's understanding of the phrase THE CORPORATE LAW GROUP, numerous website excerpts from third-party law firms [not surprisingly] showed their use of that phrase, or the phrase CORPORATE LAW GROUP, to identify the provision of legal services in the field of business sand corporate law. News stories from a variety of publications demonstrated use of those phrases to identify a subgrouping of professionals within an organization. The Board also took judicial notice of dictionary definitions of the constituent words.

Applicant Marotta put up a vigorous battle, relying on his use of the phrase since 1991, several million dollars in billings, more than $100,000 in advertising expenditures, and his policing efforts. He submitted 22 declarations from clients supporting registration, and letters from nine attorneys attesting to the professional recognition of the purported mark. Finally he directed the Board's attention to the existence of third-party registrations for THE EMPLOYMENT LAW GROUP, SOCIAL SECURITY LAW GROUP, INNOVATION LAW GROUP, WORKERS' INJURY LAW & ADVOCACY GROUP, and R&and S INTERNATIONAL LAW GROUP (but with INTERNATIONAL LAW GROUP disclaimed].

Marotta argued that the USPTO had failed to provide the required "clear evidence" of genericness, but the Board disagreed, observing that "the evidence shows ... that this case does not involve a perceived need for others to use a term, but involves a demonstrated use of the term by others.'" The declarations from clients were not probative, since "no amount of evidence can transform a generic term into a registrable mark." [That sort of begs the question, doesn't it? - ed.].

Marotta pointed out that he owned two now-expired registrations for THE CORPORATE LAW GROUP for the same services (one mark in standard character form), issued under Section 2(f), but the Board observed once again that it must assess each application on its own record," and it is not bound by bound by the decisions of Examining Attorneys in other cases. Moreover, "registrability must be determined at the time registration is sought." [Remember the CHURRASCOS case? - ed.].

Likewise, issuance of the third-party registrations does not bind the Board in this case. "More importantly, many of the third-party registrations upon which Applicant relies do not contain the same terms as in Applicant’s mark, disclaim significant wording, or are not used in connection with legal services."

The Board found clear evidence that the applied-for mark is generic, and it affirmed this refusal.

Acquired Distinctiveness: Turning to the alternative refusal, the Board noted that because Applicant Marotta seeks registration under Section 2(f), he has conceded that the mark is merely descriptive [or at least not inherently distinctive - ed.], and he bore the burden to establish acquired distinctiveness.

When a designation is highly descriptive, relatively more evidence is required under Section 2(f). The Board found Marotta's evidence insufficient:

Thus, despite the many years of use and some regional success in promoting the mark, given the highly descriptive nature of the phrase, we do not find that THE CORPORATE LAW GROUP has come to signify the commercial source of the services, but rather continues merely to inform the consumers about the nature of the services.

And so the Board rejected applicant's Section 2(f) claim.

Read comments and post your comment here.

TTABlog comment: Section 2(f) requires substantially exclusive use. Do the third-party law firm uses suffice to negate exclusivity here, right off the bat?

Note that Marotta seemed to have a source indicator in his market area in California. Can a phrase be a trademark in some area of the country, but generic everywhere else? Case in point: the term DUCK TOURS in BOSTON DUCK TOURS.

Text Copyright John L. Welch 2016.


At 12:13 PM, Blogger Unknown said...

Hi John -- This is Paul Marotta. Obviously we were disappointed in this ruling. Our mark had already been registered on the principal register for several years, found to have achieved secondary meaning by the PTO many years ago, and made incontestable. Regrettably a calendaring error let it lapse. We have used the same mark for 25 years and are the only ones to have ever used it as a source identifier. Not just here, but on behalf of many clients we have found the PTO to be newly intractable on several fronts. It’s as if an edict was given to deny everything. We’re still assessing whether or not to bring suit in District Court, but that game is rigged too, with losers having to pay our government for the honor of trying to protect our own intellectual property. Thanks for the service your blog provides.

At 2:19 PM, Anonymous Anne Gilson LaLonde said...

In Primary Children's Med. Ctr. Found. v. Scentsy, Inc., 104 U.S.P.Q.2d 1124 (D. Utah 2012), the district court held that "a mark can be generic in one area and not in another." While FESTIVAL OF TREES might have been generic in other parts of the country for a holiday celebration, the court found that (at summary judgment) a reasonable jury could find it was not generic in Utah.


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