Friday, March 05, 2021

Precedential No. 4: TTAB Deems THE CONSUMER PROTECTION FIRM.COM Generic for Legal Services, but Okays Supplemental Registration for Design Form With Disclaimer

The Supreme Court's booking.com decision taught us that a proposed mark comprising a generic term and the gTLD ".com" is not automatically generic, but may be registrable depending on consumer perception. This applicant sought to register, on the Supplemental Register, the term THE CONSUMER PROTECTION FIRM in standard form (FIRM disclaimed) and THE CONSUMER PROTECTION FIRM.COM & Design in the form shown below (FIRM.COM disclaimed), both for legal services. The Board found both THE CONSUMER PROTECTION FIRM and THE CONSUMER PROTECTION FIRM.COM to be generic for the services, but it deemed the word-plus-design mark to be registrable on the Supplemental Register with a disclaimer of THE CONSUMER PROTECTION FIRM.COM. In re The Consumer Protection Firm PLLC, 2021 U.S.P.Q.2d 238 (T.T.A.B. 2021) [precedential] (Opinion by Judge Jonathan Hudis).


The determination of genericness involves a two-part test: (1) what is the genus of the goods or services at issue?, and (2) is the proposed mark understood by the relevant public primarily to refer to that genus? In re Reed Elsevier, 82 U.S.P.Q.2d 1378, 1380 (Fed. Cir. 2007), citing H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 728 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986).

Examining Attorney Caroline L. Moran and the applicant agreed that the proper genus at issue is defined by the identification of services in the involved applications, namely, "legal services," and they also agreed that the relevant public comprises ordinary consumers of legal services. The issue, then, came down to the public perception of the two proposed marks.

Although the proposed marks must be assessed in their entireties, the Board may consider the meanings of portions of the marks "as a step in the process towards (an) ultimate finding of whether the proposed mark, as a whole, is generic for Applicant's services." The Board observed that "[a] compound of generic elements is [also] generic if the combination yields no additional meaning to consumers capable of distinguishing the goods or services." U. S. Patent & Trademark Office v. Booking.com B.V., 140 S. Ct. 2298, 2020 U.S.P.Q.2d 10729 at *7 (2020).

The Examining Attorney submitted "a plethora of explanatory uses of 'consumer protection,' 'consumer protection firm' and 'consumer protection law firm' by Applicant and competitor law firms that practice "consumer protection law.'" Applicant asserted that the word "THE" makes a difference in consumer understanding of the phrase because it points to the source of the legal services and not the genus. The Board pointed out, however that "it is well settled that adding the definite article 'the' to a generic term or phrase generally does not add any source-indicating significance or otherwise affect the term’s or phrase’s genericness." See, e.g., In re The Place Inc., 76 U.S.P.Q.2d 1467, 1468 (T.T.A.B. 2005) (holding THE GREATEST BAR merely descriptive of restaurant and bar services; “the definite article THE . . . add[s] no source indicating significance to the mark as a whole”).

The evidence provided by Applicant comprising search engine results that direct the user to applicant's media sites and the various articles about applicant and its attorneys "speak less to the source-identifying significance of THE CONSUMER PROTECTION FIRM than to efforts by Applicant's lawyers to make their law firm visible in social media and elsewhere on the Internet."
 

Applicant made no evidence of record to support the premise that THE CONSUMER PROTECTION FIRM functions as a service mark simply because it appears higher within a list of GOOGLE search results. We are not privy to GOOGLE’s page ranking algorithm, and we cannot simply assume that the order of appearance in search results is an indicator of the trademark significance of Applicant’s Proposed Marks.


Moreover, in interviews with applicant's lawyers, journalists "would naturally use their firm's name (although generic) because that is how Applicant refers to itself." Therefore, the Board concluded, these articles are not probative of non-genericness.
 

In any event none of this evidence assists Applicant, because “no matter how much money and effort the user of a generic term has poured into promoting the sale of its [service] ..., it cannot deprive competing [providers] … of the [service] … of the right to call [a service] by its name.” Booking.com, 2020 U.S.P.Q.2d 10729, at *7 (quoting Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 U.S.P.Q. 759, 764 (2d Cir. 1976)).

The evidence submitted by the Examining Attorney showed use of "Consumer Protection" by three organizations - Super Lawyers, Findlaw, and LawInfo - as a "filter" for a category of law, allowing consumers to narrow their search for attorneys to this particular field. The Board found this to be "the most direct evidence" that consumers understand "Consumer Protection" to be "a category of legal practice in which some lawyers and law firms specialize." 

The applicant pointed to several third-party registrations for allegedly "similar marks," but the Board pointed out that these marks present "dissimilar circumstances," such as design elements or disclaimers of relevant wording. In any event, each application must be examined on its own merits, and the USPTO's issuance of other registrations with some similar characteristics does not bind the Board. See In re Nett Designs, Inc., 236 F.3d 1339, 57 U.S.P.Q.2d 1564, 1566 (Fed. Cir. 2001).

Evaluating the record as a whole, we find that the Examining Attorney has proven that Applicant’s Proposed Word Mark “THE CONSUMER PROTECTION FIRM” refers to a “class or category” of “legal services,” namely, legal services concerning the laws related to consumer protection, and is understood by the relevant public primarily to refer to that subgenus of legal services. Based on this record, we have no doubt as to the question of genericness of this proposed mark. We therefore affirm the finding of genericness for Applicant’s Proposed Word Mark.


Turning to the applicant's word-and-design mark, the Board noted that the applicant, by disclaiming FIRM.COM on the Supplemental Register, conceded that this term is generic. In re Volvo White Truck Corp., 16 U.S.P.Q.2d 1417, 1420 (T.T.A.B. 1990). As to the entire literal portion: the record as a whole, including generic use of very similar terms as second level domain names by third-party competitors [www.consumerlawgroup.com, www.michiganconsumerlaw.com, and www.consumerslaw.com] supports a finding that 'THE CONSUMER PROTECTION FIRM.COM' is incapable of designating a single source of consumer protection legal services."

However, the Examining Attorney did not provide any evidence that the design elements of the mark "are so common as to be incapable of protection." Therefore, the Board was "constrained to find that the Examining Attorney failed to show that the mark as a whole is generic." See In re Haden, 2019 U.S.P.Q.2d 467424 at *6 (T.T.A.B. 2019).

The Board therefore affirmed both refusals but allowed the applicant thirty days within which to disclaim THE CONSUMER PROTECTION FIRM.COM and obtain the Supplemental Registration.

Read comments and post your comment here.

TTABlogger comment: And so this law firm will be able to display the R-in-a-circle symbol adjacent its mark, while providing consumers and competitors wit no clue that the only think protectable is the kindergarten-style font and colors.

PS: Isn't the .com mark at least capable of acquiring distinctiveness? The Board seemed to put the burden on the applicant to proved that the phrase is not generic, but where is the PTO's proof that it is generic? In booking.com, no one calls a travel reservation site a "booking.com". Same reasoning applies here. So I think the PTO misapplied the booking.com ruling (which I'm not a fan of, by the way). See the comments of Gene Bolmarich.

Text Copyright John L. Welch 2021.

5 Comments:

At 8:07 AM, Blogger Gene Bolmarcich, Esq. said...

Wow, great summary John!

I just gave it a scan and perhaps I totally misunderstood Booking.com because I thought that the "rule" now is that ANY .com mark can at least be registered on the Supplemental Register unless the .com is generic (e.g. people call booking agencies "booking.com"s). It doesn't seem that the Board applied the law this way but this wasn't a good case to test their view of Booking.com because of the design aspects.

 
At 4:40 PM, Blogger Gene Bolmarcich, Esq. said...

Having read it over and over now..how could the Board rule that the literal portion of the mark (with the .com) is generic? I guess I'll have to wait for further commentary in the general trademark press.

 
At 7:35 AM, Blogger John L. Welch said...

Gene: that point bothered me too. Isn't the .com mark at least capable of acquiring distinctiveness? The Board seemed to put the burden on the applicant to proved that the phrase is not generic, but where is the PTO's proof that it is generic? As you say, in booking.com, no one calls a travel reservation site a "booking.com". Same here. So I think the PTO mis-applied the booking.com ruling (which I'm not a fan of, by the way).

 
At 12:49 PM, Anonymous Anonymous said...

If the applicant disclaimed FIRM.COM as generic, and didn't raise it on appeal (as the board pointed out), doesn't that explain why the ".com" portion didn't save the entire word-portion of the mark from genericness?

 
At 8:34 AM, Blogger John L. Welch said...

Even with FIRM.COM disclaimed, you still have to look at the entire proposed mark.

 

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