Precedential No. 16: WYHA? TTAB Affirms Mere Descriptiveness Refusal of ONLINETRADEMARKATTORNEYS.COM as Claim of Acquired Distinctiveness Fails

For some reason that completely escapes me, the Board has re-designated as precedential its February 2021 decision affirming a Section 2(e)(1) mere descriptiveness refusal of the proposed mark ONLINETRADEMARKATTORNEYS.COM for "legal services," Applicant Saucer Summers claimed acquired distinctiveness under Section 2(f) but its submissions were woefully inadequate to satisfy the heightened burden of proof for this highly descriptive mark. In re Sausser Summers, PC, 2021 USPQ2d 618, (TTAB 2021) [re-designated as precedential] (Opinion by Judge Christopher Larkin).

The Board was first required to determine the degree of descriptiveness of the proposed mark, because "the greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning." Royal Crown Cola Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1048 (Fed. Cir. 2018) (quoting In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (internal quotation omitted)). 

Examining Attorney Andrea B. Cornwell relied on dictionary definitions and evidence of third-party use of the term "online trademark attorney(s)" or close variants. Applicant described its business model as "a law firm that runs completely online," thereby keeping its overhead low, so that it "provides copyright and trademark registration services on a flat rate basis." 

The Board found that "“on the scale ranging from generic to merely descriptive, Royal Crown Cola, 127 USPQ2d at 1048, ONLINETRADEMARKATTORNEYS.COM is much closer to the generic end of the scale than to the merely descriptive end, making it highly descriptive of the 'legal services' identified in the application."

Sausser Summers relied on both its verified statement that the proposed mark has been in substantially exclusive and continuous use for at least five years, and on its evidence of acquired distinctiveness. As to the five-year claim, the Board noted that Section 2(f) provides that the USPTO may accept such a statement as prima facie evidence of acquired distinctiveness, but the Office is not required to do so. The Board ruled that, in view of the highly descriptive nature of the proposed mark, the Examining Attorney "was well within her discretion to reject Applicant's claim of five years of substantially continuous use as insufficient to prove acquired distinctiveness." 

As to applicant's evidence, the Board applied the Converse factors to determine whether the proposed mark had achieved acquired distinctiveness. Applicant offered neither consumer survey evidence, nor declarations from clients attesting to their association of the proposed mark with the applicant. It submitted testimonials from 125 clients, but only a tiny fraction even mentioned the proposed mark; the vast majority referred to applicant by its law firm name. In sum, the testimonials were nonprobative. 

The fact that applicant may have exclusive use of the domain name is of little probative value as to exclusivity of use in light of the evidence that "multiple third parties describe their legal services as being provided by "online trademark attorneys." 

Sausser Summers claimed "vast and worldwide advertising" resulting in the expenditure of "a substantial amount in advertising each year," but the Board pooh-poohed these "grandiose claims": "It strains credulity that a business striving to keep overhead low and charging low flat fees would (or even could) engage in 'vast and worldwide advertising' and 'spend[ ] a substantial amount in advertising each year.' In the absence of supporting evidence, we cannot find that Applicant has advertised extensively." 

Sausser Summers also claimed that it “has advertised in print magazines, social media platforms, internet ads, and various other sources across the U.S. and in other countries” and “has placed ads via social media platforms, and places advertisements via Googleads on a daily basis,” but it failed to provide any evidence regarding the duration and extent of exposure of any of these materials. It submitted only a single print advertisement from the July 2019 edition of the Charleston Business Magazine, a publication apparently directed to businesses located in Charleston, South Carolina, the city in which Sausser Summers has its "brick-and-mortar world address."

Here, we have no useful information regarding even Applicant’s efforts to establish such an association through its advertising and promotion, and we cannot infer anything about its success based on its evidence under this Converse factor.

Sausser Summers did not reveal the amount of revenue garnered from its legal services, nor did it state the number of clients served. Although applicant was listed for several years as one of the top-filing firms in the U.S., that was under the firm name, not under the proposed mark. There was no probative evidence of intentional copying of the proposed mark by others, and no probative evidence regarding unsolicited media coverage.

Considered as a whole, Applicant’s evidence on the Converse factors falls far short of carrying Applicant’s heavy burden of showing that its highly descriptive proposed mark ONLINETRADEMARKATTORNEYS.COM has acquired distinctiveness for legal services.

And so, the Board affirmed the refusal to register. 

Read comments and post your comment here.

TTABlogger comment: Another disaster! WYHA? By the way, the Board stated that the refusal to register was under Sections 2(e)(1) and 2(f) of the Trademark Act, but Section 2(f) is not a basis for refusal. Section 2(f) provides a way to overcome other refusals, including Section 2(e)(1).

Text Copyright John L. Welch 2021.