Monday, November 13, 2023

Cancellation Attack on THE EDUCATION LAWYERS Flunks Genericness and Mere Descriptiveness Tests

The Board denied a petition for cancellation of a registration for the mark THE EDUCATION LAWYERS for "legal services" [LAWYERS disclaimed] finding that Petitioner Montgomery Law failed to prove either genericness or mere descriptiveness by a preponderance of the evidence. Respondent Jacobson & John obtained its registration under Section 2(f) based only upon a declaration of at least five years of continuous and substantially exclusive use prior to making the statement. Montgomery Law LLC v. Jacobson & John LLP, Cancellation No. 92073600 (November 9, 2023) [not precedential] (Opinion by Judge Wendy Boldt Cohen).

Mere Descriptiveness: In order to assess the evidence of mere descriptiveness, the Board must first "make an express finding regarding the degree of the mark’s descriptiveness on the scale ranging from generic to merely descriptive, and it must explain how its assessment of the evidentiary record reflects that finding."

Montgomery Law did not submit any direct evidence of consumer perception in the form of consumer testimony or a consumer survey. After failing to timely submit three witness declaration and to properly submit dictionary definitions, Montgomery's only evidence of record consisted of materials from the file of Respondent’s Registration and printouts from the Internet with no accompanying testimony.

The specimens in the file history  of the challenged registration, without testimony, are not evidence of how Respondent used the mark. Montgomery did not submit any third-party applications or registrations. The Internet pages themselves cannot be used to prove the truth of the matter asserted thereon (hearsay). They are admissible to show that the public has been exposed to the term and to show the meaning of the mark.

"Although this evidence supports at least some public exposure of 'education law' and education lawyers' to refer to type of lawyer or area of legal practice, the quantity of evidence is small." Without testimony or evidence regarding the duration, geographical scope, and number of views, "their probative value is quite limited." "In sum, the record hardly evidences widespread use of THE EDUCATION LAWYERS in the legal field."

Considering all the evidence, and bearing in mind the presumed validity of Respondent’s registered mark, the limited record in this case that “education lawyers” has been used descriptively does not support the conclusion that the mark is highly descriptive. Nor does it support a finding that Respondent’s use has not been “substantially exclusive.” Petitioner has not met its burden to “establish a prima facie case of no acquired distinctiveness.”

Genericness: As usual, the Board found the genus at issue to be the recitation of services in the challenged registration. The relevant public comprises ordinary consumers who use legal services and ranges broadly from ordinary consumers to small and large businesses to other types of private and public entities. The critical issue, of course, is public perception. 

[T]he only evidence of record are Petitioner’s Notice of Reliance and various Internet printouts, albeit with no accompanying testimony. While the test for genericness is different from the test for descriptiveness, on this sparse record and given the limitations on the probative value of that evidence discussed at length above, we are unable to conclude that the evidence shows that Respondent’s
Registration is generic.

Conclusion:And so, the Board denied the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: What might Montgomery Law do next? How could it bolster the feeble record?

Text Copyright John L. Welch 2023.


At 11:38 AM, Anonymous Anonymous said...

The Board seems to apply different standards regarding the type of evidence needed and the weight accorded to it when the same issues are presented in Ex parte appeals of Examiner decisions. The pass the Board gives to Examiners in upholding lame genericness determinations is really frustrating.


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