Failure to Function: The Board observed that the more commonly a slogan is used, the less likely it will be recognized as a trademark or services mark. The record evidence showed that lawyers who are also doctors commonly use those terms together, sometimes in the phrase identical or very similar to the applied-for mark. The Examining Attorney therefore maintained that the phrase is merely informational.
Applicant argued that others have no competitive need to use the term because the number of lawyer/doctors who use the phrase is de minimis: in fact, the PTO’s evidence included only one entity using the exact same phrase.
The Board, looking at all the evidence showing that “lawyers commonly tout that they are also doctors,” found that the proposed mark “merely informs consumers that attorneys providing Applicant’s legal services are also doctors.”
There is nothing unusual about the phrase, its meaning or the way in which it is presented in connection with the identified legal services. Consumers will not perceive the applied-for mark as identifying the source of Applicant’s services. Rather, they will understand the wording to mean that Applicant’s lawyers are doctors.
Applicant pointed to 23 existing registrations for marks having the structure “OUR ___ ARE ____,” claiming that consumers are accustomed to seeing such phrases used as trademarks, even if they convey some information. The Board was unimpressed. Only 12 have the same format as the applied-for mark, and only four of those are comprised of “Our ___ Are ___.” One of those four marks, OUR BOARDS ARE BETTER, is a laudatory mark registered under Section 2(f). The remaining three are suggestive and thus not analogous to applicant’s descriptive mark. Furthermore, applicant’s mark contains two nouns, both of which describe the same person, unlike the marks applicant relies on. In any case, the Board pointed out once again that each case must be decided on its own merits.
Applicant insisted that its slogan is set apart from other text on its specimen of use, but the Board noted that there was no evidence regarding the perceptions of applicant’s clients. The placement of the slogan is not alone enough to establish that it serves as a mark.
Like such unregistrable slogans as No More RINOs!, ONCE A MARINE, ALWAYS A MARINE, DRIVE SAFELY, AND THINK GREEN, the applied-for mark would be perceived as a merely informational slogan.
Mere Descriptiveness: No imagination, thought, or perception is necessary to understand the description provided by the applied-for mark. The terms “lawyers” and “doctors” describe features or characteristics of applicant’s services. In short, there is “no doubt” that the applied-for mark describes applicant’s services.
Applicant claimed acquired distinctiveness under Section 2(f), based solely on use of the applied-for mark for at least five years. He claimed more than 13 years of use and “extensive goodwill,” but the latter claim was unsupported by any evidence. The Board found that the phrase is so descriptive of the services that the more-than-five-years of use is not sufficient under Section 2(f).
And so the Board affirmed the two refusals to register.
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TTABlog comment: Aren’t all lawyers Juris Doctors?
What about OUR LAWYERS ARE ATTORNEYS? That might cause a consumer to stop and think!
BTW: Is this a WYHA? I say yes.
Text Copyright John L. Welch 2018.