In a less than scintillating but precedential ruling, the Board affirmed two refusals to register VIRTUAL INDEPENDENT PARALEGALS for “paralegal services; providing medical record summaries, deposition summaries and document review; litigation support services” [PARALEGALS disclaimed], finding the phrase to be “indisputably generic” for, or alternatively merely descriptive of, the identified services. The Board concluded that the applied-for mark “identifies a class of paralegals who telecommute or work remotely.” As to the Section 2(e)(1) refusal, the Board deemed the phrase to be “highly descriptive” and rejected as insufficient the applicant’ claim of acquired distinctiveness based solely on its declaration of five years of continuous and substantially exclusive use. In re Virtual Independent Paralegals, LLC, Serial No. 86947786 (March 27, 2019) [precedential] (Opinion by Judge Marc A. Bergsman).

As usual, the Board found the genus of services to be defined by the applicant’s recitation of services. See In re Reed Elsevier Props. Inc., 482 F.3d 1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007); Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (a proper genericness inquiry focuses on the identification set forth in the application or certificate of registration). The relevant public for the services is not confined to professionals, but includes the general public, namely, “ordinary consumers who need assistance completing forms.”

Examining Attorney Deborah Meiners submitted numerous Internet excerpts identifying “virtual paralegal” as a class of paralegals who telecommute or work remotely. Other website evidence established that “independent paralegal” identifies a class of paralegals that operate without attorney supervision.

Assessing the proposed mark as a whole, the Board found it to be “indisputably generic.” “Combining VIRTUAL PARALEGAL and INDEPENDENT PARALEGAL into VIRTUAL INDEPENDENT PARALEGALS provides no additional or changed meaning. The combination identifies a subclass of paralegals who work remotely without attorney supervision either for themselves or on behalf of an attorney.”

The Board’s conclusion was corroborated by two examples of the terms VIRTUAL, INDEPENDENT, and PARALEGAL used in connection with legal services, although not in the same order. “Thus, the record shows that VIRTUAL INDEPENDENT PARALEGALS will be used by competitors and understood by the relevant public primarily as referring to the class of paralegals who work remotely without attorney supervision either for themselves or on behalf of an attorney.”

For completeness, the Board also considered the Section 2(e)(1) mere descriptiveness refusal. Applicant sought registration based on acquired distinctiveness under Section 2(f), relying only on its claim of continuous and substantially exclusive use for a period of five years. This amounted to a concession that the proposed mark is “merely descriptive.” [Actually, I believe it is more accurate to say that this is a concession that the mark is not inherently distinctive, not that it is merely descriptive – ed.].

Based on the evidence regarding genericness, the Board concluded that each of the terms comprising the applicant’s proposed mark is highly descriptive of its services. When the terms are combined, the resulting phrase is “at the very least, highly descriptive of those services.” Consequently, the applicant’s burden to prove acquired distinctiveness is “commensurately high.”

The Board found that the applicant’s claim of five years of use fell short of establishing acquired distinctiveness:

Because, for purposes of this section, we are assuming that VIRTUAL INDEPENDENT PARALEGALS – which we found to be generic – is, at very best, highly descriptive, we find that five years of substantially exclusive and continuous use is not sufficient to  prove that VIRTUAL INDEPENDENT PARALEGALS has acquired distinctiveness. See La. Fish Fry Prods., 116 USPQ2d at 1265 (Board has discretion not to accept an applicant’s allegation of five years of substantially exclusive and continuous use as prima facie evidence of acquired distinctiveness when the proposed mark is “highly descriptive”).

And so the Board affirmed both the genericness and mere descriptiveness refusals.

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Text Copyright John L. Welch 2019.