Barnhorst

Trademark Trial and Appeal Board

Oct 2, 2007

No. 78480554 (T.T.A.B. Oct. 2, 2007)

Mailed: October 2, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Barnhorst
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Serial No. 78480554
_______

Marnie Wright Barnhorst of The Trademark Group, APLC.

Carrie Achen, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).
_______

Before Hairston, Grendel and Kuhlke, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Marnie Wright Barnhorst (applicant), on September 8,
2004, filed an application to register the mark “THE
TRADEMARK GROUP” (in standard character form) for services
ultimately identified as “intellectual property
consultation in the field of trademarks; legal services in
the field of trademark law” in International Class 42. The
application was filed under Trademark Act Sections 1(a) and
2(f), 15 U.S.C. §1051(a) and 1052(f), asserting December
22, 1997 as the date of first use and first use in
commerce, and alleging that the mark has become distinctive
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Ser No. 78480554
2
of the services based on the declaration of applicant’s
substantially exclusive and continuous use in commerce for
at least the five years immediately before the date of the
statement.
In the first Office Action, issued April 12, 2005, the
examining attorney, inter alia, entered a disclaimer of the
word GROUP by Examiner’s Amendment in accordance with the
authorization granted by applicant, and required an
amendment to the recitation of services. On May 20, 2005,
the examining attorney issued a Final Office Action on the
requirement for an amendment to the recitation of services.
On November 7, 2005, the Administrator for Trademark
Classification & Practice in the Office of the Commissioner
for Trademarks, forwarded a Letter of Protest to the
examining attorney. Subsequently, on November 17, 2005,
the examining attorney issued an Office Action refusing
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), on the basis that “THE TRADEMARK GROUP”
is generic or, in the alternative, highly descriptive and
the claim of acquired distinctiveness under Section 2(f) of
the Trademark Act is insufficient. Office Action dated
November 17, 2005. On August 31, 2006, the examining
attorney accepted applicant’s amendment to her recitation
Ser No. 78480554
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of services and issued a final refusal under Section
2(e)(1).
Applicant has appealed to the Board and briefs have
been filed.
Before reaching the merits, we address a few
preliminary issues. First, the examining attorney’s
objection to the third-party registrations referenced by
applicant in her brief is sustained. As noted by the
examining attorney, the mere submission of a list of
registrations does not make them of record. In re Duofold
Inc., 184 USPQ 638 (TTAB 1974). See also Trademark Rule
2.142(d) (record must be complete prior to appeal).
Second, applicant’s request, made for the first time in her
brief, that in the alternative registration be allowed on
the Supplemental Register, has not been considered. In re
Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1047 n. 2 (TTAB
2002) (request in applicant’s brief that if the refusals
are maintained the application be amended to the
Supplemental Register denied because application which has
been decided on appeal will not be reopened). See also
TBMP §1218 (2d ed. rev. 2004) and cases cited therein.
Finally, we note that in her response to the first Section
2(e)(1) refusal and again in her brief, applicant has
asserted that the Letter of Protest was improperly granted
Ser No. 78480554
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in that there was not sufficient evidence to support a
prima facie case of genericness. The appropriateness of
the granting of the Letter of Protest is not a question for
the Board. If applicant wished to raise the issue of the
propriety of the granting of the Letter of Protest, she
should have done so by way of petition to the Commissioner.
This is not an issue for appeal. See TBMP §1201.05 (2d ed.
rev. 2004).
We now turn to the merits of the case before us. We
must determine whether the mark is generic and, if not, so
highly descriptive that applicant’s evidence of secondary
meaning is insufficient to allow registration pursuant to
Section 2(f).
When a proposed mark is refused registration as
generic, the examining attorney has the burden of proving
genericness by "clear evidence" thereof. See In re Merrill
Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1143 (Fed. Cir. 1987); see also In re Gould
Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir.
1987). The critical issue is to determine whether the
record shows that members of the relevant public primarily
use or understand the term sought to be registered to refer
to the category or class of goods or services in question.
H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs,
Ser No. 78480554
5
Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); In
re Women's Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB
1992). Making this determination “involves a two-step
inquiry: First, what is the genus of goods or services at
issue? Second, is the term sought to be registered ...
understood by the relevant public primarily to refer to
that genus of goods or services?” Ginn, supra, 228 USPQ at
530. Evidence of the public’s understanding of a term may
be obtained from any competent source, including testimony,
surveys, dictionaries, trade journals, newspapers and other
publications. See Merrill Lynch, supra, 4 USPQ2d at 1143
(Fed. Cir. 1987), and In re Northland Aluminum Products,
Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
We find that the genus of services at issue in this
case is adequately defined by applicant’s recitation of
services, namely, “intellectual property consultation in
the field of trademarks; legal services in the field of
trademark law.” Magic Wand Inc. v. RDB Inc., 940 F.2d 638,
19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (“[A] proper
genericness inquiry focuses on the description of services
set forth in the [application or] certificate of
registration.”) Applicant’s specimen of use and
advertising provide further clarification that the services
involve providing consultation and legal services in the
Ser No. 78480554
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field of trademarks. See Specimen of Use (“The Trademark
Group provides clients with the infrastructure of unique
resources and services necessary to cope with the
critically important and ever-changing deadlines involved
with patent, trademark and domain name registration
issues”). See also In re Web Communications, 49 USPQ2d
1478, 1479 (TTAB 1998).
Turning to the second inquiry, the public’s
understanding of the term, the relevant public as shown in
the specimen of use and by applicant’s statements and
exhibits in her May 19, 2006 Response, consists of
prospective clients in need of consultation or legal
services in the field of trademarks. See, e.g.,
applicant’s specimen of use. This category would include
other lawyers and laypersons seeking assistance.
In support of her position that the relevant public
understands applicant’s mark to primarily refer to
consultation and legal services in the field of trademarks,
the examining attorney submitted excerpts from third-party
websites where the phrases “the trademark group” or
“trademark group” are used to identify intellectual
property consultation and legal services in the field of
trademarks. A representative sampling of the website
excerpts follows (emphasis added):
Ser No. 78480554
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Wiley Rein & Fielding LLP ... The Trademark Group
is fully integrated with the firm’s other
practice areas. We welcome the opportunity to
provide effective representation on a wide
variety of practice area issues. www.wrf.com;

Mathews, Shepherd, McKay & Bruneau has
substantial expertise in virtually every aspect
of the practice of trademark law ... the
trademark group litigates matters involving the
infringement of trademarks. www.mathewslaw.com;

The Trademark Group and Holland & Hart ...
Holland & Hart’s trademark practice is staffed by
nine lawyers and legal assistants. Several of
those lawyers and legal assistants spend all or
nearly all of their time working in the trademark
field. We are responsible for the marks of
hundreds of our clients, having trademark
portfolios ranging in size from one U.S.
registration to Fortune 100 companies ...
www.iph2.com;

Merchant & Gould ... Drawing on the collective
expertise of the Trademark Group, and the
extensive resources of a top flight intellectual
property litigation firm, Merchant & Gould’s
trademark trial attorneys provide superior
counseling and representation in matters
affecting brands and related intellectual
property rights. www.merchantgould.com;

Perkins Coie LLP ... The Trademark Group focuses
on counseling, screening, registering and
policing intellectual property rights as well as
on transactions involving intellectual property
rights excluding patents. www.perkinscoie.com;

Baker Botts LLP ... Priscilla Dunckel heads up
the Trademark Group in Baker Botts’ Dallas Office
... www.bakerbotts.com;

Klarquist Sparkman, LLP ... Klarquist Sparkman’s
trademark group includes attorneys with extensive
experience in all areas of trademark and service
mark protection and practice. ... The trademark
group includes a number of highly capable
Ser No. 78480554
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trademark paralegals who assist with this
process, to ensure cost-effective service.
www.klarquist.com;

Kenyon & Kenyon ... Attorneys in our trademark
group base their practice on a thorough
understanding of the clients’ technologies and
marketing strategies ... We routinely advise
large and small businesses in a wide variety of
industries in the maximization of their current
trademark portfolios ... www.kenyon.com;

Holland & Knight ... Our trademark group offers a
variety of services to assist clients with large
trademark portfolio management ... www.hklaw.com;
and

Strook ... Our trademark group obtains and
maintains trademarks, trade names and copyrights
for many of our clients... www.strook.com.

In addition, the examining attorney submitted several
excerpts from various publications and newswires retrieved
from the Lexis/Nexis database where the wording “the
trademark group” or “trademark group” is used to identify a
subgrouping of professionals within an organization
(emphasis added):
...joins as an associate in the trademark group.
Previously she was a legal specialist ... Legal
Times (November 22, 2004);

...has retained the law firm of Quirk & Tratos to
handle its intellectual property needs. Jason
Firth, who leads the firm’s Trademark Group, will
handle the account. Business Wire (November 6,
2003);

... The trademark group at Barnes & Thornburg now
ranks in the top 10 for the entire United States.
South Bend Tribune (August 10, 2003);

Ser No. 78480554
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...He joined as head of the trademarks group and
worked his way up from assistant into the equity
partnership. The Lawyer (April 21, 2003);

... international work that gets traded back and
forth may be less necessary,” said Douglas
Hendricks, head of Morrison & Foerster’s
trademark group. The Recorder (May 3, 2001);

... But the venerable IP boutique’s focus was on
a strong patent prosecution and protection group
and Roberta Jacobs-Meadway’s trademark group. ...
The firm took heart in that it retained six of
seven associates from the trademark group. The
Legal Intelligencer (April 24, 2001);

The recognition that Ms. Abel, who also is head
of the trademark group at the Palo Alto based law
firm of Fenwick & West, helped bring about was
that ... Business Journal-San Jose (October 15,
1999); and

As a result, lawyers knowledgeable about patents,
trademarks and copyright law are in high demand
to help handle a ton of new issues related to the
Internet. Most large law firms have added patent
litigation and trademark groups to keep that
business in-house and gain a share of a
lucrative, growing market. City Business-
Minneapolis (July 16, 1999).

Finally, the examining attorney submitted the
following dictionary definitions:
Trademark: A peculiar distinguishing mark or
device affixed by a manufacturer or a merchant to
his goods, the exclusive right of using which is
recognized by law. Webster’s Revised Unabridged
Dictionary (1998);

Group: 1. An assemblage of persons or objects
gathered or located together, an aggregation.
The American Heritage Dictionary of the English
Language (4th ed. 2000).

Ser No. 78480554
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The examining attorney argues that the evidence listed
above demonstrates that “prospective consumers would
immediately understand the wording in the mark describes
that applicant offers trademark legal services provided by
a group of attorneys.” Br. p. 6.
In response to the refusal, applicant submitted, inter
alia, a picture of the sign outside her office, a business
card, letterhead, a billing statement, a printout from The
Trademark Group website, brochures, copies of the cover of
The San Diego Daily Transcript Law Journal, and printouts
of advertising in publications. All of the above-listed
items display the phrase THE TRADEMARK GROUP. In addition,
she submitted several declarations. Twelve of these
declarations are from foreign agents and as such are of no
probative value inasmuch as we must determine the
perspective of U.S. consumers not the perspective of
applicant’s foreign affiliates. The six remaining
declarations are from local businessmen, lawyers and one
employee from a trademark search firm attesting, inter
alia, to their personal view of the phrase THE TRADEMARK
GROUP and their opinion as to its relevance in the trade.
Finally, applicant stated that THE TRADEMARK GROUP’S
billings between 1997 and 2006 have amounted to over
$11,000,000 and its expenditures for marketing and
Ser No. 78480554
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advertising over the same time period have been
approximately $100,000. Response p. 6 (May 19, 2006).1
Citing In re American Fertility Society, 51 USPQ2d
1832 (Fed. Cir. 1999), applicant argues that the “majority
of the evidence made of record by the Examining Attorney
does not show generic use of Applicant’s phrase as a
whole,” noting that “only 12 use the phrase as a whole,
‘the trademark group’, in a descriptive manner.” Further,
she argues that:
The majority of the references ... use only two
of the three words and/or use the words with
initial capitalization, as is traditional for
trademark use, not generic or descriptive use.
For example, several references refer to ‘our
trademark group’ and some mention ‘the firm’s
Trademark Group.’ These references do not show
use of ‘the trademark group’ as a whole as is
required by In re American Fertility Society.
Br. p. 2.

In addition, she argues that “In order to be generic
of a service, a phrase must refer to the genus of service

1 In addition, applicant points to her expired registration for
THE TRADEMARK GROUP on the Supplemental Register, noting that in
1998 “the PTO made the determination that THE TRADEMARK GROUP was
capable of becoming a distinctive trademark [because i]t approved
the mark for registration on the Supplemental Register and a
registration issued on September 8, 1998.” Response p. 5 (May
19, 2006). However, as noted by the examining attorney, a claim
of acquired distinctiveness cannot be based on an expired
registration or on a Supplemental Registration. We add that it
is well established that we are not bound by prior decisions. In
re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir.
2001) (question of whether a mark is merely descriptive must be
determined based on the evidence of record at the time
registration is sought).
Ser No. 78480554
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at issue” and “there is insufficient evidence of use of the
phrase to describe the genus of Applicant’s services. The
12 pieces of evidence presented by the Examining Attorney
that show use of “the trademark group” as a whole, all show
use of the phrase to describe a group of attorneys within a
law firm or corporation. THE TRADEMARK GROUP is the name
of the law firm, which is a professional law corporation.
Applicant contends, and has provided a third party
declaration to support its contention, that no other law
firm is known by this name.” Br. p. 3.
As noted above, the evidentiary burden of establishing
genericness of a term rests with the Office and the showing
must be based on clear evidence. Merrill Lynch, supra, 4
USPQ2d at 1143. Based on this record, we find that there
is clear evidence to support a finding that the relevant
public, when they consider THE TRADEMARK GROUP in
conjunction with the class of involved services, would
readily understand the term to identify a group that
provides consultation or legal services in the field of
trademarks.
As noted by the examining attorney, the presence of
the article “the” does not add any source identifying
significance to applicant’s mark. In re Weather Channel,
Inc., 229 USPQ 854, 856 (TTAB 1986); and In re The Computer
Ser No. 78480554
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Store, Inc., 211 USPQ 72, 74-75 (TTAB 1981). Thus, even
the examples of use of “trademark group” in the record are
relevant. Moreover, despite the capitalization of certain
examples, we find these uses to be generic, i.e., naming an
entity that provides certain services. In fact, the
evidence shows, similar to In re Reed Elsevier Properties,
Inc., 77 USPQ2d 1649 (TTAB 2005), aff’d, 482 F.3d 1376, 82
USPQ2d 1378 (Fed. Cir. 2007), that this case “does not
involve a perceived need for others to use a term, but
involves a demonstrated use of the term by others.” In re
Reed Elsevier, supra, 77 USPQ2d at 1657. Here, we have
evidence of use of the phrase THE TRADEMARK GROUP by
entities that provide the same or very similar services as
applicant’s consultation and legal services in the field of
trademarks. Applicant’s evidence of her use does not rebut
the examining attorney’s prima facie case of genericness.
Applicant’s attempt to distinguish the examples of generic
use by arguing that they name a group within a group
whereas her services are provided by a stand alone group is
not persuasive. Whether referring to a sub group or a
stand alone group, the phrase when used in conjunction with
these services clearly names the services. We are also not
persuaded by applicant’s argument that none of the
examining attorney’s evidence predates applicant’s first
Ser No. 78480554
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use of the phrase. Response p. 3 (May 19, 2006). The fact
that an applicant may be the first user of a merely
descriptive or generic designation does not justify
registration if the only significance conveyed by the term
is merely descriptive. See In re National Shooting Sports
Foundation, Inc., 219 USPQ 1018 (TTAB 1983).
With regard to applicant’s evidence of source
indicating significance, we note that no amount of evidence
can transform a generic phrase into a registrable
trademark. See In re Half Price Books, Records, Magazines,
Inc., 225 USPQ 219, 222 (TTAB 1984). See also Miller
Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 195
USPQ 281 (7th Cir. 1977).
While we have found the phrase THE TRADEMARK GROUP to
be generic for applicant’s services, for completeness we
also determine, in the alternative, that if applicant’s
proposed mark THE TRADEMARK GROUP is not generic it is
highly descriptive and applicant’s showing to support
acquired distinctiveness is not sufficient.
By applying for registration based on acquired
distinctiveness under Section 2(f), applicant has conceded
that the proposed mark is merely descriptive and it is
applicant’s burden to prove acquired distinctiveness.
Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d
Ser No. 78480554
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1572, 6 USPQ2d 1001, 1005-1006 (Fed. Cir. 1988); In re
Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295
(CCPA 1954) (“[T]here is no doubt that Congress intended
that the burden of proof [under Section 2(f)] should rest
upon the applicant”).
“[L]ogically that standard becomes more difficult as
the mark’s descriptiveness increases.” Yamaha, supra, 6
USPQ2d at 1008. A claim that applicant has been using the
subject matter for a long period of substantially exclusive
use may not be sufficient to demonstrate that the mark has
acquired distinctiveness. See In re Gibson Guitar Corp.,
61 USPQ2d 1948, 1952 (TTAB 2001) (66 years of use). The
amount and character of evidence required to establish
acquired distinctiveness depends on the facts of each case,
Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166
USPQ 34 (CCPA 1970), and more evidence is required where a
mark is so highly descriptive that purchasers seeing the
matter in relation to the goods or services would be less
likely to believe that it indicates source in any one
party. See In re Bongrain International Corp., 894 F.2d
1316, 13 USPQ2d 1727 (Fed. Cir. 1990). Evidence of
acquired distinctiveness can include the length of use of
the mark, advertising expenditures, sales, survey evidence,
and affidavits asserting source-indicating recognition.
Ser No. 78480554
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However, a successful advertising campaign is not in itself
necessarily enough to prove secondary meaning. In re
Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed.
Cir. 1999) (claim based on annual sales under the mark of
approximately eighty-five million dollars, and annual
advertising expenditures in excess of ten million dollars,
not sufficient to establish acquired distinctiveness in
view of highly descriptive nature of mark).
After a careful review of the record, we find that
applicant has not shown that the phrase THE TRADEMARK GROUP
has acquired distinctiveness. The evidence of record
discussed above clearly establishes that the phrase THE
TRADEMARK GROUP is highly descriptive and the evidence
submitted by applicant is insufficient to show that the
relevant consumers recognize this phrase a mark. See In re
The Paint Products Co., 8 USPQ2d 1863, 1867 (TTAB 1988)
(declarations must be weighed against the highly
descriptive nature of the words that compose the mark).
Thus, despite the many years of use, given the highly
descriptive nature of the phrase, we do not find that THE
TRADEMARK GROUP has come to signify the commercial source
of the services, but rather continues merely to inform the
consumers about the nature of the services.
Ser No. 78480554
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Decision: The refusal to register based on
genericness is affirmed. Further, in view of the fact
that applicant has not shown that her mark is entitled
to registration pursuant to Section 2(f) of the
Trademark Act, the refusal based on mere
descriptiveness is affirmed.