Larry Pitt & Associates, P.C.v.Lundy Law, LLP

Trademark Trial and Appeal Board

Oct 31, 2013

No. 91210158 (T.T.A.B. Oct. 31, 2013)

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA568365
Filing date: 10/31/2013
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91210158
Party Plaintiff
Larry Pitt & Associates, P.C.
Correspondence
Address
JACQUELINE M LESSER
WOODCOCK WASHBURN LLP
2929 ARCH STREET CIRA CENTRE, 12TH FLOOR
PHILADELPHIA, PA 19104-2891
UNITED STATES
trademarks@woodcock.com, jlesser@woodcock.com, jdale@woodcock.com
Submission Other Motions/Papers
Filer's Name Jacqueline M. Lesser
Filer's e-mail trademarks@woodcock.com, jlesser@woodcock.com, jdale@woodcock.com
Signature /Jacqueline M. Lesser/
Date 10/31/2013
Attachments Memorandum of Law In Support of Larry Pitt & Associates' Motion under Rule
56(d).PDF(175925 bytes )
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

LARRY PITT & ASSOCIATES, P.C.

Opposer,

v.

LUNDY LAW, LLP

Applicant

Opposition No 91210158

MEMORANDUM OF LAW IN SUPPORT OF LARRY PITT & ASSOCIATES’
MOTION UNDER RULE 56(d)

Pursuant to Rule 56(d) of the Federal Rules of Civil Procedure and 37 C.F.R.
§2.127(e)(1), Opposer, Larry Pitt and Associates (“Opposer” or “Larry Pitt”) hereby
moves for an order to: 1) defer or deny the motion for summary judgment of Applicant,
Lundy Law LLP (“Applicant” or “Lundy Law”) as premature pursuant to Fed. R. Civ. P.
56(d)(1); or 2). to issue an Order to allow time for Opposer to obtain declarations and
take additional discovery to respond to the motion, pursuant to Fed. R. Civ. P. 56(d)(2);
or 3) to make any other ruling consistent with Rule 56(d)3.
I. PROCEDURAL BACKGROUND RELEVANT TO THIS MOTION
Larry Pitt has opposed Applicant’s attempt to register REMEMBER THIS NAME on the
grounds that the phrase is merely descriptive, if not generic, and that it fails to function as a
trademark. Indeed, it is Opposer’s position that no trademark rights should accrue to the
common instructional phrase: REMEMBER THIS NAME which Applicant concedes always
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precedes its name: Lundy Law, as in “INJURED? REMEMBER THIS NAME: LUNDY LAW”
which Applicant uses so that potential clients “recall” and recognize its name. Declaration of
Jacqueline M. Lesser, Esq., dated October 31, 2013 (“Lesser Decl.”) ¶¶4 and 5; Interrogatory
Response No. 6 and Admission 1.
At issue is the right of third party law firms to direct their own potential clients to
remember their own law firms’ names, or their own law firms’ telephone numbers, as is the
practice with most, if not all, personal injury attorneys. Prior to the filing of this Opposition,
Lundy Law, in fact, moved to enjoin Opposer’s use of the similarly generic phrase REMEMBER
THIS NUMBER based on Lundy Law’s purported rights in REMEMBER THIS NAME. Lesser
Decl. ¶2.
Initial disclosures were due July 19, 2013 and discovery is set to close on December 16,
2013. No extensions to the discovery and trial schedule have been sought at this point in the
proceedings. Applicant served its formal responses and objections to Opposer’s First Set of
Interrogatories, First Request for Production of Documents, and First Requests for Admission on
September 10th, and filed its motion for summary judgment 2 ½ weeks later, without providing
either promised production; or permitting Opposer to object to Applicant’s deficient responses.
Lesser Decl. ¶¶3-5. Moreover, no depositions have as yet been noticed – the September 10th
discovery responses provided the first notice of potential witnesses, other than Applicant’s
principal, Leonard Lundy, who is first identified in the September 10th responses as one of the
people involved in coming up with the phrase REMEMBER THIS NAME. Lesser Decl. ¶4;
Interrogatory Response Nos. 1 and 2. While Leonard Lundy submitted a declaration in support
of Applicant’s summary judgment motion, Opposer has not had an opportunity to test either the
veracity of Leonard Lundy’s statements made in his summary judgment declaration, or to
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examine Leonard Lundy (or the other persons first identified in the September 10th discovery
responses) regarding the creation and use of the REMEMBER THIS NAME slogan or on any
other matter.
II. APPLICANT’S SUMMARY JUDGMENT MOTION IS PREMATURE

The true purpose of Lundy Law’s summary judgment motion is simply to freeze
discovery, and to deny Larry Pitt an opportunity for adequate discovery to support its evidentiary
burden of proofs in the opposition proceeding. However, a plaintiff should not be "'railroaded'
by a premature motion for summary judgment.” Celotex Corp. v. Catrett, 477 U.S. 317, 326,
106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986). Without question, Applicant’s summary judgment
motion – filed a mere 2 ½ weeks after first identifying potential discovery witnesses, and prior to
promised production of documents – is premature. The Board is especially mindful of the
“railroading” of nonmovants by premature summary judgment motions or the improper entry of
summary judgment when the nonmoving party has not had an opportunity to exercise pretrial
discovery. See Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23
U.S.P.Q. 1471 (Fed Cir. 1992); Keebler Co. v. Murray Bakery Products, 866 F.2d 1386, 9
U.S.P.Q. 2d 1736 (Fed. Cir. 1989). This case before the Board now exemplifies the very
“railroading” of which the Board disapproves. The majority of discovery requested in the
accompanying Lesser Declaration is of existing, pending discovery requests, or foreseeable
follow up discovery by way of depositions of Lundy Law employees or third parties who have
worked with Lundy Law. It is appropriate for Opposer to request that either the motion for
summary judgment be denied or deferred, or that discovery be allowed before it responds to the
motion since the parties are in the middle the discovery period, and Opposer still awaits
production – failing which it will move to compel. Indeed, although requests have been served,
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Lundy Law has refused any production on matters of distinctiveness. Lesser Decl. ¶¶ 3; 4 and 7
(i)1. Similarly, although requests have been served, Lundy Law has refused any discovery on
genericness. Lesser Decl. ¶¶3 and 4; Interrogatory Response No. 16; Responses to Document
Requests Nos. 13 and 20. Moreover, to the extent that persons have been identified in response
to Opposer’s first set of discovery requests, because of the timing of the summary judgment
motion, Larry Pitt has been unable to schedule depositions.
a. Opposer is entitled to discovery on genericness, descriptiveness and functionality.
Lundy Law’s argument essentially is that as a matter of law, Opposer cannot prove that
the slogan REMEMBER THIS NAME (concededly, used always with the name to be
remembered2) is generic, merely descriptive, and simply fails to function as a trademark.
However, it is a factual issue whether REMEMBER THIS NAME is a generic phrase.
See, In re Pennington Seed, Inc., 466 F.3d 1053, 1056, 80 U.S.P.Q. 2d 1758 (Fed. Cir. 2006);
Rock & Roll Hall of Fame v. Gentile Prods., 134 F.3d 749, 753 (6th Cir. 1998) (genericness is an
issue of fact). Generic terms are incapable of functioning as a trademark, a term may not be
registered if due to its inherent nature or manner of use, the mark does not function as a
trademark. TMEP Section 1202.
Whether the phrase REMEMBER THIS NAME is merely descriptive is also a question
of fact. DuoPross Meditech Corp. v. Inviro Medical Devices Ltd. 103 U.S.P.Q. 1753, 1756

1 Lundy Law has refused to produce any documents that would support its claimed acquired
distinctiveness since the parties have agreed that there would be no protective order entered in
this case. Typical evidence would be advertising, promotional figures in support of such a
slogan. Lundy Law has in the past made its advertising and promotional figures generally and
publicly available on the PTO website without any confidentiality limitation.Since this type of
material has not been considered by Lundy Law as confidential in the past, one can only presume
that Lundy Law’s failure to produce this information in support of its claimed distinctiveness
really means it has no financials to support this claim.
2 Lesser Decl. ¶3; Document Request No. 18.
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(Fed. Cir. 2012). In a descriptiveness analysis,“[t]he question is whether someone who knows
what the goods or services are will understand the mark to convey information about them.” In
re Tower Tech Inc., 64 U.S.P.Q. 2d 1314, 1316-17 (TTAB 2002). Slogans such as REMEMBER
THIS NAME are descriptive where they are commonly used in the relevant industry. In re
Melville Corp., 228 U.S.P.Q. 970, 971-971 (TTAB 1986). See also, TMEP 1209.3(p) (terms that
describe a function or purpose may be merely descriptive or generic); and likewise, slogans such
as REMEMBER THIS NAME in common industry use are not registrable. See, TMEP
1209.3(s). Applicant has argued that REMEMBER THIS NAME is “inherently distinctive.” See
Motion at 16. Opposer is entitled discovery of Applicant’s claimed inherent distinctiveness, and
the lack of descriptiveness and lack of genericness of the advertising phrase.
Lundy Law’s argument that the Examining Attorney has approved REMEMBER THIS
NAME without requiring a claim under 2(f) does not end the distinctiveness inquiry – it is well
settled that the Board is not bound by the decisions of Examining Attorneys. See Superbakery
Inc. v. Benedict, 96 U.S.P.Q. 2d 1134, 1135 (Fed. Cir. 2010); Cineplex Odeon Corp. v. Fred
Wehrenberg Circuit of Theatres Inc., 56 U.S.P.Q. 2d 1538, 1541 (TTAB 2000). Despite the
weak arguments, Larry Pitt must still respond to Lundy Law’s points that its slogan is not
generic and is both distinctive or has acquired distinctiveness through consumer identification,
and requires further discovery to do so.

b. Lundy Law has refused to produce discovery
Although Applicant’s claim of inherently distinctive and nongeneric is specious, at best,
Larry Pitt is entitled to discovery on the following subjects for its response to the motion.
 Discovery on creation of REMEMBER THIS NAME from Applicant and its identified
advertising and marketing personnel, including drafts of mock ups, notes, memorandum,
and third party discovery of the identified advertising and marketing persons.
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 Discovery on consumer association of REMEMBER THIS NAME.
 Discovery on distinctiveness of REMEMBER THIS NAME.

 Discovery of any consumer perceptions of the phrase REMEMBER THIS NAME as a
mark, as a descriptive or generic phrase, and on grounds that the phrase fails to function
as a trademark.

Thus far, Lundy Law has refused production on these topics. Given Lundy Law’s
position that the phrase functions as a mark, and that the phrase is not merely descriptive,
Opposer is entitled to discovery on the creation and use of the phrase. See e.g. T. Marzetti Co. v.
Roskam Baking Co., 102 U.S.P.Q.2d 1801, 1804 (6th Cir. 2012) (Texas Toast found generic for
croutons based on discovery of trademark owner’s own documents). Tellingly, Lundy Law has
refused to produce any documents relating to communications on the development and creation
of its slogan, stating that “Applicant further objects to this Request to the extent that developing
a response to this Request would be oppressive, unduly burdensome, unreasonably expensive
and/or would require an unreasonable investigation on the part of Applicant.” Lesser Decl. ¶3;
Response to Document Request No. 11. And although Applicant has agreed to produce
nonprivileged or documents which are not work product “regarding or concerning the creation of
the tag line phrase REMEMBER THIS NAME,” no documents have been forthcoming, and it is
unclear what documents would be deemed privileged or work product. Id.
Lundy Law makes the broad statement that the phrase REMEMBER THIS NAME is
neither generic nor descriptive because the individual words “remember” and “name” are not
defined as “law firm” in a dictionary. However, the inquiry does not end there, and Larry Pitt is
entitled to test this assertion through discovery, in particular, given that there are entire
categories of marks that have been deemed “descriptive” although the marks do not immediately
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describe the product or service in question.3 Tellingly, Lundy Law has refused to produce any
documents to support its contention that REMEMBER THIS NAME is not merely descriptive,
other than the advertisements that are attached to the Leonard Lundy declaration, and Lundy
Law characterizes the production request as “unreasonable”. Lesser Decl. ¶3; Response to
Document Request No. 18. Larry Pitt should be entitled to question Lundy Law about this.
Further, on the issue of descriptiveness, Larry Pitt is entitled to discovery on “whether
someone who knows what the goods or services are will understand the mark to convey
information about them.” In re Tower Tech Inc., 64 U.S.P.Q. 2d 1314, 1316-17 (TTAB 2002),
accord DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., 695 F.3d 1247, 103
U.S.P.Q.2d 1753, 1757 (Fed. Cir. 2012). Applicant has also argued in its motion, that its slogan,
if not inherently distinctive, has acquired distinctiveness -- that “Lundy Law’s mark
REMEMBER THIS NAME has been, and continues to be, used and promoted in such a manner
so as to make it both known to consumers and to have consumers associate it with Lundy Law
and its services as an identifier of source.” Motion at 15. Larry Pitt has the right to test this bold
and unsupported assertion through discovery. None of this discovery has been produced at this
point.

3 See e.g. Ringling Bros.-Barnum & Bailey v. Celozzi-Ettelson, 855 F. 2d 480, 481 (7th Cir.
1988) (“the Greatest Show on Earth” descriptive of circus); Co-Rect Prod, Inc. v. Marvy!Adver.
Photo, 780 F. 2d 1324, 1331-32 (8th Cir. 1985) (advertising expression “he can save you enough
money to pay his own salary” descriptive of bartending product); Sparknet Commc’n L.P. v.
Bonneville Int’l Corp., 386 F. Supp. 2d 965, 977(N.D. Ill. 2005) (“whatever we want”
descriptive for radio station, despite registration); K Merchandise Mart, Inc. v. Kmart Corp., 81
F. Supp. 2d 923, 929 (C.D. Ill. 2000) (“Changing for a better day” descriptive of plaintiff’s retail
business – plaintiff failed to offer any evidence of secondary meaning, relying on its
characterization of its mark as “suggestive”); Stop & Shop Supermarket Co. v. Fullerton Corp.,
943 F. Supp. 120, 122 (D. Mass. 1996) (“It’s that simple” for a supermarket deemed descriptive);
Reed v. Amoco Oil Co, 611 F. Supp. 9, 13 (M.D. Tenn. 1984) (“goin the extra mile”
descriptive of a tire dealership).
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That Applicant’s real intention is simply to avoid the discovery process and railroad Larry
Pitt is highlighted by Lundy Law’s own papers. Lundy Law cites Larry Pitt’s discovery response
and objection to Applicant’s Interrogatory No. 5 that at this point in the proceeding, Opposer
need not identify all of the documents upon which it intends to rely insofar as the request is
“premature in that the opposition and discovery are in its initial stages.” By moving for
summary judgment at this juncture, while acknowledging that Opposer seeks additional
discovery, Lundy Law essentially admits that its motion is premature.

III. CONCLUSION
For the foregoing reasons as detailed above, and in attached declaration of Jacqueline M.
Lesser submitted herewith, Opposer requests that the Board, pursuant to Fed. R. Civ. P.56(d) and
37 C.F.R. §2.127(e)(1) defer considering the motion or deny it; or alternatively, allow time to
obtain affidavits, declarations or discovery; or alternatively, issue any appropriate order.

Dated: October 31, 2013
Respectfully submitted,

Nancy Frandsen, Esq.
Jacqueline M. Lesser, Esq.
Washburn Woodcock LLP
Cira Centre, 12th Floor
2929 Arch Street
Philadelphia, PA 19104-2891
Tel: 215-568-3100
Fax: 215-568-3439
nfrandsen@woodcock.com
jlesser@woodcock.com

Attorneys for Opposer, Larry Pitt & Associates

CERTIFICATE OF SERVICE

I hereby certify that on this 31st day of October, 2013, I caused a true and correct copy of
the foregoing MEMORANDUM OF LAW IN SUPPORT OF LARRY PITT & ASSOCIATES’
MOTION UNDER FED.R.CIV.P. 56(D) to be served by First Class mail upon counsel for
Applicant, Lundy Law, LLP at:
Manny D. Pokotilow
Caesar Rivise, Bernstein, Cohen & Pokotilow Ltd.
1635 Market Street
11th Floor – Seven Penn Center
Philadelphia, PA 19103-2212
mpokotilow@crbcp.com

/s/ Jacqueline M. Lesser
Jacqueline M. Lesser