Legal Staffing, Inc.

Trademark Trial and Appeal Board

May 20, 1998

No. 74591188 (T.T.A.B. May. 20, 1998)

Paper No. 12
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MAY 18 ,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Legal Staffing, Inc.
________
Serial No. 74/591,188
_______
Seth Nehrbass of Pravel, Hewitt, Kimball & Krieger for Legal
Staffing, Inc.
Vivian Micznik First, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney)
_______
Before Sams, Simms and Cissel, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On December 27, 1994, applicant filed an application to
register the mark “BRIGGS LEGAL STAFFING” on the Principal
Register for “temporary and permanent placement services for
legal secretaries.” The basis for the application was
applicant’s claim of use in interstate commerce since
September 7, 1992. The specimens submitted with the
application are telephone index cards showing the mark and
the addresses and phone numbers of seven of applicant’s
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locations. In addition to the mark “BRIGGS LEGAL STAFFING,”
these cards bear the notation “Personnel for the Legal
Industry...Temporary & Full-Time.”
On April 27, 1995, the Examining Attorney issued an
Office Action in which she refused registration under
Section 2(e)(4) of the Lanham Act on the ground that the
mark is primarily merely a surname. In support of the
refusal, she attached to the Office Action copies of
printouts of a number of pages from the Phonedisc U.S.A.
database which show listings for people whose surname is
“Briggs.” Also submitted were copies of dictionary
definitions of the word “legal” as meaning “of, pertaining
to, or concerned with the law,” and “applicable to or
typical of lawyers or their profession,” and of the word
“staffing” as relating to “the personnel carrying out a
specific enterprise < the nursing staff at a hospital.” The
Examining Attorney cited the cases of In re Crazes, 21
USPQ2d 1796 (TTAB 1991) and In re Possis Medical, Inc., 230
USPQ 72 (TTAB 1986) for the proposition that a surname
combined with incapable matter, such as a generic term, is
still primarily merely a surname and therefore unregistrable
under Section 2(e)(4) of the Act.
The Examining Attorney also required applicant to claim
ownership of Registration No. 1,853,379, which was issued to
applicant on the Supplemental Register on September 6, 1994.
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The mark registered there is the same mark as in the instant
application, “BRIGGS LEGAL STAFFING.” The services listed
there are “employment agency services in the field of legal
support personnel, such as legal secretaries, paralegals,
and receptionists.” That registration contains a disclaimer
of the words “LEGAL STAFFING.”
In the instant application, the Examining Attorney
required applicant to disclaim the words “LEGAL STAFFING”
apart from the mark as shown.
The last requirement the Examining Attorney made in her
first Office Action was that applicant clarify the
recitation of services by amending it to state that the
services are rendered by an employment agency.
Applicant responded by claiming ownership of its
registration on the Supplemental Register, amending the
recitation of services to “employment agency services,” and
arguing that the refusal to register under Section 2(e)(4)
is improper. Applicant submitted copies of portions of its
local Yellow Pages advertising directory to show that there
are no headings labeled “legal staffing,” and pages from the
PTO manual for identifications of goods and services, which
show no listings for either “staffing” or “legal staffing.”
These submissions were argued to support applicant’s
contention that “LEGAL STAFFING” is not generic for, or even
descriptive of, applicant’s services.
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From this conclusion applicant argued that its mark is
not primarily merely a surname under the test set forth in
In re Hutchinson Technology, 7 USPQ2d 1490 (Fed. Cir. 1988),
because the mark is not composed of a surname combined with
generic or even descriptive terminology. In that case, the
Court reversed the Board’s holding that the mark “HUTCHINSON
TECHNOLOGY” was unregistrable as a trademark for electronic
and mechanical computer components because it was primarily
merely a surname. The Court found that although
“HUTCHINSON” was indeed a surname, the word “TECHNOLOGY” was
so broad and indefinite that it did not convey an immediate
idea of ingredients, qualities, or characteristics of
applicant’s goods, and thus was not merely descriptive of
applicant’s products.
Applicant characterized “LEGAL STAFFING” as only
suggestive of applicant’s services, and argued that because
Section 1211.01(b) of the TMEP’s guidelines states that if
the “wording combined with a surname is capable of
functioning as a mark (i.e., matter which is arbitrary,
suggestive, or merely descriptive of the goods or services),
the mark is not considered to be primarily a surname” under
the Act.
On February 1, 1996, the Examining Attorney made final
both the refusal to register and the requirements for a
disclaimer and for an amendment to the recitation of
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services. “Employment agency services, namely, temporary
and permanent placement of legal secretaries” was suggested
because the first amendment applicant had submitted included
services which were not encompassed in the original
recitation of services.
In support of her contention that “LEGAL STAFFING” is a
generic term for applicant’s services, the Examining
Attorney attached to her second Office Action copies of
excerpts from over a hundred stories retrieved from the
Nexis database wherein the term “legal staffing” appears.
Typical examples include the following: “Taylor, whose firm,
Of Counsel Inc., provides temporary legal staffing,...”;
“AmeriClerk, Inc. Temporary Legal Staffing Specialists”;
“Attorneys Per Diem, national provider of temporary legal
staffing,...”; and “The company specializes in legal
staffing and legal support services.”
Applicant filed an amendment to the recitation of
services, a notice of appeal and a request for
reconsideration. Applicant adopted the recitation of
services suggested by the Examining Attorney. Applicant
argued that the term “LEGAL STAFFING” is only suggestive of
applicant’s services, and that the mark as a whole is
therefore registrable without a disclaimer. The appeal was
instituted, but action on it was suspended and the
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application file was remanded to the Examining Attorney for
reconsideration.
The Examining Attorney was still not persuaded on
either point, and maintained both the requirement for a
disclaimer and the refusal to register. Attached to the
Examining Attorney’s Office Action were still more excerpts
from the Nexis automated database. In each one, the term
“legal staffing” is used in the manner of the previously
submitted excerpts, that is, as the name of the activity of
staffing businesses with employees trained in the field of
legal work.
The application was then returned to the Board, which
resumed action on the appeal and allowed applicant time in
which to file its brief on appeal. Applicant timely did so,
and the Examining Attorney filed her brief in response.
Applicant did not request an oral hearing, so we have
resolved this appeal based on the written record and
arguments.
We hold that the requirement for a disclaimer of the
term “LEGAL STAFFING” and the refusal to register are both
proper.
Both of these findings center upon the fact that “LEGAL
STAFFING” is a generic term for applicant’s services, as
they are identified in the amended application. The
dictionary definitions of the component words, as well as
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the many examples of use of the combined term in the record,
establish that what applicant provides is called “legal
staffing.” That “legal staffing” is not a two-word term
defined in the dictionary listings submitted by applicant
and is not shown in the Office’s manual for identifications
of goods and services is not determinative of this issue in
favor of applicant. These reference works hardly purport to
include listings for all the services that can possibly be
rendered.
Generic terminology is unregistrable under Section
2(e)(1) of the Act. As such, the term “LEGAL STAFFING” must
be disclaimed under Section 6 of the Act, which requires a
disclaimer of any unregistrable component of an otherwise
registrable mark. Surely this was the reason applicant’s
prior registration on the Supplemental Register includes a
disclaimer.
Further, in keeping with the principle that a surname
combined with a generic term is still primarily merely a
surname, the entire mark is unregistrable under Section
2(e)(4). The record clearly establishes that “BRIGGS” is
primarily merely a surname, and the addition of the generic
term “LEGAL STAFFING” to it does not alter its significance.
Because the primary significance of applicant’s mark in its
entirety is that of a surname, the refusal to register under
Section 2(e)(4) of the Act is proper.
Ser No. 74/591188
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Accordingly, both the requirement and the refusal to
register are affirmed.
J. D. Sams
R. L. Simms
R. F. Cissel
Administrative Trademark Judges,
Trademark Trial and Appeal Board
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