Michael Moureau Wilson

Trademark Trial and Appeal Board

Oct 19, 2018

No. 87240575 (T.T.A.B. Oct. 19, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: October 19, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Michael Moureau Wilson
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Serial No. 87240575
_____

Joshua Gerben and Eric J. Perrott of Gerben Law Firm PLLC,
for Michael Moureau Wilson.
Meghan Reinhart, Trademark Examining Attorney, Law Office 108,
Steven Berk, Managing Attorney.
_____

Before Ritchie, Kuczma and Adlin,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Michael Moureau Wilson (“Applicant”) seeks registration on the Principal
Register of OUR LAWYERS ARE DOCTORS (in standard characters) for:
“Legal services,” in International Class 45.1
The Trademark Examining Attorney refused registration of Applicant’s applied-
for mark on the following grounds: (1) it is a slogan or term that does not function as

1 Application Serial No. 87240575 was filed on November 17, 2016, based upon Applicant’s
claim of first use anywhere and first use in commerce since at least as early as January 1,
2001.
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a service mark to indicate the source of Applicant’s services, Trademark Act Sections
1-3 and 45, 15 U.S.C. §§ 1051-1053, 1127; (2) it merely describes a feature or
characteristic of Applicant’s services, Trademark Act Section 2(e)(1), 15 U.S.C. § 1052
(e)(1); and (3) Applicant’s allegation of five years’ use of the applied-for mark is
insufficient to show acquired distinctiveness because the applied-for mark is highly
descriptive.
After the Examining Attorney made the refusals final, Applicant appealed to this
Board. We affirm the refusals to register.
A. Does the Applied-For Mark Function as a Mark?
We begin by considering whether Applicant’s applied-for mark functions as a
service mark to indicate the source of Applicant’s services. Trademark Act Sections
1-3 and 45, 15 U.S.C. §§ 1051-1053, 1127. To be registrable as a service mark, the
applied-for mark must identify the source of the services recited in the application
and distinguish them from the services of others. “Implicit in this definition is a
requirement that there be a direct association between the mark sought to be
registered and the [services] specified in the application, that is, that the mark be
used in such a manner that it would be readily perceived as identifying the specified
[services] and distinguishing a single source or origin for the [services].” In re
Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992); see also In re
Roberts, 87 USPQ2d 1474, 1478 (TTAB 2008). Not every word or symbol which
appears in connection with an entity’s services functions as a service mark. In re
Safariland Hunting, 24 USPQ2d at 1381; In re Remington Prods. Inc., 3 USPQ2d
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1714, 1715 (TTAB 1987). Whether the slogan functions as a service mark depends on
how it would be perceived by the relevant public. In re Eagle Crest, Inc., 96 USPQ2d
1227, 1229 (TTAB 2010); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862 (TTAB
2006). “The more commonly a [slogan or term] is used, the less likely that the public
will use it to identify only one source and the less likely that it will be recognized by
purchasers as a trademark [or service mark].” In re Hulting, 107 USPQ2d 1175, 1177
(TTAB 2013) (quoting In re Eagle Crest, 96 USPQ2d at 1229).
According to the Examining Attorney, the applied-for mark OUR LAWYERS ARE
DOCTORS consists of terms that are commonly used by those in Applicant’s trade to
merely convey information about their services.2
The Examining Attorney’s position is supported by the following evidence showing
that firms offering legal services provided by lawyers who are also doctors commonly
use the terms “lawyers” and “doctors” together, sometimes using the identical
language to that in Applicant’s proposed mark:
• Kline & Specter webpage sub-headline stating “The
Doctor/Lawyer Team” with the text beginning “Kline &
Specter, PC, has five lawyers who are also doctors . . .”
(March 2, 2017 Office Action, TSDR 4)3
• LAWMD.COM webpage stating in the first paragraph
“many of our lawyers are doctors as well as skilled trial
lawyers” (March 2, 2017 Office Action, TSDR 5)
• Sacks, Leichter & Roskin webpage stating in a sub-
headline near the top of the page “One of the Few Law
Firms Where The Lawyers Are All Board Certified
Physicians or Doctors,” also mentioning “Our medical

2 Examining Attorney’s Appeal Brief (6 TTABVUE 6).
3 References to the TSDR database are to the downloadable .pdf version.
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malpractice lawyers are all board certified physicians or
doctors . . . ” and “one of the only medical malpractice
law firms in the United States where the lawyers are
all board certified physicians or doctors” (March 2, 2017
Office Action, TSDR 6)
• CHH Cirignani Heller Harman webpage stating in a
sub-headline “A Firm With Attorneys Who Are Also
Board-Certified Physicians” and also mentioning that
“two of our lawyers are also doctors” (March 2, 2017
Office Action, TSDR 7)
• Cullan & Cullan M.D., J.D. webpage stating in sub-
heading “Nursing Home Lawyers who are also Doctors”
and in the text “Our lawyers are also doctors . . .” and
“Our AV rated lawyers are also doctors . . . ”; a box near
the bottom of the page is entitled “Working with
Nursing Home Lawyers who are also Doctors” (March
2, 2017 Office Action, TSDR 8)
• Gershon Willoughby & Getz webpage from
has section
beginning “Our lawyers are doctors” (May 26, 2017
Office Action, TSDR 8)
• Mahoney Law Firm webpage has the heading “A
Lawyer Who is Also a Doctor” above the entry for
“Attorney Dennis Mahoney” who “is also a licensed
medical doctor.” (See February 28, 2018 Office Action,
TSDR 8)
• Nudelman & Associates webpage with the headline
“Sometimes you need a lawyer who is also a doctor.” and
then follows that with information that firm’s attorney,
Mitchell S. Nudelman is a lawyer and a doctor
(February 28, 2018 Office Action, TSDR 10)
• Ramji Law Group webpage with heading “Lawyer &
Doctor” “The Lawyer who is also a Doctor.” (February
28, 2018 Office Action, TSDR 12)
• Schwalben Law Firm webpage contains sub-heading
“Legal Assistance From A Lawyer Who Is A Doctor”
(February 28, 2018 Office Action, TSDR 14)
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• Ted A. Greve & Associates website contains sub-
heading “Talk to the Lawyer Who is Also a Doctor” and
also notes later in another page that firm has “A lawyer
who is also a doctor” (February 28, 2018 Office Action,
TSDR 18, 20)
• Law Offices of John C. Dorn webpage contains the
wording “Who better than a lawyer who is also a doctor
to have on your side.” (February 28, 2018 Office Action,
TSDR 22)
• The Rich Firm PC website stating “Several of our
lawyers are also doctors . . . ” (February 28, 2018 Office
Action, TSDR 24)
• Florida Trial MD webpage states “. . . who better to have
on your side that a lawyer who is also a medical doctor?”
and that its trial team consists of both “a
lawyer/medical doctor and a Board Certified Civil Trial
Lawyer” (February 28, 2018 Office Action, TSDR 27)
• Jack Tolliver, M.D. webpage contains the sub-heading
“Our Unique Doctor-Lawyer Medical Malpractice
Experience,” describes the lawyer at the firm as “a
doctor and personal injury lawyer” and has a link
entitled “The Lawyer-Doctor edge” (February 28, 2018
Office Action, TSDR 28)
• RossFellerCasey law firm webpage contains the sub-
heading “Our Team of Ivy League Educated Doctors”
and describes its team as “consist[ing] of two of the
nation’s leading physicians – one of whom is also a
lawyer” (February 28, 2018 Office Action, TSDR 31)
Since it is common for lawyers to promote their legal services by advertising that they
are also doctors, the Examining Attorney argues that the applied-for mark OUR
LAWYERS ARE DOCTORS merely conveys an informational message about
Applicant’s business, and does not distinguish Applicant’s services from those of
others.
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Applicant contends that it uses OUR LAWYERS ARE DOCTORS in a manner
calculated to project a single source or origin for his services,4 arguing that the
evidence “does not ‘demonstrate a competitive need for others to use’ this term”
because only a “de minimus” number of attorneys who are physicians “use the phrase
‘our lawyers are doctors’ in their practice.”5
Applicant further argues that competitors would not be prejudiced by the
registration of his applied-for mark because none of the evidence uses the exact
phrase OUR LAWYERS ARE DOCTORS, citing for example, “CONSULT WITH AN
ATTORNEY WHO HAS ALSO PRACTICED MEDICINE” and “TALK TO THE
LAWYER WHO IS ALSO A DOCTOR.”6 Applicant’s argument ignores Gershon
Willoughby & Getz’s webpage, which uses the exact phrase, as well as the several
firms that use very similar phrases.

4 Applicant’s Appeal Brief (4 TTABVUE 5).
5 Applicant’s Appeal Brief (4 TTABVUE 7). Applicant argues that for a phrase, like the
applied-for mark, to never act as a source identifier, requires overwhelming evidence which
is a very high standard of proof for the USPTO to establish that his mark fails to function as
a service mark. Applicant also argues that this case presents a “mixture of evidence” that
does not rise to the required clear evidence showing that the phrase is incapable of trademark
protection. Moreover, any doubt regarding failure to function should be resolved in
Applicant’s favor. Applicant’s Appeal Brief (4 TTABVUE 5). However, the cases cited by
Applicant in support of his argument include In re Trek 2000, 97 USPQ2d 1106 (TTAB 2010)
and In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143
(Fed. Cir. 1987). Those cases, unlike the present case, involved marks that were refused
registration as generic terms. Here, Applicant’s mark is refused because the manner in which
the applied-for mark is being used does not support a finding that potential consumers would
perceive it as a trademark. See In re Niagara Frontier Services, Inc., 221 USPQ 284 (TTAB
1983) (WE MAKE IT, YOU BAKE IT! held not merely descriptive, but refusal based on failure
to function as a service mark affirmed).
6 Applicant’s Appeal Brief (4 TTABVUE 6) citing to February 28, 2018 Final Office Action at
TSDR 14, 18. The page at TSDR 14 cited by Applicant also contains a subtitle entitled “Legal
Assistance From A Lawyer Who Is A Doctor,” providing another example of the close
association of “Lawyer” and “Doctor” by law firms involved in personal injury claims.
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Additionally, Applicant notes that his search of the phrase “our doctors are lawyers”
brings up three “hits” showing third parties using the phrase in their advertising.7
Since Applicant did not provide any information regarding either the terms used in
his search request, or all of the search results identified by the search, the three
results he identified have been considered, but are necessarily limited.
Looking at all of the evidence showing that lawyers commonly tout that they are
also doctors, whether or not the exact phrase OUR LAWYERS ARE DOCTORS is
used, we find 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 argues that consumers are used to seeing the phrase “OUR _____ ARE
_____” as a trademark or service mark despite the fact that it has some informational

7 The references are mentioned in Applicant’s February 6, 2018 Response to Office Action. In
the Response, Applicant notes that the first reference is an advertisement for an attorney
stating that “Two of our lawyers are doctors.” See . The second reference is for a competitor’s ad using “the phrase ‘OUR
LAWYERS ARE MEDICAL DOCTORS’ prominently in the header” followed by use of “Our
lawyers are doctors. . . .” to begin a paragraph in the text. See . However, a copy of
one page from that website containing the language “Our Lawyers are Medical Doctors,” was
attached to the Response. The third reference is a page from