Mitchell Miller, a Professional Corp. dba Miller Law Group, P.C.v.Michele Ballard Miller

Trademark Trial and Appeal Board

Jan 7, 2013

No. 91184841 (T.T.A.B. Jan. 7, 2013)

Mailed: January 7, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Mitchell Miller, a Professional
Corp. dba Miller Law Group, P.C.
v.
Michele Ballard Miller
________

Opposition No. 91184841
to application Serial No. 77343411
________

Margarita Calpotura of Miller Law Group, P.C. for Mitchell
Miller, a Professional Corp. dba Miller Law Group, P.C.

Vijay K. Toke of Hiaring + Smith, LLP for Michele Ballard
Miller.
________

Before Quinn, Cataldo and Lykos,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Michele Ballard Miller, d/b/a Miller Law Group
(“applicant”) filed an application to register the mark MILLER
LAW GROUP, with “LAW GROUP” disclaimed, on the Principal
Register in standard characters, for “legal services” in
THIS OPINION IS
A PRECEDENT
OF THE TTAB
Opposition No. 91184841
2

International Class 45.1 Applicant filed the application based
on use in commerce pursuant to Trademark Act § 1(a), 15 U.S.C.
§ 1051(a), asserting first use anywhere and date of first use in
commerce as of August 31, 1998.
Registration has been opposed by Mitchell Miller, a
Professional Corp. dba Miller Law Group, P.C. (“opposer”). As
grounds for opposition, opposer alleges use since 2006 of the
designation MILLER LAW GROUP for legal services, and asserts the
following claims in its second amended notice of opposition:
that the proposed mark is (1) primarily merely a surname under
Trademark Act § 2(e)(4); (2) merely descriptive under Trademark
Act § 2(e)(1); (3) generic under Trademark Act § 2(e)(1); and
(4) merely a trade name under Trademark Act § 45; that the
application is (5) void because the application was filed by
applicant and not the mark’s owner, Miller Law Group, under
Trademark Act § 1; and that applicant (6) committed fraud by
deceiving the U.S. Patent and Trademark Office (“USPTO”) as to
the ownership of the mark.2 In her answer, applicant has denied

1 Application Serial No. 77343411 was filed on December 4, 2007 and published
for opposition in the Official Gazette on May 6, 2008.
2 Opposer’s pleaded fraud claim was based on allegations that applicant
deceived the USPTO by stating that applicant, and not Miller Law Group, is
the owner of the mark, and further that applicant knew other third-parties
also had rights in the applied-for mark. Because opposer has only tried the
fraud claim as to the ownership allegation, the second allegation is deemed
waived.
Opposition No. 91184841
3

all of the salient allegations in the second amended notice of
opposition.3
The Record
By rule, the record includes the pleadings and the file
history of the subject application. Trademark Rule 2.122(b), 37
CFR § 2.122(b). By stipulation as approved by the Board,
opposer provided the testimony affidavits, with accompanying
exhibits, of its principal, Mitchell Miller, and the following
third-party attorneys with the surname MILLER: Stan Miller;
Gary Miller; Larry W. Miller, Sr.; Randy Miller; and Russell
Miller.4 Opposer also filed two notices of reliance (“NOR”),
which included excerpts and accompanying exhibits from the
discovery deposition of Michele Ballard Miller.5 Applicant
provided the testimony affidavit of herself and Susan Kostal,
applicant’s legal marketing consultant, with accompanying
exhibits. Additionally, applicant filed a notice of reliance,
which included excerpts and accompanying exhibits from the
discovery deposition of opposer’s principal, Mitchell Miller.

3 Applicant has asserted likelihood of confusion and unclean hands as
affirmative defenses. The likelihood of confusion claim was stricken on
November 29, 2010. (Board’s Order, p. 2) Applicant’s affirmative defense of
unclean hands is deemed waived because applicant failed to argue and present
evidence regarding the defense at trial.
4 Both parties have designated portions of their testimony and evidence as
“confidential.” In this decision, we have endeavored to discuss those
portions of the parties’ testimony and evidence that truly contain
confidential information only in general terms.
5 Opposer additionally provided the testimony affidavit of Corey McCarthy, as
evidence of actual confusion. Mr. McCarthy’s affidavit will not be
considered because applicant’s affirmative defense of likelihood of confusion
has been stricken.
Opposition No. 91184841
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The parties also have submitted four sets of stipulated facts.6
Opposer and applicant filed main briefs on the case, and opposer
filed a reply brief.
Admissibility of Evidence
Applicant challenges the probative value of opposer’s
evidence and argues that the evidence is not admissible.
Specifically, applicant argues that the testimony declarations
of opposer’s principal, Mitchell Miller, and of third parties
Stan Miller, Gary Miller, Larry W. Miller, Sr., Randy Miller,
and Russell Miller are not competent evidence because the
declarations fail to establish that any of the users has rights
senior to applicant’s rights in the proposed MILLER LAW GROUP
mark. Applicant further asserts that the testimony declarations
are not probative because, according to applicant, they do not
illustrate the extent to which each law firm uses the proposed
mark. Applicant additionally objects to the testimony
declarations to the extent that they declare MILLER LAW GROUP is
not a trademark or service mark.
Initially, the Board agrees with applicant that the
opinions of opposer and third parties concerning the strength of

6 The Board notes with approval the parties’ stipulation to testimony by
affidavit and stipulation to undisputed facts. While this case was not tried
in accordance with the Board’s Accelerated Case Resolution procedure (ACR),
the parties nonetheless availed themselves of these ACR-type efficiencies.
Additional information regarding ACR is available in TBMP §§ 528.05(a)(2),
702.04 and 705 (3d ed. 2012), and on the Trademark Trial and Appeal Board web
page of the United States Patent and Trademark Office (USPTO) website at
www.uspto.gov.
Opposition No. 91184841
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the proposed mark and likelihood of confusion have no probative
value since the strength of a mark is a factor in the likelihood
of confusion analysis, but such a claim is not before us.
The Board is not, however, persuaded by applicant’s other
objections. The question of who has senior rights to the
proposed mark has no bearing on the claims raised in this
opposition, and opposer does not rely on the testimony
declarations for the proposition that it or any of the third
parties has rights senior to applicant.7 Instead, the testimony
declarations are probative to the extent that they demonstrate
MILLER is used by others to identify their surnames in
connection with their legal services, and that language such as
“LAW GROUP” is used by these individuals to describe the
structure of their law firms. The testimony declarations
adequately set forth the particular individual identified by
MILLER in the respective law firm names, the full name of the
law firm, the extent of time for which each has been using his
firm name, the geographic scope of the legal practice, and even
the primary areas of legal practice. Considering these elements
as a whole, the testimony declarations are clearly relevant and

7 The issue of priority of use is not relevant to the remaining claims in this
case, although testimony as to any use of MILLER or MILLER LAW GROUP by
opposer is not immaterial because of its relevance to opposer’s standing. It
is immaterial to the claims in this case, however, whether use by third
parties is prior to or subsequent to applicant’s claimed first use.
Opposition No. 91184841
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admissible, and will be considered to the extent of their
probative value.
With respect to applicant’s objections to opposer’s use of
Google® search results, applicant argues that search engine
results are incompetent and inadmissible hearsay under Rules 801
and 802 of the Federal Rules of Evidence. Applicant further
objects on the grounds of lack of personal knowledge and proper
foundation under Fed. R. Evid. 602 and 901, respectively.
Generally, a search result summary from an Internet search
engine has limited probative value because such a list does not
show the context in which the term or phrase is used on the
listed web pages and may not include sufficient surrounding text
to show the context within which the term or phrase is used.
See In re Bayer AG, 488 F.3d 960, 967, 82 USPQ2d 1828, 1833
(Fed. Cir. 2007); In re Thomas Nelson, Inc., 97 USPQ2d 1712,
1715 (TTAB 2011); In re Thomas, 79 USPQ2d 1021, 1026 (TTAB
2006).
As applicant states, opposer only asserts that “the third
parties appear to use MILLER LAW GROUP to describe their law
practice[s].” (App. Brief, p. 3, quoting Opp. Brief, p. 19) In
its brief, opposer goes on to list specific results that have
sufficient information from surrounding text to discern the
context in which MILLER LAW GROUP is being used, “including
Miller Law Group in Walnut, California; J. Bruce Miller Law
Opposition No. 91184841
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Group in Louisville, Kentucky; Miller Law Group in Hinsdale,
Illinois; Miller Family Law Group; Seifert Miller Law Group in
Orlando, Florida; Miller Law Group in Jonesboro, Georgia; Miller
Health Law Group in Los Angeles; Miller Law Group, LC in
Chesterfield Missouri; and Miller Law Group, LLC in Longwood,
Florida.” (Opp. Brief, p. 19, citing Mitchell Miller Aff.,
Para. 29 & Exb. E) Many of the results of opposer’s search
include sufficient surrounding text to show that MILLER is the
surname of a particular individual, that MILLER LAW GROUP is
used in connection with legal services by that individual, and
geographic information concerning the legal practice. (Mitchell
Miller Aff., Exb. E, see, e.g., J. Bruce Miller in Louisville,
KY; Russell W. Miller, Jr. in Sacramento, CA; Michele Ballard
Miller (applicant); Scott M. Miller in Longwood (unspecified
state); Stan Miller in Little Rock, AR; Larry Miller, Jr. in
West Lawn (unspecified state); Andy P. Miller in Plymouth
County, MA; and Maureen Miller in Chesterfield, MO). Moreover,
opposer has corroborated the Google® search results with
testimony declarations. Specifically, the testimony
declarations, and supporting exhibits, of opposer’s principal,
Stan Miller, Larry Miller, and Russell Miller reflect specific
results from the Google® search strategy. Opposer’s testimony
declaration sufficiently sets forth the personal knowledge of
Opposition No. 91184841
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its principal concerning the search strategy and foundation for
the Google® search results. (Mitchell Miller Aff., Para. 29)
Thus, the results which include sufficient surrounding text
to determine that MILLER is the surname of a particular
individual, and that MILLER LAW GROUP is used in connection with
that individual’s legal practice, are certainly probative to the
issues in this case. The fact that opposer has supplemented
some of the search results with testimony declarations and
supporting evidence contributes to the probative value of those
supplemented search results. Therefore, the Google® search
results do offer some probative value and will be considered to
that extent.
Standing
To establish standing, opposer must show that it is not an
intermeddler, but has a real interest in the proceeding. Ritchie
v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); 15
U.S.C. §1064.
Opposer asserts that “Since on or about December 2006,
Opposer has used and continues to use its name Miller Law Group,
P.C. (‘Opposer’s Name’), which is similar to Applicant’s Alleged
Mark.” In addition, opposer has evidenced its continuous use of
“Miller Law Group” in connection with legal services beginning
in January, 2007 through the testimony affidavit of its
principal, articles of incorporation, use of the mark on its
Opposition No. 91184841
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website as of September, 2007, letterhead and envelope, email
signature, signage, advertising and marketing material,
tradeshow and presentation material, and in publications.
(Mitchell Miller Aff., Paras. 5, 8-9, 11, 14-18, Exbs. A –D;
Stipulated Facts, Exbs. E-P, R-S)
In this case, opposer has established that it has a
commercial interest in using MILLER LAW GROUP and derivations
thereof to identify services that are essentially identical to
those recited in the involved application. Further, opposer’s
commercial interest demonstrates competitive need to use the
wording MILLER LAW GROUP for services that are the same as those
recited in applicant’s involved application. We find that
because opposer has demonstrated its usage and competitive need
of the wording comprising the MILLER LAW GROUP mark, opposer has
established its standing to oppose applicant’s mark. See, e.g.,
Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209
USPQ 40, 44 (CCPA 1981) (“It is clear that use of a term in a
descriptive sense is sufficient to impart standing to oppose
federal registration of a descriptive “word, name, symbol, or
device” as a trademark ....”); Golomb v. Wadsworth, 592 F2d
1184,201 USPQ 200, 201 (CCPA 1979) (damage sufficient to
establish standing to oppose a registration “presumed or
inferred when the mark sought to be registered is descriptive of
the goods and the opposer or petitioner is one who has a
Opposition No. 91184841
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sufficient interest in using the descriptive term in its
business”); Saint-Gobain Abrasives, Inc. v. Unova Industrial
Automation Systems, Inc., 66 USPQ2d 1355, 1357 (TTAB 2003)
(“plaintiff has alleged the interest necessary to bring these
proceedings by asserting its competitive uses of stripes and
bands in various colors including the colors yellow and blue on
abrasive wheels and disks”).
Additionally, applicant sent cease and desist letters to
opposer asserting applicant’s rights in the applied-for mark and
“objecting to Opposer’s use of Opposer’s Name.” (Second Amended
Notice of Opposition, Para. 38.) These cease and desist letters
provide additional evidence that opposer has business interests
that have been affected, i.e., a real interest in the
proceeding, and thus, has standing. See Ipco Corp. v. Blessings
Corp., 5 USPQ2d 1974 (TTAB 1988) (cease and desist letter
coupled with plaintiff’s use of mark sufficient to establish
standing). We further note that applicant does not dispute
opposer’s standing to bring the above-referenced opposition
proceeding.
Surname Claim
“The test for determining whether a mark is primarily
merely a surname is the primary significance of the mark as a
whole to the purchasing public.” In re Hutchinson Tech. Inc.,
852 F.2d 552, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988) (footnote
Opposition No. 91184841
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omitted). ”The question of whether a word sought to be
registered is primarily merely a surname within the meaning of
the statute can be resolved only on a case by case basis.” In
re Établissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653
(Fed. Cir. 1985). We typically look to four factors in
determining whether a mark’s primary significance to the public
is as a surname:
(1) whether the surname is rare;
(2) whether anyone connected with applicant has the involved
term as a surname;
(3) whether the term has any other recognized meaning; and
(4) whether the term has the “look and feel” of a surname.
See In re Binion, 93 USPQ2d 1531, 1537 (TTAB 2009); In re United
Distillers plc, 56 USPQ2d 1220 (TTAB 2000), citing In re Benthin
Management Gmbh, 37 USPQ2d 1332 (TTAB 1995).8 The Board
considers each of these factors independently with respect to
the term “Miller.” If we determine the public would perceive
the term primarily as a surname, we will then determine if the
disclaimed terms “Law Group” cause us to alter that
determination.
A. Will the Public Primarily Perceive Miller as a Surname?
1. Miller is a common surname.

8 A fifth factor, not relevant to this case inasmuch as the terms comprising
the mark are presented in standard characters, is whether the term appears in
a stylized form that is sufficiently distinctive to cause the mark not to be
perceived as primarily merely a surname. Benthin, 37 USPQ2d at 1334.
Opposition No. 91184841
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The record is replete with evidence that the surname MILLER
is anything but rare. The most relevant evidence on the
question of how rare (or common) MILLER is as a surname is U.S.
Census Bureau Genealogy Data, showing MILLER as the sixth most
frequently occurring surname from Census 2000, with a very
substantial 1,127,803 occurrences (“Census 2000”). (Mitchell
Miller Aff., Exb. J; Opp. NOR, Exb. 2, Adms. Nos. 1-2) Opposer
has supplemented the independently persuasive Census 2000 with
the following evidence:
(i) California Bar Association search results
indicating 274 “Active” attorneys with the surname
MILLER in California on April 22, 2011 (only
showing the first 500 total results) (Id. at Exb.
I);9

(ii) California Bar Association search results
indicating 68 “Active” attorneys with the surname
MILLER in San Francisco, CA on November 21, 2010
(Id. at Exb. H);10

(iii) Business and Residence sections of San Francisco,
CA White Pages® search results for Miller,
indicating approximately 70 individuals and
businesses identified by the surname MILLER, dated
December 2009 (Id. at Exb. G);

(iv) YellowPages.com search result for Miller in San
Francisco indicating 357 businesses with “Miller”
in the name, dated November 21, 2010 (Id. at Exb.
F);

9 The status of many of the attorneys is listed as “Deceased,” “Inactive” or
“Not Eligible.” Therefore, even though the evidence indicates 1,263 total
results, only the 274 “Active” results from the first 500 total results
provided will be considered as relevant and probative.
10 Similarly, the status of many of the attorneys is listed as “Deceased,”
“Inactive” or “Not Eligible.” Therefore, even though the evidence indicates
101 total results, only the 68 “Active” results will be considered as
relevant and probative.
Opposition No. 91184841
13

(v) LexisNexis® Internet database search results for
“Miller” in California news publications from the
week preceding April 20, 2011, producing 351
results (Id. at Exb. L);11

(vi) Google® search for “Miller Law Group” on March 21,
2011, showing first ten pages (Id. at Exb. E);12

(vii) Affidavit of Stan Miller and attached website
printouts for the firm Miller Law Group, PLLC,
showing that Stan Miller uses his surname in
connection with legal services (Stan Miller Aff.,
Exb. A);

(viii) Affidavit of Gary Miller and attached website
printouts for the firm Miller Law Group, PLLC,
showing that Garry Miller uses his surname in
connection with legal services (Gary Miller Aff.,
Exb. A);

(ix) Affidavit of Larry W. Miller and attached website
printouts for the firm The Miller Law Group, PLLC,
showing that Larry W. Miller, Sr. uses his surname
in connection with legal services (Larry W. Miller,
Sr. Aff., Exb. A);

(x) Affidavit of Randy Miller and attached letterhead,
envelopes and business cards for the firm The
Miller Law Group, PLLC, showing that Randy Miller
uses his surname in connection with legal services
(Randy Miller Aff., Exb. A);

(xi) Affidavit of Russell Miller and attached business
card, letterhead and email signature for the firm

11 While many of the search results do indeed show “Miller” used as a surname,
some of the results show “Miller” used in other contexts, such as a street
name. Therefore, the evidence is considered only generally to show that
“Miller” is used as a surname, rather than as a specific reference to the
number of results. Opposer also submitted LexisNexis® Internet database
search results for “Miller” in California news publications, producing more
than 3,000 results, dated April 20, 2011, as Exhibit K to his affidavit.
However, none of the publications associated with search result were
submitted, making it impossible for the Board to consider the context in
which “Miller” is used. Therefore, opposer’s Exhibit K will not be
considered.
12 Again, the evidence will only be considered to show generally that there
are users of “Miller Law Group” in connection with legal services.
Opposition No. 91184841
14

Miller Law Group, showing that Russell Miller uses
his surname in connection with legal services
(Russell Miller Aff., Exb. A).

The referenced evidence not only demonstrates that MILLER
is a common surname, but that it is a common surname for
attorneys in the legal profession, the very profession in which
applicant uses the mark she seeks to register.13 Even applicant
admits that “there is little doubt that Miller is a common
surname.” (App. Brief, p. 16) The first factor of the surname
analysis, therefore, unquestionably suggests that the public
would perceive “Miller” in the mark as a surname.
2. Applicant’s surname is Miller.
To state the obvious, the surname of applicant, Michele
Ballard Miller, is MILLER. (App. Brief, p. 15; Opp. NOR, Exb.
2, Adm. No. 5) That Applicant’s name is MILLER strengthens the
inference that the public will perceive the term as a surname.
3. Miller has no other recognized meaning in context.
The third factor for a surname analysis calls for
consideration of other recognized meanings of the surname.
Although opposer acknowledges that a “miller” is one that
operates a mill (Opp. Brief, p. 9), neither opposer nor
applicant provides supporting evidence of this fact. We take

13 We observe that much of the above-noted evidence focuses on the surname
significance of MILLER in California. We note, however, that inasmuch as
applicant seeks registration of the mark at issue without geographic
restriction, our analysis is based upon evidence of the surname significance
of MILLER in the United States as a whole, regardless of either party’s area
of use of its respective mark(s).
Opposition No. 91184841
15

judicial notice of the Merriam-Webster Dictionary definition of
“miller” as “one that operates a mill” and “any of various moths
having powdery wings.”14
The mere existence of other non-surname meanings of the
mark does not preclude a finding that the mark is primarily
merely a surname. Rather, we consider both whether, and, if so,
the degree to which, the public would associate any established
meaning with the goods or services in the application. See
Établissements Darty, 225 USPQ at 653-54 (where there was no
relationship between the established meaning of the apparent
root word of the surname mark and the claimed services, the mark
was likely to be perceived primarily as a surname). The
question is not whether a mark having surname significance might
also have a non-surname significance, but whether, in the
context of the goods or services at issue, that non-surname
significance is the mark's primary significance to the
purchasing public, thus eclipsing and relegating the mark's
surname significance to secondary rather than primary status.
See In re Harris-Intertype Corp., 518 F.2d 629, 186 USPQ 238,
239 (CCPA 1975); In re Kahan & Weisz Jewelry Mfg. Corp., 508
F.2d 831, 184 USPQ 421, 422 (CCPA 1975).

14 The Board may take judicial notice of dictionary evidence. University of
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB
1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). See also TBMP §
704.12 (3d ed. rev. 2012).
Opposition No. 91184841
16

4. MILLER has the look and feel of a surname.
Finally, we must consider whether the term has the “look
and feel” of a surname. This is a subjective factor concerning
whether MILLER has the “structure and pronunciation” or “the
look and sound” of a surname. In re Benthin Management GmbH, 37
USPQ2d at 1333; In re Sava Research Corp., 32 USPQ2d at 1381; In
re Industrie Pirelli, 9 USPQ2d 1564, 1566 (TTAB 1988). As
stated in Industrie Pirelli, “certain rare surnames look like
surnames, and certain rare surnames do not . . . .” Id.
Being the sixth most common surname as of Census 2000,
there are numerous individuals with the surname MILLER
throughout the United States, and the common nature of the
surname conditions consumers to see the term as a surname.
Additionally, MILLER “would not be perceived as an initialism or
acronym . . . and does not have the appearance of having been
coined by combining a root element that has a readily understood
meaning in its own right with either a prefix or a suffix.” In
re Gregory, 70 USPQ2d 1792, 1796 (TTAB 2004).
We find based upon the record evidence and the term itself
that MILLER has the “look and feel” of a surname.
5. The Public Will Primarily Perceive Miller as a Surname.
Viewing these factors together, we believe the primary
significance of MILLER, to the purchasing public for legal
services, is that of a surname, rather than one who operates a
Opposition No. 91184841
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mill (or a moth). There is overwhelming evidence of the surname
significance in the record, and the record, in contrast, lacks
evidence of the non-surname significance of MILLER in the
context of the claimed services.
Both parties in this proceeding share the surname MILLER.
Applicant has testified that she selected MILLER in her firm
name because it is her surname. (Opp. NOR, Exb. 5 at p. 13)
Applicant prominently incorporates both her full name, Michele
Ballard Miller, with the proposed MILLER LAW GROUP mark on her
business card and attorney profile as part of her marketing
efforts for her firm. (Stip. Facts, Para. 13, Exb. B at
MBM000025, 27, 38 & 162) Applicant is identified by her surname
in conjunction with the name of her firm in marketing materials,
publications, and speaking, presentation and conference
materials. (Stip. Facts, Para. 13, Exb. B at MBM000025, 27, 38,
160-61, 162; Third Stip. Facts, Exb. 2 at MBM000096, 99, 101-
102, 120, 130, Exb. 3 at MBM000067, 71, 73, Exb. 6 at MBM000253,
Exb. 7 at MBM000667, Exb. 9 at MBM001391, Exb. 15 at MBM000001-
03, Exb. 21 at MBM000208, Exb. 25 at MBM001498, Exb. 26 at
MBM000833, Exb. 27 at MBM000175, Exb. 28 at MBM001162, Exb. 29
at MBM001367, 1370, Exb. 30 at MBM000596, Exb. 31 at MBM000152,
Exb. 32 at MBM000687, 692, 152, Exb. 34 at MBM001443, Exb. 35 at
MBM000262-63, Exb. 36 at MBM000604, Exb. 37 at MBM000622, 632,
Exb. 39 at pp. 9-10, 45-46) Applicant’s extensive use of her
Opposition No. 91184841
18

surname in conjunction with her firm name directly associates
the two. Applicant also heavily markets her firm as a woman and
minority owned law firm, which further contributes to the
surname significance of MILLER as used to designate the woman
who owns the firm. (Stip. Facts, Exb. B at MBM000027-28, 31;
Third Stip. Facts, Exb. 5, Exb. 9 at MBM001400, Exb. 10, Exb. 11
at MBM000009, 06, Exb. 39 at p. 6)
Even applicant does not argue that MILLER is not primarily
merely a surname simply because it has other defined meanings.
Applicant admits throughout the record that MILLER is a surname
– her surname – and that it is used for the purpose of
identifying her. On the other hand, and as discussed above, the
record is devoid of evidence that the non-surname meanings of
MILLER, i.e., a mill operator or a moth, are the primary
significance thereof or somehow eclipse its surname
significance.
Based upon the evidence of record, we find that the primary
significance of MILLER to the purchasing public is that of a
surname.
B. The wording “LAW GROUP” does not diminish the mark’s
surname significance.

On balance, the relevant factors weigh heavily in favor of
finding that MILLER is primarily merely a surname. The question
then becomes, does the combination of the wording “LAW GROUP”
Opposition No. 91184841
19

with the surname “MILLER” diminish the surname significance of
Miller such that its primary significance is other than as a
surname? See Hutchinson Tech., 7 USPQ2d at 1492 (when assessing
whether the public will view a mark primarily as a surname, the
“mark sought to be registered must be considered in its
entirety”); In re Standard Elektrik Lorenz Aktiengesellschaft,
371 F.2d 870, 152 USPQ 563, 566 (CCPA 1967) (“A mark must be
considered in its entirety.”).
It is well settled that combining a surname with the
generic name for the services does not overcome a mark’s surname
significance. See In re Hamilton Pharms. Ltd., 27 USPQ2d 1939
(TTAB 1993) (holding HAMILTON PHARMACEUTICALS primarily merely a
surname for pharmaceutical products); In re Cazes, 21 USPQ2d
1796 (TTAB 1991) (holding BRASSERIE LIPP primarily merely a
surname when used in connection with restaurant services); In re
Woolley’s Petite Suites, 18 USPQ2d 1810 (TTAB 1991) (holding
WOOLLEY’S PETITE SUITES primarily merely a surname for hotel and
motel services). The addition of an entity designation, such as
“Inc.” or “Co.,” also does not diminish the surname significance
of a term that is otherwise primarily merely a surname. See In
re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265, 267 (CCPA
1953) (holding S. SEIDENBERG & CO’S. primarily merely a
surname); In re P.J. Fitzpatrick, Inc., 95 USPQ2d 1412 (TTAB
Opposition No. 91184841
20

2010) (holding P.J. FITZPATRICK, INC. is not primarily merely a
surname because P.J. Fitzpatrick is an entire personal name).
In this case, the exclusive right to use the wording “LAW
GROUP” apart from the mark as shown was disclaimed in the
application. Applicant has even conceded on the record that the
phrase “LAW GROUP” can be generic. (Answer, Para. 18)
We find that “LAW GROUP” is a generic designation for a law
firm.15 There is extensive evidence on record that the term “LAW
GROUP” is a common designation for an entity comprised of a
group of lawyers that offer legal services. (Michele Ballard
Miller Dec., Paras. 1 & 3; Mitchell Miller Aff., Paras. 1, 5, 7;
Stan Miller Aff., Paras. 1, 5, 7; Gary Miller Aff., Paras. 1, 5,
7; Larry Miller Aff., Paras. 1, 5; Randy Miller Aff., Paras., 1,
5, 7; Russell Miller Aff., Paras. 1, 7)16 Applicant even states
that she does not object to other people using “LAW GROUP” and
that most people would understand the language as being a
designation for a law firm. (Opp. NOR, Exb. 5 at pp. 36-37)
The evidence referenced even demonstrates that it is common
practice in the legal profession to combine one’s surname (in
this case, the surname “MILLER”) with a designation that

15 The Board takes judicial notice of the Merriam-Webster’s Ninth New
Collegiate Dictionary definitions for the terms “law” and “group.” Notre
Dame du Lac, 213 USPQ 594.
16 In addition to the referenced evidence, applicant has entered into consent
to use and register agreements with three parties that use the surname MILLER
in connection with a generic designation such as “LAW GROUP,” “LAW OFFICES,”
and “LAW INC.” These consent agreements relate to the use of the term
MILLER, and are probative to the extent that they demonstrate the generic use
of “LAW GROUP.”
Opposition No. 91184841
21

identifies the practice as a legal service provider, such as
“LAW GROUP.”
Considered as a whole and in light of the preponderance of
the evidence, we find that applicant’s proposed MILLER LAW GROUP
mark is primarily merely a surname under Section 2(e)(4).
Acquired Distinctiveness
Section 2(e)(4) of Trademark Act precludes registration of
a mark which is “primarily merely a surname” on the Principal
Register without a showing of acquired distinctiveness under
Section 2(f) of the Act, 15 U.S.C. § 1052(f).17 The spirit and
intent behind the statutory policy that a surname is not
inherently distinctive and requires a showing that consumers
have come to recognize the surname as an indicator of source is
rooted in common law principles. See, e.g., Etablissements
Darty, 225 USPQ at 653 (“The statute . . . reflects the common
law that exclusive rights in a surname per se cannot be
established without evidence of long and exclusive use which
changes its significance to the public from a surname of an
individual to a mark for particular goods or services.)
(citation omitted); Kimberly-Clark Corp. v. Marball, 94 F. Supp.
254, 88 USPQ 277, 279 (D.D.C. 1950) ("‘the entire Act

17 While acquired distinctiveness was not raised in the pleadings, applicant
did raise the claim at trial and opposer also argued the claim in its reply
brief. Therefore, because the question of acquired distinctiveness has been
tried by implied consent of the parties, and the record includes sufficient
evidence to determine the question, the Board will rule on it.

Opposition No. 91184841
22

indicate[s] that Congress intended to codify the law of unfair
competition in regard to the use of personal names as it has
been developed by the courts. ... At common law it was held that
every man had an absolute right to use his own name.’")
Evidence of “long and exclusive use which changes its
significance to the public from a surname of an individual to a
mark for particular goods or services” is necessary because
surnames are shared by multiple individuals, and each individual
may have an interest in using his/her surname in connection with
his/her business. Section 2(f) underscored the common law by
requiring an applicant’s use to be “substantially” exclusive.
The record clearly establishes that both applicant and
opposer have an interest in using, and do in fact use, the
MILLER surname in connection with their respective legal
practices. Applicant’s evidence of use, which applicant also
relies upon in order to demonstrate that the applied for mark
has acquired distinctiveness, includes the following:
(i) Applicant’s continuous use of MILLER LAW GROUP since
August of 1998 through her licensee, Miller Law
Group, P.C. (Michele Ballard Miller Dec., Paras. 3,
6, Exb. A);

(ii) Significant growth in the gross revenues of Miller Law
Group, P.C. from 1999 through 2009 (Id., Para. 8,
Exb. B);

(iii) Expenditures of tens of thousands of dollars in
marketing efforts since the founding of Miller Law
Group, P.C. (Id., Paras. 9-11; Kostal Aff., Paras.
5, 8-9);
Opposition No. 91184841
23

(iv) Articles and publications on topics related to labor
and employment law authored by applicant and other
attorneys of Miller Law Group, P.C. (Michele Ballard
Miller Dec., Para. 13; Third Stip. Facts, Paras. 2,
7, 10, Exb. 2 at MBM000098, 100, 104-131); Third
Stip. Facts, Paras. 5-11, Exbs. 2, 6-7);

(v) Articles written about, featuring, or referencing
Miller Law Group, P.C. and its attorneys (Michele
Ballard Miller Dec., Para. 13; Third Stip. Facts,
Paras. 5-6, 8-9, 11, Exb. 5 at MBM000050, Exb. 2 at
MBM 000102, Exb. 6 at MBM000253, Exb. 2 at MBM00096,
Exb. 7 at MBM000667);

(vi) Speaking events and panel discussions, and related
materials, by applicant and other attorneys of
Miller Law Group, P.C. under the MILLER LAW GROUP
mark (Michele Ballard Miller Dec., Para. 13; Third
Stip. Facts, Paras. 23-44, Exbs. 18-19, Exb. 20 at
MBM000187, 841, Exb. 21 at MBM000208, 1434, Exb. 22
at MBM000243, 816, 819, Exb. 23, Exb. 24 at
MBM000678, Exb. 25 at MBM000132, 1498, Exb. 26 at
MBM000830-36, Exb. 27, Exb. 28 at MBM001162, Exb. 29
at MBM001370, Exb. 30 at MBM000594, 597, Exb. 31 at
MBM000797, 799, 152, Exb. 32 at MBM000683, 685, 687,
692, 151, Exb. 33 at MBM000171, Exb. 34 at
MBM000184, 1441, 1443, Exb. 35 at MBM000262-63, 265,
Exb. 36 at MBM000598, 601, 604, 1331, 1333, Exb. 37
at MBM000619, 621-22, 632, Exb. 9 at MBM001387);

(vii) Updates, alerts, and newsletters since 2000 to
clients and prospective clients on labor and
employment law developments (Michele Ballard Miller
Dec., Para. 14; Third Stip. Facts, Para. 20, Exb.
15);

(viii) Email blasts from Miller Law Group, P.C. to
thousands of clients, colleagues and prospective
clients located throughout the United States,
featuring the latest legal information, case law,
and general strategies within its area of expertise
(Michele Ballard Miller Dec., Para. 14);

(ix) Advertisements in various publications for legal
services under the MILLER LAW GROUP mark (Id., Para.
14; Third Stip. Facts, Para. 13-19, Exb. 2 at
Opposition No. 91184841
24

MBM000099, Exb. 9 at MBM001400, Exb. 10 at
MBM000005, Exb. 11 at MBM000009, Exb. 12 at
MBM000007, Exb. 13 at MBM000008);

(x) A monthly webinar series on current developments in
labor and employment law since 2005, invitations for
which are currently sent to over 7,500 individuals
and entities throughout the country and regularly
attended by over 500 persons (Michele Ballard Miller
Dec., Para. 15);

(xi) A clientele that includes large institutional and
Fortune 500 companies (Id., Para. 16);

(xii) Business of the firm from reputation in the legal
industry rather than from individual referrals (Id.,
Para. 16);

(xiii) Accolades and recognition of the Miller Law Group,
P.C. attorneys (Id., Para. 17);

(xiv) The involvement of Miller Law Group, P.C. in
organizations dedicated to increasing the reach and
recognition of women and minority owned companies
(Id., Para. 18);

(xv) Recognition in 2010 of Miller Law Group, P.C. as one
of the 100 fastest growing companies in the San
Francisco Bay Area (Id., Para. 20; Third Stip.
Facts, Paras. 12, Exb. 8);

(xvi) Promotion of Miller Law Group’s legal services on
its website (Third Stip. Facts., Exb. 39).

Opposer provides the following as evidence of its use of
MILLER and MILLER LAW GROUP in connection with its legal
services:
(i) Opposer is a professional corporation doing business
as Miller Law Group, P.C. in connection with legal
services continuously since January, 2007 (Mitchell
Miller Aff., Paras. 1, 8-9; Stip. Facts, Para. 1);

(ii) Use of Miller Law Group on opposer’s website in
connection with its legal services since September
Opposition No. 91184841
25

of 2007 (Mitchell Miller Aff., Paras. 17-18, Exb. B;
Stip. Facts, Para. 24, Exb. C; Third Stip. Facts,
Para. 47, Exb. 40, respectively);

(iii) Use of Miller Law Group on opposer’s signage,
business cards, letterhead, envelope, and email
signature in connection with its legal services
(Mitchell Miller Aff., Paras. 15, 19-20, Exbs. C, D;
Stip. Facts, Para. 25, Exb. D);

(iv) Use of Miller Law Group on a representative sample of
opposer’s marketing material that opposer
distributes at conferences, speaking engagements,
and trade shows in connection with its legal
services (Mitchell Miller Aff., Paras. 21-23; Stip.
Facts, Para. 26, Exb. E at MPM000126-27, 131, 134-
43, 145-46);

(v) Use of Miller Law Group on articles and publications
written by opposer’s principal between 2007 and 2010
in the area of its legal services (Mitchell Miller
Aff., Para. 24; Stip. Facts, Paras. 27-38, Exbs. F-
Q);

(vi) Use of Miller Law Group on alerts and newsletters
written by opposer’s principal and distributed to
opposer’s clients and professional contacts between
September of 2007 and November of 2010 (Mitchell
Miller Aff., Para. 25; Stip. Facts, Para. 39, Exb.
R);

(vii) Use of Miller Law Group on conference programs
listing opposer’s principal as a conference speaker
and/or moderator between November of 2007 and
September of 2010 (Mitchell Miller Aff., Para. 22;
Stip. Facts, Para. 40, Exb. S at MPM000079, 81, 83-
4, 87, 89-90, 93, 95, 100, 107, 110, 117);

(viii) Applicant’s cease and desist letter to opposer
(Stip. Facts, Para. 41, Exb. T).

Opposer has also provided evidence of third-party use of
MILLER in connection with legal services in the form of
testimony affidavits, discussed under the surname analysis.
Opposition No. 91184841
26

Based on the record, there are at least nine users, including
applicant and opposer, of the surname MILLER in connection with
legal services. Given that MILLER is the sixth most common
surname in the country as of Census 2000, and given that
evidence from the State Bar of California shows 274 “Active”
attorneys with the surname MILLER as of April 22, 2011, and 68
“Active” attorneys with the surname MILLER in San Francisco
alone as of November 21, 2010, (Mitchell Miller Aff., Exbs. I &
H, respectively) it is reasonable to presume that there are
additional legal practitioners that use MILLER in connection
with legal services, and that the record only reflects a small
sampling of those users.
Although applicant appears to have used the mark
continuously through her licensee since August 24, 1998, it is
clear from the record that applicant has not established that
her use of MILLER is substantially exclusive as required by
Section 2(f). Applicant has even acknowledged the use of MILLER
by three additional third parties with the surname MILLER
throughout the country, and has gone as far as to consent and
agree to their use and registration of the surname MILLER in
connection with their legal services. As stated by our primary
reviewing court:
In respect of registration, there must be a
trademark, i.e., purchasers in the marketplace
must be able to recognize that a term or
Opposition No. 91184841
27

device has or has acquired such
distinctiveness that it may be relied on as
indicating one source of quality control and
thus one quality standard. When the record
shows that purchasers are confronted with more
than one (let alone numerous) independent
users of a term or device, an application for
registration under Section 2(f) cannot be
successful, for distinctiveness on which
purchasers may rely is lacking under such
circumstances.

Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ
939, 940-41 (Fed. Cir. 1984). Moreover, applicant has not, and
it would appear cannot in good faith, submit a verified
statement with an affidavit or signed declaration under 37
C.F.R. § 2.20 that the mark has become distinctive of her legal
services through her “substantially” exclusive use in commerce.18
We conclude that applicant has not acquired distinctiveness
of the surname MILLER or of the proposed MILLER LAW GROUP mark
in connection with legal services.
In light of our finding on the surname claim and the
question of acquired distinctiveness, we find it unnecessary to
reach opposer’s remaining claims.
Decision: Opposition No. 91184841 is sustained on the
ground that the mark is primarily merely a surname and
applicant’s mark has not acquired distinctiveness.

18 Applicant has testified that she would not be concerned if third parties in
other geographic areas used MILLER LAW GROUP in connection with other areas
of legal practice. (Opp. NOR at Exb. 5, p. 44)