Pre-Paid Legal Services, Inc.

Trademark Trial and Appeal Board

Apr 24, 2017

No. 86423496 (T.T.A.B. Apr. 24, 2017)

Mailed:
April 24, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Pre-Paid Legal Services, Inc.
________

Serial No. 86423496
_______

Drew T. Palmer of Crowe & Dunlevy,
for Pre-Paid Legal Services, Inc.

Kathy Wang, Trademark Examining Attorney, Law Office 108
Andrew Lawrence, Managing Attorney.
_______

Before Ritchie, Lykos, and Greenbaum, Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Pre-Paid Legal Services, Inc. (“Applicant”) filed an application to register
on the Principal Register the mark PPL, in standard character format, for
services identified as “underwriting insurance against incurring legal fees,
namely providing underwriting insurance for pre-paid legal services,” in
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 86423496
2
International Class 36.1 The Trademark Examining Attorney refused
registration on the ground that the applied-for mark is merely descriptive of
the services pursuant to Section 2(e)(1) of the Trademark Act, 15 U.S.C. §
1052(e)(1). The Examining Attorney also requested information under
Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b). When the refusals were made
final, Applicant filed this appeal, which is fully briefed. For the reasons
discussed below, we affirm the refusals to register.
Mere Descriptiveness
A term is deemed to be merely descriptive of goods or services, within the
meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function, purpose or use of the
goods or services. See In re Chamber of Commerce of the U.S., 675 F.3d 1297,
102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Gyulay, 820 F.2d 1216,
3 USPQ2d 1009 (Fed. Cir. 1987)); see also In re Abcor Dev. Corp., 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978). Whether a term is merely
descriptive is determined not in the abstract, but in relation to the goods or
services for which registration is sought, the context in which it is being used
on or in connection with those goods or services, and the possible significance
that the term would have to the average purchaser of the goods or services
because of the manner of its use. That a term may have other meanings in

1 Serial No. 86423496, filed on October 14, 2014, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s assertion of a bona fide
intent to use the mark in commerce.
Ser. No. 86423496
3
different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591,
593 (TTAB 1979). Moreover, it is settled that “[t]he question is not whether
someone presented with only the mark could guess what the goods or services
are. Rather, the 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 USPQ2d 1314, 1316-17 (TTAB 2002). See also In re
Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998); In re
Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and
In re American Greetings Corporation, 226 USPQ 365 (TTAB 1985). On the
other hand, if a mark requires imagination, thought and perception to
ascertain the nature of the goods or services, then the mark is suggestive.
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd, 695 F.3d 1247, 103
USPQ2d 1753, 1755 (Fed. Cir. 2012) (citing In re Abcor Dev. Corp. 200 USPQ
215).
The Examining Attorney asserts that the term PPL is an acronym for
“pre-paid legal” which describes a feature or characteristic of Applicant’s
services, namely that Applicant offers underwriting insurance for “pre-paid
legal services.” We note that an acronym is considered merely descriptive
under the following circumstances:
1. The applied-for mark is an abbreviation or acronym for specific
wording;
2. The specific wording is merely descriptive of the applied-for goods or
services; and
3. The relevant consumers will recognize the abbreviation or acronym as
the merely descriptive wording it represents.
Ser. No. 86423496
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See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715-16 (TTAB 2011).
A. Whether PPL is an abbreviation or acronym for “pre-paid legal”?
The Examining Attorney has submitted evidence from AcronymFinder,
AllAcronyms, and TheFreeDictionary.com that PPL is an acronym for “Pre-
Paid Legal.”2 The record also contains webpages that reference PPL as an
acronym or abbreviation for “pre-paid legal,” including the following:
PPL Steve’s Blog: Listing of Pre-Paid Legal Provider Law Firms:
https://pplsteve.wordpress.com.3

EMMAcal: EmmaCal Prepaid Legal Plan: EMMACAL PPL is a
prepaid legal plan specifically designed to protect the rights of
medical marijuana patients in the State of California and
protect their legal use of MMJ as recommended by a physician.
http://emmacal.org.4

The LEAF online: I want my PPL (pre-paid legal):
http://theleafonline.com.5

Brooklyn College: Tax Information:
Box 14 – Other: Amounts to be reported: PPL – Prepaid Legal
Expense.
Pre-paid legal service: A pre-paid legal service is an individual
or group low-cost insurance provider for specific, limited legal
services (usually basic, but sometimes specialized) from
participating law firms and attorneys at costs considerably less
than independently hiring these providers. PPL services may be
provided on an ‘open’ basis, with a subscriber selecting
specialists relatively freely from a pool of participating
providers, . . .
Brooklyn.cuny.edu.6

We thus find that PPL is a recognized acronym for “pre-paid legal.”

2 February 9, 2015 Office Action, at 2 (acronymfinder.com), 8 (allacronyms.com);
March 24, 2016 Final Office Action at 14-15 (thefreedictionary.com).
3 September 1, 2015 Office Action, at 2.
4 September 1, 2015 Office Action, at 5.
5 September 1, 2015 Office Action, at 8.
Ser. No. 86423496
5
B. Whether “pre-paid legal” is merely descriptive of Applicant’s services?
Applicant argues that “pre-paid legal” will not be understood as
identifying its insurance services. However, the identification of services
specifies the provision of underwriting insurance for “pre-paid legal services.”
The Examining Attorney has also submitted a third-party webpage that
advertises PPL or “Prepaid Legal” as an insurance option:
Corporate Services: Employee Benefits Services: Prepaid Legal
(PPL/PPLS): Protect yourself, your business and your employees
against unforeseen litigious action at a fraction of the potential
cost. Pickering can consult with you to help you decide whether
you need minimal, general or specialized coverage, and find the
right partner.
http://pickeringinsurance.com.7

We thus find that “pre-paid legal” is merely descriptive of Applicant’s services
because it immediately conveys to prospective consumers a significant
feature of its underwriting insurance services.
C. Whether relevant consumers viewing PPL in connection with the
services would recognize it as an abbreviation of the term “pre-paid
legal”?
Applicant argues that the relevant consumers will not view PPL as
referring to “pre-paid legal” since there are other possible definitions of the
abbreviation or acronym. In particular, Applicant notes that there are 71
other meanings given for PPL on acronymfinder.com and 360 other meanings

6 March 24, 2016 Final Office Action, at 2-6.
7 March 24, 2016 Final Office Action, at 10-13.
Ser. No. 86423496
6
given for PPL on allacronyms.com.8 Applicant analogizes this to the case of
Baroness Small Estates, Inc. v. American Wine Trade, Inc., 104 USPQ2d
1224, 1230 (TTAB 2012 (CMS not merely descriptive of wine). In that case,
however, the Board found that in addition to the fact that a number of other
possible meanings were given for the acronym CMS, the letters did “not
directly and immediately convey the meaning of the three varietals” cabernet,
merlot, and syrah. Rather, “the process of recognizing that derivation
requires some thought, and that is the very essence of a suggestive mark.”
It is axiomatic that we must consider the applied-for mark in relation to
the services, and not in a vacuum. See In re Bright-Crest, Ltd., 204 USPQ at
593. In this regard, we find that the term PPL, when considered in relation to
the applied-for services, “underwriting insurance against incurring legal fees,
namely providing underwriting insurance for pre-paid legal services,”
conveys information about the services, namely that Applicant’s underwriting
insurance includes coverage for PPL or pre-paid legal services. See DuoProSS
Meditech Corp. v. Inviro Med. Devices, Ltd, 103 USPQ2d at 1755. Therefore,
we find that the proposed mark is merely descriptive of the identified
services, and we affirm this refusal to register.
Information Requirement
With the September 1, 2015 Office Action, the Examining Attorney issued
an information requirement, stating the following:

8 March 1, 2016 Response to Office Action, at 2, 10.
Ser. No. 86423496
7
Due to the descriptive nature of the applied-for mark, applicant
must provide the following information regarding the services
and wording appearing in the mark:

(1) Fact sheets, instruction manuals, brochures, advertisements
and pertinent screenshots of applicant’s website as it relates to
the goods and/or services. Merely stating that information about
the services is available on applicant’s website is insufficient to
make the information of record.

If these materials are unavailable, applicant should submit
similar documentation for services of the same type, explaining
how its own product or services will differ. If the services feature
new technology and information regarding competing services is
not available, applicant must provide a detailed factual
description of the services. Factual information about the goods
must make clear how they operate, salient features, and
prospective customers and channels of trade. For services, the
factual information must make clear what the services are and
how they are rendered, salient features, and prospective
customers and channels of trade. Conclusory statements will not
satisfy this requirement; and

(2) Applicant must respond to the following questions: are
applicant’s identified services offered in connection with a pre-
paid legal service? If so, please explain.

Applicant responded in the March 1, 2016 Response to Office Action as
follows:
Applicant believes that the examining attorney’s request for
information is advisory in nature and thus does not require a
response. To the extent a response is required, Applicant states
that the request is pre-mature as the applicant has not yet filed
an acceptable statement of use. At such time as a statement of
use becomes due, Applicant will provide any required
information.

Ser. No. 86423496
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Additionally, Applicant submits that the goods and services provided
in this application are underwriting insurance against incurring legal
fees, namely providing underwriting insurance for pre-paid legal
services, not legal expense services.

The information requirement was made final with the final office action.
Applicant reiterated in its appeal brief that it considered the information
requirement to be “advisory” and “pre-mature.”9
We note that “[t]he Office may require the applicant to furnish such
information … as may be reasonably necessary to the proper examination of
the application.” Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b). Applicant was
thus required to respond to the Examining Attorney’s proper request for
information under 37 C.F.R. § 2.61(b). See In re AOP LLC, 107 USPQ2d 1644,
1650 (TTAB 2013); See also In re Cheezwhse.com Inc., 85 USPQ2d 1917, 1919
(TTAB 2008) (information requirement proper in intent to use case); In re
DTI Partnership LLP, 67 USPQ2d 1699, 1701 (TTAB 2003). Instead,
Applicant’s response to the information requirement was insufficient and
evasive at best. This is an additional ground for refusal of the Application. Id.
at 1651 (information requirement not satisfied); cf. In re Emergency Alert
Sols. Grp., LLC., 122 USPQ2d 1088 (TTAB 2017) (information requirement
satisfied).
Decision: The Board affirms both refusals to register.

9 4 TTABVUE 16.