Pre-Paid Legal Services, Inc.

Trademark Trial and Appeal Board

May 11, 2017

No. 86423483 (T.T.A.B. May. 11, 2017)

Mailed:
May 11, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Pre-Paid Legal Services, Inc.
________

Serial No. 86423483
_______

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 “business administration of legal expense plan services,
namely, arranging certain legal services covered by a membership contract
for a member through a provider or referral third-party attorneys; arranging
and conducting incentive or reward programs to promote the sale of pre-paid
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 86423483
2
legal expense plans,” in International Class 35.1 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). When the refusal was made final,
Applicant filed this appeal, which is fully briefed.
Preliminary Issue
We note that the statement from the Examining Attorney was filed nearly
three weeks late, as it was due on March 5, 2017 and filed on March 23. The
Examining Attorney acknowledges the tardiness of the brief and asks in the
brief that the lateness be excused based on a “scheduling mistake.”2 In
particular, the Examining Attorney notes that Applicant had at the time
three similar applications pending for the same mark, all of which were
appealed at varying times.
We note that the Examining Attorney did not file a separate extension of
time. See TBMP § 1203.02(d) (Jan. 2017). Nonetheless, as noted in that
section, an extension of time may be granted by the Board “upon written
request showing good cause for the requested extension.” Although the
Examining Attorney’s brief was filed three weeks late, we find the excuse of
docketing error to constitute good cause.

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.
2 6 TTABVUE 3.
Ser. No. 86423483
3
Although Applicant observes in its reply brief the lateness of the
Examining Attorney’s brief, Applicant does not appear to specifically object to
our acceptance thereof, but rather cautions that “A late-filed brief by the
Examining Attorney may be excluded in the absence of an adequate
explanation for the late filing,”3 citing TBMP § 1203.02(b). Furthermore,
Applicant asks on reply that to the extent the Examining Attorney’s brief has
“considered and relied on all evidence provided in Applicant’s Brief” we thus
“treat all evidence as of record.”4 We agree and have considered all evidence
in the record.
Finally, we note that even if we had not considered the Examining
Attorney’s brief, in accordance with our practice, we would proceed to
consider the merits of the refusal. See TBMP § 1203.02(b). In re Tennessee
Walking Horse Breeders’ and Exhibitors’ Association, 223 USPQ 188, 188 n.3
(TTAB 1984) (In finding Examining Attorney’s statement to be untimely
submitted without cause, the Board did not consider it, but proceeded to
consider the merits of the case and to affirm the refusal). In this case, we
would reach the same result. We thus affirm the refusal 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

3 7 TTABVUE 2 n.1.
4 7 TTABVUE 2-3 n.3.
Ser. No. 86423483
4
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
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
Ser. No. 86423483
5
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 arranges legal services and reward programs
in the nature of “pre-paid legal expense plans.” 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.

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.”5 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.6

EMMAcal: EmmaCal Prepaid Legal Plan: EMMACAL PPL is a
prepaid legal plan specifically designed to protect the rights of

5 Attached to February 9, 2015 Office Action, at 2 (acronymfinder.com), 8
(allacronyms.com); March 24, 2016 Office Action at 2 (thefreedictionary.com).
6 Attached to September 1, 2015 Office Action, at 2.
Ser. No. 86423483
6
medical marijuana patients in the State of California and
protect their legal use of MMJ as recommended by a physician.
http://emmacal.org.7

The LEAF online: I want my PPL (pre-paid legal):
http://theleafonline.com.8

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.9

We thus find that PPL is a recognized acronym for “pre-paid legal.”
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 services. However, the identification of services specifies the
provision of business administration and reward services specifying “pre-paid
legal services.” The Examining Attorney has also submitted a third-party
webpage that advertises the administration of PPL or “Prepaid Legal”:
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.

7 Attached to September 1, 2015 Office Action, at 5.
8 Attached to September 1, 2015 Office Action, at 8.
9 Attached to March 24, 2016 Office Action, at 15-16.
Ser. No. 86423483
7
http://pickeringinsurance.com.10

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 business administration and reward 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
given for PPL on allacronyms.com.11 In particular, Applicant refers to
evidence it submitted showing that “pre-paid legal” is not a common or
popular definition of PPL on either of those sites, referencing 0 out of 5 stars
on acronymfinder.com and “a 15 ‘thumbs up/thumbs down’ ranking” on
allacronyms.com.12
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

10 Attached to March 24, 2016 Office Action, at 11-14.
11 Attached to March 1, 2016 Response to Office Action, at 3, 10.
12 4 TTABVUE 9-10. See also March 1, 2016 Response to Office Action, at 5, 10.
Ser. No. 86423483
8
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 addition to the evidence noted above, the Examining Attorney
submitted the following:
Fry’s Equine Insurance: Prepaid Legal Services (PPL) is a
service you purchase for a low monthly cost (less than $15 a
month in most states) that affords you an attorney when you
need one.
frysequineinsurance.com.13

Considering the evidence as a whole, we find that the term PPL, when
considered in relation to the applied-for services, “business administration of
legal expense plan services, namely, arranging certain legal services covered
by a membership contract for a member through a provider or referral third-
party attorneys; arranging and conducting incentive or reward programs to
promote the sale of pre-paid legal expense plans,” includes services featuring
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 the
refusal to register under Section 2(e)(1).

13 Attached to October 12, 2016 Final Office Action, at 2.
Ser. No. 86423483
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Decision: The Board affirms the refusal to register.