Proboknow, LLC

Trademark Trial and Appeal Board

Sep 14, 2016

No. 86790769 (T.T.A.B. Sep. 14, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: September 14, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Proboknow, LLC.
________

Serial No. 86790769
_______

Gene Bolmarcich of Law Offices of Gene Bolmarcich for Proboknow, LLC.

David I. Dubin, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop,
Managing Attorney).1
_______

Before Cataldo, Ritchie and Goodman,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Proboknow, LLC, seeks registration on the Principal Register of the
standard character mark PROBOKNOW for “Operating an online marketplace for
providers and consumers of free and affordable legal services” in International Class
35.2

1 The involved application was originally examined by a different Trademark Examining
Attorney, but was subsequently reassigned to this Examining Attorney after the appeal was
filed.
2 Application Serial No. 86790769 was filed on October 16, 2015, based on Applicant’s
allegation of a bona fide intent to use the mark in commerce.
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Applicant appeals from the final refusal of registration on the ground that the
applied-for mark is merely descriptive of the identified services. Trademark Act
Section 2(e)(1); 15 U.S.C. § 1052(e)(1). Applicant and the Trademark Examining
Attorney filed briefs on the issue under appeal.
We affirm.
I. Applicable Law
A term is merely descriptive if it immediately conveys knowledge of a significant
quality, characteristic, function, feature or purpose of the goods or services with
which it is used. See, e.g., In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102
USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009,
1009-10 (Fed. Cir. 1987). Whether a particular term is merely descriptive is
determined in relation to the goods or services for which registration is sought and
the context in which the term is used, not in the abstract or on the basis of guesswork.
In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle,
66 USPQ2d 1222, 1224 (TTAB 2002). In other words, the issue is whether someone
who knows what the goods or services are will understand the mark to convey
information about them. DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd.,
695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re Tower Tech, Inc., 64
USPQ2d 1314, 1316-17 (TTAB 2002). “On the other hand, if one must exercise mature
thought or follow a multi-stage reasoning process in order to determine what product
or service characteristics the term indicates, the term is suggestive rather than
merely descriptive.” In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d
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1778, 1780 (Fed. Cir. 2003); In re Tennis in the Round, Inc., 199 USPQ 496, 497
(TTAB 1978); In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983).
It has long been acknowledged that there is a thin line between terms that are merely
descriptive and those that are suggestive. See In re Atavio Inc., 25 USPQ2d 1361
(TTAB 1992).
II. Discussion
We begin our determination by considering the applied-for mark and the recited
services. Applicant’s applied-for mark is PROBOKNOW, identifying “Operating an
online marketplace for providers and consumers of free and affordable legal services.”
In support of the refusal of registration, the Examining Attorney made of record the
following dictionary definitions of pro bono:
law: involving or doing legal work for free; being, involving, or doing
professional and especially legal work donated especially for the public
good, pro bono work.3
4
The Examining Attorney further made of record the following screenshots from third-
party Internet websites. The following examples are illustrative:

3 February 9, 2016 Office action at 5-6. Merriam-webster.com.
4 Id. at 7-13. legalcareers.about.com.
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5

5 March 29, 2016 final Office action at 5.
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6
Applicant, for its part, made of record screenshots from its Internet website. These
include the following:
7

6 Id. at 7-8.
7 Applicant’s March 8, 2016 communication at 7.
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8
We turn then to the question of whether PROBOKNOW is descriptive of applicant’s
recited “Operating an online marketplace for providers and consumers of free and
affordable legal services.” We observe initially that, on this record, PROBOKNOW is
a novel spelling of the phonetically equivalent “pro bono.” The novel spelling of a mark
that is the phonetic equivalent of a merely descriptive word or term is also merely
descriptive if purchasers would perceive the different spelling as the equivalent of the
descriptive word or term. See In re Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ
355 (CCPA 1953) (holding “FASTIE,” phonetic spelling of “fast tie,” merely
descriptive of tube sealing machines); In re Carlson, 91 USPQ2d 1198 (TTAB 2009)
(holding “URBANHOUZING” phonetic spelling of “urban” and “housing,” merely

8 Id. at 8.
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descriptive of real estate services); In re State Chem. Mfg. Co., 225 USPQ 687 (TTAB
1985) (holding “FOM,” phonetic spelling of “foam,” merely descriptive of foam rug
shampoo).
As noted above, the Examining Attorney has made of record dictionary definitions
of the term comprising phonetic equivalents of applied-for mark. Based upon these
dictionary definitions, it is clear that the term “pro bono” merely describes legal
services provided to clients who are unable to pay. It is settled that “evidence [that a
term is merely descriptive] may be obtained from any competent source, such as
dictionaries, newspapers, or surveys.” See In re Stereotaxis, Inc., 429 F.3d 1039, 77
USPQ2d 1087, (Fed. Cir. 2005); and In re Bed & Breakfast Registry, 791 F.2d 157,
229 USPQ 818 (Fed. Cir. 1986). In addition, the Examining Attorney’s Internet
evidence indicates that “pro bono” is a well-recognized term in the field of law
describing legal work performed for the public good to clients who are unable to pay.
Furthermore, Applicant’s evidence from its Internet website indicates that the
services under its PROBOKNOW mark are provided for clients who “need legal help,
but can’t afford an attorney,” to inexperienced lawyers “trying to gain practical
experience,” and to experienced attorneys seeking to “make a difference.” Applicant’s
website also indicates that its services under the PROBOKNOW mark enable “new
attorneys to gain the experience they need by connecting them with those in need.”
Based upon this evidence, we find that PROBOKNOW will be recognized as a novel
spelling of the phonetic equivalent “pro bono,” and that PROBOKNOW merely
describes, without conjecture or speculation, a feature or characteristic of Applicant’s
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services, namely, operating an online marketplace for providers and consumers of
free and affordable, or pro bono, legal services. Prospective purchasers, upon
confronting the term PROBOKNOW for Applicant’s services, would immediately
perceive that the services are intended for providers and consumers of free, or pro
bono, legal services.
Applicant strenuously argues that PROBOKNOW will not be recognized as “pro
bono.” Rather, Applicant argues that “Far from being a merely descriptive term,
PROBOKNOW is a portmanteau of the terms “pro bono” and “knowledge”. As such it
can only be considered a suggestive term.”9 However, Applicant has provided no
evidence that consumers of its services, that is, attorneys and clients or potential
clients in need of low cost or free legal services, would recognize PROBOKNOW as a
combination of “pro bono” and “knowledge.” There is no evidence that “KNOW” will
be perceived by consumers as a shortened version of “knowledge,” either by itself or
in connection with the term “PROBO” or “pro bono,” nor is such a possible meaning
evident from the recitation of services or the manner in which the mark appears to
be used by Applicant in connection with its services. In any event, Applicant’s own
website uses the applied-for PROBOKNOW mark in a manner indicating its meaning
as a novel spelling of “pro bono,” and that a feature or function of Applicant’s services
is to provide knowledge of potential pro bono practitioners and clients. As a result,
even if the applied-for mark conveys “pro bono knowledge,” that meaning is no less

9 4 TTABVUE 4.
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descriptive than the meaning of “pro bono” as intended to be used in connection with
Applicant’s services.
Applicant further argues that the applied-for PROBOKNOW mark is suggestive.
For the sake of argument only, and in the alternative, Applicant submits
that even if the Board concludes that PROBOKNOW is the equivalent
of “pro bono”, it is nonetheless not merely descriptive of Applicant’s
services. While “pro bono” would of course be merely descriptive of legal
services per se, “legal services” are not the services for which Applicant
has applied.10

We agree with Applicant that “pro bono” is merely descriptive, if not generic, used in
connection with legal services, particularly provided to clients who are unable to pay.
Moreover, according to Applicant’s own website, its “Operating an online marketplace
for providers and consumers of free and affordable legal services” concerns
“connecting” attorneys (providers) able to provide free legal services with clients
(consumers) in need of free legal services. In other words, Applicant’s services under
its applied-for mark connect providers of pro bono legal services with consumers in
need thereof. As a result, PROBOKNOW immediately describes an essential function,
feature or characteristic of the identified services.
Applicant also argues in the alternative that its applied-for PROBOKNOW mark is
a double entendre. Applicant relies upon In re Tea and Sympathy Inc., 88 USPQ2d
1062 (TTAB 2008) (involving the mark “FARMACY”) and In re Grand Metropolitan
Foodservice Inc., 30 USPQ2d 1974 (TTAB 1994) (involving the mark “MUFFUNS”)
in support of its argument that

10 Id. at 5.
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The Board should feel confident in believing that the public would easily
recognize two meanings in PROBOKNOW. The first being “pro bono”
and the second being a telescoped word combining “pro bono” with the
word “know(ledge)”. Whether the latter is an existing word is irrelevant
as discussed above. All that matters is that consumers will clearly see
this “meaning” of the mark because “KNOW” is at least as recognizable
as ”FUN” in MUFFUNS and “FARM” in FARMACY.

However, to the extent that consumers may view PROBOKNOW as a combination of
“pro bono” and “knowledge,” the resulting meaning merely conveys a feature or
function of Applicant’s services, which is that Applicant offers knowledge of pro bono
services to providers and consumers. This does not constitute a double entendre.
Finally, in reaching our conclusion that Applicant’s applied-for mark is merely
descriptive, we have considered Applicant’s argument that “the Examining Attorney
did not use the TTAB’s standard three-pronged test”11 to determine whether a mark
is suggestive rather than descriptive: (1) the degree of imagination test, (2) the
competitors’ need test, and (3) the competitors’ use test. Applicant bases this
argument on No Nonsense Fashions Inc. v. Consolidated Foods Corp., 226 USPQ 502
(TTAB 1985). However, these “tests” were set out in an inter partes case in a
discussion of whether use of a term by third parties on their packaging detracted from
the plaintiff’s trademark rights. Thus, to the extent that Applicant is suggesting that
the Office must prove all three points, Applicant is incorrect. Since this decision
issued in 1985, there have been numerous decisions from the Court of Appeals for the
Federal Circuit and the Board making clear that the test for descriptiveness is
whether a term “immediately conveys knowledge of a quality, feature, function, or

11 Id. 6-7.
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characteristic of the goods or services with which it is used.” In re Chamber of
Commerce of the United States of America, 102 USPQ2d 1217, 1219 (fed. Cir. 2012),
citing In re Bayer Aktiengesellschaft, 82 USPQ2d at 1831, citing In re Gyulay, 820
F.2d 1216, 1217, 3 USPQ2d 1009 (Fed. Cir. 1987). Further, it is well established that
even if an applicant is the only user of a merely descriptive term, this does not justify
registration of that term. See In re BetaBattInc., 89 USPQ2d 1152, 1156 (TTAB 2008);
In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1087 (TTAB 2001); In re Acuson, 225
USPQ 790, 792 (TTAB 1985). Applicant’s arguments with respect to the lack of
evidence of third-party use of PROBOKNOW for its services goes to the particular
spelling of PROBOKNOW. We have already discussed why the misspelling of the
merely descriptive term “pro bono” does not make Applicant’s applied-for mark
registrable.
III. Conclusion
We have carefully considered all of the evidence and argument of record, including
any arguments and evidence not specifically discussed herein. We conclude that
Applicant’s mark, PROBOKNOW is merely descriptive of its identified services.
Trademark Act Section 2(e)(1).
Decision: The refusal to register under Section 2(e)(1) is AFFIRMED and
registration to Applicant is refused.