Simmons Browder Gianaris Angelides and Barnerd, LLCv.The Simmons Firm, ALC

Trademark Trial and Appeal Board

Feb 21, 2013

No. 91199120 (T.T.A.B. Feb. 21, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: February 21, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Simmons Browder Gianaris Angelides and Barnerd, LLC

v.

The Simmons Firm, ALC
_____

Opposition No. 91199120
_____

Joseph A. Saltiel of Jenner & Block LLP for Simmons Browder Gianaris Angelides
and Barnerd, LLC.

Cindy A. Brand of Law Offices of Cindy A. Brand for The Simmons Firm, ALC.
_____

Before Bucher, Cataldo and Greenbaum, Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:

The Simmons Firm, ALC (“applicant”) filed an application to register on the
Principal Register the mark below for “legal services” in Class 45:
1

1 Serial No. 85136767, filed September 23, 2010, claiming December 1, 2003 as the date of
first use of the mark anywhere, and January 5, 2004 as the date of first use of the mark in
commerce. No claim is made to the exclusive right to use the terms “Firm” and “Law
Corporation” apart from the mark as shown.
Opposition No. 91199120

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In the application, as originally filed, applicant claimed that the mark has
acquired distinctiveness “through the applicant’s substantially exclusive and
continuous use in commerce for at least the five years immediately before the date
of this statement,” under Section 2(f) of the Trademark Act. Applicant also owns
registrations residing on the Supplemental Register for the same stylized mark
sought to be registered herein (FIRM A LAW CORPORATION disclaimed) and the
standard character mark THE SIMMONS FIRM (FIRM disclaimed) for
“professional legal services” in Class 42.2
Registration has been opposed by Simmons Browder Gianaris Angelides and
Barnerd, LLC (“opposer”). As grounds for opposition, opposer alleges use since 1999
of the designation SIMMONS FIRM for legal services, and asserts that (1)
applicant’s mark is primarily merely a surname under Trademark Act § 2(e)(4), and
the mark has failed to acquire distinctiveness, (2) applicant’s mark is likely to cause
confusion with opposer’s prior used SIMMONS FIRM mark for legal services under
Trademark Act § 2(d), and (3) applicant’s claim of acquired distinctiveness, based on
substantially exclusive use for five years, is fraudulent. Opposer also asserted a
claim of dilution, which opposer did not pursue at trial and we thus deem waived.3
Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313, 1314 n.4 (TTAB

2 Registration Nos. 2956349 and 2956348, respectively, both registered May 24, 2005.
3 In any event, opposer improperly pleaded the claim by failing to allege that its mark
became famous prior to the filing date of the involved application. See Toro Co. v.
ToroHead Inc., 61 USPQ2d 1164, 1172-73 (TTAB 2001); Polaris Industries Inc. v. DC
Comics, 59 USPQ2d 1798 (TTAB 2000).
Opposition No. 91199120

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2005) (where opposer presented no arguments in its brief regarding the claim of
dilution, opposer is deemed to have waived the claim).
Applicant, in its answer, denied the salient allegations. Applicant also
asserted certain affirmative defenses, but only pursued at trial the sixth affirmative
defense, i.e., that the applied-for mark has acquired distinctiveness. As applicant
did not pursue the other affirmative defenses by motion or at trial, they are deemed
waived. See Research in Motion Limited v. Defining Presence Marketing Group Inc.,
102 USPQ2d 1187 (TTAB 2012) (affirmative defenses not pursued at trial deemed
waived). Applicant further asserted as “affirmative defenses” matters that are more
in the nature of amplifications of its denials and have been so construed.
The Record
By rule, the record includes the pleadings and the file history of the subject
application. Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b). By stipulation as
approved by the Board, the parties submitted all testimony by affidavit. During its
testimony period, opposer provided under its first Notice of Reliance the testimony
affidavits, with accompanying exhibits, of Greg Kirkland, opposer’s CEO, and John
S. Simmons, a third-party attorney; the applications, Office actions and Examiner’s
Amendments pertaining to applicant’s Supplemental Register registrations noted
above; applicant’s responses to opposer’s interrogatories nos. 1-16; and applicant’s
supplemental responses to opposer’s Interrogatory No. 3.
During its testimony period, applicant submitted under Notice of Reliance
the testimony affidavits of applicant’s principal, Ross G. Simmons, his father
Opposition No. 91199120

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William K. Simmons, and his brother William R. Simmons, as well as seven other
individuals who are present or former employees or clients of applicant, or are
personal friends of Ross G. Simmons. Applicant also provided the testimony
affidavit of Steven W. Winton, a member of the California Bar who practices in San
Diego.4
As rebuttal testimony, opposer submitted the testimony affidavits (with
accompanying exhibits) of John Simmons, opposer’s Chairman and Founder, Mark
Motley, opposer’s Vice President of Communications, and Greg Kirkland.
Both parties attached exhibits to their pleadings. Only those exhibits that
also were properly made of record during the respective party’s testimony period
have been considered. See Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90
USPQ2d 1112, 1116 (TTAB 2009), 37 C.F.R. § 2.122(c), and TBMP § 704.05 (October
2012).
Opposer and applicant filed main briefs on the case, and opposer filed a
rebuttal brief.
Admissibility of Evidence
Opposer filed a motion to strike all of the evidence, including the 11
testimonial affidavits, introduced by applicant. The Board deferred consideration of

4 The Board notes with approval the parties’ stipulation to testimony by affidavit and
applicant’s stipulation to the record as set forth in opposer’s brief. 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 (October 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. 91199120

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the motion until final decision. Opposer did not renew the motion or objections in
its main brief, but in its reply brief, opposer summarizes the arguments made in the
motion.
The Board is capable of weighing the relevance and strength or weakness of
the objected-to testimony and evidence in cases litigated before us, including any
inherent limitations, and this precludes the need to strike the testimony and
evidence. As none of the evidence is outcome determinative, we see no compelling
reason to discuss the objections in a detailed fashion. Suffice it to say, we have
considered all of the testimony and exhibits submitted by applicant. In doing so, we
have kept in mind opposer’s various objections, and we have accorded whatever
probative value the subject testimony and exhibits merit.
We also note Ross G. Simmons’ characterization of certain portions of Mr.
Kirkland’s testimony as “misstatements of fact” that are “fabricated”, and
containing matters “the law of perjury is supposed to be for.”5 While a party should
inform the Board when it believes there are problems with its adversary’s evidence,
it was not necessary for Mr. Simmons to level a charge of perjury against Mr.
Kirkland. In any event, opposer adequately addressed the underlying concerns by
way of the rebuttal affidavits of Mr. Kirkland and Mr. Motley, and there is no need
to further discuss the matter.

5 Ross G. Simmons Aff., ¶¶ 16, 23(a)-(d), and 24.
Opposition No. 91199120

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Standing
Opposer asserts that it has used the name the SIMMONS FIRM since at
least 1999 in connection with legal services, primarily focusing on mesothelioma
and asbestos litigation. While opposer acknowledges that it changed its official
name to SimmonsCooper, LLC in 2004, and to Simmons Browder Gianaris
Angelides and Barnerd, LLC in 2009, opposer’s CEO testified that opposer and
others use the name the SIMMONS FIRM to refer to opposer. In addition, the
testimony affidavit of opposer’s principal evidences that he is the “Simmons” in the
SIMMONS FIRM, and others refer to opposer as the SIMMONS FIRM or the
SIMMONS LAW FIRM. Moreover, applicant, in its answer, admits that opposer
began its “current usage” of the name SIMMONS FIRM in July 2009. Ans., ¶ 12.
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. In this case, opposer has
established that it has a commercial interest in using SIMMONS FIRM 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 name SIMMONS FIRM for those services. We find that
because opposer has demonstrated its usage and competitive need of the wording
comprising the SIMMONS FIRM 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
Opposition No. 91199120

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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 F.2d 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 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.”).
Surname Claim
Our primary reviewing court instructs that “[t]he 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 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).
In making this determination, we typically consider four factors: (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
Opposition No. 91199120

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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). In its brief, applicant concedes that the name SIMMONS, standing alone, is
primarily merely a surname. App. Br., p. 8. The record confirms this concession.
First, the record establishes that Simmons is the 103rd most common
surname in the United States, with 201,650 occurrences in the 2000 U.S. Census,
that there are approximately 60 practicing attorneys with the surname Simmons in
California, and approximately 20 in Illinois,6 and three other law firms in the
United States, including opposer, use SIMMONS to identify themselves. Opposer
also submitted the affidavit of John S. Simmons and attached website printouts for
the Simmons Law Firm (one of the three other law firms mentioned above), showing
that John S. Simmons uses his surname in connection with legal services. Second,
Simmons is the surname of Ross G. Simmons, applicant’s founder, principal and
sole shareholder. Third, there is no evidence in the record indicating that Simmons
is recognized as anything other than a surname.
As to the fourth, subjective, factor, we find that Simmons has the “structure
and pronunciation” or “the look and sound” of a surname. Benthin, 37 USPQ2d at
1333; In re Sava Research Corp., 32 USPQ2d 1380, 1381 (TTAB 1994); In re
Industrie Pirelli, 9 USPQ2d 1564, 1566 (TTAB 1988). As the 103rd most common
surname, consumers are conditioned to see SIMMONS as a surname. Moreover,

6 We note, however, that because applicant seeks registration of the mark at issue without
geographic restriction, our analysis is based upon evidence of the surname significance of
SIMMONS in the United States as a whole, regardless of either party’s area of use of its
respective mark(s).
Opposition No. 91199120

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SIMMONS “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).
Applicant’s argument turns on the fifth factor, namely, whether the
stylization is sufficiently distinctive to cause the applied-for mark not to be
perceived as primarily merely a surname. Benthin, 37 USPQ2d at 1334 (TTAB
1995). We find that this “decidedly subjective” factor favors opposer. Id.
The stylization of the logo -- where THE SIMMONS FIRM appears in script
lettering, the additional wording A LAW CORPORATION appears in capitalized
block letters below, and a horizontal line separates the script and block letters,
breaking around the letter “F” in FIRM -- does little to create a separate commercial
impression to purchasers of legal services other than that a person named Simmons
provides such services. See In re Pickett Hotel Co., 229 USPQ 760, 763 (TTAB 1986)
(“The style of lettering is also insignificant, in that it is clearly not so distinctive as
to create any separate commercial impression in the minds of purchasers of
appellant’s services.”). The stylization is minimal, and does not result in a mark
separate and apart from the literal elements. Id.
Moreover, as noted above, applicant initially registered the applied-for mark
on the Supplemental Register. As Section 23 of the Lanham Act prohibits
registration of inherently distinctive marks on the Supplemental Register,
applicant’s prior registration of the applied-for mark on the Supplemental Register
Opposition No. 91199120

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is an admission by applicant that the mark was not distinctive, at least at the time
of registration. See Quaker State Oil Refining Corp. v. Quaker Oil Corp., 453 F.2d
1296, 172 USPQ 361, 363 (CCPA 1972).7
In view of the foregoing, the applied-for mark as a whole would be perceived
by those who require or are involved in legal services primarily merely as a
surname—a surname that the principals of both parties share. 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.”). The
degree of stylization is simply insufficient for us to reach any other conclusion.
Accordingly, we find that applicant’s proposed mark is primarily merely a
surname under Section 2(e)(4).
Acquired Distinctiveness
Section 2(e)(4) of the Trademark Act precludes registration on the Principal
Register of a mark which is “primarily merely a surname” without a showing that
the applicant has acquired distinctiveness in the surname by virtue of
“substantially exclusive and continuous use” under Section 2(f) of the Act, 15 U.S.C.
§ 1052(f). “[E]vidence of long and exclusive use” can change the “significance to the
public from a surname of an individual to a mark for particular goods or services.”

7 In addition, the disclaimed wording “FIRM” and “LAW CORPORATION” in the
registration on the Supplemental Register and in the instant application have no
trademark significance with respect to applicant’s legal services, and do not diminish the
surname significance of the term SIMMONS. Applicant does not contend otherwise.
Opposition No. 91199120

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Établissements Darty et Fils, 225 USPQ at 653. Such evidence is necessary because
multiple individuals share surnames, and each individual may have an interest in
using his/her surname in connection with his/her profession. See Mitchell Miller, a
Professional Corp. dba Miller Law Group, P.C. v. Michele Ballard Miller, ___
USPQ2d ____ (TTAB 2013) (Opposition No. 91184841). This is particularly true in
the legal profession, because lawyers and law firms typically are identified by
surnames. Thus, registration of a surname for legal services “could hinder the
creation of new law firms . . . and the ability of individuals to practice law in their
chosen field without changing their names” – a result that would not be in the
public interest. J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 13:2 (4th ed. 2012). Accordingly, applicant bears a heavy burden in
establishing that it has acquired distinctiveness in the surname SIMMONS for
legal services.
Applicant submitted several types of evidence of its use of SIMMONS in the
form of the applied-for mark in connection with legal services. Applicant also relies
upon this evidence to demonstrate that the applied-for mark has acquired
distinctiveness. This evidence includes signage; newspaper advertisements in 2004;
business cards; fleece blankets; paperweights; shirts; banners; annual “sticky”
calendars distributed by several affiants; and use on applicant’s Facebook page.
The evidence also includes testimony affidavits from the individuals listed in the
description of the record, above, attesting to their recognition of the applied-for
mark as pointing to applicant’s legal services.
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Applicant’s evidence of acquired distinctiveness is minimal, and is, in fact,
significantly less in quantity and probative value than the unsuccessful applicant
provided in Miller. Unlike the applicant in Miller, applicant The Simmons Firm,
ALC provided no evidence regarding, for instance, its gross revenues; its marketing
expenditures or the results derived therefrom; advertisements in publications after
the 2004 “grand opening”; radio or television advertisements; articles or
publications on topics related to transactional law authored by Ross G. Simmons or
any attorneys of The Simmons Firm, ALC; articles written about, featuring or
referencing Ross G. Simmons or The Simmons Firm, ALC and its attorneys;
speaking events, panel discussions or webinars featuring Ross G. Simmons or other
attorneys of The Simmons Firm, ALC under the applied-for mark; or updates,
alerts, newsletters or email blasts to clients, prospective clients or colleagues
featuring legal updates within applicant’s area of expertise.
In addition, as was the case in Miller, the record clearly establishes that
opposer and others with the surname SIMMONS have an interest in using, and do
in fact use, the SIMMONS surname in connection with their respective legal
practices. Opposer’s evidence of its use of the name “Simmons Firm” in connection
with legal services includes the testimony affidavits of applicant’s CEO and
applicant’s principal; signage; promotional materials; Articles of Organization as
“Simmons Firm, L.L.C.” in 1999; an application with, and approval from, the Illinois
Secretary of State to adopt the business name “Simmons Firm” in 2009; and use of
Opposition No. 91199120

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the name in connection with opposer’s charitable activities including the Simmons
Employee Foundation and the Simmons Cancer Institute.8
Opposer has also provided the testimony affidavit of John S. Simmons, who
attests to having continuously used the name “Simmons Law Firm” in connection
with legal services since August 2003. Further, in response to opposer’s
Interrogatory No. 4, which asked applicant to identify other law firms that use the
surname Simmons to promote their legal services, applicant identified the same
John S. Simmons, and the Simmons and Simmons law firm of Greenville, MS.
Based on the record, there are at least four users, including applicant and opposer,
of the surname SIMMONS in connection with legal services in the United States.
The record also shows that SIMMONS is the 103rd most common surname in the
country as of Census 2000, and there are approximately 60 attorneys with the
surname SIMMONS in California, and approximately 20 in Illinois. Thus, as in
Miller, supra, it is reasonable to presume that there are additional legal
practitioners who use SIMMONS in connection with legal services, and that the
record only reflects a small sampling of those users.
Although applicant appears to have used the applied-for mark continuously
in commerce since 2004, applicant has not established that its use of SIMMONS in
connection with legal services is substantially exclusive as required by Section 2(f).
As our primary reviewing court stated:

8 Because of the ultimate disposition of this proceeding, we have no need to address
opposer’s Section 2(d) claim, or applicant’s affirmative defenses or arguments in relation
thereto. We therefore make no determination as to the whether such use continued during
the 2004 to mid-2009 period, when opposer’s official name was SimmonsCooper, LLC.
Opposition No. 91199120

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In respect of registration, there must be a trademark, i.e.,
purchasers in the marketplace must be able to recognize
that a term or 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).
We conclude that applicant has not acquired distinctiveness of the surname
SIMMONS, in connection with legal services.

Decision: Opposition No. 91199120 is sustained on the grounds that the
applied-for mark is primarily merely a surname under Trademark Act Section
2(e)(4), and that it has not acquired distinctiveness under Trademark Act Section
2(f).9

9 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.