Sutkowski & Washkuhn Ltd.

Trademark Trial and Appeal Board

Jul 31, 2002

No. 75643089 (T.T.A.B. Jul. 31, 2002)

Mailed: July 31, 2002
Paper No. 17
ejs

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re Sutkowski & Washkuhn Ltd.
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Serial No. 75/643,089
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Steven P. Oates for Sutkowski & Washkuhn Ltd.

Darlene D. Bullock, Trademark Examining Attorney, Law
Office 111 (Craig Taylor, Managing Attorney).
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Before Seeherman, Quinn and Drost, Administrative Trademark
Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Sutkowski & Washkuhn Ltd. has appealed from the final
refusal to register BUSINESS LAWFIRM, in the stylized form
shown below, and with a disclaimer of the words BUSINESS
LAW FIRM, for “legal services.”1 The letters in the word

1 Application Serial No. 75/643,089, filed February 16, 1999,
and asserting first use and first use in commerce on
September 22, 1998.

THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser No. 75/643,089
2
“business” appear in the color blue. Registration has been
refused pursuant to Section 2(e)(1) on the ground that the
mark is merely descriptive of the services.
Applicant and the Examining Attorney have filed appeal
briefs. An oral hearing was not requested.
Before we reach the substantive issue, we must provide
some background regarding the examination of this
application. The initial drawing filed by applicant showed
the stylized mark depicted above, but with the word
BUSINESS superimposed over five horizontal lines.
Applicant had intended these lines to indicate that the
word BUSINESS was depicted in the color blue, but because
this was not the proper manner in which to show color
lining, the Examining Attorney understood the mark to be
the words BUSINESS LAW FIRM with a design consisting of
horizontal lines. It was not until the Examining Attorney
received applicant’s appeal brief that she learned the
actual nature of applicant’s mark, a fact which she
acknowledged in her appeal brief. At that point the file
was transmitted to the Board for a decision on the appeal,
but because of the confusion about the nature of the mark
Ser No. 75/643,089
3
during examination, the Board remanded the application to
address such questions as the adequacy of the drawing,
description of the mark, and adequacy of the specimens.
The Examining Attorney then issued an Office action in
which, inter alia, she withdrew her acceptance of the
applicant’s disclaimer of BUSINESS LAW FIRM, stating that
such a disclaimer would result in the disclaimer of the
mark as whole, and that an entire mark may not be
disclaimed. Applicant argued against this withdrawal in
its response to the Office action, and it appears that the
argument was successful, because in the following action
the Examining Attorney did not mention the disclaimer at
all, and with respect to the refusal, stated only that “the
final refusal to register under Section 2(e)(1) is
maintained and the file is returned to the Trademark Trial
and Appeal Board for resumption of the appeal.” Action
mailed July 1, 2002.
That is the current posture of the case. Because the
only issue on appeal is whether the stylized mark is merely
descriptive, and that issue was previously briefed, we have
not found it necessary to allow supplemental briefing.
This brings us to the question of whether applicant’s
mark, BUSINESS LAW FIRM in stylized format, is merely
descriptive of legal services. There is no question that
Ser No. 75/643,089
4
the words BUSINESS LAW FIRM are merely descriptive of these
services. Applicant has conceded this by its disclaimer of
the words BUSINESS LAW FIRM. Indeed, applicant has
insisted on the disclaimer of these words. In any event,
the Examining Attorney has submitted substantial evidence
that “business law firm” is a merely descriptive, if not a
generic term, for legal services. See, for example, the
following excerpts taken from the NEXIS database:
Alan G. Churchmack has joined the
Cleveland business law firm and will
practice employment law and real
estate.
“The Plain Dealer,” March 23, 2000

The business law firm of Litow, Cutler
& Zabludowski opened a law office....
“Sun-Sentinel (Fort Lauderdale, FL),”
March 20, 2000

Duckson & Carlson LLC, Minneapolis, a
business law firm....
“Star Tribune (Minneapolis, MN),”
March 19, 2000

Applicant argues, however, that its mark includes a
distinctive design, namely, “the three words ‘business law
firm’ are written all as one word, with a distinctive font
design and color for the letters ‘business.’” Brief, p. 4.
It is true that when words which are merely descriptive,
and hence unregistrable, are presented in a distinctive
design, the design may render the mark as a whole
registrable, provided that the words are disclaimed. In re
Ser No. 75/643,089
5
Clutter Control, Inc., 231 USPQ 588 (TTAB 1986), and cases
cited therein. The question thus becomes whether the
manner in which these descriptive words are depicted is so
unique that the mark as a whole is inherently distinctive,
that is, whether the features of the display are of such a
nature that they would inherently serve to distinguish the
mark in its entirety. See In re Pollio Dairy Products
Corp., 8 USPQ2d 2012 (TTAB 1988). Unique in this sense
does not mean one and only, but means highly unusual or
extraordinary. See In re E S Robbins Corp., 30 USPQ2d 1540
(TTAB 1992).
We find that the stylization of applicant’s mark is
not sufficient to render the mark as a whole inherently
distinctive. The lettering in applicant’s mark, and the
fact that the word BUSINESS is shown in blue, does not make
the stylization highly unusual. Even applicant does not
argue that the type font in which the generic term LAW FIRM
is shown, an ordinary italic font, is distinctive.
Although the word BUSINESS is in a different font, and in
the color blue, neither this font nor color is unusual
enough to make a striking commercial impression. Nor does
running together the words BUSINESS LAW FIRM into
BUSINESSLAWFIRM serve to change this merely descriptive if
not generic term into a suggestive mark. Certainly the
Ser No. 75/643,089
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stylization of applicant’s mark does not rise to the level
of distinctiveness found in the Clutter Control case, in
which the Board pointed to the tube-like rendering of the
letter C in CONSTRUCT-A-CLOSET, with each “C” creating an
enclosure for the rest of the letters forming each word.
Finally, applicant points out that after it filed its
response to the first Office action, the application was
approved for publication, but that this determination was
reconsidered two weeks later. This initial determination
of registrability by the Examining Attorney has no
persuasive value to us, particularly given that at the time
the determination was made, the Examining Attorney was
unaware of what applicant’s actual mark was.
Decision: The refusal of registration is affirmed.