The Lex Group VA

Trademark Trial and Appeal Board

Aug 28, 2009

No. 76665046 (T.T.A.B. Aug. 28, 2009)

Hearing: Mailed:
21 July 2009 28 August 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Lex Group VA
________

Serial No. 76665046
_______

Edward A. Pennington of Hanify & King, P.C. for The Lex
Group VA.

David E. Tooley, Jr., Trademark Examining Attorney, Law
Office 112 (Angela Wilson, Managing Attorney).
_______

Before Quinn, Bucher, and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On August 23, 2006, applicant The Lex Group VA, a
Virginia corporation, applied to register the mark E-LEX in
standard character form on the Principal Register for
services ultimately identified as: “Litigation support
services for attorneys provided via an electronic network
with court-specific consultation on the rules and
implementation of procedures for filing electronically” in
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Ser. No. 76665046
2
Class 42. Serial No. 76665046. The application is based
on an allegation of a bona fide intent to use the mark in
commerce.
The examining attorney has refused to register
applicant’s term on the ground that the mark is merely
descriptive for the identified services under Section
2(e)(1) of the Trademark Act. 15 U.S.C. § 1052(e)(1).
The examining attorney held the mark to be merely
descriptive because:
The letter ‘e’ used as a prefix has become commonly
recognized as a designation for services that are
electronic in nature or are sold or provided
electronically. In this case, applicant’s
identification of services indicates that its services
are delivered “via an electronic network.”

The term “lex” is an English word meaning “law.”

[A]pplicant’s services are for lawyers in assisting in
legal contests or, more broadly, law or legal
services.

[T]he attorney consumers will immediately recognize
that applicant provides law or legal services via
electronic means.

Brief at unnumbered pp. 3, 6, and 8.
On the other hand, applicant maintains that:
Despite the examining attorney’s reliance on
definitions of “lex” as simply “law,” neither the
applied-for service nor the intended customer base is
“law.”

The services are complex and court-specific filing
assistance – helping attorneys ensure that filings are
in compliance with the particular and unique
Ser. No. 76665046
3
electronic submission requirements of various courts
and jurisdictions.

No definition offered by the examining attorney
included any mention of electronic filing, submission
assistance, or rule compliance…

[T]he applied-for services are not solely electronic;
rather, there is a human element to the filing
services.

Brief at 2 - 5.
After the examining attorney made the refusal final,
applicant filed a request for reconsideration and a notice
of appeal. A hearing was held on July 21, 2009.
For a mark to be merely descriptive, it must
immediately convey “knowledge of a quality, feature,
function, or characteristics of the goods or services.” In
re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828,
1831 (Fed. Cir. 2007). See also In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); In re Quik-
Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507
(CCPA 1980). Courts have long held that to be “merely
descriptive,” a term need only describe a single
significant quality or property of the goods. Gyulay, 3
USPQ2d at 1009; Meehanite Metal Corp. v. International
Nickel Co., 262 F.2d 806, 120 USPQ 293, 294 (CCPA 1959).
While we must consider the mark in its entirety, “[i]t is
perfectly acceptable to separate a compound mark and
Ser. No. 76665046
4
discuss the implications of each part thereof … provided
that the ultimate determination is made on the basis of the
mark in its entirety.” In re Hester Industries, Inc., 230
USPQ 797, 798 n.5 (TTAB 1986).
The examining attorney submitted numerous definitions
to support his position that the terms “e-” and “lex” are
descriptive of applicant’s services.
1. “e-”
- electronic data transfer via the internet.
MSN Encarta

- Computer or computer: e-cash; e-zine
Bartleby.com

- abbreviation for electronic
http://dictionary.cambridge.org

- electronic
Merriam-Webster’s Online Dictionary1

2. Lex

- Law
Merriam-Webster Online

- Law
Bartleby.com

- Law
The American Heritage Dictionary of the English
Language

1 “The Board may take judicial notice of online reference works
which exist in printed format or have regular fixed editions.”
In re Dietrich, 91 USPQ2d 1622, 1631 n. 15 (TTAB 2009) (Board
took judicial notice of the Merriam-Webster Online Dictionary).
See also Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d
1581, 1590 n.8 (TTAB 2008) (same).
Ser. No. 76665046
5
To these definitions, we add another definition of
“Lex” as “Law.” The Random House Dictionary of the English
Language (unabridged) (2d ed. 1987). We also take judicial
notice of this definition. University of Notre Dame du Lac
v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB
1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
We also point out that the term “e-” has been found to
be a term that simply describes the fact that the goods or
services are associated with the internet. In re
International Business Machines Corp., 81 USPQ2d 1677, 1679
(TTAB 2006) (“We find that in the context of applicant’s
identified goods, which fall within the definition of a
‘server,’ and in light of the term SERVER in applicant's
mark, the ‘E’ in ESERVER would be perceived as a prefix
standing for ‘electronic,’ and identify a server involved
with the Internet”) and In re Styleclick.com Inc., 57
USPQ2d 1445, 1447 (TTAB 2000) (“[T]he term E FASHION
immediately describes, without conjecture or speculation, a
significant characteristic or feature of the goods and/or
services, namely, that they involve retrieving fashion
information and/or shopping for fashions electronically via
software and retail websites on the Internet. To consumers
for applicant’s goods and/or services, there is nothing in
the term E FASHION which, in the context of such goods
Ser. No. 76665046
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and/or services, would be ambiguous, incongruous or
susceptible to any other plausible meaning”).
The examining attorney also submitted evidence of the
use of the term “e-” to refer to services performed on the
internet. See www.amazon.com (e-counsel: The Executive
Legal Guide to Electronic Commerce); www.e-law.com (eLaw
The Easier Way to Practice Law; eWatch – Alerts you of
dates and changes to your cases; eDocket – High-speed
advanced searching; eServe/eFile – Safe, secure electronic
exchange of documents; eCopy – Get copies of court
documents; eCalendar – View your future court dates).
Furthermore, we note that the addition of the hyphen
is not significant. In re Vanilla Gorilla, L.P., 80 USPQ2d
1637, 1640 (TTAB 2006) (“[T]he addition of hyphens to
marks, as in this case [“3-0’S”], has not been successful
in changing the descriptive nature of the term”); In re
S.D. Fabrics, Inc., 223 USPQ 54, 55 (TTAB 1984) (presence
of slash in the mark “designers/fabric” does not negate
mere descriptiveness of mark).
Applicant’s services involve providing “litigation
support services for attorneys provided via an electronic
network.” The letter “e-” would inform prospective
consumers its services are provided electronically through
the internet. Also, inasmuch as its services are directed
Ser. No. 76665046
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to attorneys for litigation support services, the term
“lex” would describe the fact that applicant is providing a
type of legal or law-related services. The examining
attorney points out that “litigation” means “to contest at
law.” Brief at 6.
We must consider not only the meaning of the
individual terms but the mark as a whole because the
combined terms may have a non-descriptive meaning. See In
re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA
1968) (SUGAR & SPICE not merely descriptive of bakery
products inasmuch as it is suggestive of a nursery rhyme).
Also, we must determine whether a mark is merely
descriptive of a mark by considering the mark in relation
to the particular services for which registration is sought
and not in the abstract. In re Abcor Dev. Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978) (“Appellant’s abstract
test is deficient – not only in denying consideration of
evidence of the advertising materials directed to its
goods, but in failing to require consideration of its mark
‘when applied to the goods’ as required by statute”).
Here, the combined term “E-LEX” does not have any unique
meaning that would be different from the individual terms
when used in association with applicant’s litigation
support services. It would merely inform prospective
Ser. No. 76665046
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purchasers that applicant provides a type of “law or legal
services via electronic means.” Examining Attorney’s Brief
at 8.
Applicant argues that there are “many other marks
containing the word ‘LEX’ [that] have been registered for
the provision of law-related goods and services.” Brief at
5.2 These registrations do not persuade us that applicant’s
mark is not merely descriptive.
First, we are required to consider the descriptiveness
in the context of the record in this case.
Even if some prior registrations had some
characteristics similar to Nett Designs’ application,
the PTO’s allowance of such prior registrations does
not bind the Board or this court.

Needless to say, this court encourages the PTO to
achieve a uniform standard for assessing
registrability of marks. Nonetheless, the Board (and
this court in its limited review) must assess each
mark on the record of public perception submitted with
the application. Accordingly, this court finds little
persuasive value in the registrations that Nett
Designs submitted to the examiner or in the list of
registered marks Nett Designs attempted to submit to
the Board.

In re Nett Designs Inc., 236 F.2d 1229, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001). See also In re Hotels.com L.P., 87
USPQ2d 1100, 1108 (TTAB 2008), aff’d, ___ F.3d ___, 91

2 While these registrations were submitted with applicant’s
brief, the examining attorney has not objected to them and he has
discussed them in his brief (p.7). Therefore, we will consider
them to be of record. In re Litehouse Inc., 82 USPQ2d 1471, 1475
n.2 (TTAB 2007) and TBMP § 1207.03 (2d ed. rev. 2004).
Ser. No. 76665046
9
USPQ2d 1532 (Fed. Cir. 2009) (“Nor do these third-party
registrations establish that there is an Office practice
holding such marks are generally registrable”).
Secondly, the registrations that applicant submitted
do not tell a consistent story. In one, LEX MUNDI, the
term “Lex” is disclaimed. No. 1610249. In another, LEX
MUNDI THE WORLD’S LEADING ASSOCIATION OF INDEPENDENT LAW
FIRMS and design, the term is not disclaimed. No. 3128878.
Many registrations include the word LEX, with a translation
for the word, and an English word. Nos. 20267392, 2955791,
and 3128878. It has been held that “the doctrine [of
foreign equivalents] does not apply when a mark is a
combination of foreign and [E]nglish words.” French
Transit Ltd. v. Modern Coupon Systems Inc., 818 F. Supp.
635, 29 USPQ2d 1626, 1626 (S.D.N.Y. 1993) (LE CRYSTAL
NATUREL for body deodorant is suggestive). Two other
registrations are for compressed terms that apparently
contain non-descriptive elements. See Nos. 1379763
(LEXSEE) and 3192723 (LEXWORK INTERNATIONAL). Thus, the
fact that there are two registrations for the mark LEX
SOLUTIO for legal document management services and legal
support services (Nos. 2668467 and 2720634) hardly
demonstrates that applicant’s mark is not descriptive. “It
is well settled that each case must be taken on its own
Ser. No. 76665046
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facts.” In re Sun Microsystems Inc., 59 USPQ2d 1084, 1087
(TTAB 2001). See also In re Best Software Inc., 63 USPQ2d
1109, 1113 (TTAB 2002).
In the present case, the evidence shows that the term
LEX is an English term and it is combined with the English
language abbreviation for electronic. The mark immediately
informs consumers that the services involve legal work that
is performed over the internet. Therefore, the
registrations that applicant has submitted do not rebut the
examining attorney’s evidence that shows that applicant’s
mark is merely descriptive.
Applicant also argues that its “services are complex
and court-specific filing assistance - helping attorneys
ensure that filings are in compliance with the particular
and unique submission requirements of various courts and
jurisdictions. The applied-for services, as explained in
the application, are not general legal assistance (as may
be suggested by the mark), but rather a very specific type
of electronic filing rule compliance.” Brief at 3.
However, we note that the refusal here is not that
applicant’s mark is the name of the services. The question
before us is whether the mark describes a significant
feature of the services. Thus, while the term “lex” is
descriptive of a broad range of legal services, it
Ser. No. 76665046
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nonetheless provides significant information about
applicant’s services, i.e., that they are electronic legal-
related services. In re Intelligent Instrumentation Inc.,
40 USPQ2d 1792, 1795 (TTAB 1996) (“Any computer program,
including applicant’s, which has as a basic function or
purpose the creation of new or customized programs for
controlling the acquisition of data from measurement
devices is thus aptly described as a visual design program
or, more simply, a ‘visual designer’”). See also In re Box
Solutions Corp., 79 USPQ2d 1953, 1956 (TTAB 2006) (“In the
context of computer goods [computer hardware, namely,
communications servers], SOLUTIONS is a term that is used
to describe the purpose of the computer to resolve a
problem. In view thereof, we find that SOLUTIONS is
descriptive of applicant’s goods and that the required
disclaimer is appropriate”).
Also, the fact that the term “e-” and “lex” can have
more than one meaning does not mean that they are not
merely descriptive when they are applied to applicant’s
services. In re Polo Int’l Inc., 51 USPQ2d 1061, 1063
(TTAB 1999) (“If applicant produced goods related to the
medical field, or specifically related to physicians, then
the term ‘DOC’ would be readily understood by the public as
referring to ‘doctor.’ However, here applicant’s goods are
Ser. No. 76665046
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computer software for document management, and ‘DOC’ will
be readily understood as referring to documents”). When we
look at these terms in the context of applicant’s services,
attorneys (to whom applicant’s services are directed) will
understand that applicant’s mark merely describes a feature
of these services. Finally, applicant maintains its
services “are not solely electronic, rather, there is a
human element to the filing services.” There is no
requirement that “electronic” services performed on the
internet must be performed without human involvement.
Indeed, the now classic term “email”3 involves messages,
often created by human beings, sent over the internet.
Thus, even if applicant’s services involve some human
involvement, it would hardly mean that the term is not
merely descriptive.
We conclude that when the mark E-LEX is used on
litigation support services for attorneys provided via an
electronic network with court-specific consultation on the
rules and implementation of procedures for filing
electronically, it would immediately describe the fact that
applicant’s services are legal services that are performed

3 Email – “electronic communication.” The American Heritage
Student Dictionary (1998).
Ser. No. 76665046
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online. Thus, the term is merely descriptive of these
services.
Decision: The examining attorney’s refusal to
register applicant’s mark E-LEX under Section 2(e)(1) of
the Trademark Act is affirmed.