The Rainmaker Institute, LLC

Trademark Trial and Appeal Board

Sep 20, 2017

No. 86780078 (T.T.A.B. Sep. 20, 2017)

Mailed: September 20, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Rainmaker Institute, LLC
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Serial No. 86780078
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Sylvia Mulholland, Law Office of Sylvia Mulholland,
for The Rainmaker Institute, LLC.
Jennifer Hazard Dixon, Trademark Examining Attorney, Law Office 110,
Chris A.F. Pedersen, Managing Attorney.
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Before Bergsman, Hightower, and Heasley,
Administrative Trademark Judges.
Opinion by Hightower, Administrative Trademark Judge:
Applicant The Rainmaker Institute, LLC seeks registration on the Principal
Register of RAINMAKER INTAKE UNIVERSITY, in standard characters, for
“marketing services, namely, the providing of marketing analyses, advice and
business development strategies to lawyers and law firms” in International Class 35.1
Registration has been refused under Section 2(e)(1) of the Trademark Act, 15 U.S.C.

1 Application Serial No. 86780078 was filed on October 26, 2015 pursuant to Trademark Act
Section 1(a), 15 U.S.C. § 1051(a), based on Applicant’s allegation of first use and use in
commerce as of August 1, 2014.
This Opinion Is Not a
Precedent of the TTAB
Serial No. 86780078
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§ 1052(e)(1), on the ground that RAINMAKER INTAKE UNIVERSITY is merely
descriptive of the services identified in the application. After the refusal was made
final, Applicant requested reconsideration, which was denied. This appeal followed.
We affirm the refusal to register.
I. Applicable Law
A term is merely descriptive within the meaning of Section 2(e)(1) if it
immediately conveys knowledge of a quality, feature, function, or characteristic of the
goods or services with which it is used. In re Chamber of Commerce of the U.S., 675
F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). Whether a mark is merely
descriptive is determined in relation to the goods or services for which registration is
sought, the context in which the mark is used, and the possible significance the term
would have to the average consumer because of the manner of its use or intended use.
In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015); In re
Chamber of Commerce of the U.S., 102 USPQ2d at 1219.
II. Analysis
There is record evidence that each word in the phrase RAINMAKER INSTITUTE
UNIVERSITY has descriptive significance in association with Applicant’s identified
“marketing services, namely, the providing of marketing analyses, advice and
business development strategies to lawyers and law firms.” Among the most
probative evidence is the following:
Serial No. 86780078
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• RAINMAKER: The Examining Attorney submitted a dictionary definition
of “rainmaker” meaning “North American informal A person who generates
income for a business or organization by brokering deals or attracting
clients or funds.”2
• INTAKE:
o Applicant’s specimen states in part that “The Rainmaker Intake
University is for consumer law firms” and “is an intensive 8 week
program designed to train your intake staff and attorneys on how to
track your leads, better qualify prospects, set more appointments
and retain more clients.” (emphasis added).
o Examples of descriptive use by third parties of the term “intake” in
association with lawyers and law firm clients include:
 A post on the LexisNexis Business of Law Blog titled “Best
Practices for Effective Law Firm Client Intake.”3
 A Craigslist job posting titled “Marketing / Client Intake
Specialist For Immediate Hire (Houston, Tx),” stating:
“Growing law firm seeking friendly and energetic individual
to assist with client intake and law firm marketing.”4
 A page on the PMP (Practice Made Perfect) Marketing Group
website titled “Customer Intake and Your Firm” discussing
law firm client intake systems and intake training, process,
and procedures.5
 A screen shot of a Q & A from the Thomson Reuters FindLaw
Lawyer Marketing blog titled “Your Client Intake Questions
Answered.”6
• UNIVERSITY: The Examining Attorney submitted a dictionary definition
of “university” meaning “An educational institution designed for
instruction, examination, or both, of students in many branches of
advanced learning, conferring degrees in various faculties, and often
embodying colleges and similar institutions.”7

2 January 22, 2016 Office Action at TSDR 2 (from oxforddictionaries.com/us/definition/
american_english/rainmaker).
3 July 28, 2016 Final Office Action at TSDR 3.
4 Id. at TSDR 7.
5 Id. at TSDR 6.
6 Id. at TSDR 11.
7 January 22, 2016 Office Action at TSDR 7 (from oxforddictionaries.com/us/definition/
american_english/university).
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This evidence, including Applicant’s specimen, clearly establishes that
RAINMAKER and INTAKE both convey information about characteristics of
Applicant’s identified services, that is, that they include business development
strategies for lawyers and law firm intake staff. See, e.g., In re N.C. Lottery, 866 F.3d
1363, 123 USPQ2d 1707, 1710 (Fed. Cir. 2017) (holding that “the TTAB did not err
by considering the explanatory text of the specimens in the descriptiveness inquiry”).
With regard to UNIVERSITY, Applicant’s specimen makes clear that although it
does not offer university services, it uses the applied-for matter in association with
an intensive training program. Applicant argues in its appeal brief that its mark
conveys through the word UNIVERSITY “only the idea that something is to be
learned and/or something taught.” Appeal Brief at 4, 7 TTABVUE 5. Applicant also
argues as follows:
In no way is Applicant operating a “university” per se, as
there is no school nor other physical location where clients
(or “students”) may attend to learn more about better
marketing practices, and the evidence submitted by
Applicant aptly reveals that the term UNIVERSITY is
commonly used by others than universities per se, and that
the term UNIVERSITY is sometimes subject to a USPTO
office disclaimer requirement, as being a “descriptive”
term, but just as often is not. Neither is the term
“misdescriptive” in the context of Applicant’s mark, as it is
commonly used by trademark owners to reference some
transference of knowledge, whether in a formal or informal
setting, and whether the services are partaken by
“students,” as the term is traditionally understood to mean,
or not.
Appeal Brief at 3-4, 7 TTABVUE 4-5. Construed more generally, as Applicant argues,
UNIVERSITY in its common usage also conveys information about characteristics of
Applicant’s services: that they feature education or instruction.
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We find that each of the terms constituting Applicant’s mark retains its
descriptive significance in combination. RAINMAKER INTAKE UNIVERSITY,
considered as a whole, thus forms a composite that is itself merely descriptive. See,
e.g., DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103
USPQ2d 1753, 1759 (Fed. Cir. 2012) (finding SNAP SIMPLY SAFER merely
descriptive for cannulae, needles, and syringes); In re Positec Grp. Ltd., 108 USPQ2d
1161, 1173 (TTAB 2013) (holding SUPERJAWS merely descriptive for tools); In re
Bright-Crest, Ltd., 204 USPQ 591, 594 (TTAB 1979) (finding that COASTER-CARDS
“serves to forthwith convey to purchasers or potential purchasers an immediate idea
of a significant characteristic of such goods, namely, that they consist of a
combination of a coaster and a greeting or postal card”).
Applicant’s arguments for reversing the refusal generally center on the fact that
the three words composing the subject phrase “are capable of various different
meanings in the context of ordinary speech and as applied to different services,” and
that the phrase as a whole is suggestive because it requires imagination and “does
not ‘immediately convey’ anything specific at all,” but merely “hints at the services to
be provided.” Appeal Brief at 4-6, 7 TTABVUE 5-7. It is well-established, however,
that descriptiveness is not considered in the abstract or on the basis of guesswork;
that a term may have different meanings in other contexts is not controlling. In re
United Trademark Holdings, Inc., 122 USPQ2d 1796, 1798 (TTAB 2017); In re
RiseSmart Inc., 104 USPQ2d 1931, 1933 (TTAB 2012). We must assess not “whether
someone presented with only the mark could guess what the goods or services are.
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Rather, the question is whether someone who knows what the goods and services are
will understand the mark to convey information about them.” DuoProSS, 103
USPQ2d at 1757 (quotation omitted).
III. Conclusion
Based on the record in its entirety, we find that a consumer of Applicant’s services
would immediately understand RAINMAKER INTAKE UNIVERSITY to convey
information about significant characteristics of those services, which feature
instruction in business development strategies for lawyers and law firms. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); see also In re Finisar
Corp., 78 USPQ2d 1618, 1623 (TTAB 2006), aff’d per curiam, 223 Fed. App’x 984 (Fed.
Cir. 2007). Because the proposed mark, considered as a whole, immediately conveys
knowledge of Applicant’s services, it is merely descriptive under Trademark Act
Section 2(e)(1).
Decision: The refusal to register under Section 2(e)(1) of the Trademark Act is
affirmed.