Jack Russo

Trademark Trial and Appeal Board

Aug 29, 2001

No. 75527748 (T.T.A.B. Aug. 29, 2001)

8/29/01

Paper No. 12
HRW

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Jack Russo
________

Serial No. 75/527,748
_______

Jack Russo of Russo & Hale LLP for Jack Russo.

Angela M. Micheli, Trademark Examining Attorney, Law Office
108 (David E. Shallant, Managing Attorney).
_______

Before Hanak, Chapman and Wendel, Administrative Trademark
Judges.

Opinion by Wendel, Administrative Trademark Judge:

Jack Russo has filed an application to register the
mark LAWYERSVIDEO for “providing legal information over a
global computer network.”1
Registration has been finally refused under Section
2(e)(1) on the ground that the mark is merely descriptive.
The Examining Attorney has also made final the requirement
that applicant submit advertisements or promotional

1 Serial No. 75/527,748, filed July 30, 1998, based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/527,748
2
materials. The refusal has been appealed and both
applicant and the Examining Attorney filed briefs. An oral
hearing was not requested.
A term is merely descriptive within the meaning of
Section 2(e)(1) if it immediately conveys information about
a characteristic or feature of the goods or services with
which it is being used or is intended to be used. See In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir 1987); In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215
(CCPA 1978). Whether or not a particular term is merely
descriptive is determined not in the abstract, but rather
in relation to the goods or services for which registration
is sought, the context in which the designation is being
used, and the significance the designation is likely to
have to the average purchaser as he or she encounters the
goods or services bearing the designation, because of the
manner in which it is used. See In re Bright-Crest, Ltd.,
204 USPQ 591 (TTAB 1979). It is not necessary that the
term describe all the characteristics or features of the
goods or services in order to be merely descriptive; it is
sufficient if the term describes one significant attribute
thereof. See In re Pennzoil Products Co., 20 USPQ2d 1753
(TTAB 1991).
Ser No. 75/527,748
3
The Examining Attorney maintains that the proposed
mark LAWYERSVIDEO is merely descriptive in that “videos
about and for lawyers is a salient feature of applicant’s
legal information services.” (Brief p.4). She has
supported her refusal with excerpts from both the Internet
and articles retrieved from the NEXIS database showing the
use of videos both by various legal groups as a training
means and by lawyers themselves in the litigation field.
Applicant agrees that his service is directed to
lawyers but strongly disagrees that the mark as a whole is
merely descriptive of a feature of applicant’s information
service. Applicant states that his service provides
various types of information specifically related to
helping lawyers involved in the litigation process,
including information regarding the use of videos in
depositions and trials, the use of graphics in litigation,
the use of experts, etc., by means of the global computer
network. He insists that his service “does not offer, sell
or make videos for lawyers nor is Applicant’s information
service offered on videos.” (Brief, p. 4). Applying a
three-prong test, applicant argues that his mark is not
merely descriptive under the “degree of imagination test”
in that it takes mental pause or thought and imagination to
discern the exact nature of applicant’s services upon
Ser No. 75/527,748
4
viewing the mark LAWYERSVIDEO; that under the “competitors’
need test” there is no need for others to use LAWYERSVIDEO
to describe similar services; and that under the
“competitors’ use test” there is no evidence of record that
others are actually using the term to describe similar
services. Applicant further argues that the mark is not
merely descriptive in that it does not tell potential
customers only what the services are. Applicant contends
that his services are not videos for lawyers and are not
only information regarding the use of videos by lawyers.
As we have stated above, it is not necessary that a
term describe all the characteristics or features of the
involved services in order to be merely descriptive;
description of one significant attribute will suffice.
Here LAWYERSVIDEO clearly describes a significant feature
of applicant’s information service. As argued by the
Examining Attorney, applicant’s service relates to lawyers’
videos, not in the sense that applicant is selling videos
to lawyers, but rather in the sense that applicant is
providing information to lawyers with respect to the use of
videos during litigation. While the information provided
may encompass many other areas of interest, nonetheless one
area is that of the use of videos by lawyers in the
litigation process. That the use of videos in this manner
Ser No. 75/527,748
5
would be of interest to lawyers and might well be an
expected area covered by applicant’s legal information
service in the litigation field is demonstrated by the
Internet webpage made of record by the Examining Attorney
showing the advertisement that
[w]e fulfill all the Imaging, Video Production,
Software Development, Electronic Data Discovery
and Trial Consulting needs for Trial Lawyers.
(www.indatacorp.com)

The fact that this is one of the topics of applicant’s
service would result in an immediate correlation by
prospective purchasers of applicant’s service of the mark
LAWYERSVIDEO and this particular facet of applicant’s
service. It would take no imagination or mental pause to
grasp the connection between LAWYERSVIDEO and applicant’s
legal information service covering the area of the use of
videos by lawyers. The mere juxaposition of the two words
LAWYERS and VIDEO into a single term does not in any way
change the connotation of the words as such.
Furthermore, LAWYERSVIDEO is merely descriptive of
applicant’s information service in another sense. Although
applicant states that he is not providing or selling videos
to lawyers as such, the broad identification by applicant
of his services as “providing legal information over a
global computer network” does not rule out the possibility
Ser No. 75/527,748
6
that applicant would use videos in the implementation of
his information service over the Internet. While the
majority of the Internet pages and excerpted articles
retrieved from the NEXIS database made of record by the
Examining Attorney are directed to the offering of videos
in the form of cassettes or closed circuit showings by
organizations for purposes of legal training or education,
nonetheless, we find certain excerpts which reference the
direct use of videos on the Internet in the provision of
informational or educational services. For example, we
note the following:
Highlights Including Video

TrialDirector used in US v. Microsoft Antitrust
Trial: Click here to see the video and read about
how “(TrialDirector and) Technology changes the
way evidence is presented in court.” San Jose Mercury
News
(www.indatacorp.com);

Click into cle-Net – - audio and video programs on the
internet anytime.
(www.cle-net.edu);

Earn Audio/Video CLE credits on WSTLA’S Internet CLE
via Taecan.com.
(www.wstla.org); and

Check Out Our “Streaming” Video

As part of our research and development efforts, we
have put up a two-minute video clip featuring the
editors of our book on Environment Law & Practice.
Future efforts will appear on our Online Campus.
(www.pbi.org).

Ser No. 75/527,748
7
In this sense LAWYERSVIDEO is merely descriptive of a legal
information program provided over the Internet which in
fact makes use of videos in the presentation of the
materials. As we stated above, applicant’s service, as
broadly identified, clearly encompasses such a use of
videos, whether or not applicant presently intends to so
use videos. Here also potential purchasers would readily
make the association between LAWYERSVIDEO and applicant’s
information service for lawyers making use of videos in the
presentation of the materials.
Applicant’s arguments that competitors neither need
nor use the term LAWYERSVIDEO to describe similar services
are to no avail. As we have often stated, the fact that
applicant may be the first and/or only user of the term for
informational services of this nature is not controlling
when the term unquestionably projects a merely descriptive
connotation. See In re Polo International Inc., 51 USPQ2d
1061 (TTAB 1999).
Accordingly, we find LAWYERSVIDEO would be merely
descriptive if used in connection with applicant’s
provision of legal information over a global computer
network.
We next consider the Examining Attorney’s requirement
that applicant submit advertisements or promotional
Ser No. 75/527,748
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materials, if available. The Examining Attorney has made
this requirement final because applicant has failed to come
forth with any materials of this nature.
Under Trademark Rule 2.61(b) an applicant may be
required “to furnish such information and exhibits as may
be reasonably necessary to the proper examination of the
application.”
When first making the requirement for these materials,
the Examining Attorney stated that “[i]f such materials are
not available, the applicant must describe the nature,
purpose and channels of trade for the services.” In
response, applicant did not provide any materials but
instead gave a full explanation of the type of services
with which he intended to use the mark.
We are fully convinced that applicant adequately
complied with the Examining Attorney’s requirement at this
point in the prosecution. This is an intent-to-use
application and advertising and promotional materials may
not yet be available. The explanation given by applicant
of the services with which he intended to use the mark was
thorough and detailed. Although the Examining Attorney
continued the requirement and applicant made no further
reference thereto, we find that applicant had already
satisfactorily met the requirement. We would note that
Ser No. 75/527,748
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applicant rightfully should have made a further response to
the requirement by clearly explaining that either no
materials were available, or, if available, why they were
not provided, and that his detailed discussion of the
services was intended to fulfill the requirement.
Nonetheless, the refusal to register on the basis of
failure to comply with this requirement is reversed.
Decision: The refusal to register under Section
2(e)(1) is affirmed. The requirement that advertising and
promotional materials be submitted is reversed.

Ser No. 75/527,748
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