Justice Solutions Group LLC

Trademark Trial and Appeal Board

May 23, 2014

No. 85477930 (T.T.A.B. May. 23, 2014)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: May 23, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Justice Solutions Group LLC
________

Serial No. 85477930
_______

Mark D. Simpson of Saul Ewing LLP for Justice Solutions Group LLC.

Edward Fennessy, Trademark Examining Attorney, Law Office 114 (K.
Margaret Le, Managing Attorney).
_______

Before Cataldo, Bergsman and Hightower,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Justice Solutions Group LLC (“applicant”) filed an application to
register as a mark on the Principal Register JUSTICE SOLUTIONS GROUP
(in standard characters) for the following services:
Business consulting services in the field of operating/renovating
existing correctional facilities, namely, business consulting
services in the field of evaluating data related to adult/juvenile
crime, adult/juvenile justice systems, child development, and
education, correctional programs and services; providing
business management information in the field of best practices,
effective management techniques and programs related to
operating/renovating existing correctional facilities; and
transition and activation planning related to opening a new
Ex Parte Appeal No. 85477930

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correctional facility, namely, developing resident programming,
determining staffing needs, and preparing scenarios, post orders
and policies and procedures, as well as conducting post-
transition and activation evaluations to identify weaknesses and
strengths in operations and find ways to improve them
(in International Class 35);

Consulting services in the field of building construction, namely,
correctional facilities
(in International Class 37);

Educational services, namely, providing classes, educational
workshops and training programs in the field of operating
correctional facilities, and in the field of planning, designing,
and constructing, new correctional facilities; and developing
curriculum for classes, educational workshops and training
programs in the field of operating correctional facilities, and in
the field of planning, designing, and constructing, new
correctional facilities
(in International Class 41); and

Planning and design of correctional facilities, namely, preparing
conceptual and schematic drawings, elevation drawings, and
building section drawings; and land use planning for
construction of correctional facilities, namely, obtaining public
approvals, submitting data and justifications for review and
approval, conducting demographic studies on population
distribution, studying the nature and density of similar facilities
proximate to proposed sites, meeting with State and County
officials and attending public hearings in working with
jurisdictions to obtain clearance for a proposed site, all in
connection with the construction of correctional facilities
(in International Class 42).1

The trademark examining attorney issued a final refusal of
registration under Section 2(e)(1) of the Trademark Act, 15 U.S.C.

1 Application Serial No. 85477930, filed November 21, 2011, alleging first use
anywhere and first use in commerce in connection with all classes of services at least
as early as February 1, 2004.

Ex Parte Appeal No. 85477930

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§ 1052(e)(1), on the ground that applicant’s proposed mark, when used in
connection with applicant’s services, is merely descriptive thereof. In
addition, the examining attorney made final a requirement that applicant
amend the following indefinite wording in its recitation of Class 35 services:
transition and activation planning related to opening a new
correctional facility, namely, developing resident programming,
determining staffing needs, and preparing scenarios, post orders
and policies and procedures, as well as conducting post-
transition and activation evaluations to identify weaknesses and
strengths in operations and find ways to improve them.

Applicant appealed. Applicant and the examining attorney filed briefs.
Requirement for Amendment to Class 35 Services and
Applicant’s Request for Leave to Amend

The examining attorney argues in his brief (p. 20) that the above-noted
wording in applicant’s recitation of Class 35 services is indefinite for the
following reasons:
This broad wording is indefinite because it encompasses a
variety of services in multiple classes. For example, “developing
programming” could refer to educational services consisting of
preparing training materials or courses in International Class
41, or it could refer to some type of penal services provided in
connection with correctional facility services in Class 45. The
wording “preparing scenarios” likewise broadly encompasses
business management services in Class 35 as well as security or
prison services in Class 45. The wording “preparing…post orders
and policies and procedures, as well as conducting post-
transition and activation evaluations” is unclear because it too
could refer to an administrative service related to business
management or operation in Class 35, as well as a service that
is inherent to providing correctional facilities or prisons in Class
45.

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We observe that, in its brief on appeal, applicant does not present
arguments regarding the examining attorney’s requirement for an
amendment to the above-noted wording in its recitation of Class 35 services.
Rather, in its brief (p. 8) applicant states as follows:
Appellant does not contest the suggested changes to the
description of Goods and Services and agrees to the amendments
suggested by the Examining Attorney. In the event of a
favorable ruling by the Board, Appellant requests leave to
amend the description of goods and services to that proposed by
the Examining Attorney, and leave to comply with any other
formal matters (e.g., payment of additional class fees if required)
in order to place the application in allowable condition.

Applicant’s request is denied.
First, applicant was required to comply with the examining attorney’s
requirement to amend its recitation of Class 35 services prior to filing its
appeal, or risk refusal of registration by the Board on that basis. See
Trademark Rule 2.142(c), 37 C.F.R. § 2.142(c); and TBMP § 1201.04 (3d ed.,
rev.2 2013) and authorities cited therein. The examining attorney indicated
in his March 7, 2012 initial Office action, October 4, 2012 final Office action,
and May 13, 2013 denial of applicant’s request for reconsideration that, inter
alia, the above wording is indefinite and may include services falling into
more than one International Class. Applicant thus was afforded three
opportunities in which to submit an acceptable amendment addressing the
examining attorney’s requirement but did not.
Second, with the exception of two very limited circumstances not
present here, an application that has been considered and decided on appeal
Ex Parte Appeal No. 85477930

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will not be reopened. See Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g); and
TBMP § 1218 and authorities cited therein. In this case, applicant did not file
an acceptable amendment to the above wording in its recitation of Class 35
services, and will not now be heard to argue in its brief that it seeks an
additional opportunity to do so in the event the refusal to register under
Section 2(e)(1) is reversed. See generally TBMP § 1218.
Third, and due in particular to the possibility that the services in
question may include services in more than one class, the examining attorney
was unable to propose an acceptable amendment to the wording at issue. As a
result, even if we were to entertain applicant’s request “to amend the
description of goods and services to that proposed by the Examining
Attorney,” no such proposal exists.
In view of the foregoing, we hereby affirm the examining attorney’s
requirement that applicant amend the wording
transition and activation planning related to opening a new
correctional facility, namely, developing resident programming,
determining staffing needs, and preparing scenarios, post orders
and policies and procedures, as well as conducting post-
transition and activation evaluations to identify weaknesses and
strengths in operations and find ways to improve them

in the recitation of Class 35 services, and the application stands abandoned
in Class 35 as to those services. See In re Faucher Industries Inc. 107
USPQ2d 1355, 1358 (TTAB 2013). See also TMEP §§ 718.02(a) and 1402.13.

Ex Parte Appeal No. 85477930

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Applicant’s Request for Leave to Amend to
Seek Registration Under Section 2(f)

Further in its brief (p. 8) on appeal, applicant makes the following
request:
Alternatively, in the event the Board affirms the decision of the
Office, Appellant requests leave to amend the application to
Section 2(f) based on acquired distinctiveness.

As discussed above, Trademark Rule 2.142(g) provides that once an
application has been considered and decided by the Board on appeal, an
application may not be “reopened,” that is, an applicant may not amend its
application, or submit additional evidence, at this stage, except in two very
limited situations not applicable here. See, e.g., In re Phillips-Van Heusen
Corp., 63 USPQ2d 1047 n.2 (TTAB 2002) (request in applicant’s brief that if
the refusals are maintained the application be amended to the Supplemental
Register denied because application which has been decided on appeal will
not be reopened); and In re Taverniti, SARL, 225 USPQ 1263, 1264 n.3
(TTAB 1985). See also generally TBMP § 1218 and authorities cited therein.
Furthermore, the examining attorney suggested an amendment to seek
registration under Section 2(f) or the Supplemental Register in each of his
three above-noted Office actions. Applicant thus was afforded several
Ex Parte Appeal No. 85477930

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opportunities to submit such an amendment during prosecution of its
application and did not.2
Accordingly, applicant’s alternative request for leave to amend its
application to seek registration under Trademark Act Section 2(f) is denied.3
Mere Descriptiveness
A mark is deemed to be merely descriptive of goods or services, within
the meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function, purpose or use of the
goods or services. In re Chamber of Commerce of the United States of
America, 675 F.3d 1297, 102 USPQ2d 1217 (Fed. Cir. 2012); In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (TTAB 2007); and In re
Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A
mark need not immediately convey an idea of each and every specific feature
of the applicant’s goods or services in order to be considered merely
descriptive; rather, it is sufficient that the mark describes one significant
attribute, function or property of the goods or services. In re H.U.D.D.L.E.,
216 USPQ 358 (TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB
1973).

2 We observe in addition that if we were to construe applicant’s request to amend its
identification of Class 35 services and seek registration under Section 2(f) as a
request for remand of the involved application, applicant has not made the requisite
showing of good cause therefor. See TBMP § 1205 and authorities cited therein.
3 In consequence of the foregoing, the question of whether the designation JUSTICE
SOLUTIONS GROUP has acquired distinctiveness as a mark in connection with
applicant’s recited services has not been addressed by applicant or the examining
attorney during examination of the application and is not before us.
Ex Parte Appeal No. 85477930

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Whether a mark is merely descriptive is determined not in the
abstract, but in relation to the goods or services for which registration is
sought, the context in which it is being used on or in connection with the
goods or services, and the possible significance that the mark would have to
the average purchaser of the goods or services because of the manner of its
use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). “The question
is not whether someone presented with only the mark could guess what the
goods or services are. Rather, the question is whether someone who knows
what the goods or services are will understand the mark to convey
information about them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17
(TTAB 2002).
Turning to our determination of the refusal to register, we find
instructive the following excerpts from applicant’s substitute specimens of
record:4
As experts in the field of justice facility planning, design and
programming, we have developed and delivered nationally
recognized educational workshops and training programs to
representative of over 50 states, counties and Native American
tribes from throughout the nation.

JSG [applicant] has a strong background in conducting research
and data analysis in areas related to youth, juvenile crime,
juvenile justice, child development, children’s environments and
education.

4 Submitted with applicant’s September 7, 2012 response to the examining
attorney’s Office action.
Ex Parte Appeal No. 85477930

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In support of the refusal of registration, the examining attorney has
made of record the following dictionary definitions5 of terms comprising the
mark under consideration:
justice – the administration and procedure of law;
solution – the method or process of solving a problem;
group – an assemblage of persons or objects gathered or located
together.
The examining attorney further has made of record evidence from
commercial and informational internet websites in which terms comprising
the proposed mark are used to describe services and activities related to
those recited in the involved application. The following examples are
illustrative:
Justice Solutions
A Web Site By Crime Victim Professionals for Crime Victim
Professionals
Justice Solutions (a national non-profit organization) has just
published online two comprehensive guides on the subject of
victims and the media.
(justicesolutions.org)

Justice Solutions
The software you upgrade to
Welcome to the Justice Solutions Website
Choosing the right software for the job is important for law
enforcement professionals – especially because the personal
safety of the public and officers is at stake. Justice Solutions law
enforcement software is a seamless, secure product so stable
that law enforcement clients across the nation have put their
trust in it.
(badgetogavel.com)

5 All definitions retrieved from education.yahoo.com/reference/dictionary
Ex Parte Appeal No. 85477930

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About Justice Solutions Group [applicant’s website]
The members of Justice Solutions Group (JSG) have extensive
experience in justice system and facility programming and
planning for States, Counties and Native American Tribes
throughout the United States.
JSG members have completed criminal and juvenile justice
projects for various federal, state and local agencies and
institutions in over 40 states throughout the United States.
JDG has also worked with over thirty Native American Tribes
developing new adult and juvenile facilities and justice centers.
(justicesolutionsgroup.com)

CourtView
Justice Solutions
With applications for supervision, detention and jails, CJS
corrections systems can stand alone or interact with our court
and attorney CMS solutions for adult or juvenile offenders and
facilities.
(courtview.com)

Courts and Justice Solutions
Our flexible, user-friendly court software solution provides all
the features courts expect, including detailed process and
warrant management, docketing, file management, case
tracking, complete accounting, and unlimited document and
report generation.
(csdcsystems.com/courts/solutions)

GCJS
Accountable & Trusted Criminal Justice Experts
About GCJS
The mission of Global Criminal Justice Solutions, LLC (GCJS) is
to promote the development or enhancement of responsive, fair,
and effective criminal justice systems around the world.
(gcjs-llc.com)

Luminosity
Delivering Exceptional Justice Solutions
Luminosity provides expert consulting services in support of
federal, state and local criminal justice agencies and systems.
We provide leadership, integrity, and highly efficient customized
solutions to improve justice system efficiency and effectiveness,
Ex Parte Appeal No. 85477930

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reduce jail crowding while assuring public safety, and advance
pretrial justice.
(luminosity-solutions.com)

Arconas
Justice Solutions
Arconas has a comprehensive furniture portfolio for judicial
environments. Our team is experienced in specifying products
that are ergonomically-sound, as well as durable and versatile
for courthouses, detention, correction, and enforcement facilities.
(arconas.com/justice-solutions)

The examining attorney further made of record two articles retrieved
by the Lexis search engine. The following excerpts are illustrative:
Lost in Translation: Domestic Violence, “The Personal is
Political,” and the Criminal Justice System
Current criminal justice domestic violence policies have been
severely criticized by some feminist scholars as undermining
victim autonomy. … For this reason, a criminal justice solution
should be part of broader domestic violence policies that address
the complexity of the issue.

Restorative Justice Dialogue: The Impact of Mediation and
Conferencing on Juvenile Recidivism
Traditionally, the juvenile justice system in the United States
has been dominated by two different approaches in responding
to juvenile offenses, the retributive justice model and the
rehabilitation or treatment model. … Peacemaking circles,
sometimes referred to as sentencing circles, may provide a
restorative justice solution to what some consider two
limitations of victim offender mediation: the lack of concern for
larger community safety and the limitations of voluntary
settlements.

The examining attorney also submitted third-party registrations in
which one or more of the terms comprising the mark were disclaimed. These
registrations are not conclusive on the question of mere descriptiveness of the
involved mark inasmuch as each case must stand on its own merits. See In re
Ex Parte Appeal No. 85477930

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Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)
(“Even if some prior registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such prior registrations does
not bind the board or this court.”); and In re theDot Commc’ns Network LLC,
101 USPQ2d 1062, 1067 (TTAB 2011). See also In re International Taste Inc.,
53 USPQ2d 1604, 1606 (TTAB 2000) (“With respect to third-party
registrations which include disclaimers ... we do not have before us any
information from the registration files as to why an Examining Attorney
required and/or why the applicant/registrant offered such disclaimers.”); and
In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977).
Based upon the dictionary definitions submitted by the examining
attorney, we find the plain meaning of JUSTICE SOLUTIONS GROUP to be
an assemblage of persons (GROUP) providing a method or process of solving
problems (SOLUTIONS) regarding the administration and procedure of law
(JUSTICE). We find more probative the internet and Lexis evidence
submitted by the examining attorney that further shows the term “justice
solutions” is recognized and used in the fields, inter alia, of law enforcement,
criminal detention and incarceration, and criminal courts and sentencing, as
describing methods of addressing and solving problems related to various
aspects of the administration and procedure of law, especially criminal law.
Applicant’s services include: providing business consulting and
management information in the field of correctional facilities, and juvenile
Ex Parte Appeal No. 85477930

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and adult crime (Class 35); consulting in the field of building correctional
facilities (Class 37); education in the field of designing, building and
operating correctional facilities (Class 41), and planning and designing
correctional facilities. The evidence of record establishes that third parties
use the term JUSTICE SOLUTION(S) to describe various aspects of juvenile
and adult criminal law. These specifically include the fields of juvenile and
adult incarceration, furnishing of jails, and issues related to jail
overcrowding. The evidence of record establishes that applicant’s mark
merely describes an assemblage of persons providing methods of solving
problems relating to operating and renovating correctional facilities and
evaluating data relating to adult and juvenile crime (Class 35); constructing
correctional facilities (Class 37); providing education and training in the field
of operating correctional facilities (Class 41); and planning and designing
correctional facilities (Class 42).
Where each component term comprising a mark retains its merely
descriptive significance in relation to the goods or services, the combination
results in a composite that is itself merely descriptive. See, e.g. DuoProSS
Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d
1753 (Fed. Cir. 2012) (SNAP SIMPLY SAFER merely descriptive for medical
devices); and In re Oppedahl & Larson LLP, 71 USPQ2d 1379, 1372 (Fed.
Cir. 2004) (PATENTS.COM merely descriptive of computer software for
managing a database of records that could include patents for tracking the
Ex Parte Appeal No. 85477930

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status of the records by means of the Internet). In this case, the evidence of
record establishes that applicant’s proposed mark, comprised of the
descriptive terms JUSTICE SOLUTIONS and GROUP, merely describes a
feature or characteristic of applicant’s services. Furthermore, it is well settled
that where a mark is merely descriptive of one or more items identified in the
description of services but may be suggestive or even arbitrary as applied to
other items, registration is properly refused if the mark sought to be
registered is descriptive of any of the service. In re Canron, Inc., 219 USPQ
820, 821 (TTAB 1983); Electro-Coatings, Inc. v. Precision National Corp., 204
USPQ 410, 420 (TTAB 1979); and In re Brain Research Foundation, 171
USPQ 825, 826 (TTAB 1971). Even if applicant is the first and/or the only
user of the term JUSTICE SOLUTIONS GROUP in connection with its
services related to correctional facilities and juvenile/adult crime, it is well
settled that such does not entitle applicant to the registration thereof where,
as here, the term has been shown to immediately convey only a merely
descriptive significance in the context of applicant’s services. See, e.g., In re
National Shooting Sports Foundation, Inc., 219 USPQ 1018, 1020 (TTAB
1983); and In re Mark A. Gould, M.D., 173 USPQ 243, 245 (TTAB 1972).
As a result, we find that the term JUSTICE SOLUTIONS GROUP
“immediately conveys knowledge of a quality, feature, function, or
characteristic of the goods or services with which it is used.” In re Bayer
Ex Parte Appeal No. 85477930

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Aktiengesellschaft, 82 USPQ2d at 1831, citing In re Gyulay, 820 F.2d 1216,
1217, 3 USPQ2d 1009 (Fed. Cir. 1987).
Decision: The refusal to register is affirmed.6

6 In view thereof, applicant’s offer in its brief (p. 7) to disclaim GROUP apart from
the mark as shown is moot.