Nancy D. Greene

Trademark Trial and Appeal Board

Nov 18, 2020

87830154 (T.T.A.B. Nov. 18, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 18, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Nancy D. Greene
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Serial No. 87830154
_____

Michael F. Sarney of Moritt Hock & Hamroff LLP,
for Nancy D. Greene

Lyal Fox, Trademark Examining Attorney, Law Office 113,
Myriah Habeeb, Managing Attorney.
_____

Before Shaw, Greenbaum and Adlin,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
Nancy D. Greene (“Applicant”) seeks registration of the proposed mark LEGAL
LANDMINES (in standard characters) on the Principal Register for services
identified as:
Providing coaching services in the field of business;
Educational services, namely, seminars, conferences, and
workshops in the field of business; Business coaching
services in the field of corporate culture, business
consulting, employee and procedure policy review services,
namely, business review of policies and procedures for legal
compliance, and documentation of the internal processes
Serial No. 87830154
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and retention of institutional knowledge, in International
Class 41.1
Applicant disclaimed “LEGAL.”
The Trademark Examining Attorney has refused registration of Applicant’s
proposed mark on the ground that it fails to function as a service mark under Sections
1, 2, 3 and 45 of the Trademark Act, 15 U.S.C. §§ 1151-1053 and 1127.
When the refusal was made final, Applicant appealed and requested
reconsideration. The Examining Attorney denied the request for reconsideration, and
the appeal resumed. After review by the Board, the application was remanded to the
Trademark Examining Attorney to consider whether registration also should be
refused, in the alternative, under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1). Upon remand, the Examining Attorney and Applicant agreed to amend
the application via Examiner’s Amendment to seek registration on the Supplemental
register to obviate a Section 2(e)(1) refusal. The failure to function refusal has been
maintained and the appeal has resumed again. The appeal is fully briefed. We affirm
the refusal to register.2

1 Application Serial No. 87830154 was filed on March 12, 2018 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging a date of first use anywhere of January 1, 2013
and a date of first use in commerce of March 1, 2018.
2 All TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations reference
the docket and electronic file database for the involved application. All citations to the TSDR
database are to the downloadable .PDF version of the documents.
Serial No. 87830154
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I. Preliminary matters
Examining Attorney’s non-conforming brief
Applicant objects to the Examining Attorney’s brief on the grounds that it violates
Trademark Rule 2.126(a)(1), because the text is not in at least 11 point type.
Applicant argues that the Board should disregard the brief because “[s]uch violation
makes it very difficult and more time consuming to read and analyze the examining
attorney’s Brief.”3
Trademark Rule 2.126(a)(1) states that “[t]ext in an electronic submission must
be filed in at least 11-point type and double-spaced.” The body of the Examining
Attorney’s brief appears to be in 10 point type which is not in accordance with the
type size requirements. However, we have ascertained that this may be due to a
technical problem that occurred during the uploading process, which converted the
font from one that conformed to Trademark Rule 2.126(a)(1) to a font that appears
smaller than required. The brief is double spaced, however, and it appears to fall
within the applicable page limits. Given that the brief is available in electronic form
and may be re-sized for viewing by using the “marquee zoom” tool, Applicant’s
objection is moot. See In re Univ. of Miami, 123 USPQ2d 1075, 1077 n.2 (TTAB 2017)
(Board has discretion to consider nonconforming briefs).

3 Applicant’s Reply Br., p. 1, 10 TTABVUE 2.
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Evidence attached to Applicant’s brief
The Examining Attorney objected to Applicant’s submission, for the first time with
her brief, of three third-party registrations, listed as Exhibit B.4 Inasmuch as the
Examining Attorney considered the third-party registrations pursuant to the Board’s
remand order, the objection is moot. The registrations will be considered as part of
the record and will be given whatever probative value they deserve.
II. Failure to function as a mark
We begin our analysis with the Trademark Act’s definition of a service mark,
which is “any word, name, symbol, or device, or any combination thereof . . . [used] to
identify and distinguish the services of one person . . . from the services of others and
to indicate the source of the services, even if that source is unknown.” 15 U.S.C.
§ 1127. “‘[A] proposed trademark [or service mark] is registrable only if it functions
as an identifier of the source of the applicant’s goods or services.’” In re Yarnell Ice
Cream, LLC, 2019 USPQ2d 265039, *16 (TTAB 2019) (quoting In re DePorter, 129
USPQ2d 1298, 1299 (TTAB 2019)). “The Trademark Act is not an act to register mere
words, but rather to register trademarks. Before there can be registration, there must
be a trademark, and unless words have been so used they cannot qualify.” In re Bose
Corp., 546 F.2d 893, 192 USPQ 213, 215 (CCPA 1976).

4 7 TTABVUE 11-19. Applicant also submitted (as “Exhibit A”) a dictionary definition of
“information” from merriam-webster.com. The Examining Attorney did not object to this
definition and we have considered it. In any event, the Board may take judicial notice of
dictionary definitions obtained from printed reference materials. TRADEMARK TRIAL AND
APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 1208.04 (June 2020).
Serial No. 87830154
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Whether the phrase LEGAL LANDMINES falls within the definition of a service
mark and functions as a mark depends on whether the relevant public, i.e.,
purchasers or potential purchasers of Applicant’s services, would perceive the phrase
as identifying Applicant’s services and their source or origin. See e.g. In re TracFone
Wireless, Inc., 2019 USPQ2d 222983, *1-2 (TTAB 2019); In re Aerospace Optics, Inc.,
78 USPQ2d 1861, 1862 (TTAB 2006) (“To be a mark, the term must be used in a
manner calculated to project to purchasers or potential purchasers a single source or
origin for the goods.”); In re Volvo Cars of North Am. Inc., 46 USPQ2d 1455, 1459
(TTAB 1998) (“A critical element in determining whether a term or phrase is a
trademark is the impression the term or phrase makes on the relevant public.”); In
re Safariland Hunting Corp., 24 USPQ2d 1380 (TTAB 1992). “To make this
determination we look to the specimens and other evidence of record showing how
the designation is actually used in the marketplace.” In re Eagle Crest Inc., 96
USPQ2d 1227, 1229 (TTAB 2010) (citations omitted).
Applicant’s amendment to the Supplemental Register does not overcome the
failure to function refusal. See id. Matter that does not operate to indicate the source
or origin of the identified goods or services and distinguish them from those of others
does not meet the statutory definition of a trademark and may not be registered,
regardless of the register on which registration is sought or claims of acquired
distinctiveness. D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710 (TTAB 2016)
(granting petition to cancel a registration on the Supplemental Register because the
mark failed to function as a trademark); In re Ocean Tech., Inc., 2019 USPQ2d
Serial No. 87830154
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450686, *8 (TTAB 2019) (ALL NATURAL GOURMET CRABMEAT PASTEURIZED
100% REAL CALLINECTES CRAB and crab design fails to function as a trademark
for crabmeat because it merely conveys information about the goods).
The Examining Attorney argues that LEGAL LANDMINES is “a commonplace
term, message, or expression widely used by a variety of sources in the applicant’s
field that merely conveys an ordinary, familiar, well-recognized concept or sentiment,
namely, that the provided coaching and educational services are for assisting
businesses in avoiding concealed yet incipient crises relating to the law.”5 In support
of the refusal, the Examining Attorney submitted a number of exhibits from third-
party sources to establish that the phrase “legal landmines” is commonly used in the
business and legal fields to convey the danger to businesses of risks associated with
such “concealed yet incipient crises relating to the law.”6 The following evidence is
the most pertinent:
1. An excerpt from acfe.com, the website of the Association of Certified Fraud
Examiners, featuring fraud training entitled “Legal Landmines to Avoid in
Fraud Examinations.” The description of the training session states it
“highlights four potential legal landmines fraud examiners can avoid when
conducting fraud examinations.” Office Action dated June 25, 2018, TSDR
24.

5 Examining Attorney’s Br., 9 TTABVUE 5.
6 Id. The Examining Attorney’s evidence includes several search engine “hit lists.” These
generally have little probative value, because such lists do not show sufficient context in
which the term is used on the listed web pages. See In re Bayer AG, 488 F.3d 960, 82 USPQ2d
1828, 1833 (Fed. Cir. 2007).
Serial No. 87830154
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2. An Entrepreneur magazine article entitled “When Interviewing, Avoid Legal
Landmines and Find Out What You Want to Know.” Id. at 25.
3. An Inman.com article entitled “5 tips for avoiding legal landmines this year.”
Id. at 26.
4. An Insperity.com e-book entitled “Six Legal Landmines to Avoid When
Screening Job Applicants. “Key Takeaways” involving hiring practices and
compliance explain “why some common practices could create a liability for
your company,” “what not to do when researching a candidate,” “why cutting
corners on background checks can hurt your company,” and “how to protect
yourself from liability and potential lawsuits.” Id. at 27.
5. A LegalTech News article entitled “Virtual and Augmented Reality’s Legal
Landmine: User-Generated Data.” Id. at 28.
6. A Helpside article entitled “The Overlooked Steps: Avoiding Legal
Landmines.” Id. at 29.
7. A PMS Plus Media Solutions press release advertising a webinar entitled
“Hiring Hazards – How to Avoid the 7 Most Common Legal Landmines.” The
webinar offers information on compliance with employment laws, payroll
processing, and tax laws. Final Office Action dated April 4, 2019, TSDR 3.
8. A Right Vision Media press release advertising a webinar entitled “FMLA:-
How to Avoid Legal Landmines.” The webinar offers management training
on various Human Resources issues. Id. at 4.
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9. A Mondaq business briefing discussing a presentation provided at the
Employer Healthcare & Benefit Congress entitled “Wellness Incentive
Programs: Navigating Legal Landmines and Designing Effective Employee
Communication Strategies.” The webinar discusses compliance with the
Health Insurance Portability and Accountability Act (HIPAA), the Affordable
Care Act (ACA), the Americans with Disability Act (ADA) and other
government programs. Id. at 5.
10. A Muzeview Research newsletter advertising a class for startup businesses
which is described as a “get smart session on legal landmines,” and states
that “[t]his class will give you the basic knowledge you will need to help avoid
these costly legal landmines.” Id. at 6.
11. A Newstex LLC blog post advertising a webinar entitled “Avoiding Legal
Landmines when Using Facebook, LinkedIn, and Other Social Media
Websites for Screening Candidates,” which also states “[w]e show employers
how to avoid these legal landmines,” and advises that webinar participants
will learn “what the privacy and discrimination concerns are when using
social media information, the potential legal landmines involved, and what
steps their organizations can take to minimize these risks.” Id. at 7.
12. A ProQuest Information and Learning Company article advertising and
reviewing a book entitled “The Four Mistakes – Avoiding the Legal
Landmines that lead to Business Disaster.” Id. at 8.
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13. A Crain’s article entitled “Avoid the latest legal landmine.” The article
discusses policies businesses should adopt when interviewing job candidates.
Id. at 9.
14. A ProQuest Information and Learning Company article entitled “Probing for
worker misconduct plants legal landmines.” The article discusses policies
businesses should adopt when investigating employee wrongdoing. Id. at 10.
15. A Law360.com article on companies’ policies relating to employee grooming
and dress. The article states some corporate “appearance and grooming
policies may contain hidden legal landmines.” Id. at 14.
16. A Lexology.com article discussing a National Labor Relations Board ruling
on unfair labor practices. The article states corporate policies relating to
unionizing activities are “full of potential legal landmines.” Id. at 15.
17. An excerpt from the Hoover, Hull, Turner law-firm website advertising a
seminar entitled “Avoiding HR Legal Landmines.” A portion of the website
states the session: “will discuss Hiring, Firing, and Discipline Missteps,
including job description errors, interview and background check compliance,
avoiding pitfalls in discipline and discharge, and navigating use of waivers
and releases.” The seminar also includes topics on compliance and
documentation. Denial of Request for Reconsideration dated October 2, 2019,
TSDR 7.
18. A Workforce Solutions advertisement concerning “everyday HR issues” for a
class entitled “Legal Landmines: Say This, Not That.”
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19. An Eventbrite webpage advertising a workshop entitled “Lunch & Learn:
HR: Legal Landmines for 2019.” The website states: “In this live workshop
offered in Columbus, you will learn actionable tips to proactively address the
HR legal issues that are most likely to impact employers this year.” The
workshop includes sections on wages, labor policies, and management
training. Id. at 9.
The Examining Attorney also relies on Applicant’s specimen, webpage, and other
submissions to support the refusal. The following evidence from Applicant is the most
pertinent:
1. Applicant’s original specimen, filed with the application, includes the
following description of her services:7
Navigating LEGAL LANDMINESTM
I help clients in all areas of business and employment law.
I give my full attention to every aspect of my client’s
matters. I provide business owners and entrepreneurs with
the tools they need to navigate the perilous waters, legal
and practical, of doing business.
* * *
WHAT YOU DON’T KNOW CAN HURT YOUR
BUSINESS!
You’ve often heard that what you don’t know won’t hurt
you? Unfortunately, when it comes to the law and your
business that saying is dead wrong. Running a business
and minimizing the Legal Landmines™ you hit in the
process means leveraging knowledge from different
specialties.

7 Application of March 12, 2018, TSDR 3.
Serial No. 87830154
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2. Applicant’s website describes her services, and states: “Our business
consulting and diagnostic services are tailored to each client’s
requirements.”8 The offered services include “Landmine detection
evaluation.”9
3. In her response to the first Office action, Applicant included marketing
materials further describing her services. The materials reference the
services as follows: “LEGAL LANDMINES: THE TOP 5 MISTAKES YOU
ARE MAKING IN YOUR BUSINESS.”10 The materials also include the
following graphic images describing Applicant’s services in more detail:11

8 Https://www.attorneynancygreene.com/practice areas, Office Action dated June 25, 2018,
TSDR 30.
9 Id. at TSDR 31.
10 Response to Office action dated March 22, 2019, TSDR 34.
11 Id. at TSDR 35.
Serial No. 87830154
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4. An excerpt from Applicant’s webpage describes her public speaking
experience, and her book, NAVIGATING LEGAL LANDMINESTM: A
practical guide to business law for real people (emphasis added):12

12 Office Action of April 4, 2019, TSDR 16.
Serial No. 87830154
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The American Heritage dictionary defines “legal” as “[o]f, relating to, or concerned
with law.”13 “Land mine” is informally defined as “a concealed yet incipient crisis.”14

13 Americanheritagedictionary.com, Office Action of June 25, 2018, TSDR 13.
14 Id. at TSDR 14.
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Taken together, LEGAL LANDMINES is a figure of speech used to refer to a
concealed yet incipient crisis relating to the law. The record before us establishes that
the phrase LEGAL LANDMINES is widely used by attorneys, HR specialists, and
business educators to identify common legal problems businesses should avoid. As
demonstrated by the third party evidence, these legal problems commonly involve
corporate labor policies, compliance with existing laws, management training, wage
issues, hiring issues, and discrimination issues.
As stated in Applicant’s attachment to her response to the first Office action,
Applicant’s business coaching and educational services focus on some of these same
kinds of legal problems:15
 BUSINESS CONSULTING
 COMPLIANCE ASSESSMENTS
 MANAGEMENT TRAINING
 CORPORATE STRUCTURE ASSESSMENTS
 POLICY REVIEW
 WAGE/HOUR REVIEW
 CULTURE ASSESSMENT
 PROCESS CREATION
 EDUCATIONAL SEMINARS AND EVENTS
Similarly, as Applicant states on her website, she “provide[s] business owners and
entrepreneurs with the tools they need to navigate the perilous waters, legal and
practical, of doing business.”16 Thus, Applicant’s use of LEGAL LANDMINES to
identify her coaching and educational services in the field of business merely informs
prospective consumers about the focus of Applicant’s services, namely, avoiding

15 Response to Office Action dated March 22, 2019, TSDR 35.
16 Application of March 12, 2018, TSDR 3.
Serial No. 87830154
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common legal crises in business, or “legal landmines.” Indeed, in some instances
Applicant uses the term LEGAL LANDMINES not to identify her services or their
source, but to refer to unexpected crises to be avoided: “Running a business and
minimizing the Legal Landmines™ you hit in the process means leveraging
knowledge from different specialties.”17
The function of a trademark or service mark is to identify a single commercial
source. Because consumers are accustomed to seeing LEGAL LANDMINES used by
law firms, HR specialists, and business educators discussing ways to avoid legal
crises, consumers would not view Applicant’s LEGAL LANDMINES as a service
mark indicating Applicant is the sole source of business coaching and educational
services. Instead, the record establishes that many third parties have a common and
consistent understanding of the phrase LEGAL LANDMINES, which refers not to
Applicant or her services, but instead to legal crises businesses seek to avoid.
Applicant is not entitled to appropriate the phrase to herself and thereby attempt to
prevent competitors from using it to promote the sale of their own products or
services. In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1152 (TTAB 2019)
(INVESTING IN AMERICAN JOBS does not function as a mark because it is “merely
an informational statement that Applicant is selling certain goods that are made or
assembled in America in areas of the store where the signage appears”); In re Melville
Corp., 228 USPQ 970, 972 (TTAB 1986) (describing the phrase BRAND NAMES FOR
LESS as “a highly descriptive and informative slogan [that] should remain available

17 Id.
Serial No. 87830154
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for other persons or firms to use to describe the nature of their competitive services”);
In re Brock Residence Inns, Inc., 222 USPQ 920 (TTAB 1984) (affirming refusal to
register FOR A DAY, A WEEK, A MONTH OR MORE! because it “is simply an
ordinary informational statement about the availability of rooms for various lengths
of time”). It has been noted that “as a matter of competitive policy, it should be close
to impossible for one competitor to achieve exclusive rights” in common phrases. 1
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 7:23 (5th ed. June 2020).
Applicant nevertheless argues that “LEGAL LANDMINES does not convey any
message, and is not widely used by others to convey any information or message.”18
We disagree. LEGAL LANDMINES conveys information about the subject of
Applicant’s business coaching and educational services, i.e., the dangers of
unexpected legal crises. The evidence of record also establishes that LEGAL
LANDMINES is widely used by third parties to convey information about the dangers
of unexpected legal crises that businesses may face. Based on the evidence of record
showing use by third parties to discuss some of the same subjects covered by
Applicant’s services, we do not find that Applicant’s specimens or other submissions
establish that the proposed mark would be perceived by the relevant public as a
source indicator for business coaching and educational services. Simply put,
Applicant’s intent that LEGAL LANDMINES function as a service mark does not
make it so. “Mere intent that a term function as a trademark is not enough in and of
itself, any more than attachment of the trademark symbol would be, to make a term

18 Applicant’s Br., p. 4, 7 TTABVUE 5.
Serial No. 87830154
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a trademark.” In re Remington Prods. Inc., 3 USPQ2d at 1715; see also Apollo Med.
Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1855 (TTAB
2017); In re Vertex Grp. LLC, 89 USPQ2d 1694, 1701 (TTAB 2009) (“[M]ere intent
that a word, name, symbol or device function as a trademark or service mark is not
enough in and of itself.”); In re Morganroth, 208 USPQ 284, 287 (TTAB 1980)
(“Wishing does not make a trademark or service mark be.”). If, as here, the evidence
establishes that the public would not perceive the proposed mark as serving to
indicate the source of the identified services, it does not function as a mark and may
not be registered regardless of the manner of use depicted on the specimens.
Applicant also argues that since other phrases, such as “EARLY WARNING” for
use in connection with computer programs and radar detectors, have registered, her
proposed mark should be entitled to registration as well. “While we recognize that
‘consistency is highly desirable,’ consistency in examination is not itself a substantive
rule of trademark law, and a desire for consistency with the decisions of prior
examining attorneys must yield to proper determinations under the Trademark Act
and rules.” In re Am. Furniture Warehouse CO, 126 USPQ2d 1400, 1407 (TTAB 2018)
(quoting In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544 (Fed. Cir. 2007)).
We “must assess each mark on its own facts and record.” Id. The fact that the USPTO
may have registered “EARLY WARNING” for use in connection with unrelated goods
does not entitle Applicant to register LEGAL LANDMINES for business coaching and
educational services.
Serial No. 87830154
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Because it is merely informational in the context of Applicant’s identified services,
widely used by the others in the relevant markets, and would not be perceived as an
indicator of source, LEGAL LANDMINES fails to function as a service mark under
Sections 1, 2, 3 and 45 of the Trademark Act. 15 U.S.C. §§ 1051-1053 and 1127.
Decision: The refusal to register Applicant’s proposed mark LEGAL
LANDMINES on the ground that it fails to function as a service mark under Sections
1, 2, 3 and 45 of the Trademark Act is affirmed.
Greenbaum, Administrative Trademark Judge, dissenting:
Reasonable minds may differ, and I find myself in that situation here. I therefore
respectfully dissent.
The evidence outlined by the majority shows some use of the term LEGAL
LANDMINES in the industry and by Applicant to refer to common business
problems. This evidence supports a finding that the term is merely descriptive of the
subject matter under Section 2(e)(1) of the Trademark Act, a refusal that was made
and then obviated by Applicant’s amendment to the Supplemental Register.
But the record does not sufficiently demonstrate that LEGAL LANDMINES fails
to function as a trademark because it is a common phrase or message that ordinarily
would be used in advertising or in the relevant industry, or that consumers are
accustomed to seeing used in everyday speech by various sources. The evidence
pertains only to the specific services identified in the application, and does not show
wide use of the term by a variety of sources from a variety of fields. Cf., e.g., In re
Peace Love World Live, LLC, 127 USPQ2d 1400, 1403 (TTAB 2018) (I LOVE YOU,
Serial No. 87830154
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appearing on bracelets, would be viewed as a term of endearment rather than a
source-identifying trademark).
Nor does the record demonstrate that LEGAL LANDMINES conveys general
information about the identified services to the extent that would preclude the term
from performing a source-identifying function. Cf., e.g., In re AOP LLC, 107 USPQ2d
1644, 1655 (TTAB 2013) (finding AOP merely informational and not source
identifying for wine because it informs consumers of a certification process).
In some circumstances, a proposed mark may properly be refused registration
under Section 2(e)(1) of the Trademark Act, and under Sections 1, 2, 3 and 45 of the
Trademark Act. But I do not believe this duality applies to LEGAL LANDMINES.
Accordingly, I would reverse the refusal under Sections 1, 2, 3 and 45 of the
Trademark Act, and allow the proposed mark to reside on the Supplemental Register.