Dang Enterprises, LLC

Trademark Trial and Appeal Board

Jun 9, 2016

No. 86525623 (T.T.A.B. Jun. 9, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: June 9, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Dang Enterprises, LLC
_____

Serial No. 86525623
_____

Matthew H. Swyers of The Trademark Company PLLC,
for Dang Enterprises, LLC
Andrea Hack, Trademark Examining Attorney, Law Office 108,
Andrew Lawrence, Managing Attorney.
_____

Before Masiello, Goodman and Lynch,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Dang Enterprises, LLC (“Applicant”) seeks registration on the Principal Register
of the mark FEDERAL TAX RELIEF (in standard characters) for “Tax advisory
services; Tax assessment; Tax consultation; Tax preparation” in International Class
35.1

1 Application Serial No. 86525623 was filed on February 5, 2015, seeking registration on the
Principal Register with a claim of acquired distinctiveness under Section 2(f), based upon
Applicant’s claim of first use anywhere and use in commerce since at least as early as
September 2008. “TAX” is disclaimed.
Serial No. 86525623
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The Trademark Examining Attorney has refused registration on the grounds that
the proposed mark is generic or, alternatively, merely descriptive of the identified
services pursuant to Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), and
without a sufficient showing of acquired distinctiveness to allow registration under
Section 2(f) of the Act, 15 U.S.C. § 1052(f).2
After the Trademark Examining Attorney made the refusal final, Applicant
requested reconsideration and then appealed to this Board. We affirm the refusal to
register.
I. Applicable Law
“A generic term is the common descriptive name of a class of goods or services….”
H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987,
228 USPQ 528, 530 (Fed. Cir. 1986). “The critical issue in genericness cases is
whether members of the relevant public primarily use or understand the term sought
to be protected to refer to the genus of goods or services in question.” Id. We conduct
a two-part inquiry to determine whether a proposed mark is generic: (1) what is the
genus (class or category) of goods or services at issue? and (2) does the relevant public

2 Applicant indicates on appeal that it assumes its proposed mark has been refused on the
grounds of being generic as a whole, but if the Examining Attorney contends that only a
portion of the mark is generic, remand is appropriate to clarify the basis for refusal. 4
TTABVUE 6. In her response brief, the Examining Attorney confirms that the genericness
refusal is based on the mark as a whole, as is her alternative refusal of descriptiveness. 6
TTAVUE 3.
The citations to “TTABVUE” throughout the decision are to the Board’s public online
database that contains the proceeding file, available on the USPTO website,
www.USPTO.gov. The first number represents the prosecution history number listed in the
electronic case file and the second represents the page number(s).
Serial No. 86525623
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understand the designation primarily to refer to that genus of goods or services? Id.
The Office has the burden of proving genericness by clear evidence. In re Hotels.com
LP, 573 F.3d 1300, 91 USPQ2d 1532, 1533 (Fed. Cir. 2009) (citations omitted).
Evidence of the public’s understanding of the proposed mark may be obtained from
“any competent source, such as consumer surveys, dictionaries, newspapers and
other publications.” Princeton Vanguard, LLC v. Frito-Lay North Am., Inc., 786 F.3d
960, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015) (quoting In re Northland Aluminum
Prods., Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985)).
II. Analysis
Genericness
1. The Genus of Applicant’s Services.
We first determine the proper genus of the services at issue. We find that the
genus is adequately defined by Applicant’s identification of services, specifically “tax
advisory services; tax assessment; tax consultation; tax preparation.” See Magic
Wand, Inc. v. RDB, Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (“[A]
proper genericness inquiry focuses on the description of [goods or] services set forth
in the [application or] certificate of registration.”). Applicant does not dispute this
point.3

3 4 TTABVUE 8.
Serial No. 86525623
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2. The Public’s Understanding of the Term FEDERAL TAX
RELIEF.
Turning to the second inquiry, how the public understands the term FEDERAL
TAX RELIEF, the relevant public consists of all persons that may owe taxes to the
federal government and have an interest in obtaining tax-related services such as
Applicant’s advice, assessment, consultation, and tax preparation services.
An inquiry into the public’s understanding of the mark requires consideration of
the mark as a whole. In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1421
(Fed. Cir. 2005) citing In re Am. Fertility Soc'y, 188 F.3d 1341, 51 USPQ2d 1832, 1837
(Fed. Cir. 1999). “Even if each of the constituent words in a combination mark is
generic, the combination is not generic unless the entire formulation does not add any
meaning to the otherwise generic mark.” Id. See also Princeton Vanguard, 114
USPQ2d at 1832 (“Regardless of whether the mark is a compound term or a phrase,
the applicable test is the same and the Board must consider the record evidence of
the public's understanding of the mark as a whole.”) (citations omitted).
a. Salient Evidence of Record.
As evidence of the relevant public’s understanding of Applicant’s proposed mark,
the Examining Attorney made of record dictionary definitions for “federal tax” and
“tax relief”:4
Federal Tax: a tax that people pay to the national
government of the U.S.

4 macmilliandictionary.com.

Serial No. 86525623
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Tax Relief: a reduction in tax that you are allowed for a
particular reason.
Based upon these definitions, FEDERAL TAX RELIEF may be defined as the
reduction in the amount of taxes owed and paid to the United States government.
In her two Office Actions, the Examining Attorney provided examples from the
Internet of use of the term “tax relief” by third-parties and in news articles.
Representative examples of such use follow:
Tax relief companies … advertise help for taxpayers in distress. …these
companies claim they can reduce or eliminate your tax debts and stop
back-tax collection by applying for legitimate IRS hardship programs.
(consumer.ftc.gov)

Tax Relief Services. If you decide that you need Professional tax relief
…we can and will help you … (federaltaxresolution.com)

You deserve honest tax relief … (www.brocktaxrelief.com)

The reason for the increasing incidence in tax relief scams is due to the
IRS stepping up its much heavier pursuit of back taxes owed by
taxpayers … (losangeles-tax-attorneys.com)

Tax Relief Solutions. … Recognizing the need for tax relief, IRS
Commissioner Doug Shulman said … (optimataxrelief.com)

• Types of Tax Relief Professionals
• Portland tax relief (Federaltaxresolution.com)

Avoid tax fraud and get tax relief today; we have a solution to any tax
problem. (blogmyirstaxrelief.com)

Thousands of Michigan residents who were hit by the severe storm and
flooding in August may qualify for special tax relief. (freep.com)

In September the Federal Trade Commission charged American Tax
Relief of Beverly Hills with misrepresenting its ability to provide tax
relief for thousands of customers. (usatoday30.com)

Serial No. 86525623
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The Examining Attorney also submitted with her two Office Actions Internet web
pages showing third-party use of “federal tax relief” in connection with the provision
of services similar to those of Applicant and articles and news stories retrieved from
the Internet showing use of “federal tax relief.” Some of the examples provided by the
Examining Attorney show use of “federal tax relief” in connection with tax relief
offered by the federal government. Representative examples of use follow:
Federal Tax Relief. What is Federal Tax Relief? … What can you do to
get the federal tax relief you need to move on with your life? … Your
greatest chance at attaining your goal of federal tax relief is to consider
hiring a highly experienced firm … (victorytaxsolutions.com)

… If you are worried that the costs of expert federal tax relief help will
be too much we offer affordable financing … (defensetax.com)

You deserve … federal tax relief and IRS tax relief.
(www.brocktaxrelief.com)

The North Carolina office of federal tax relief attorney Kenneth L.
Sheppard Jr. and his team … focus on providing tax assistance to
individuals and businesses. … (northcarolinataxreliefattorney.com)

Getting federal tax relief is something that a lot of taxpayers have to
worry about. … (www.finweb.com).

Avoid tax fraud and get tax relief today … federal tax relief and state
tax relief. (blog.myirstaxrelief.com)

Overview of Federal Tax Relief for Businesses. (transform.mo.gov.)

What types of federal tax relief am I entitled to if I lost property in a
disaster? (americanbar.org)

Michigan storm victims get federal tax relief. (freep.com)

Federal Tax Relief Available for Severe Storm Victims. (bkd.com)

Serial No. 86525623
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The Examining Attorney also provided three third-party Supplemental Register
registrations which include disclaimers of “tax relief” two of which identify some of
the same services as provided by Applicant.
Applicant’s specimen shows that Applicant’s services are similar to those
discussed in the above-quoted news items:
Federal Tax Relief is a full service tax solution firm … Free
investigation into your specific Tax situation. We’ll
investigate your case free of charge to see what programs
you qualify for including: Offer in Compromise Currently
not collectible IRS Wage Levy/IRS Wage Garnishment
Release.
The Examining Attorney provided additional webpages from Applicant’s website
which further explain Applicant’s services.
We start by having our in house Tax Specialists contact the
IRS … on behalf of our clients to find out what exactly the
tax amounts are showing as due and if there are any years
of unfiled tax returns. … After we’ve completed the IRS
tax investigation on your behalf, we’ll present you with real
solutions to resolve your tax problems with the IRS.
As set forth above, we find that the Examining Attorney’s evidence shows that
third parties use the term “federal tax relief” generically. See In re Active Ankle
Systems Inc., 83 USPQ2d 1532 (TTAB 2007) (DORSAL NIGHT SPLINT found
generic for orthopedic splints for the foot and ankle based on record that included
third-party use of the entire phrase). Although some of the references in the record
refer to “tax relief” provided by the federal government, others refer to tax relief as a
service provided by tax advisers or consultants such as Applicant. While
acknowledging that the term “tax” is generic for Applicant’s services, Applicant
contends that two of the individual terms comprising FEDERAL TAX RELIEF,
Serial No. 86525623
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namely “federal” and “relief” are merely descriptive of its services and that, as a
result, FEDERAL TAX RELIEF is not generic because these individual terms making
up the proposed mark are not generic. However, the evidence shows that both “tax
relief” and “federal tax” are unitary generic terms. Because “tax relief” has been
shown to be used as a generic unitary term of art in the relevant field, and “federal
tax” has been shown to be a generic category of tax, we actually need not consider the
generic significance of the words “federal,” “tax” and “relief” alone. See In re Shiva
Corp., 48 USPQ2d 1957, 1958 (TTAB 1998). (TARIFF MANAGEMENT found to be a
unitary term used in the trade to describe computer programs for selecting least
expensive long distance carrier). We find that the separate generic elements of
Applicant’s mark retain their generic significance when joined and the combination
of the terms provides no additional meaning. This is proven by the evidence that the
combined term FEDERAL TAX RELIEF is used to identify services which assist or
advise U.S. taxpayers in reducing outstanding U.S. tax debt.
Applicant also argues that its proposed mark is not generic because “the terms
FEDERAL and RELIEF … quite simply, do not identify the genus of the services
provided by Applicant.”5 However, as stated above, we do not look at the terms
separately but in combination to determine the relevant public’s perception of the
combined term in connection with the genus. Princeton Vanguard, 114 USPQ2d at
1830-31. We further note that a mark may not equate to the literal name of the goods
or services for which registration is sought, but still be deemed to be “generic.” See In

5 4 TTABVUE 8.
Serial No. 86525623
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re Wm. B. Coleman Co., 93 USPQ2d 2019, 2027, 2027 n.2 (TTAB 2010) and cases cited
therein. A term that names the central focus, key aspect, or subject matter of the
services is generic for the services themselves. In re Cordua Rests. LP, No. 2015-1432,
2016 U.S. App. LEXIS 8783, __ USPQ2d __ (Fed. Cir. May 13, 2016) (“[A] term is
generic if the relevant public understands it to refer to a key aspect of the genus of
goods or services in question.”). This record establishes by clear evidence that the
term FEDERAL TAX RELIEF is the generic name of the key focus or subject matter
of Applicant's tax advisory, tax assessment, tax consultation and tax preparation
services and the relevant public would understand FEDERAL TAX RELIEF, in the
context of Applicant’s services, to refer to services that can reduce or eliminate a
customer’s U.S. tax liability. Because FEDERAL TAX RELIEF is generic for the key
focus or subject matter of the services, the term FEDERAL TAX RELIEF is likewise
generic for the services themselves.
Descriptiveness and Acquired Distinctiveness
For the sake of completeness, (despite Applicant's failure to address the issue in
its Appeal Brief), and in the event Applicant were to prevail on any appeal of the
genericness refusal, we address the Examining Attorney's alternative finding that
Applicant's mark is merely descriptive and has not acquired distinctiveness.
As a preliminary matter, we note that inasmuch as Applicant initially filed its
application for registration of the proposed mark FEDERAL TAX RELIEF on the
Principal Register pursuant to Section 2(f), Applicant has effectively conceded that
the proposed mark is, at a minimum, descriptive. See The Cold War Museum, Inc. v.
Serial No. 86525623
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Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (“where an
applicant seeks registration on the basis of Section 2(f), the mark's descriptiveness is
a nonissue; an applicant's reliance on Section 2(f) during prosecution presumes that
the mark is descriptive.”) (citations omitted). Applicant also voluntarily entered a
disclaimer of “tax” in its September 10, 2015 Response to the First Office Action which
is an acknowledgement that the individual term “tax” is generic for the identified
services. Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750,
1762 (TTAB 2013) (disclaimer of individual word TOURS in Section 2(f) registration
is a tacit admission that individual term is generic for identified services).
Applicant bears the burden of establishing acquired distinctiveness.
Steelbuilding.com, 75 USPQ2d at 1424; Yamaha International Corp. v. Hoshino
Gakki Co. Ltd., 840 F2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988). Furthermore,
it is settled that “the applicant's burden of showing acquired distinctiveness increases
with the level of descriptiveness; a more descriptive term requires more evidence of
secondary meaning.” Steelbuilding.com, 75 UPSQ2d at 1424, citing In re Bongrain
Intern. (Am.) Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990). Based on the
reasons and evidentiary showing set forth above, we find that Applicant's proposed
mark, if not generic, is highly descriptive, and therefore Applicant's burden is
“concomitantly high.” Steelbuilding.com, 75 USPQ2d at 1424.
In view of the highly descriptive nature of the mark, we agree with the Examining
Attorney that Applicant’s statement of five years substantially exclusive use, which
is the only evidence provided by Applicant to support its Section 2(f) claim, is
Serial No. 86525623
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insufficient to establish that FEDERAL TAX RELIEF has acquired distinctiveness
in connection with tax advisory services, tax assessment, tax consultation, and tax
preparation services. Accordingly, we find that Applicant has not met its burden of
demonstrating that FEDERAL TAX RELIEF is entitled to registration under the
provisions of Section 2(f) of the Trademark Act.
III. CONCLUSION
Based on this record, we find that FEDERAL TAX RELIEF is generic and
incapable of registration for “tax advisory services; tax assessment; tax consultation;
tax preparation services.” Applicant also has not demonstrated that FEDERAL TAX
RELIEF has acquired distinctiveness.
Decision: The refusal to register Applicant’s proposed mark is AFFIRMED on the
ground that it is generic as applied to Applicant’s services; and on the alternative
ground that it is merely descriptive of Applicant’s services and has not been shown to
have acquired distinctiveness.