Gary L. Green, P.A.

Trademark Trial and Appeal Board

Nov 26, 2001

No. 75642176 (T.T.A.B. Nov. 26, 2001)

11/26/01

Paper No. 9
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Gary L. Green, P.A.
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Serial No. 75/642,176
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Mark Rogers of Speed & Rogers for Gary L. Green, P.A.

Vivian Micznik First, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney).
_______

Before Simms, Bucher, and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

Gary L. Green, P.A. (applicant) filed an application
to register on the Supplemental Register the mark WE MAKE
HOUSE CALLS (in typed form) for “legal services” in
International Class 42. The application (Serial No.
75/642,176) was filed on February 17, 1999, and applicant
claimed a date of first use and a date of first use in
commerce of October 1, 1998.
The Examining Attorney has refused to register
applicant’s mark on the ground that “regardless of the
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/642,176
2
manner of use of the phrase WE MAKE HOUSE CALLS, the words
will not function as a mark because they will be perceived
as informational matter.” Examining Attorney’s Appeal Br.,
p. 5. At this point, we should note that the Examining
Attorney1 stated the mark was refused registration because
it did not function as a mark under Sections 1, 2, and 45
of the Trademark Act. 15 U.S.C. §§ 1051, 1052, and 1127.
However, since applicant has consistently sought
registration on the Supplemental Register, the issue is not
whether the slogan functions as a mark, but whether the
slogan is capable of functioning as a mark. In re Eilberg,
49 USPQ2d 1955, 1956 n.2 (TTAB 1998). In essence, the
Examining Attorney’s position is that applicant’s slogan is
purely information matter that would never be recognized as
a trademark, and it is, therefore, incapable of
registration on the Supplemental Register. Applicant seems
to have understood that the ultimate issue was always
whether its slogan was capable of functioning as a
trademark. See Applicant’s response dated January 26,
2000, p. 4 (“[I]t is respectfully submitted that the slogan
WE MAKE HOUSE CALLS distinguishes, or at a minimum is

1 The current Examining Attorney was not the original Examining
Attorney in this case.
Ser. No. 75/642,176
3
capable of distinguishing, the applicant’s services from
those of others”); Applicant’s Appeal Br., pp. 6-7 (same).
Therefore, we now consider whether applicant’s slogan is
capable of distinguishing applicant’s services from those
of others.
In refusing registration, the Examining Attorney
relies on the following evidence. First, she has submitted
a definition that a “house call” is a “professional visit
made to a home by a professional, especially by a
physician.” Second, she has submitted a significant amount
of evidence that the term “house call” is used to describe
a home visit by many types of professionals. Third, she
has also introduced evidence that attorneys visit clients
in their homes, and that these visits are referred to as
“house calls.” Based on this evidence, the Examining
Attorney argues that applicant’s slogan should be refused
registration on the Supplemental Register.
Applicant responded by pointing out that there is no
evidence that any other attorney uses the exact phrase “we
make house calls,” consumers are not accustomed to the use
of “such claims by lawyers,” and its phrase is featured in
Ser. No. 75/642,176
4
a distinctive and highly stylized fashion.2 Applicant’s
Appeal Br., pp. 4-5.
After the Examining Attorney made the refusal to
register applicant’s slogan on the Supplemental Register
final, applicant filed a notice of appeal. Applicant and
the Examining Attorney have filed briefs. No oral hearing
was requested.
Because we hold that applicant’s slogan is incapable
of distinguishing applicant’s services from those of
others, we affirm the refusal to register.
Applicant’s mark consists of the slogan WE MAKE
HOUSE CALLS in typed form for legal services.
The determination of whether or not a given expression
or combination of words is capable of distinguishing
an applicant’s goods is grantedly not an easy one, but
it seems apparent that every combination of words
cannot accomplish this purpose and that in order to be
registrable on the Supplemental Register, a laudatory
expression must have some degree of ingenuity or say
something in a slightly different way from that
expected to be said about a product.

In re O.R. Mossberg & Sons, Inc., 175 USPQ 191, 192 (TTAB
1972) (MORE GUN FOR THE MONEY for rifles and shotguns
incapable of registration on the Supplemental Register).
See also In re Helena Rubinstein, Inc. 419 F.2d 438, 161

2 The Examining Attorney properly objected to applicant’s list of
registrations, which was unaccompanied by a copy of the
referenced registrations. In re Duofold Inc., 184 USPQ 638, 640
(TTAB 1974).
Ser. No. 75/642,176
5
USPQ 606, 608 (CCPA 1969) (“A term “cannot be registered as
a trademark, even on the Supplemental Register, unless it
is intended primarily to indicate the origin of the goods
and is of such a nature that the ordinary purchaser would
be likely to consider that it indicated such origin”).
Recently, the Federal Circuit held that the slogan THE BEST
BEER IN AMERICA for beer and ale was a “common, laudatory
advertising phrase” that “is incapable of registration as a
trademark.” In re Boston Beer Co., 198 F.3d 1370, 53
USPQ2d 1056, 1058 (Fed. Cir. 1999).
Whether applicant’s mark is capable of distinguishing
its services from those of others must be determined on the
basis of the significance or meaning of the mark as applied
to the services, the context in which the mark is used in
the specimens, and the likely reaction of the average
consumer encountering the mark in its natural environment.
See In re Brock Residence Inns, Inc., 222 USPQ 920, 922
(TTAB 1984), citing, In re Western Union Telegraph Co., 199
USPQ 499 (TTAB 1978). First, we look at the meaning of the
mark. Applicant’s slogan is a simple slogan that says “we
make house calls.” A house call is defined as a
professional visit made to a home, especially by a
physician. The Examining Attorney has made numerous
articles of record to demonstrate that many professions
Ser. No. 75/642,176
6
make visits that are identified as “house calls.” See,
e.g., First Office Action, Stories 2, 411, 413, 423, 600
(veterinarians); Stories 5, 406, 407, 419 (doctors); Story
8 (aquarium installers); Story 9 (nursing students); Story
13 (pet photographers); Story 204 (grandfather clock
repairman); Stories 400 and 815 (computer repairmen); Story
417 (hairstylist); and Story 603 and 1004 (massage
therapists).
Indeed, in addition to these professions, the
Examining Attorney’s evidence shows that attorneys also
make calls.
In their commercials, lawyers say they’ll make house
calls. Wouldn’t you like to see doctors on TV promise
the same? The Virginian-Pilot, April 8, 1999, p. E2.

[The] common goal is to bring lawyers and elderly
clients together, says McBride, primarily by
establishing clinics and through what essentially are
house calls. ABA Journal, March 1999, p. 89.

When Rudman makes house calls, people are more
comfortable because they’re in their own homes and, as
a result, are more candid. New Jersey Lawyer, April
27, 1998, p.1.

Forms are printed in large type. The office is
physically accessible. Lawyers make house calls.
Chicago Lawyer, November 1997, p. 1.

In his quest for clients in a town stuffed with
lawyers, Pena offered the rare service of house calls.
Austin American-Statesman, June 19, 1997, p. D1.

Caruso said he’s a lawyer who makes house calls for
his clients who are housebound. Times-Union, November
4, 1994, p. B4.
Ser. No. 75/642,176
7

It’s not a coincidence that doctors no longer make
house calls, but lawyers do. In fact, you can see the
advertisements for such lawyers on television. Sun-
Sentinel, June 28, 1994, p. 1A.

The evidence shows that the slogan “we make house
calls” will have a readily understood meaning, i.e. that
the lawyers will make a professional visit to a prospective
client’s home.
The context in which the slogan is used on applicant’s
specimens reinforces that meaning. The large Yellow Pages
advertisement has a picture in the upper hand corner that
is apparently a simulation of an attorney making a house
call. Underneath the photograph is the italicized slogan
We Make House Calls. To the right of the picture and
slogan is the following information:
PERSONAL INJURY AND WRONGFUL DEATH CASES
MEDICAL NEGLIGENCE
TRACTOR TRAILER WRECKS
TRAUMATIC BRAIN INJURIES
BIRTH INJURIES

NO RECOVERY, NO FEE
Client may Be Responsible for Costs or Expenses
Home & Hospital Consultation Available for the Seriously
Injured

The rest of the advertisement contains the firm name
and contact information, a notation that “A donation to
MADD is made by this law firm in recognition of every
victim we represent against a drunk driver,” and a seal
Ser. No. 75/642,176
8
containing, inter alia, the name of the firm, the large,
stylized letters GG, and the slogan “We Make House Calls.”
Applicant’s smaller Yellow Pages advertisement is similar
although, in addition to being smaller, it does not contain
the photograph of the simulation of the house call, which
was featured in the larger advertisement.
In these specimens, the phrase “we make house calls”
would simply inform potential clients that the lawyers at
the firm make house calls on prospective clients.
Applicant makes it abundantly clear what the meaning of the
slogan would be when it includes an actual photograph
apparently of a simulation of a house call by an attorney.
Because it would be so clear what the phrase “we make house
calls” would mean to potential clients, the advertisement
goes on to explain the limited circumstances of when the
lawyers for the firm “make house calls” by explaining that
“Home & Hospital Consultation Available for the Seriously
Injured.”
Therefore, the evidence made of record by the
Examining Attorney and the specimens make it clear that the
likely reaction of the average consumer will be to the
slogan. They will likely regard the slogan as simply
informational matter that informs them that these lawyers
Ser. No. 75/642,176
9
make professional visits to homes, i.e. they make house
calls.
While it is true that, for a slogan to be registrable
on the Supplemental Register, it does not require a great
deal of ingenuity or creativity, the slogan WE MAKE HOUSE
CALLS is almost totally devoid of any creativity or
ingenuity. Indeed, it is perhaps the most direct and
unimaginative way to inform potential customers that a law
firm provides the service of making house calls. Applicant
argues that: “There is certainly nothing in the record
that would support a finding that it is ‘a relatively
common practice’ in the legal field to make a claim that a
lawyer makes house calls.” Applicant’s Appeal Br., p. 5.
The fact that many lawyers may not make house calls is not
the test. The evidence clearly shows that lawyers are
among the many professions that make “house calls.”
Applicant’s slogan is a remarkably mundane way to convey
this information to potential clients. It is not the
unusual nature of the service that makes a slogan creative;
it is the ingenuity of the slogan itself. The slogan “All
our lawyers are admitted to the bar in all 50 states” may
be unusual because few lawyers, if any, are admitted to the
bar of all 50 states, but the slogan itself is a mundane
way of informing potential clients of this unusual fact.
Ser. No. 75/642,176
10
Similarly, applicant’s slogan informs potential clients of
what might be perceived as the somewhat unusual service
that its lawyers make house calls. However, it does not do
so in a manner that meets the low threshold for
registrability on the Supplemental Register.
Also, the fact that applicant’s exact phrase was not
found in the search of the electronic database is not
significant. In re Melville Corp., 228 USPQ 970, 971 (TTAB
1986) (“The fact that applicant may convey similar
information in a slightly different way than others is not
determinative”).
Finally, applicant also points out that it uses the
phrase “we make house calls” in its seal or crest along
with its firm name, initials, and a design. We note that
by depicting its mark in a typed drawing, applicant is not
claiming any particular style for its mark. Placing
informational matter in a seal does not, by itself, convert
unregistrable matter into registrable matter. See, e.g.,
In re Franklin Press, Inc., 597 F.2d 270, 201 USPQ 662
(CCPA 1979) (Applicant permitted to disclaim, rather than
delete, informational phrase “Employees represented by ITU,
IPPU & GCU & GAIU” in its mark in a seal design). The
additional use in its seal does not change the meaning of
the slogan. Applicant’s slogan is an ordinary and direct
Ser. No. 75/642,176
11
way of letting potential clients know that its lawyers make
home visits; the evidence shows that other lawyers are
described as making house calls; and applicant’s own
specimens demonstrate that potential clients would
understand from the context that the slogan was
informational. Therefore, the slogan is incapable of
distinguishing the services of applicant from those of
others.
Decision: The refusal to register is affirmed.