Intellectual Property/ Technology Law

Trademark Trial and Appeal Board

Nov 20, 2001

No. 75808145 (T.T.A.B. Nov. 20, 2001)

11/20/01

Paper No. 13
HRW

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Intellectual Property/Technology Law
________

Serial No. 75/808,145
_______

Steven J. Hultquist of Intellectual Property/Technology Law
for applicant.

Rebecca Gilbert, Trademark Examining Attorney, Law Office
113 (Meryl Hershkowitz, Managing Attorney).
_______

Before Chapman, Wendel and Bucher, Administrative Trademark
Judges.

Opinion by Wendel, Administrative Trademark Judge:

Intellectual Property/Technology Law has filed an
application to register PATENT ATTORNEYS AT LAW for
“intellectual property legal services.”1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act on the ground that the mark is
merely descriptive when used in connection with the recited

1 Serial No. 75/808,145, filed September 24, 1999, claiming a
first use date and first use in commerce date of August 19, 1999.

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
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2
services. Registration has also been finally refused under
Sections 1, 2, 3 and 45 of the Trademark Act on the ground
that the proposed mark fails to function as a service mark.
The refusals were appealed and both applicant and the
Examining Attorney filed briefs. An oral hearing was not
requested.
Section 2(e)(1) Refusal
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. 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
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3
term describes one significant attribute thereof. See In
re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991).
The Examining Attorney maintains that the term PATENT
ATTORNEYS AT LAW immediately describes a feature, function,
use and purpose of applicant’s intellectual property
services, in that applicant’s services are performed by
patent attorneys at law or attorneys at law who specialize
in patent law. The Examining Attorney has supported her
position with the dictionary definition of “attorney at
law” as “an attorney”2 and by reference to applicant’s
substitute specimens wherein it is indicated that
applicant’s services included patent attorney services by
such statements as “IPTL is a full service intellectual
property firm, providing legal representation in:
Acquisition & Enforcement of Proprietary Rights
(Patents...).” (Exhibits C & D).
Applicant contends that PATENT ATTORNEYS AT LAW is a
suggestive composite mark that is sufficiently incongruous
to create a commercial impression distinct from any
descriptive components. Applicant argues that its mark is
incongruous because it is an odd combination that diverges
from general English word formulations and usages.

2 The American Heritage Dictionary of the English Language (3rd
ed. 1992).
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Applicant states that the term “patent attorney” is
generally used to refer to attorneys who specialize in
patent law and “attorney at law” is generally used for
addressing attorneys with or without specialties. Since
patent attorneys are by requirement attorneys at law, the
addition of the phrase “at law” is said to be superfluous
or redundant on its face. Applicant claims to be the first
and exclusive user of the phrase as a mark and that
applicant has “therefore coined an incongruous and
unconventional phrase, whose facial impropriety attracts
immediate attention of prospective clients.” (Supp. Brief
p. 4). This impropriety is argued to make applicant’s mark
sufficiently distinctive to create an entirely different
commercial impression from either “patent attorneys” or
“attorneys at law.”
While the combination of descriptive terms may result
in a distinctive unitary mark, we do not find that to be
true here. The terms “patent attorneys” and “attorneys at
law” are both highly descriptive of the persons who perform
at least some of applicant’s intellectual property legal
services. The combination remains merely descriptive,
inasmuch as it has been shown by dictionary definition that
an “attorney” may also be called an “attorney at law.”

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Whether or not the phrase PATENT ATTORNEYS AT LAW is
redundant or superfluous, the descriptive significance of
the phrase as used in connection with applicant’s services
would be immediately apparent to prospective clients.
There is no distinctive commercial impression created by
the combination as a whole; there is no suggestive, as
opposed to descriptive, connotation imparted to the term
“patent attorneys” by adding the term “at law.” The
meaning of the composite phrase remains the same; these
services are performed by attorneys at law who specialize
in patent law. If we look at the combination from another
viewpoint, namely, the addition of “patent” to the term
“attorneys at law,” the phrase is clearly not redundant or
superfluous, in that “patent” adds the name of the
specialty of these particular “attorneys at law.”
While applicant attempts to draw a parallel here to
the situation in In re Delaware Punch Co., 186 USPQ 63
(TTAB 1975) wherein the mark THE SOFT PUNCH was found not
to be descriptive for a non-alcoholic soft drink, it is to
no avail. As pointed out by the Board in that case, there
was a clear double entendre projected by the mark. Such is
not the case here. There is but one meaning imparted by
PATENT ATTORNEYS AT LAW and that is immediately and highly
descriptive of a significant feature or characteristic of
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applicant’s services, i.e., that they are offered and
performed by attorneys at law who specialize in patent law,
or in other words, by patent attorneys at law.
Applicant’s argument that it is the exclusive user of
this term as a mark is equally without merit. As we have
often stated, the fact that applicant may be the first
and/or the only user of the term for 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 PATENT ATTORNEYS AT LAW merely
descriptive when used in connection with applicant’s
intellectual property legal services.
Section 1, 2, 3, and 45 Refusal
The second issue is whether PATENT ATTORNEYS AT LAW,
as used by applicant in connection with its legal services,
functions as a service mark to identify and distinguish
applicant’s services from those of others and to indicate
their source. The Examining Attorney maintains that
applicant’s use of its alleged mark is merely in an
informational sense, and thus fails to meet the aforesaid
requirements for a service mark. She describes applicant’s
uses of the term either as a professional designation, as
the title of a paragraph describing applicant’s
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intellectual property legal qualifications, or as a part of
other information about applicant such as its address and
phone number.
Applicant argues that in its usages of the term, such
as in its advertisements (Exhibit D), the “incongruity and
distinctiveness” of the mark is sufficient to create a
commercial impression separate and apart from the other
materials appearing in the advertisement and thus to result
in the term functioning as a service mark. Applicant also
notes the use of the “SM” designation to evidence the
function of this term as a service mark for the services of
applicant listed in these advertisements.
Whether or not a term functions as a service mark
necessarily depends upon how the term is used and how it is
perceived by potential users of the services. To determine
what the perception of a term is, we must look to the
specimens of record, which show how the term is used in the
marketplace. In re Mortgage Bankers Association of
America, 226 USPQ 954, 955 (TTAB 1985).
In the advertisement being relied upon by applicant
(Exhibit D) the term PATENT ATTORNEYS AT LAW appears as
follows:

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Other specimens include newsletters of applicant (Exhibits
A and B) which shows usage of the term in the following
manner:

We are in agreement with the Examining Attorney that
such usages of the term would be perceived by potential
clients as being purely informational in nature. In the
advertisement, the many intellectual services are listed as
being offered by the firm of IPTL (applicant); this is the
source of the services. The term “Patent Attorneys at Law”
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merely conveys information as to the professional capacity
of the persons in the firm. The fact that the “SM”
designation is displayed next to the term cannot in itself
create the commercial impression that the term is being
used as a mark identifying applicant’s services and
distinguishing them from those of others. See In re B.C.
Switzer & Co., 211 USPQ 644 (TTAB 1981). The only usage
which would be evident to potential clients would be as an
indicator of the titles of the persons performing these
services. As we have discussed above, there is no non-
descriptive significance to the term which would raise it
above being purely informational in nature.
In the newsletters of applicant the term serves an
equally informational purpose, indicating the nature of the
persons who comprise the “full service intellectual
property law firm” identified by applicant’s name,
Intellectual Property/Technology Law.
Accordingly, we find that the term PATENT ATTORNEYS AT
LAW as used by applicant in connection with its services
fails to function as a service mark to identify and
distinguish applicant’s services from those of others and
to indicate their source.
Decision: The refusals to register under Section
2(e)(1) and Sections 1, 2, 3, and 45 are affirmed.
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