Joyce Media, Inc.

Trademark Trial and Appeal Board

May 25, 2007

No. 76455256 (T.T.A.B. May. 25, 2007)

Mailed: May 25, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Joyce Media, Inc.
________

Serial No. 76455256
_______

Robert J. Schaap of Law Offices of Robert J. Schaap for
Joyce Media, Inc.

Amos T. Matthews, Trademark Examining Attorney, Law Office
117 (Loretta Beck, Managing Attorney).
_______

Before Rogers, Kuhlke and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Joyce Media, Inc., has applied to register
on the Principal Register the mark LEGAL DESK in typed or
standard character form for the following services, as
amended:1 “providing advisory notices to others of
governmentally required legal notices taken in newspapers,

1 Applicant’s subsequent amendment to the recitation of services,
filed after oral hearing, is discussed infra.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 76455256
2
magazines, other printed publications and via the global
computer network,” in International Class 35.2
The examining attorney has required a disclaimer of
the term “LEGAL,” contending that it is merely descriptive
of the recited services. When the requirement was made
final, applicant appealed. Applicant and the examining
attorney filed briefs on the issue under appeal.
Applicant’s request for an oral hearing was granted; and an
oral hearing was held as scheduled on February 15, 2007.
Before determining the issue under appeal, some
preliminary matters require our attention.
Amendment to Recitation of Services
In view of the discussion at oral hearing regarding the
accuracy of the recitation of services in the involved
application, applicant and the examining attorney agreed to
further amend the recitation as follows: “providing
assistance to others in achieving governmentally required
legal notices through newspapers and the global computer
network,” in International Class 35. Inasmuch as the
proffered amendment clarifies the services as previously
recited, it is approved and will be entered in due course.

2 Application Serial No. 76455256 was filed on September 25,
2002, based upon applicant’s assertion of April 1992 as the date
of first use of the mark anywhere and in commerce.

Ser No. 76455256
3
See Trademark Rule 2.71(a), 37 C.F.R. §2.71(a). See also
TMEP§ 1402.06 (4th ed., April 2005).
Evidentiary Matters
During the prosecution of this application, applicant
submitted the declaration of Ms. Crystal Flores, a clerk in
the office of applicant’s attorney. In her declaration, Ms.
Flores asserted that she was requested by applicant’s
counsel to conduct “a very brief telephone survey, by
calling several well-known newspapers and ask for the ‘legal
desk’” (December 20, 2005 declaration of Crystal Flores, p.
1-2). Ms. Flores then related the responses of five
national newspapers to her inquiries. In his subsequent
Office action the examining attorney objected to the survey
on various grounds. However, in his brief on appeal the
examining attorney indicated that he “has considered the
survey presented by the applicant but does not find it
persuasive” (brief, unnumbered p. 8). In view thereof,
applicant’s request in its brief that its survey “be
entered” is moot, and we have considered the survey along
with the other evidence of record for its probative value in
determining the issue before us.
Ser No. 76455256
4
Disclaimer
We turn then to the issue on appeal; namely, whether
applicant must disclaim LEGAL apart from the mark as shown
in order to obtain registration.
The examining attorney may require applicant to
disclaim an unregistrable component of a mark otherwise
registrable. See Section 6 of the Trademark Act, 15 U.S.C.
§1056. Merely descriptive terms are unregistrable under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), and therefore may be subject to disclaimer
apart from a mark otherwise registrable. Failure to comply
with a disclaimer requirement is grounds for refusal of
registration. See In re Omaha National Corp., 819 F.2d
1117, 2 USPQ2d 1859 (Fed. Cir. 1987); and In re Box
Solutions Corp., 79 USPQ2d 1953 (TTAB 2006).
A term 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. See, e.g., In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
A term need not immediately convey an idea of each and
every specific feature of the applicant’s goods or services
Ser No. 76455256
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in order to be considered merely descriptive; it is enough
that the term describes one significant attribute, function
or property of the goods or services. See In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates,
180 USPQ 338 (TTAB 1973). On the other hand, if
imagination, thought or perception is required to reach a
conclusion on the nature of the goods or services, the mark
is suggestive and registrable. See In re Nett Designs, 236
F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001); and In re
Gyulay, supra.
It has long been acknowledged that there is a thin
line between terms that are merely descriptive and those
that are suggestive. See In re Atavio Inc., 25 USPQ2d 1361
(TTAB 1992).
Whether a term 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 those goods or
services, and the possible significance that the term would
have to the average purchaser of the goods or services
because of the manner of its use. That a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Ser No. 76455256
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The burden is initially on the United States Patent
and Trademark Office to make a prima facie showing that the
term or word in question would be considered descriptive by
purchasers of applicant’s goods or services and, where
doubt exists as to whether a term is descriptive, such
doubt should be resolved in favor of the applicant. In re
Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141, 1144 (Fed. Cir. 1987).
In support of the refusal, the examining attorney has
made of record the following definition of “legal:”
Of, relating to, or concerned with law: legal papers.
Authorized by or based on law: a legal right.
Established by law; statutory: the legal owner.
In conformity with or permitted by law: legal
business operations.3

The examining attorney further has made of record the
following definition of “legal notice:”
Such notice as is adequate in point of law;
notice as the law requires to be given for the
specific purpose or in the particular case. Such
legal notice is typically required to be
published a specific number of times in a legal
and/or general circulation newspaper.4

In addition, the examining attorney made of record excerpts
of articles from the Lexis/Nexis computer database.

3 The examining attorney relies upon www.answers.com for this
definition.

4 The examining attorney relies upon Black’s Law Dictionary, 6th
Edition (1990) for this definition.

Ser No. 76455256
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Samples from these articles are reproduced below (emphasis
added):
On Oct. 22, a legal notice appeared in the News
Journal announcing the Department of
Environmental Protection is proposing to issue an
air construction permit allowing….
…both DEP and International Paper were hoping to
“sneak” this through, as there was no public
hearing. Well, it didn’t work. We saw the legal
notice and are requesting an administrative
hearing on this permit as it definitely will
impact not only Perdido Bay but….
[Pensacola News Journal (Florida) November 15,
2005]

LEGAL NOTICES
Liquor License Renewals
2005/2006
Notice is hereby given by the Town Council of the
Town of North Providence, being the Licensing…
LEGAL NOTICES
MORTGAGEE’S SALE
21 Bergin Street,
Providence, RI 02908
Will be sold at public auction on November…
[The Providence Journal (Rhode Island) November
15, 2005]

“We have been working on this project for the
last two years. Legal notices and informational
letters were mailed to all of you.”
Some residents acknowledged they signed the
original petition for water but now are backing…
[Buffalo News (New York) November 11, 2005]

It is settled that excerpts from articles taken from the
Nexis database are competent evidence of how a term may be
perceived. See In re Shiva Corp., 48 USPQ2d 1957 (TTAB
1998).
Ser No. 76455256
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As shown by the examining attorney’s evidence, the
term “LEGAL” may be defined as relating to or in conformity
with law. In addition, “legal notice” is defined as such
notice as is adequate or required by law, typically
achieved through publication in a newspaper. Applicant’s
services provide assistance to those seeking to file
governmentally required legal notices through newspapers
and the Internet. Further, applicant indicates in its
brief (p. 10) that “consumers will encounter the mark while
seeking a service that provides the opportunity to post
legal notices.” Thus, the term LEGAL merely describes a
characteristic, function or feature of applicant’s
services; namely, that such services provide assistance in
posting governmentally required legal notices. As such, we
find that the examining attorney has made a prima facie
showing that LEGAL is descriptive of applicant’s services.
We are not persuaded by applicant’s assertion in its
brief (p. 3) that we must determine “[w]hether the term
‘Legal Desk’ in the combination is descriptive to thereby
require disclaimer of the term ‘Legal’ in order to secure
registration.” The issue of whether LEGAL DESK is
descriptive is not before us. Indeed, in his brief
(unnumbered p. 11) the examining attorney “agrees that the
entire mark, when used in connection with the identified
Ser No. 76455256
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services, is not merely descriptive of such services.”
Thus, we need not and do not come to a determination herein
with regard to whether the mark LEGAL DESK is merely
descriptive of the recited services under Section 2(e)(1)
of the Trademark Act.
For this reason, we find that applicant’s survey of
whether several major newspapers are familiar with the term
LEGAL DESK is of very limited probative value. Applicant
asserts that its survey demonstrates that LEGAL DESK has no
meaning to consumers and thus is incongruous. In that
regard, the survey appears to demonstrate that employees of
these five newspapers are unfamiliar with the term LEGAL
DESK. However, even accepting that applicant’s survey
shows LEGAL DESK has no meaning to consumers , such a
showing fails to rebut the examining attorney’s prima facie
showing that LEGAL merely describes applicant’s services.
Applicant provides no evidence, for example, that LEGAL
DESK is a unitary term with its own connotation, such that
LEGAL would lose its descriptive significance.5 Thus, on
this record it is not clear that applicant’s mark connotes
a piece of furniture, a newspaper department, or has any

5 Applicant refers in its brief (p. 15) to the results of a
search of LEGAL DESK on the Google Internet search engine.
However, no such search results were timely made of record in
this proceeding, and applicant’s mere mention thereof does not
provide evidentiary support for its position.
Ser No. 76455256
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other meaning. Again, applicant’s arguments regarding the
meaning, or lack of meaning, of LEGAL DESK fail to rebut
the examining attorney’s prima facie showing that LEGAL
merely describes its services.
Furthermore, applicant provides no authority for its
contention that the examining attorney must demonstrate
that LEGAL DESK merely describes the recited services in
order to support his requirement that applicant submit a
disclaimer of LEGAL alone. To the contrary, in order to
support the instant refusal to register in the absence of a
disclaimer under Section 6 of the Trademark Act, the
examining attorney must demonstrate only that LEGAL merely
describes a function, feature or characteristic of
applicant’s services. On the record of this case, the
examining attorney has met that burden.
In short, the term LEGAL in applicant’s mark
LEGAL DESK, when used in association with applicant’s
services of providing assistance to those seeking to
post legal notices, has a descriptive meaning, and
applicant has submitted no evidence that such meaning
is lost when used in combination with the word DESK.
In view thereof, we find that LEGAL is descriptive of
applicant’s services and that the required disclaimer
is appropriate.
Ser No. 76455256
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Decision: The refusal to register based on
applicant’s failure to disclaim LEGAL is affirmed.
However, if applicant submits the required disclaimer of
LEGAL to the Board within thirty days, this decision will
be set aside, as to the affirmance of the disclaimer
requirement, the application shall be amended to enter the
disclaimer, and the application then shall proceed to
publication.6 See Trademark Rule 2.142(g), 37 C.F.R.
§2.142(g).

6 The standardized printing format for the required disclaimer
text is as follows: “No exclusive right to use LEGAL is claimed
apart from the mark as shown.” See TMEP §1213.08(a) (4th ed.
April 2005).