LesCon-cierges, Inc.

Trademark Trial and Appeal Board

Sep 18, 2000

No. 75044642 (T.T.A.B. Sep. 18, 2000)

Paper No. 17
RFC
9/18/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re LesConcierges, Inc.
________
Serial No. 75/044,642
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Peter K. Hahn of Luce, Forward, Hamilton & Scripps LLP for
LesConcierges, Inc.
Lisa W. Rosaya, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______
Before Cissel, Bottorff and Quinn, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On January 17, 1996, the above-identified applicant
applied to register the mark “LESCONCIERGES” on the
Principal Register for “personal services, namely providing
personal errand, appointment, meeting planning, party and
special event planning, reservation, shopping and travel
planning services for others,” in Class 42. The basis for
the application was applicant’s claim that it had used the
mark in connection with these services as early as October
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/044,642
2
of 1987 and that the mark had been used in connection with
such services rendered by applicant in interstate commerce
at least as early as February 21, 1991.
In addition to pointing out some informalities that
needed to be resolved, the original Examining Attorney
refused registration under Section 2(d) of the Lanham Act
on the ground that applicant’s mark, as used in connection
with the services set forth in the application, so
resembles the mark shown below,
which is registered,1 with a disclaimer of “LA CONCIERGE,”
for “party planning services,” in Class 41, that confusion
is likely.
At applicant’s request, action on the application was
suspended pending resolution of applicant’s petition to
cancel the cited registration. That proceeding was
resolved after the respondent therein assigned the

1 Reg. No. to 1,790,757, issued on August 31, 1993 to Josephene
B. Hanlon, an individual, based on a claim of use in commerce
since March 15, 1992.
Ser No. 75/044,642
3
registration to applicant.
Along with its request to lift the suspension,
applicant provided a response to the earlier Office Action.
Applicant amended the recitation of services to read as
follows: “making reservations and bookings for
transportation for others,” in Class 39; and “party and
special event planning and arranging for ticket
reservations for shows and other entertainment events,” in
Class 41. In response to the Examining Attorney’s request
for a translation of the mark, applicant provided an
English dictionary definition of the word “concierge” as “a
resident of an apartment building, especially in France,
who serves as a doorkeeper, landlord’s representative, and
janitor,” and as “a multilingual hotel staff member,
especially in Europe, who handles luggage and mail, makes
reservations, and arranges tours for guests." Applicant’s
response also stated that “[t]he mark applied for herein is
the plural of the word ’concierge.’”2

2 Although the typed drawing submitted with this application
shows the mark as “LESCONCIERGES,” the specimens of use show it
as it appears in applicant’s trade name, “LesConcierges,” a
telescoped version of the two words, with no space between the
article “Les” and the plural noun “Concierges.” At no time has
applicant argued that because of the omission of the space
between the two words, the term it seeks to register has any
significance other than as the plural of the word “concierge.”
Ser No. 75/044,642
4
Along with the response and amendment, additional
specimens were submitted in support of the services in
Class 39. The specimens are copies of what appear to be
the same advertisement applicant originally submitted in
support of the services in Class 42. In the advertisement,
applicant describes itself as “the country’s leading
executive concierge service.”
In his next Office Action, the original Examining
Attorney withdrew the refusal under Section 2(d) of the
Lanham Act, but refused registration under Section 2(e)(1)
of the Act on the ground that applicant’s mark is merely
descriptive of the services set forth in the application,
as amended. Further, the Examining Attorney stated that
the term sought to be registered is generic in connection
with the services and is therefore incapable of identifying
applicant’s services and distinguishing them from similar
services provided by others. Accordingly, the Examining
Attorney advised applicant against amending to seek
registration under Section 2(f) of the Act or amendment to
seek registration on the Supplemental Register.
Attached to the Office Action were copies of excerpts
from published articles, retrieved from the Nexis
database, wherein the term “executive concierge” is used in
reference to an individual who runs errands and performs
Ser No. 75/044,642
5
other personal services for clients. The Examining
Attorney submitted this excerpt to show that while the
traditional significance of “concierge” relates to a person
who works for a hotel or an apartment or an office, the
term has come to identify anyone who renders the same kinds
of personal services, even those who are not tied to any
particular location, but instead serve the public at large.
Applicant responded to the refusal to register under
Section 2(e)(1) with argument that the term it seeks to
register is not merely descriptive of the services set
forth in the amended application. In the alternative,
applicant sought registration under Section 2(f) of the Act
based on a claim of acquired distinctiveness. Applicant
contended that the Examining Attorney had improperly
dissected the mark, but that even if such dissection were
allowed, the fact that some of the meanings attributable to
the word “concierge,” such as a hotel employee or a person
who works in an apartment building, do not describe
applicant’s services results in the term sought to be
registered having a double entendre, so that applicant’s
mark is nonetheless registerable. Further, applicant
argued that its recently acquired registration was obtained
without resort to a claim of distinctiveness, and that if
“LA CONCIERGE” is not merely descriptive of applicant’s
Ser No. 75/044,642
6
services, “LESCONCIERGES” is not merely descriptive of them
either. Applicant submitted materials in support of its
acquired distinctiveness claim, including the declaration
of Jane Winter, its president, who provided information
about applicant’s use of the mark in connection with the
services since 1987 and figures regarding the promotion and
sales of applicant’s services under the mark.
Additional advertising materials were also attached to
this response. On the first page of the brochure
submitted, applicant advises that “in these pages you will
learn how your personal concierge can manage so many of
your business and personal needs.” In the second
advertisement submitted, applicant states that
“LesConcierges is not only the world’s leading executive
concierge organization, but it’s also a brilliantly
effective tool.” In another advertisement, applicant again
touts “LesConcierges” as “the country’s leading executive
concierge service.” Yet another advertisement invites
customers “to speak with a concierge” by calling
applicant’s toll-free number.
A new Examining Attorney was assigned to the
application, but he was not persuaded by applicant’s
arguments or by the attachments to applicant’s response.
He maintained that the term applicant seeks to register is
Ser No. 75/044,642
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generic for the services identified in the amended
application, and therefore that no amount of evidence in
support of applicant’s claim of acquired distinctiveness
would be sufficient to establish that the term is
registerable.
Many additional excerpts from articles retrieved from
the Nexis database were included with this action by the
new Examining Attorney. In these excerpts, the term
“concierge” is used to identify both the occupation of
concierges and also the services they render, including
making reservations, acquiring tickets, and other personal
services. Although some of these excerpted stories clearly
refer to applicant and its services, the terms “concierge,”
“concierges” and “concierge service” are clearly used as
generic terms in connection with making reservations and
the other personal assistant types of services generally
characterized by the terms.
Also submitted with this Office Action were copies of
Office records of a number of third-party registrations
wherein “concierge services” are listed as the services in
connection with which the various registered marks are
used.
Applicant’s response was to maintain that the term
sought to be registered is not merely descriptive of
Ser No. 75/044,642
8
applicant’s services, but that even if it were held to be
merely descriptive of them, the term has acquired
distinctiveness based on years of exclusive and continuous
promotion and use. Applicant argued that there is no
evidence that “LESCONCIERGES” is used by anyone other than
applicant, and submitted dictionary excerpts and Internet
and yellow pages directory evidence in support of this
argument. Applicant also submitted a list of third-party
registered marks which applicant claimed include the term
“concierge” without claims of distinctiveness under Section
2(f). Applicant contended that in view of these
registrations, there should be a “strong presumption” that
the term “concierge” is not generic.
Citing In re Johanna Farms, Inc., 8 USPQ2d 1408 (TTAB
1988), applicant argued that a mark combining a foreign
language article with a term found in an English dictionary
does not result in a generic term. Applicant repeated its
arguments that its mark is registerable because it creates
a double entendre, that applicant has met the test for
acquired distinctiveness, and that its ownership of the
above-referenced registration for “La Concierge” and design
is proof that “LESCONCIERGES” has acquired distinctiveness.
The Examining Attorney remained unpersuaded by
applicant’s arguments and submissions. The refusal under
Ser No. 75/044,642
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Section 2(e)(1) of the Act on the ground that the term
applicant seeks to register is generic, and hence incapable
of identifying applicant’s services and distinguishing them
from similar services rendered by others, was repeated and
made final, and applicant’s claim of acquired
distinctiveness was rejected. The Examining Attorney
included additional dictionary definitions showing that
concierges are caretakers or managers and that “les” is the
French plural for the article “the.” Additionally, he made
of record a stack of third-party registrations wherein the
services with which the registered marks are used are
identified as “concierge services.”
Applicant timely filed a notice of appeal, followed by
an appeal brief. Yet another Examining Attorney was
assigned this application, and she timely filed her brief
on appeal, to which applicant filed a timely response.
Applicant did not request an oral hearing before the Board,
so we have resolved this appeal based upon consideration of
the written record and arguments in this application file.
Based on careful consideration of these materials, we hold
that the refusal to register is appropriate because the
term sought to be registered is incapable of identifying
and distinguishing applicant’s services.
Ser No. 75/044,642
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Both applicant and the Examining Attorney agree with
respect to the tests for determining registrability under
Section 2(e)(1) of the Lanham Act. A mark is descriptive
of the products or services with which it is used if the
mark describes or immediately conveys information about a
characteristic, function, feature or purpose of the goods
or services. In re MetPath Inc., 223 USPQ 88 (TTAB 1984);
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). As our
primary reviewing court stated in H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986): "a generic term is the
common descriptive name of a class of goods or services,
and, while it remains such common descriptive name, it can
never be registered as a trademark because such a term is
'merely descriptive' within the meaning of Section 2(e)(1)
and is incapable of acquiring de jure distinctiveness under
Section 2(f). The generic name of the thing is in fact the
ultimate in descriptiveness." A generic designation or one
which is so highly descriptive as to be incapable of
appropriation as a trademark or service mark may not be
rendered registerable even though it may be associated in
the minds of many customers as an indicator of the source
of the goods or services offered by a particular
enterprise. In re Minnetonka, Inc., 212 USPQ 772 (TTAB
Ser No. 75/044,642
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1982); Weiss Noodle Co. v. Golden Cracknel & Specialty Co.,
129 USPQ 411 (CCPA 1961).
Generic names are not registerable. In a similar
sense, highly descriptive terms which are not necessarily
the apt or common names of the goods or services in
question have been held incapable of being appropriated as
trademarks or service marks. In re Boston Beer Co. L.P.,
198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999). A term
which names the people who perform the activity which
constitutes the service is incapable of serving as a
service mark for those services. In re Industrial
Relations Counselors, Inc., 224 USPQ 309 (TTAB 1984)
["Industrial Relations Counselors" held to be an apt name
for "educational services, namely conducting seminars and
research in the field of industrial relations"].
Obviously, practitioners of any profession or vocation
should be allowed to identify themselves accurately, e.g.,
movers must be free to call themselves movers, teachers
need to be able to use the word "teachers" in reference to
themselves, and painters should not have their collective
name removed from the lexicon of terms available for their
descriptive use. In the same sense, the concierges in our
society are entitled to identify themselves as the
Ser No. 75/044,642
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concierges, or, as in the case at hand, by using the French
form of this plural noun.
The record in the instant application clearly
establishes that the term applicant seeks to register,
which applicant itself characterizes as "the plural form of
'concierge,'" is used to identify a service which applicant
itself describes in its advertising as a "concierge
service," rendered by "your personal concierge."
The term applicant has applied to register, as the
plural form of "concierge," is incapable of serving to
identify applicant's concierge services or distinguishing
them from concierge services rendered by other entities.
Applicant's own generic use of the singular form of the
term it seeks to register is strong evidence that the term
is generic and therefore unregistrable, even if some degree
of de facto significance as a mark could be established.
In addition to applicant's use of "concierge" and
"concierge services" as generic terms for applicant's
services, the record, as noted above, is replete with
evidence that "concierge services" is the apt descriptive
name for what applicant does under the designation it seeks
to register.
None of applicant's arguments is persuasive of a
finding that this designation is capable of functioning as
Ser No. 75/044,642
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a service mark for the kinds of concierge services set
forth in this application. The argument that the mark
creates a double entendre because the dictionary
definitions of "concierge" include references to workers in
apartments and hotels is particularly unavailing. The
record, as noted above, clearly establishes that applicant
provides concierge services under the term it seeks to
register. That concierge services are offered to apartment
dwellers and hotel guests does not make the plural form of
the word "concierge" any less generic in connection with
these services. Similarly, applicant's contention that its
ownership of Reg. No. 1,790,757 for the mark "LA CONCIERGE"
and design entitles applicant to registration in the case
at hand is not well taken. As noted above, this
descriptive terminology is disclaimed in that registration.
This hardly converts the plural form of "concierge" into a
registrable service mark.
Additionally, applicant maintains that because it was
unable to find any listings for the combined term
"LESCONCIERGES" in various reference sources, the term
cannot be held to be unregistrable under Section 2(e)(1) of
the Act. As noted above, applicant itself characterizes
the term it seeks to register as the plural form of
"concierge," and promotes its services as "concierge
Ser No. 75/044,642
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services." In the face of these facts, that applicant
could not locate references to the telescoped term
"LESCONCIERGES" is irrelevant.
Applicant's contention that the term it seeks to
register is capable of functioning as a service mark for
applicant's services because it consists of a combination
of a French article and a term found in an English
dictionary is without merit. Although that is one way the
result in the case cited by applicant could be
characterized, it is certainly not the rule established by
that case. There, the Board was presented with "LA
YOGURT," but the record showed that "YOGURT" was, in fact,
an English language word which was not the French word for
“yogurt,” but instead, “a corruption” of it. In the
instant case, however, both the plural article "LES" and
the word "CONCIERGES" are French terms, notwithstanding
that "CONCIERGES" has become a recognized word in English
as well. As applicant admitted, the term it seeks to
register is the plural of "concierge," and applicant's own
advertisements make it clear that applicant provides
concierge services, rendered by concierges.
Lastly, applicant argues that the list of third-party
registrations of marks which contain the word "concierge"
establishes the registrability of the term "LESCONCIERGES."
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As the Examining Attorney points out, however, applicant's
submission of the list did not make the registrations
referred to in it of record, and moreover, even if that
were the case, such registrations would not have the effect
of binding the Examining Attorney or the Board in the case
at hand. We would not have had the records in the
applications which matured into those registrations, so we
would not have had a basis upon which to determine why they
were issued. In any event, it is well settled that each
case must be decided on its own merits, based on its own
record and facts. The record before us in this appeal
provides no basis upon which we could conclude that the
term herein sought to be registered serves as an
identification of the source of the services set forth in
the application.
In summary, the record before us in this appeal
establishes that the term applicant seeks to register is so
highly descriptive of the services in connection with which it
is used that it is incapable of identifying the source of
applicant's services and distinguishing them from services of
similar nature rendered by others. Accordingly, the mark is
unregistrable under Section 2(e)(1) of the Lanham Act,
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and applicant's claim of acquired distinctiveness under
Section 2(f) of the Act must necessarily be rejected. The
refusal to register is affirmed.
R. F. Cissel
T. J. Quinn
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial & Appeal Board
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