Paul David Marotta

Trademark Trial and Appeal Board

Aug 5, 2016

No. 86087067 (T.T.A.B. Aug. 5, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: August 5, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Marotta
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Serial No. 86087067
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Megan Jeanne of The Corporate Law Group for Paul D. Marotta.

Jonathan R. Falk, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
_____

Before Taylor, Shaw and Masiello,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
Paul D. Marotta, an individual doing business as The Corporate Law Group
(“Applicant”), seeks registration on the Principal Register of the mark THE
CORPORATE LAW GROUP in standard characters for:
Legal services; Legal services, namely, intellectual
property consulting services in the field of identification,
strategy, analytics, and invention; Legal services, namely,
preparation of applications for trademark registration;
Legal services, namely, providing customized
documentation, information, counseling, advice and
consultation services in all areas of business, securities,
venture capital, corporate governance, and finance; Legal
services, namely, providing customized information,
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counseling, advice and litigation services in all areas of
employment and labor law for both employees and
employers; Legal services, namely, providing customized
information, counseling, advice and litigation services in
all areas of international law; Legal services, namely,
trademark maintenance services, in International Class
45.1
Registration has been refused on the grounds that the mark is generic under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1).2 In the event the mark
is not generic, registration also has been refused on the ground that the mark is
merely descriptive and Applicant has not demonstrated that it has acquired
distinctiveness under Section 2(f). Applicant appealed and the case is fully briefed.
We affirm the refusals to register.
I. Genericness Refusal
Whether a particular term is generic, and therefore cannot be a trademark or
service mark, is a question of fact. In re Hotels.com LP, 573 F.3d 1300, 91 USPQ2d
1532, 1533 (Fed. Cir. 2009). When a proposed mark is refused registration as generic,
the Examining Attorney has the burden of proving genericness by “clear evidence”
thereof. Id.; See also In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567,
4 USPQ2d 1141, 1143 (Fed. Cir. 1987); and In re Gould Paper Corp., 834 F.2d 1017,
5 USPQ2d 1110, 1111 (Fed. Cir. 1987).

1 Application Serial No. 86087067, filed on October 9, 2013 under Section 1(a) of the
Trademark Act, alleging a date of first use of the mark in commerce and anywhere of August
1, 1991.
2 The Examining Attorney also issued a requirement for Applicant to claim ownership of
Registration No. 2750351 for the mark THE CORPORATE LAW GROUP and design which
registered under Section 2(f). The requirement became moot when the mark was cancelled
on March 14, 2014 for failure to file a Section 8 affidavit.
Serial No. 86087067
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The critical issue is to determine whether the record shows that members of the
relevant public primarily use or understand the term sought to be registered to refer
to the category or class of goods or services in question. H. Marvin Ginn Corp. v. Int’l
Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986). Making
this determination “involves a two-step inquiry: First, what is the genus of goods or
services at issue? Second, is the term sought to be registered . . . understood by the
relevant public primarily to refer to that genus of goods or services?” Id. Evidence of
the public’s understanding of a term may be obtained from any competent source,
including testimony, surveys, dictionaries, trade journals, newspapers and other
publications. See Merrill Lynch, 4 USPQ2d at 1143, and In re Northland Aluminum
Prods., Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
Additionally, “[a]n inquiry into the public’s understanding of a mark requires
consideration of the mark as a whole. 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.” In re
Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005).
A. The Genus of Applicant’s Services.
We first determine the proper genus of the services at issue. We agree with
Applicant that the genus is adequately defined by the wording “legal services.”3 See
Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991)

3 Applicant’s Br., p. 8; 4 TTABVUE 9.
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(“[A] proper genericness inquiry focuses on the description of services set forth in the
[application or] certificate of registration.”).
The Examining Attorney argues that the genus should be defined more narrowly
as “corporate legal services.”4 This is an unnecessarily narrow genus. It is well settled
that a mark may be refused registration if it is generic for any of the services
encompassed within the genus. In re Reed Elsevier Props., Inc., 77 USPQ2d 1649,
1654 (TTAB 2005) (“[T]he question of registrability must be determined by
considering any goods or services falling within the literal scope of an
identification.”); See In re Wm. B. Coleman Co., 93 USPQ2d 2019 (TTAB 2010)
(holding the genus “lighting fixtures” to encompass electric candles). Thus, the fact
that Applicant has identified its services broadly as “legal services” will not permit
registration if THE CORPORATE LAW GROUP is generic for any services
encompassed by this broad terminology, including more-narrowly defined services
such as “corporate legal services.” See In re Allen Elec. and Equip. Co., 458 F.2d 1404,
173 USPQ 689, 690 (CCPA 1972) (holding SCANNER merely descriptive of goods
broadly identified as “antennas” which encompassed narrower term, “scanning
antennas”).
B. Primary Significance to the Relevant Public
Next, we must determine whether the primary significance of Applicant’s mark
THE CORPORATE LAW GROUP is understood by the relevant public primarily to
refer to “legal services.” Marvin Ginn, 228 USPQ at 530. The “relevant public” for

4 Examining Attorney’s Br. at 4; 6 TTABVUE 5.
Serial No. 86087067
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services is limited to actual or potential purchasers of the services. Magic Wand, 19
USPQ2d at 1552-53. Here, the “relevant public” consists of all persons seeking legal
services, including individuals, businesses, and even other lawyers.5
We now turn to the evidence of record to determine the relevant public’s
understanding of THE CORPORATE LAW GROUP when used in connection with
“legal services.” The Examining Attorney submitted the following excerpts from
third-party law firm web sites showing their use of the phrase THE CORPORATE
LAW GROUP or CORPORATE LAW GROUP to identify the provision of legal
services in the field of business and corporate law:6
1. Walkercorporatelaw.com – The website of the “Walker Corporate Law
Group, PLLC” which bills itself as “a boutique corporate law firm
specializing in the representation of entrepreneurs and their companies.”
2. Gcorplaw.com – The website of the “Galler Corporate Law Group” which
bills itself as “a boutique law firm based in the Washington, DC area. We
deliver excellent transactional service and business-centric advice to
business clients who value practical answers to their thorniest questions.”
3. Apslaw.com – The website of the law firm Adler Pollock & Sheehan. The
firm’s website states that its “Business and Corporate Law Group offers
a broad range of sophisticated business counseling and transactional
services to a diverse clientele. . . .”
4. Donovanhatem.com – The website of the law firm Donovan Hatem, LLP.
The website states that “Donovan Hatem LLP’s Corporate Law Group
serves clients at all stages of the business lifecycle.” The website frequently
uses the entire phrase “the corporate law group” while describing the firm’s
activities:
In our representation of start-up companies, the Corporate Law
Group frequently advises the founders of start-ups. . . . Also,
during this start-up stage, the Corporate Law Group will often

5 See Applicant’s specimen submitted with the application and the declarations of nine
attorney-clients submitted in support of registration with Applicant’s response of June 17,
2015, pp. 46-63.
6 Office Actions of January 27, 2014 and July 10, 2015. Emphasis added.
Serial No. 86087067
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introduce the company’s founders to our Trusts and Estates
Group for maximization of their estate planning. . . .
With respect to our representation of emerging growth
companies, the Corporate Law Group advises companies
regarding corporate governance, corporate finance, employment
and commercial finance matters. . . .
As the emerging growth company matures into a middle market
company, the Corporate Law Group provides counsel. . . .
The Corporate Law Group brings its experience and expertise
to our representation of start-up, emerging growth and middle
market companies.
5. Thegardnerlawgroup.com – The website of the Gardner Corporate and
Entertainment Law Group. The website uses the entire phrase “the
corporate law group” while describing the firm’s activities: “The
Corporate Law Group engages in a general corporate practice and
represents publicly and privately owned companies.”
6. Greenbergglusker.com – The website of the law firm Greenberg Glusker.
The website describes the activities of the firm’s “Corporate Law Group.”
The website uses the entire phrase “the corporate law group” while
describing some of the firm’s activities: “Attorneys in the Corporate Law
Group include the current president of the Association for Corporate
Growth, Los Angeles Chapter. . . .”
7. Pearce-durick.com – The website of the law firm Pearce & Durick which
states: “Pearce & Durick’s Corporate Law Group provides clients with a
full range of services in support of simple and complex transactions for
corporations of all sizes and scope.”
8. Pecklaw.com – The website of the law firm Peckar & Abramson. The
website uses the entire phrase “the corporate law group” while describing
the firm’s abilities: “The Corporate Law Group: From M&A to IPOs,
answers to business and legal questions . . . Peckar & Abramson’s
Corporate Law Group has the experience and resources to meet your
needs.”
9. Pilieromazza.com – The website of the law firm PilieroMazza which states:
“PilieroMazza is a full service law firm and the members of our Business
and Corporate Law Group often act as a virtual in-house general counsel
to these clients.”
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10. Stark-stark.com – The website of the law firm Stark & Stark which states:
“Our Business and Corporate Law Group represents businesses from
sole operators to Fortune 100 corporations.”
11. Sullcrom.com – The website of the law firm Sullivan & Cromwell which
states: “Sullivan & Cromwell’s General Practice/Corporate Law Group
provides integrated advice and service across a spectrum of practice areas
to clients around the world.”
12. Maaloufashford.com – The website of the law firm Maalouf Ashford &
Talbot. The website uses the entire phrase “the corporate law group” while
describing the firm’s activities: “The Corporate Law group represents
companies in a variety of industries in connection with corporate, securities
and business law matters. . . .”
13. Kmclaw.com – The website of the law firm Kirton McConkie. The website
uses the entire phrase “the corporate law group” while describing the firm’s
abilities: “The corporate law group has a collaborative relationship with
other practice sections in the firm, allowing us to resolve the critical needs
of emerging and established companies in a continually changing
marketplace.”
14. Asantelawgroup.com – The website of the law firm the Asante Law Group
which describes its “CORPORATE LAW GROUP” as being experienced
in a number of areas of corporate law.
15. Mjattorneys.com – The website of the law firm Massillamany & Jeter LLP
providing information about the firm by identifying the leader of its
“CORPORATE LAW GROUP.”
In addition, the Examining Attorney submitted news stories from a variety of
publications where the phrase THE CORPORATE LAW GROUP or CORPORATE
LAW GROUP is used to identify a subgrouping of professionals within an
organization:7
16. A book review from the news web site Bloomberg.com which describes an
author as “a pioneer in developing the concept of the in-house corporate
law group.”

7 Office Actions of December 17, 2014 and July 10, 2015. Emphasis added.
Serial No. 86087067
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17. An article from the Long Island Business News profiling local business
leaders including one individual who is described as a partner in a
“Mineola-based law firm’s corporate law group. . . .”
18. An article from the South Carolina Lawyers Weekly profiling local lawyers,
and including a quote from one lawyer described as the “chair of the firm’s
corporate law group.”
19. An article from The Daily Record of Rochester describing the work of one
attorney in the “corporate law group of Meltzer, Lippe, Goldstein &
Breitstone.”
20. An article from the Cleveland Plain Dealer profiling local lawyers including
one attorney who is described as a member of his firm’s “business and
corporate law group and practices in the health care and real estate
areas.”
21. An article from the website Cincinnati.com profiling local lawyers, and
describing one lawyer as the “director of the corporate law group at the
law firm of Stagnaro, Saba & Patterson. . . .”
22. An article from the Palm Beach Daily News profiling local lawyers, and
describing a lawyer’s move to a firm’s “Business and Corporate Law
Group in its newly opened island office.”
In addition, the Board takes judicial notice of the following dictionary definitions
of the words in the mark, which were not made of record by either party:8
• The – definite article –
1 a —used as a function word to indicate that a following noun or noun
equivalent is definite or has been previously specified by context or by
circumstance
• Corporate – adjective –
1 a : formed into an association and endowed by law with the rights
and liabilities of an individual : incorporated
b : of or relating to a corporation
• Law – noun –
1 a (1) : a binding custom or practice of a community : a rule of conduct
or action prescribed or formally recognized as binding or enforced by a
controlling authority
(2) : the whole body of such customs, practices, or rules
(3) : common law

8 Http://www.merriam-webster.com/dictionary. The Board may take judicial notice of
dictionary definitions. Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 213 USPQ
594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Serial No. 86087067
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• Group – noun –
2 a : a number of individuals assembled together or having some
unifying relationship
The Examining Attorney argues that the foregoing web site excerpts and news
articles demonstrate “that the wording ‘CORPORATE LAW GROUP’ in the applied-
for mark means the part of a law practice that specializes in the needs of businesses
and corporations and thus the relevant public would understand this designation to
refer primarily to that genus of services because it is a commonly used basic term to
describe this part of a legal practice.”9
In response to the refusal, Applicant submitted declarations of acquired
distinctiveness alleging, inter alia, use of the mark since 1991; promotion of the mark
through Internet web pages, Twitter, Facebook, LinkedIn, and Yelp; advertising,
marketing, and promotional expenditures of over $100,000; sponsorship of and
participation in regional events such as the “The Mavericks Surf Contest” and the
“Silicon Valley Marathon;” billings of legal services provided under the mark of
“several millions of dollars;” ongoing efforts to police potentially infringing use of the
mark by others; and a lack of actual confusion with other law firms using the terms
“corporate law group.”10 In addition, Applicant submitted twenty-two declarations in
support of registration of Applicant’s mark from Applicant’s clients;11 letters from
nine attorneys attesting to the professional recognition of Applicant’s mark;12 and

9 Examining Attorney’s Br., p. 5; 6 TTABVUE 6.
10 Applicant’s Response of June 17, 2015, pp. 19-25.
11 Applicant’s Response of November 25, 2014, pp. 12-54.
12 Applicant’s Response of June 17, 2015, pp. 46-63.
Serial No. 86087067
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copies of the following third-party registrations purporting to show that similar
marks have been registered for similar services:13
1. Registration No. 3436135 for the mark THE EMPLOYMENT LAW GROUP
for use in connection with “legal services” (registered under Section 2(f) and
disclaiming “group”).
2. Registration No. 2519230 for the mark SOCIAL SECURITY LAW GROUP
for use in connection with “legal services for individuals seeking social
security disability and supplemental security income claims” (registered
under Section 2(f) and disclaiming “law group”).
3. Registration No. 3105968 for the mark INNOVATION LAW GROUP for
use in connection with “legal services” (registered under Section 2(f) and
disclaiming “law group”).
4. Registration No. 3925182 for the mark WORKERS’ INJURY LAW &
ADVOCACY GROUP for use in connection with “Association services,
namely, promoting the interests of attorneys practicing in the field of
worker’s compensation” (registered under Section 2(f) and disclaiming
“group”).
5. Registration No. 4640530 for the mark R&S INTERNATIONAL LAW
GROUP for use in connection with “legal services” (disclaiming
“international law group”).
Applicant argues that “[t]he evidence proffered to show that THE CORPORATE
LAW GROUP is so commonly generic as to be unregistrable falls far short of the clear
showing necessary to meet the Patent and Trademark Office’s burden.”14 We
disagree. The Examining Attorney has submitted nearly two dozen examples of use
of the term THE CORPORATE LAW GROUP or CORPORATE LAW GROUP by third
parties in connection with legal services. For example, the law firms of Donovan
Hatem, The Gardner Corporate and Entertainment Law Group, Greenberg Glusker,

13 Id. at 65-83; Registration No. 1644671 for the mark CORPLAW and Registration No.
3562397 for the mark 866SUE2WIN.COM PERSONAL INJURY LAW GROUP have been
cancelled. Accordingly, they have not been considered.
14 Applicant’s Br., p. 12; 4 TTABVUE 13.
Serial No. 86087067
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Peckar & Abramson, Maalouf Ashford & Talbot, and Kirton McConkie all use the
entire phrase THE CORPORATE LAW GROUP to refer to their business law practice
groups. The remainder of the evidence uses the phrase CORPORATE LAW GROUP
as a unitary phrase with the same meaning as Applicant’s mark. The absence of the
article “the” from these examples does not reduce their evidentiary value inasmuch
as the presence of the article “the” in Applicant’s mark does not add any source
identifying significance to the mark. See In re Weather Channel, Inc., 229 USPQ 854,
856 (TTAB 1986); and In re The Computer Store, Inc., 211 USPQ 72, 74-75 (TTAB
1981). Thus, even the examples of use of CORPORATE LAW GROUP by itself in the
record are relevant. We find these uses of THE CORPORATE LAW GROUP and
CORPORATE LAW GROUP to be generic, i.e., naming an entity that provides legal
services. Indeed, the evidence shows, as in In re Reed Elsevier, that this case “does
not involve a perceived need for others to use a term, but involves a demonstrated
use of the term by others.” In re Reed Elsevier, 77 USPQ2d at 1657.
With regard to Applicant’s declarations from clients stating that they recognize
THE CORPORATE LAW GROUP to have source indicating significance, we note that
no amount of evidence can transform a generic phrase into a registrable trademark.
See In re Half Price Books, Records, Magazines, Inc., 225 USPQ 219, 222 (TTAB
1984). See also Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 195
USPQ 281 (7th Cir. 1977).
In addition, the dictionary definitions, while not dispositive, support the finding
that the phrase THE CORPORATE LAW GROUP merely refers to a group of lawyers
Serial No. 86087067
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providing legal services in the field of corporate law. See Merrill Lynch, 4 USPQ2d at
1143 (“Evidence of the public's understanding of the term may be obtained from any
competent source, such as purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers, and other publications.”).
Citing Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc. dba Watermark
Cruises, 107 USPQ2d 1750, 1753 (TTAB 2013), Applicant argues that “the evidence
proffered by the Examiner, when considered as a whole, shows a mixed record of use
of the phrase ‘corporate law group’ both generically and as part of trademarks or
tradenames.”15 This argument is unpersuasive. Only two of the twenty-two examples
of third-party use of CORPORATE LAW GROUP listed above can be considered to
use the term “as part of trademarks or tradenames.” Moreover, in Alcatraz Media,
the petitioner “submitted no evidence of use . . . of the [entire mark] per se as a generic
designation for respondent’s services.” Id. at 1763. Here, the Examining Attorney has
included a number of third-party uses of the entire phrase THE CORPORATE LAW
GROUP to refer to corporate law groups providing legal services. See Merrill Lynch,
4 USPQ2d at 1144.
Applicant nevertheless argues that many of the Examining Attorney’s examples
are from obscure publications or are used by law firms in ways that are not directed
to prospective consumers of legal services.16 But the majority of the third-party uses
are from other law firms and we see no reason why prospective consumers, including
other attorneys, would not be familiar with this usage, especially since Applicant

15 Applicant’s Br., p. 12; 4 TTABVUE 13.
16 Applicant’s Br., p. 13-14; 4 TTABVUE 14-15.
Serial No. 86087067
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admits that these examples appear in the “legal/business press.”17 Nor do we have
any evidence that the publications, such as the Cleveland Plain Dealer, the Long
Island Business News, or the Palm Beach Daily News, are so obscure so as to
diminish their evidentiary value.
Applicant also argues that its ownership of two cancelled registrations for the
same mark and the same services serves as confirmation that the USPTO has already
determined that the mark in question is registrable on the Principal Register under
Section 2(f) for the same services as those now sought.18 Applicant’s argument is
unpersuasive. It is well settled that we must assess each application on its own record
and we are not bound by the decisions of Examining Attorneys in other cases. In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
Additionally, registrability must be determined at the time registration is sought. In
re Thunderbird Prods. Corp., 406 F.2d 1389, 160 USPQ 730, 732 (CCPA 1969). The
record in this case convinces us that the applied-for mark is generic for the identified
services.
Similarly, Applicant’s third-party registrations do not support a finding that THE
CORPORATE LAW GROUP is not generic. As discussed above, it is well settled that
we must make our decision in each case on its own merits. “Even if some prior
registrations had some characteristics similar to [another] application, the PTO’s
allowance of such prior registrations does not bind the Board. . . .” Nett Designs, 57

17 Id. at 13.
18 Id. at 20.
Serial No. 86087067
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USPQ2d at 1566; In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635
(Fed. Cir. 2016) (“The PTO is required to examine all trademark applications for
compliance with each and every eligibility requirement, including non-genericness,
even if the PTO earlier mistakenly registered a similar or identical mark suffering
the same defect.”). More importantly, many of the third-party registrations upon
which Applicant relies do not contain the same terms as in Applicant’s mark, disclaim
significant wording, or are not used in connection with legal services. Moreover, these
few third-party registrations are outweighed by the Examining Attorney’s evidence
that THE CORPORATE LAW GROUP is generic when used in connection with legal
services.
Based on the foregoing evidence, we find that there is clear evidence to support a
finding that the relevant public, when it considers the phrase THE CORPORATE
LAW GROUP in connection with legal services, readily understands the phrase to
refer to services of the type identified in the application.
II. Acquired distinctiveness
Although we have found the phrase THE CORPORATE LAW GROUP to be
generic for Applicant’s services, in the event that Applicant’s mark is found to be not
generic, for completeness, we also determine whether Applicant’s proposed mark may
be registered with a showing of acquired distinctiveness under Section 2(f).
As an initial matter, by applying for registration based on acquired distinctiveness
under Section 2(f), Applicant has conceded that the proposed mark is merely
descriptive and it is Applicant’s burden to prove acquired distinctiveness. Yamaha
Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005-1006 (Fed.
Serial No. 86087067
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Cir. 1988); In re Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295 (CCPA
1954) (“[T]here is no doubt that Congress intended that the burden of proof [under
Section 2(f)] should rest upon the applicant”).
As discussed supra, Applicant has been using the mark since 1991. Applicant
promotes the mark through Internet web pages, Twitter, Facebook, LinkedIn, and
Yelp. Applicant states that he has advertising, marketing, and promotional
expenditures of over $100,000. He has sponsored and participated in regional events
such as the “The Mavericks Surf Contest” and the “Silicon Valley Marathon.”
Applicant’s billings of legal services provided under the mark exceed “several millions
of dollars.”19 In addition, Applicant submitted twenty-two declarations in support of
registration of Applicant’s mark from Applicant’s clients20 and letters from nine
attorneys attesting to the professional recognition of Applicant’s mark. 21
The amount and character of evidence required to establish acquired
distinctiveness depends on the facts of each case. Roux Labs., Inc. v. Clairol Inc., 427
F.2d 823, 166 USPQ 34 (CCPA 1970). Evidence of acquired distinctiveness can
include the length of use of the mark, advertising expenditures, sales, survey
evidence, and affidavits asserting source-indicating recognition. However, a
successful advertising campaign is not in itself necessarily enough to prove secondary
meaning. In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999)
(claim based on annual sales under the mark of approximately eighty-five million

19 Applicant’s Response of June 17, 2015, pp. 19-25.
20 Applicant’s Response of November 25, 2014, pp. 12-54.
21 Applicant’s Response of June 17, 2015, pp. 46-63.
Serial No. 86087067
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dollars, and annual advertising expenditures in excess of ten million dollars, not
sufficient to establish acquired distinctiveness in view of highly descriptive nature of
mark). The ultimate test in determining whether a designation has acquired
distinctiveness is Applicant ’s success, rather than its efforts, in educating the public
to associate the proposed mark with a single source. In re Redken Labs., Inc., 170
USPQ 526, 529 (TTAB 1971) (“It is necessary to examine the advertising material to
determine how the term is being used therein, what is the commercial impression
created by such use, and what would it mean to purchasers.).
More evidence is required where a mark is so highly descriptive that purchasers
seeing the matter in relation to the named services would be less likely to believe that
it indicates source in any one party. See, e.g., In re Bongrain Int’l Corp., 894 F.2d
1316, 1318, 13 USPQ2d 1727, 1729 (Fed. Cir. 1990). Thus, a claim that Applicant has
been using the subject matter for a long period of substantially exclusive use may not
be sufficient to demonstrate that the mark has acquired distinctiveness. See In re
Gibson Guitar Corp., 61 USPQ2d 1948, 1952 (TTAB 2001) (66 years of use
insufficient).
After a careful review of the record, we find that Applicant has not shown that the
phrase THE CORPORATE LAW GROUP has acquired distinctiveness. The evidence
of record discussed above clearly establishes that the phrase THE CORPORATE
LAW GROUP is highly descriptive and the evidence submitted by Applicant is
insufficient to show that the relevant consumers recognize this phrase as a mark. See
In re The Paint Prods. Co., 8 USPQ2d 1863, 1867 (TTAB 1988) (declarations must be
Serial No. 86087067
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weighed against the highly descriptive nature of the words that compose the mark).
Thus, despite the many years of use and some regional success in promoting the
mark, given the highly descriptive nature of the phrase, we do not find that THE
CORPORATE LAW GROUP has come to signify the commercial source of the
services, but rather continues merely to inform the consumers about the nature of
the services.

Decision: The refusal to register under Section 2(e)(1) of the Trademark Act on
the ground that the mark is generic is affirmed; and the refusal to register on the
ground that the mark is merely descriptive and that the evidence is insufficient to
show that the mark has acquired distinctiveness under Section 2(f) of the Act also is
affirmed.