Pro Bono Institute

Trademark Trial and Appeal Board

Jul 22, 2008

No. 78762830 (T.T.A.B. Jul. 22, 2008)

Mailed: July 22, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Pro Bono Institute
________

Serial No. 78762830
_______

Perry J. Viscounty and Julie L. Dalke of Latham & Watkins LLP for
Pro Bono Institute.

Linda Lavache, Trademark Examining Attorney, Law Office 106 (Mary
I. Sparrow, Managing Attorney).
_______

Before Holtzman, Rogers and Zervas, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Pro Bono Institute to
register the mark CORPORATE PRO BONO in standard character form
for services ultimately identified as "developing, coordinating
and conducting volunteer projects for organizations providing
legal services at reduced costs; development of business
processes for the analysis and implementation of charitable legal
THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 78762830
2
services strategy plans; business management consultancy services
in the field of legal services," in Class 35.1
The trademark examining attorney has refused registration
under Section 2(e)(1) of the Trademark Act on the ground that the
mark is generic for the services, or if not generic, that the
mark is highly descriptive of the services and that applicant's
evidence is insufficient to show that the mark has acquired
distinctiveness under Section 2(f) of the Act.
When the refusal was made final, applicant appealed. Both
applicant and the examining attorney have filed briefs.
Turning first to the question of genericness, the examining
attorney argues that CORPORATE PRO BONO is generic for providing
free or reduced cost legal services by corporations, and for the
type of program through which such services are provided. The
examining attorney has submitted definitions of the individual
words in the mark, "corporate" and "pro bono," including the
following:

1 Serial No. 78762830, filed November 29, 2005, based on an allegation
of first use and first use in commerce in September 2000. The
application was amended to include a claim of ownership of Registration
No. 3297327 for the mark LAW FIRM PRO BONO CHALLENGE on the Principal
Register; Registration No. 3290424 for the mark PRO BONO INSTITUTE
("Institute" disclaimed) under Section 2(f) of the Trademark Act; and
Registration No. 3210560 for the mark LAW FIRM PRO BONO PROJECT also
under Section 2(f) of the Act; all for the same or essentially the same
services as those herein. These registrations will be discussed later
in this opinion. Applicant has also claimed ownership of Registration
No. 3278152 for the mark PRO BONO WIRE on the Supplemental Register for
"providing via email newsletters in the field of pro bono legal
services" in Class 41.
Serial No. 78762830
3
"Pro bono"
FUNCTION: adjective
"being, involving, or doing legal work donated especially
for the public good
Merriam-Webster Online Dictionary (ask.com)

"Corporate"
ADJECTIVE:...2. Of or relating to a corporation: corporate
assets; corporate culture.
The American Heritage Dictionary of the English Language (4th
ed. 2000) (bartleby.com)

The examining attorney has also introduced a number of
articles from the Lexis/Nexis database and printouts from
numerous third-party websites containing references to "corporate
pro bono." Representative examples of these articles and
websites are set forth below (emphasis added).
● ... Freddie Mac's 70+ attorney Legal Division has run an
award-winning pro bono program in conjunction with Legal
Services of Northern Virginia, Inc. (LSNV) since 1991. This
program fits neatly with the corporate mission and the
emphasis on giving back to our community.
...
Considerations in establishing a corporate pro bono program.
Pro bono work does require a commitment of employee time and
resources. For this reason, support from corporate
management is crucial to a program's success. Once this
support is in place, consider these matters for building an
in-house pro bono program: ...
Andrea L. Bridgeman, Corporate Pro Bono - The Ins and Outs
of giving Back (vsb.org)

● Legal Services of Northwest Jersey
Volunteer Lawyer Program
LSNWJ encourages the participation of private attorneys in
the delivery of legal services to low-income people through
its Volunteer Attorney Program (VLP). ...
...
VLP opportunities are available for corporate counsel, as
well. LSNWJ operates a VLP Program with Merck & Co., Inc.
Serial No. 78762830
4
through which clients receive pro bono services in tenancy,
domestic violence, bankruptcy and divorce matters. LSNWJ is
available to other corporate counsel departments to conduct
training and establish similar corporate pro bono programs.
(lsnj.org)
● Corporate Counsel Section Profile
By Section Chair-Elect Steven H. Mosenson
...
8. Pro Bono Program
...to develop ways in which in-house counsel can perform pro
bono service. In addition to a special issue of INSIDE, the
committee provides regular liaison between members and pro
bono organizations, and is co-sponsoring a program on
corporate pro bono this spring in Rochester.
New York State Bar Association
(nysba.org)

● The Metropolitan Corporate Counsel
Expanding Pro Bono Services
The Texas Access to Justice Commission created the Corporate
Counsel Committee in 2004 to encourage participation in pro
bono legal services by in-house counsel. The committee
promotes funding for legal aid and pro bono contributions by
corporate counsel.
...
The committee partners with the Association of Corporate
Counsel (ACC) to develop corporate pro bono summits in
cities across Texas. ...
...
Designed specifically for corporate legal departments, the
Houston summit explained the need for pro bono involvement
by in-house counsel, discussed ways to develop and support
pro bono projects, and explored opportunities for corporate
volunteers. ...
(Metrocorpcounsel.com)

● HEADLINE: Legal Aid's Partnership with Pfizer Inc.
Pfizer Inc. has played a leadership role with its
outstanding commitment to the provision of civil legal
assistance to low income New Yorkers, both in terms of pro
bono representation and financial support.
... In addition, Pfizer has provided outstanding financial
support to The Legal Aid Society. In 2004, The Legal Aid
Society honored Pfizer Inc. for creating the prototype for
corporate pro bono. Pfizer established and funded the Pro
Bono Adoption Project, that brought together eight
Serial No. 78762830
5
distinguished law firms, MFY Legal Services, Inc. and The
Legal Aid Society. The Project has been instrumental in
finding permanent adoptive homes for numerous foster
children.

... Additionally, training programs for nonprofit
organizations, developed and sponsored by Pfizer, have been
an invaluable support to the Society's staff.
The Metropolitan Corporate Counsel (April 2006 Northeast
Edition)

● Pro Bono Initiative
A Joint project of The Chicago Bar Foundation and Public
Interest Law Initiative
The Pro Bono Initiative is your pro bono resource for
establishing or enhancing a law firm or corporate pro bono
program in Illinois
(probonoinitiative.org)

● San Francisco Business Times
Pro bono on the clock
...
Intel's lawyers are at the forefront of a growing movement
among in-house attorneys. Growing numbers of companies --
including Hewlett-Packard Co., Symantec Corp. and Fireman's
Fund Insurance Co. -- are setting up so-called corporate pro
bono programs.

Just like at law firms, some of which are known for their
pro bono work, these corporate pro bono programs match
seasoned lawyers with people or organizations that often
can't pay for their expertise.

One major difference.

Corporate pro bono programs diverge from law firms' programs
in one significant way: In-house lawyers shy away from
controversial cases. A law firm might jump at the chance to
argue for gay marriage; take on the federal government over
Guantanamo Bay prisoners or help a religious group. But
what is a feather in the cap for private lawyers would be a
thorn in the side for a company that doesn't want publicity
for taking on an issue that might irritate customers.

Company executives in increasing numbers are giving the go-
ahead to corporate pro bono programs, despite the fact they
pull in-house lawyers away from their corporate work. ...
Serial No. 78762830
6
(Sanfrancisco.bizjournals.com)

● The Missouri Bar
Missouri's New Corporate Pro bono Program -- An Opportunity
to Show the Nation
...
In April, The Missouri Bar launched a new, statewide
corporate pro bono program, the first of its kind for any
state bar in the nation. ...
...
How Does the Program Work?
A special website...has been developed by Wayne Greer of The
Missouri Bar staff, where not-for-profit organizations,
corporate counsel and private law firms can register to
participate in the program. The web page includes
descriptions of pro bono opportunities that are uniquely
tailored to corporate counsel...
Mobar.org

● HEADLINE: Duty Bound: You don't have to work for a large
legal department to further the public good
...
But what does it really mean to do pro bono? The term is
derived from the Latin phrase pro bono publico, meaning "for
the public good." What "public good" means is certainly
open to debate. For example, is corporate pro bono less
valuable if it also benefits the company? Think of a drug
company trying to target the elderly with a new drug and
therefore doing a lot of pro bono at nursing homes, ....
Inside Counsel (November 2007)

Applicant, for its part, argues that it is not a law firm,
nor does it render pro bono legal services. Applicant states
that it is a non-profit organization supporting law firms in
their endeavors to provide charitable legal services. Applicant
also states that all of its services are centered around
assisting law firms and "other entities" providing charitable
legal services. (Resp. to Office Action dated April 9, 2007.)
Serial No. 78762830
7
The test for determining whether a mark is generic involves
a two-step inquiry. First, what is the genus (category or class)
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 (category or class) of goods or services? See In
re Reed Elsevier Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378,
1380 (Fed. Cir. 2007) (quoting H. Marvin Ginn Corporation v.
International Association of Fire Chiefs, Inc., 782 F.2d 987, 228
USPQ 528, 530 (Fed. Cir. 1986)).
The Office has the burden of proving the genericness of a
term by "clear evidence" of the public's understanding thereof.
In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567,
4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
1. The genus of applicant's services and
the relevant public for the services

There is no dispute that the genus of services is the
wording used in the recitation, "developing, coordinating and
conducting volunteer projects for organizations providing legal
services at reduced costs; development of business processes for
the analysis and implementation of charitable legal services
strategy plans; business management consultancy services in the
field of legal services." In fact, applicant states in its brief
(p. 3) that its goal is "to substantially increase the amount of
Serial No. 78762830
8
pro bono work performed by in-house counsel and to enhance the
pro bono culture of in-house legal departments."
The relevant public for applicant's services includes
corporate counsel and/or the legal departments of corporations
that are interested in setting up pro bono programs or engaging
in pro bono legal services.
2. The meaning of CORPORATE PRO BONO to the relevant public
Evidence of the relevant public's understanding of a term
may be obtained from any competent source including consumer
surveys, dictionary definitions, newspapers and other
publications. See Reed Elsevier Properties Inc., supra at 1380;
and In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227
USPQ 961, 963 (Fed. Cir. 1985).
The evidence clearly demonstrates that CORPORATE PRO BONO is
generic for applicant's services. It is clear from the Nexis
articles and third-party websites that the phrase "corporate pro
bono" is commonly used by others to denote free or reduced cost
legal assistance provided by corporate counsel or corporate legal
departments. See In re Reed Elsevier Properties Inc., supra at
1381 (Fed. Cir. 2007) (third-party websites are competent sources
to show what the relevant public would understand a term to mean,
and "they provide substantial evidence to support the Board's
findings.")
Serial No. 78762830
9
Although applicant itself is not providing the legal
services, the term "corporate pro bono" identifies the central
focus or subject matter of its services, that is, establishing or
helping corporate counsel or corporate legal departments
establish and manage programs to provide corporate pro bono. A
term that names the central focus or subject matter of the
services is generic for the services themselves. See Id. at 1380
(LAWYERS.COM generic for online information exchange in the
fields of law, legal news, and legal services. Although
applicant argued that it was not seeking to register its mark for
offering services of lawyers, the Court agreed with the Board
that "a central and inextricably intertwined element of [the
claimed] genus is information about lawyers and information from
lawyers."). See also In re A La Vielle Russie Inc., 60 USPQ2d
1895 (TTAB 2001) (RUSSIANART generic for particular field or type
of art and also for dealership services directed to that field);
In re Log Cabin Homes Ltd., 52 USPQ2d 1206 (TTAB 1999) (LOG CABIN
HOMES generic for a type of building and also for architectural
design services directed to that type of building and for retail
outlets featuring kits for construction of that type of
building); In re Web Communications, 49 USPQ2d 1478 (TTAB 1998)
(WEB COMMUNICATIONS generic for publication and communication via
the World Wide Web, and also for consulting services directed to
assisting customers in setting up their own Web sites for such
Serial No. 78762830
10
publication and communication); and In re Harcourt Brace
Jovanovich, Inc., 222 USPQ 820 (TTAB 1984) (LAW & BUSINESS
incapable of distinguishing applicant's services of arranging and
conducting seminars in the field of business law).
Indeed, "corporate pro bono" is not only used by these third
parties to refer to the provision of legal services. The
evidence shows that the term is also used by organizations, bar
associations, special committees, and coordinators of other pro
bono programs in connection with providing corporations with the
resources and assistance needed to develop and establish
corporate pro bono programs. In other words, the evidence shows
that the term is used by others to refer generically to the same
type of services that applicant provides.
In addition to the evidence of third-party use noted above,
applicant's own promotional materials (from its website
corporateprobono.org) show use of "corporate pro bono" in a
generic manner:
Corporate Pro Bono
Quick Links
Read About Corporate Best Practices
Summaries of corporate pro bono models selected for their
innovation, endurance, and accomplishment

Applicant argues that "many of the third-parties" in the
examples cited by the examining attorney "are a sponsor,
supporter, or leader of Applicant's organization" and that many
Serial No. 78762830
11
of the articles are referring to applicant's services. (Brief,
p. 4.) Applicant states, for example, that Andrea L. Bridgeman
(see vsb.org) is a real estate/contracts attorney at Freddie Mac
in McLean Virginia and that Freddie Mac "is a supporter" of
applicant's program, as are Pfizer (see The Metropolitan
Corporate Counsel) and Merck (see lsnj.org), and that these
companies are listed under the "Supporters" link on applicant's
website, as shown on the printout from corporateprobono.org.
Applicant maintains that the articles and web pages "provide
conclusive evidence of the wide spread use of CORPORATE PRO BONO
associated with one organization - the Applicant." These
arguments are not persuasive.
First, merely because these companies or organizations are
familiar with or contribute to applicant's "corporate pro bono"
program and services does not necessarily indicate recognition of
"CORPORATE PRO BONO" as a trademark. The phrase "corporate pro
bono" is used by these third parties in a generic manner, not in
a source-indicating manner. See In re American Institute of
Certified Public Accountants, 65 USPQ2d 1972, 1983 (TTAB 2003)
("We acknowledge that these two constituent groups from the
relevant public—state boards and competitors of applicant in the
field of offering exam preparation materials and practice
examinations—appear to recognize that the UNIFORM CPA EXAMINATION
is a product of the AICPA. Nonetheless, that recognition has not
Serial No. 78762830
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stopped many entities within these groups from utilizing 'CPA
exam' and 'CPA examination' on their web pages and in their
materials in a manner that would be perceived as generic...").
If anything, the evidence shows that even those organizations
which are familiar with applicant's services plainly do not
recognize "corporate pro bono" as a mark or as a term uniquely
associated with applicant. In fact there are no references in
the cited Nexis or website materials to applicant or its
services. We also note that applicant's web page identifies
applicant's company, "Pro Bono Institute" (e.g., "Please send
checks made payable to the Pro Bono Institute") and it also
contains frequent references to applicant's "corporate pro bono"
program by the abbreviation "CPBO" (e.g., "For more information,
...contact the CPBO staff..."; "ABOUT CPBO"; listings of "CPBO'S
Leaders" and "CPBO's Supporters"; "If you would like to list your
organization on the CPBO web site...just complete the
organization form."). It may well be that applicant's clients
and supporters view the designations "Pro Bono Institute" and
"CPBO," rather than CORPORATE PRO BONO, as applicant's source-
identifying marks.
Moreover, the fact that "corporate pro bono" is often
(although not always) used in its adjectival form to refer to a
type of program or project does not detract from its generic
meaning. See Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628,
Serial No. 78762830
13
1630 (TTAB 1998) (adjectival use of "mass flow" in connection
with the meters that measure mass flow [namely, mass flowmeters]
does not remove the term from being generic; "'Mass flow' is the
name of a meter in the same way as 'gas' and 'water' name types
of meters."). See also Roselux Chemical Co., Inc. v. Parsons
Ammonia Co., Inc., 299 F.2d 855, 132 USPQ 627, 634 (CCPA 1962)
("SUDSY", as an adjective, is "half of a common descriptive name"
[for "sudsy ammonia"] and "as such it is clearly, and in common
parlance, a type designation"); and In re Central Sprinkler Co.,
49 USPQ2d 1194, 1198 (TTAB 1998) (ATTIC generic for attic
sprinklers; "[t]he fact that applicant has chosen to not include
the term "sprinkler" in the mark sought to be registered should
not lead to the registrability of ATTIC standing alone).
Because we have determined that CORPORATE PRO BONO is
generic, applicant's claim that the designation is registrable on
the Principal Register under Section 2(f) is unavailing.
Nevertheless, for purposes of a complete record, we will now
assume that CORPORATE PRO BONO is not generic and decide the
questions: Is the mark merely descriptive, and if so, has
applicant established its alternative claim that the mark has
acquired distinctiveness?
If CORPORATE PRO BONO is not generic, then the term is
certainly highly descriptive of applicant's services. The
dictionary definitions, Nexis articles, website printouts and
Serial No. 78762830
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applicant's own promotional materials show that CORPORATE PRO
BONO is highly descriptive of a significant feature or function
of applicant's services. There is no question that applicant's
clients, sponsors and participants would immediately, and without
the exercise of any imagination, understand that applicant's
CORPORATE PRO BONO services will provide them with the assistance
and resources needed to establish and manage programs to provide
"corporate pro bono" services to the public.
We turn then to applicant's evidence of acquired
distinctiveness. The burden is on applicant to show acquired
distinctiveness, and the more descriptive the term, the heavier
that burden. See Yamaha International Corporation v. Hoshino
Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988).
In considering all of the evidence, and the highly descriptive
nature of CORPORATE PRO BONO for the identified services, we find
that applicant has not met this burden.
In support of its claim of acquired distinctiveness,
applicant has submitted a declaration attesting to applicant's
five years of substantially exclusive and continuous use of the
mark in commerce. The Board has consistently held that where, as
here, the term sought to be registered is highly descriptive, a
mere statement of five years of use is insufficient to establish
acquired distinctiveness. See In re Synergistics Research
Corporation, 218 USPQ 165, 167 (TTAB 1983) and cases cited
Serial No. 78762830
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therein; and In re Mine Safety Appliances Co., 66 USPQ2d 1694,
1698 (TTAB 2002).
Furthermore, based on this record, there is at least a
question as to whether applicant has made substantially exclusive
use of the term "corporate pro bono." Without substantially
exclusive use, the term at issue does not point to one unique
source. Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222
USPQ 939, 940-941 (Fed. Cir. 1984) ("When the record shows that
purchasers are confronted with more than one (let alone numerous)
independent users of a term or device, an application for
registration under Section 2(f) cannot be successful, for
distinctiveness on which purchasers may rely is lacking under
such circumstances").2
Applicant also argues that applicant's organization "has
grown exponentially with over thirty-five corporate supporters,
and thirty-five law firm sponsors"; that applicant recently
provided a "Corporate Pro Bono Challenge" which had over fifty
entities participating in the challenge, including a number of
large corporations such as 3M Company and The Coca-Cola Company;
and that, as shown on its website, there are many entities and

2 The requirement for substantially exclusive use makes allowance for
inconsequential or infringing use by others that will not invalidate
applicant’s claim that its mark has acquired distinctiveness. L.D.
Kichler Co. v. Davoil Inc., 192 F.3d 1349, 52 USPQ2d 1307, 1309 (Fed.
Cir. 1999). There is nothing of record to indicate that these are
infringing uses; and the number and nature of the third-party uses do
not appear to show inconsequential use.
Serial No. 78762830
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individuals that participate in applicant's "CORPORATE PRO BONO"
program.
Applicant's statements are unverified, and moreover, as we
indicated earlier, there is no evidence that participation by
these organizations or their sponsorship of applicant's
"corporate pro bono" program evidences recognition of CORPORATE
PRO BONO as a mark associated uniquely with applicant.
We turn then to applicant's prior registrations. As noted
earlier, applicant has claimed ownership of the following
registrations on the Principal Register, all for services
essentially the same as those recited herein: Registration No.
3290424 for the mark PRO BONO INSTITUTE ("Institute" disclaimed)
under Section 2(f) of the Trademark Act; Registration No. 3297327
for the mark LAW FIRM PRO BONO CHALLENGE on the Principal
Register; and Registration No. 3210560 for the mark LAW FIRM PRO
BONO PROJECT under Section 2(f) of the Act.
Trademark Rule 2.41(b) provides in relevant part that "In
appropriate cases, ownership of one or more prior registrations
on the Principal Register...of the same mark may be accepted as
prima facie evidence of distinctiveness." To the extent, if any,
that applicant is relying on these registrations as evidence of
acquired distinctiveness, the evidence is not persuasive. First,
applicant has merely listed the registrations, and printouts of
Serial No. 78762830
17
the registrations were never made of record.3 Thus, applicant
has not demonstrated that it owns any prior registrations.
Nevertheless, even if the registrations were properly of record,
none of the registrations is for the "same mark" as required by
Trademark Rule 2.41(b). As set forth in In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir.
2001), a proposed mark is the "same mark" as a previously-
registered mark for the purpose of Trademark Rule 2.41(b) if it
is the "legal equivalent" of such mark. A mark is the legal
equivalent of another if it creates the same, continuing
commercial impression such that the consumer would consider them
both the same mark. The marks in these three registrations are
not legal equivalents to the mark herein as they clearly do not
convey the same meaning or commercial impression. Thus,
applicant's ownership of registrations covering different marks
is irrelevant to the question of whether the mark in this case
has acquired distinctiveness. See In re Parkway Machine Corp.,
52 USPQ2d 1628 (TTAB 1999).
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

3 The examining attorney mistakenly refers to these registrations as
"third-party registrations" when in fact applicant claimed ownership of
the registrations in its request for reconsideration dated November 8,
2007.
Serial No. 78762830
18
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.