Robin Sullivan

Trademark Trial and Appeal Board

Aug 18, 2005

No. 76202254 (T.T.A.B. Aug. 18, 2005)

Mailed:
Aug. 18, 2005

Grendel

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Robin Sullivan
________

Serial No. 76202254
_______

Matthew J. Himich of Thompson Coburn LLP for Robin
Sullivan.

Yong Oh (Richard) Kim, Trademark Examining Attorney, Law
Office 115 (Tomas A. Vlcek, Managing Attorney).
_______

Before Chapman, Grendel and Holtzman, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

On January 30, 2001, applicant filed the above-
captioned application, seeking registration on the
Principal Register of the mark TRAFFIC LAW CENTER (in
standard character form) for services recited in the
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76202254
2
application as “legal services.”1 Applicant asserts that
TRAFFIC LAW CENTER has acquired distinctiveness and thus is
registrable pursuant to Trademark Act Section 2(f), 15
U.S.C. §1052(f). The application includes applicant’s
claim of ownership of a prior Principal Register
registration, Registration No. 2371197, which issued on
July 25, 2000 and is of the mark depicted below

(TRAFFIC LAW CENTER disclaimed) for services recited in the
registration as “legal services.”
The Trademark Examining Attorney has issued a final
refusal to register, on the ground that the designation
TRAFFIC LAW CENTER is merely descriptive of applicant’s
recited services, and that applicant’s evidence of acquired

1 The application is based on use in commerce under Trademark Act
Section 1(a), 15 U.S.C. §1051(a), and March 1, 1989 is alleged in
the application as the date of first use anywhere and the date of
first use in commerce.

Ser. No. 76202254
3
distinctiveness is not sufficient to support registration
under Trademark Act Section 2(f).2
Applicant has appealed the final refusal. The appeal
is fully briefed, but no oral hearing was requested.
By requesting registration under the provisions of
Section 2(f) of the Trademark Act, applicant has conceded
that TRAFFIC LAW CENTER is merely descriptive, i.e., that
the mark lacks inherent distinctiveness and is only
registrable on the Principal Register upon a showing of
acquired distinctiveness. See Yamaha International Corp.
v. Hoshino Gakki Co. Ltd., 840 Fl2d 1572, 6 USPQ2d 1001
(Fed. Cir. 1988). Thus, the issue in this case is whether
applicant has carried his burden of establishing, by a
preponderance of the evidence, that his merely descriptive
mark has acquired distinctiveness. See id.
The record shows that applicant has used TRAFFIC LAW
CENTER in connection with his legal services since 1989,

2 The Trademark Examining Attorney also made final a requirement
for information under Trademark Rule 2.61(b). We find that
applicant has complied with the requirement by specifically
stating (in his reply brief) that applicant’s legal services
involve the field of traffic law. Nonetheless, the better
practice would have been for applicant to have specifically
answered the request for information in his response to the
Office action in which the request was first made by the
Trademark Examining Attorney. Applicant’s delay in specifically
responding to the request for information resulted in this
unnecessary issue having to be raised and resolved on appeal.

Ser. No. 76202254
4
with services rendered to over 111,400 clients and revenues
of well over twenty million dollars between 1990 and 2002.
(Second Sullivan Declaration (filed August 8, 2003), at
paragraphs 2 and 4.) From 1992 through June 2003,
applicant spent over three million dollars to advertise and
promote his services under the mark. (Id. at paragraph 3.)
The record includes examples of the following types of
advertising and promotional materials: printouts from
applicant’s website; copies of applicant’s advertisements
in the local yellow pages (Greater St. Louis, Missouri);
photographs of applicant’s building signage at his multiple
locations; and printouts showing applicant’s local media
buys, i.e., the schedules of the airing of applicant’s
radio and television advertising.3 Applicant also has
submitted declarations from various persons who state that,
inter alia, TRAFFIC LAW CENTER is “heavily advertised” in
their area and that it is known as a service mark for
applicant’s legal services. Finally, applicant has
submitted a copy of relevant pages from a licensing
agreement between applicant and a third-party licensee

3 However, applicant has not submitted any examples or copy from
his radio or television advertisements, so we cannot conclude
that such advertising has contributed to recognition of TRAFFIC
LAW CENTER as a service mark.

Ser. No. 76202254
5
which, according to applicant, proves that TRAFFIC LAW
CENTER has monetary value as a mark.
The Trademark Examining Attorney argues that
applicant’s evidence fails to establish that TRAFFIC LAW
CENTER has acquired distinctiveness as a service mark
because, in his advertising and promotional materials,
applicant uses other designations in conjunction with
TRAFFIC LAW CENTER. These include the acronym TLC, the
design of a stop sign, and the designation TRAFFIC LAW
CENTER OF SULLIVAN & ASSOCIATES. The Trademark Examining
Attorney argues that because applicant also uses one or
more of these other designations in his advertising and
promotional materials, purchasers are unlikely to view
TRAFFIC LAW CENTER, per se, as a service mark.
Applicant’s building signage, at his multiple
locations in the Greater St. Louis area, prominently
displays the designation TRAFFIC LAW CENTER. Sometimes the
design of a stop sign appears along with TRAFFIC LAW CENTER
on these building signs, but that design does not detract
from the source-indicating impact of the prominently-
displayed wording TRAFFIC LAW CENTER.
Applicant’s yellow pages advertisements and listings
(in the “Attorneys” section of the Greater St. Louis area
telephone directory), are listed alphabetically under
Ser. No. 76202254
6
TRAFFIC LAW CENTER, not under TLC. Applicant’s yellow
pages listings sometimes, but not always, are listed under
TRAFFIC LAW CENTER OF SULLIVAN & ASSOCIATES. Again,
however, purchasers using the directory will find
applicant’s advertisements alphabetically under TRAFFIC LAW
CENTER, not under SULLIVAN & ASSOCIATES. The fact that
applicant uses the acronym TLC in addition to the wording
for which the letters in the acronym stand, i.e., TRAFFIC
LAW CENTER, does not detract from the ability of TRAFFIC
LAW CENTER, per se, to function as a mark, especially when
TRAFFIC LAW CENTER is used as prominently as it is in the
advertisements.
Aside from his yellow pages advertising, the record
shows that applicant advertises heavily in the local (St.
Louis area) radio and television media. As noted above,
the copy or text of such advertisements is not of record,
so we cannot determine the impact such advertising would
have on purchasers and prospective purchasers of
applicant’s services. However, applicant has submitted the
declarations of three advertising sales managers from the
local radio and television stations which air applicant’s
advertisements. In each of the declarations, the declarant
avers that he is familiar with applicant and his services,
that those services are rendered under the service mark
Ser. No. 76202254
7
TRAFFIC LAW CENTER, and that it is that service mark which
“is heavily advertised” in his station’s geographic area.
Finally, applicant has submitted pertinent pages from
a license agreement between applicant and another lawyer.
The agreement states, inter alia, that “Sullivan
[applicant] has been operating a traffic law related legal
practice known as ‘The Traffic Law Center,’ and that
“Earlywine [the other lawyer/licensee] desires to use the
name ‘traffic law center,’ or similar name(s) and is
willing to compensate Sullivan for same.” The license
grants to Earlywine the exclusive right to use (in a
particular geographic area) the names “Traffic Law Center,”
“TLC,” and “Traffic Law Center of Sullivan & Associates.”
The Trademark Examining Attorney argues that this license
agreement does not prove that TRAFFIC LAW CENTER is a valid
service mark, because the agreement provides a license to
use marks other than TRAFFIC LAW CENTER, and the licensee
could be interested only in using those other marks, i.e.,
“TLC” or “TRAFFIC LAW CENTER OF SULLIVAN & ASSOCIATES.” We
find this to be speculation on the part of the Trademark
Examining Attorney. The first mark mentioned in the
agreement is TRAFFIC LAW CENTER; it is just as likely that
the licensee intends to use that mark primarily.
Ser. No. 76202254
8
We find that the evidence discussed above suffices to
establish that TRAFFIC LAW CENTER has acquired
distinctiveness as a service mark for applicant’s “legal
services.” The mark appears prominently in applicant’s
advertising, albeit sometimes together with subsidiary
marks such as the acronym “TLC” or the more informational
designation TRAFFIC LAW CENTER OF SULLIVAN & ASSOCIATES.
We find that applicant’s Section 2(f) evidence, especially
his sales figures under the mark, the number of clients
applicant has represented while using the mark, and
applicant’s advertisements which prominently feature the
mark, is sufficient, when viewed in its entirety, to show
that TRAFFIC LAW CENTER has acquired secondary meaning as
applicant’s service mark.
Two more matters require discussion. First, we are
not persuaded by the Trademark Examining Attorney’s
contention that TRAFFIC LAW CENTER is a “highly
descriptive” mark. The Trademark Examining Attorney bases
this contention on evidence showing that there are several
other lawyers or law firms around the country which use
TRAFFIC LAW CENTER in rendering their services. However,
each of those third-party uses is use in a proprietary
manner, i.e., as a trade name or service mark, not use in a
descriptive manner. These third-party proprietary usages
Ser. No. 76202254
9
therefore are not evidence that applicant’s mark is highly
descriptive, or that it is anything more than merely
descriptive. Applicant’s mark is but merely descriptive,
and applicant’s burden under Section 2(f) therefore is not
enhanced or increased as it would be if the mark were to be
deemed highly descriptive.
The last matter for discussion is the genericness of
the words TRAFFIC LAW. We find that although applicant’s
mark as a whole is registrable, the wording TRAFFIC LAW is
generic for applicant’s services and that the mark cannot
be registered absent a disclaimer of those words. “Traffic
law” is the field of law in which applicant and some other
lawyers practice. The genericness of the words is
established by applicant’s own usage in his appeal briefs.
See, e.g., page 8 of applicant’s opening brief, where
applicant refers to his contacts “in the field of traffic
law,” and at page 9, where applicant refers to attorneys
“who work in the traffic law field,” and his statement in
footnote 1 of his reply brief that “applicant offers legal
services in the field of traffic law.” Likewise in the
above-discussed license agreement between applicant and
Earlywine, in Section 1.A. is a reference to “traffic law
matters,” and Section 1.C. refers to “practicing traffic
law.”
Ser. No. 76202254
10
In short, TRAFFIC LAW is generic for applicant’s legal
services, and it must be disclaimed apart from the mark as
shown before the mark may be registered.

Decision: Applicant’s showing of acquired
distinctiveness under Section 2(f) is sufficient to render
applicant’s mark registrable on the Principal Register, and
the Trademark Examining Attorney’s refusal on that ground
is reversed. However, the mark will not be forwarded to
publication absent submission and entry of applicant’s
disclaimer of the generic words TRAFFIC LAW. Applicant is
allowed until thirty days from the date of this decision to
submit to the Board a disclaimer, in proper form, of the
words TRAFFIC LAW.4 Once the disclaimer is entered, the
application shall proceed to publication.

4 The disclaimer must read “No claim is made to the exclusive
right to use TRAFFIC LAW apart from the mark as shown.”