Vicki Roberts

Trademark Trial and Appeal Board

May 2, 2008

No. 76649075 (T.T.A.B. May. 2, 2008)

Mailed: May 2, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Vicki Roberts
________

Serial No. 76649075
_______

Robert J. Schaap of Law Offices of Robert J. Schaap for
Vicki Roberts.

Steven W. Jackson, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Grendel, Rogers and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Vicki Roberts (applicant) has applied to register the
designation shown below as a mark on the Principal Register
for the following services, as amended: “providing
professional legal services, namely counseling in legal
matters, drafting documents, and representation in
adversarial and administrative matters” in Class 42.

In addition, applicant submitted the below specimen of use
with her application.
THIS OPINION IS
A PRECEDENT OF
THE T.T.A.B.
Ser No. 76649075
2

Ser No. 76649075
3
Applicant claimed first use and first use in commerce
of the proposed mark as of November 1999.
On April 27, 2006, the trademark examining attorney
issued his first Office action, requiring applicant to:
amend her recitation of services; amend the classification
of services to Class 42; submit a standard character claim
for the drawing of her mark; and either submit a substitute
specimen that agrees with the mark as depicted on the
drawing or amend the application to seek registration under
Section 1(b) of the Trademark Act.
In her October 27, 2006 response, applicant amended
the identification and classification of services as
indicated above; declined to submit a standard character
claim for the drawing of her mark; and submitted by
declaration the substitute specimens displayed below,
consisting of a printout from an Internet message board
showing applicant’s profile page as well as a copy of
applicant’s letterhead.
Ser No. 76649075
4

Ser No. 76649075
5

Ser No. 76649075
6

On December 22, 2006, the examining attorney issued a
“final” Office action accepting applicant’s amended
recitation and classification of services; withdrawing the
requirement that the drawing match the specimens of record,
and refusing registration under Sections 1, 2, 3 and 45 of
the Trademark Act, 15 U.S.C. §§ 1051, 1052, 1053 and 1127,
on the ground that the proposed mark, as used on the
specimens of record, fails to identify and distinguish
applicant’s services from similar services of others or
indicate their source.
In her December 26, 2006 response, applicant submitted
arguments in favor of her position that the applied-for
designation functions as a mark. In addition, applicant
submitted by declaration additional “samples” in the form
Ser No. 76649075
7
of photographs of billboards, campaign posters, magazine
and Internet articles, and a portion of a book, all
displaying the Internet website address www.restmycase.com
in connection with applicant.
On January 16, 2007, the examining attorney issued an
Office action continuing the refusal to register under
Trademark Act Sections 1, 2, 3 and 45.
On June 26, 2007, applicant submitted additional
arguments in support of registration and resubmitted by
declaration the above-noted substitute specimens and
evidence. In addition, applicant filed with the Trademark
Trial and Appeal Board a notice of appeal of the examining
attorney’s refusal to register.
That same day, the instant appeal was instituted.
Applicant and the examining attorney have filed briefs on
the issue under appeal.
Timeliness of Appeal
As a preliminary matter, we note that an appeal may be
taken only after the examining attorney has issued a final
refusal or a second refusal on the same ground. See
Trademark Rule 2.141. See also TBMP §1201 (2d ed. rev.
2004), and the authorities cited therein. In this case,
the examining attorney first raised the refusal to register
under Trademark Act Sections 1, 2, 3 and 45 that is the
Ser No. 76649075
8
subject of this appeal in his second, “final” Office action
dated December 22, 2006, and repeated the refusal on the
same grounds in his January 16, 2007 Office action. In
view of the examining attorney’s second refusal to register
the subject designation under Trademark Act Sections 1, 2,
3 and 45, the instant appeal is not premature but clearly
is timely. See, for example, In re Spirits International,
86 USPQ2d 1078 (TTAB 2008).
We turn then to the merits of the case.
Failure to Function as a Mark
As has frequently been stated, “Before there can be
registration, there must be a trademark.” In re Bose
Corporation, d/b/a Interaudio Systems, 546 F.2d 893, 192
USPQ 213, 215 (CCPA 1978). Inasmuch as applicant seeks
registration of the designation irestmycase as a service
mark to identify her legal services, the starting point for
our analysis is Section 45 of the Trademark Act, as
amended, where “service mark” is defined as “any word,
name, symbol, or device, or any combination thereof used by
a person … to identify and distinguish the services of one
person, including a unique service, from the services of
others and to indicate the source of the services, even if
that source is unknown.” 15 U.S.C. §1127. This section
further provides that a mark shall be deemed to be in use
Ser No. 76649075
9
in commerce “on services when it is used or displayed in
the sale or advertising of services….” Id. Thus, the mark
must be used in such a manner that it would readily be
perceived as identifying the specified services and
distinguishing a single source or origin therefor. See In
re Safariland Hunting Corp., 24 USPQ2d 1380 (TTAB 1992);
and In re Aerospace Optics, Inc., 78 USPQ2d 1861 (TTAB
2006).
A critical element in determining whether matter
sought to be registered is a trademark or service mark is
the impression the matter makes on the relevant public. In
order for a designation to be a service mark as defined
above, there must “be a direct association between the
matter sought to be registered and the [services]
identified in the application, that is, that the matter is
used in such a manner that it would be readily perceived as
identifying such [services].” In re N.V. Organon, 79
USPQ2d 1639, 1649 (TTAB 2006). Thus, in this case, we must
examine the original and substitute specimens to determine
whether the designation irestmycase would be perceived as a
source indicator for applicant’s recited legal services.
See also In re Brass-Craft Mfg. Co., 49 USPQ2d 1849 (TTAB
1998); and In re Volvo Cars of North America Inc., 46
USPQ2d 1455 (TTAB 1998).
Ser No. 76649075
10
In this case, we observe that neither the original
specimens nor the substitute specimens filed with this use-
based application show use of irestmycase per se. The
original specimens, identified as a reprint of a news
release regarding applicant, do not display irestmycase at
all, but rather only show the terms www.restmycase.com and
vicki@restmycase.com in applicant’s respective Internet
website and email addresses. Applicant’s substitute
specimen, identified as her letterhead, shows the applied-
for designation embedded within applicant’s Internet
website address as follows: www.irestmycase.com.
Applicant’s additional substitute specimen, identified as
her Internet message board under the user name
“restmycase,” shows the above-noted email and website
addresses as well as the following wording regarding
applicant: “She may be reached through her legal service
portals, www.restmycase.com and www.irestmycase.com, and
with that, as Ms. Roberts often says, I Rest My Case.”
To state the obvious, any specimen submitted by
applicant in this case must as a threshold matter display
the designation irestmycase either standing alone or in
context to show use thereof as a mark in commerce. See
TMEP §904.07(a) (5th ed. 2007) and the authorities cited
therein. As noted above, applicant’s original specimens do
Ser No. 76649075
11
not show irestmycase but rather displays “restmycase” in
the context of applicant’s Internet website and email
address. Further, the term “restmycase” as it appears on
applicant’s Internet message board, submitted as a
substitute specimen, similarly fails to show the applied-
for designation irestmycase. We are not persuaded by
applicant’s argument that “the two terms are almost
synonymous” and that, as a result, “it is urged that “I
rest my case” is the equivalent of “restmycase” and in the
like manner “irestmycase” is the equivalent of “restmycase”
(October 27, 2006 response to first Office action, p. 5).
The standard for comparison of a mark as it appears in the
drawing and on the specimens of record is not “almost
synonymous.” Rather, the standard is set forth in
Trademark Rule 2.51(a), which provides as follows: “In an
application under section 1(a) of the Act, the drawing of
the mark must be a substantially exact representation of
the mark as used on or in connection with the goods and/or
services.” 37 C.F.R. §2.51. To determine whether the
drawing is a “substantially exact” representation of the
mark as actually used, we look to the specimens of record.
See TMEP§807.12(a).
Applicant’s drawing page unambiguously displays her
applied-for mark as irestmycase. Both the original
Ser No. 76649075
12
specimen filed with the application and “restmycase” as it
appears as applicant’s user name on her Internet message
board fail to display that designation, if for no other
reason than they fail to include all of the letters
comprising applicant’s proposed mark.1 In addition, “I Rest
My Case” as it appears on applicant’s message board, while
containing all of the letters comprising applicant’s
proposed mark, disagrees with irestmycase as it appears on
applicant’s drawing page. Thus, we find that such uses
fail to show use of irestmycase as a mark or otherwise.
As a result, the applied-for designation irestmycase
only appears embedded in applicant’s Internet website
address www.irestmycase.com, as used in applicant’s
letterhead and message board. In applicant’s letterhead,
such designation appears below applicant’s name, address,
telephone and fax numbers, and in smaller type than that in
which applicant’s name appears. As displayed on
applicant’s letterhead, www.irestmycase.com clearly is
intended to indicate the address for applicant’s website,
and its position at the end of applicant’s other contact
information reinforces this impression. On applicant’s

1 For this same reason, the additional “samples” made of record
by applicant, all of which display the term www.restmycase.com,
fail to show use of irestmycase either as a mark or otherwise.

Ser No. 76649075
13
message board as reproduced above, such designation is in
two places, both of which clearly indicate that
www.irestmycase.com is one of applicant’s websites.
Under these circumstances, we agree with the examining
attorney’s conclusion that In re Eilberg, 49 USPQ2d 1955
(TTAB 1999), is controlling:
As shown, the asserted mark identifies
applicant’s Internet domain name, by use of which
one can access applicant’s Web site. In other
words, the asserted mark WWW.EILBERG.COM merely
indicates the location on the Internet where
applicant’s Web site appears. It does not
separately identify applicant’s legal services as
such. [internal citation omitted].

Id. at 1957. In the case before us, www.irestmycase.com
appears along with applicant’s other contact information on
her letterhead, and is specifically identified as one of
her Internet website addresses or “legal service portals”
by means of which “she can be reached” on her Internet
message board. However, in neither specimen is irestmycase
used at all, or www.irestmycase.com used to indicate the
source of applicant’s legal services. Rather, such
designation as it appears on her substitute specimens
simply serves as an address by means of which one may reach
applicant’s Internet website.
We note that the purpose of www.irestmycase.com as an
Internet website address does not per se preclude it or a
Ser No. 76649075
14
portion thereof from serving as a source identifier for
applicant’s services. See Id. However, in order for
irestmycase to function as a mark, applicant must first
take the necessary actions to use it as such or to use the
web address in such a manner that the irestmycase portion
would be perceived as a mark.2 See Section 45 of the
Trademark Act, supra. The “mere intent that a term
function as a trademark is not enough in and of itself, any
more than attachment of the trademark symbol would be, to
make a term a trademark.” In re Manco Inc., 24 USPQ2d 1938
(TTAB 1992) (THINK GREEN failed to function as a mark for,
inter alia, mailing and shipping cardboard boxes). See
also, In re Eilberg, supra, at 1957:
This is not to say that, if used appropriately,
the asserted mark or portions thereof may not be
trademarks or services mark. For example, if
applicant’s law firm name were, say, EILBERG.COM
and were presented prominently on applicant’s
letterheads and business cards as the name under
which applicant was rendering its legal services,
then that mark may well be registrable. However,
this is not the case before us.

See also, for example, In re Volvo, supra (DRIVE SAFELY
failed to function as a mark for automobiles and structural

2 In that regard, while the inherent or acquired distinctiveness
of the proposed mark is not before us, we observe nonetheless
that the term irestmycase would appear to be highly suggestive of
applicant’s services and thus is even more dependent upon
specimens displaying proper use of that designation as a mark in
order for it to be perceived as such.

Ser No. 76649075
15
parts therefor); In re Remington Products, Inc., 3 USPQ2d
1714 (TTAB 1987) (PROUDLY MADE IN THE USA failed to
function as a mark for electric shavers and parts thereof);
and In re Morganroth, 208 USPQ 284 (TTAB 1980) (NATUR-ALL-
IZE YOUR HAIR COLORING failed to function as a mark for
hair styling salon services). Based upon the foregoing, we
conclude that applicant’s designation irestmycase, as it
appears in the website address on applicant’s specimens of
record, fails to function as a mark under Trademark Act
Sections 1, 2 and 45 as used in connection with her recited
legal services.
Decision: The refusal of registration under Trademark
Act Sections 1, 2, 3 and 45, is affirmed.