Alexander Reus, P.A.

Trademark Trial and Appeal BoardMar 19, 2009

No. 77325774 (T.T.A.B. Mar. 19, 2009)

Mailed: March 19, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Alexander Reus, P.A. ________ Serial No. 77325774 _______ Werner H. Stemer of Lerner Greenberg Stemer LLP, for Alexander Reus, P.A. Darryl M. Spruill, Trademark Examining Attorney, Law Office 112 (Angela Wilson, Managing Attorney). _______ Before Rogers, Walsh, and Ritchie, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: Alexander Reus, P.A., applicant herein, seeks registration on the Principal Register of the mark “GLOBAL EXPANSION GROUP,” in standard character format, for “legal services,” in International Class 45.1 The trademark 1 Serial No. 77325774, filed on November 9, 2007, under Trademark Act Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a), alleging first use and first use in commerce of March 1, 2004, and disclaiming the exclusive right to use “GROUP” apart from the mark as shown. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser. No. 77325774 2 examining attorney refused registration on the ground that applicant’s mark is merely descriptive of the identified services under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1). Both applicant and the examining attorney filed briefs. After carefully considering all of the arguments and evidence of record, we affirm the refusal to register. A term is deemed to be merely descriptive of goods or services, within the meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with those goods or services, and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use. That a term may have other meanings in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Ser. No. 77325774 3 We consider a composite mark in its entirety. A composite of descriptive terms is registrable only if as a unitary mark it has a separate, non-descriptive meaning. In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (holding SUGAR & SPICE not merely descriptive of bakery products). The examining attorney has submitted definitions from The Encarta World English Dictionary (North American ed. 2007) of the three separate words “global,” “expansion,” and “group,” which are set forth in pertinent part below: “Global”: 1. worldwide: relating to or happening throughout the whole world. “Expansion”: 1. process of enlargement: the process of increasing, or increasing something, in size, extent, scope, or number. 2. increase: an increase, or the amount by which something increases, in size, extent, or scope. “Group”: 1. set of people or things: a number of people or things considered together or regarded as belonging together. In addition to the dictionary definitions, the examining attorney submitted evidence of third-party advertisements that use the term “global expansion” descriptively to describe legal services. A sampling includes the following: “Allen & Overy LLP today confirmed its commitment to sustainable global expansion with the announcement of 28 promotions to partner across 15 offices in 13 countries. Ser. No. 77325774 4 This takes the total number of partners at Allen & Overy over 500 for the first time, to 505 partners globally. This year’s promotions, which are effective 1 May 2008, highlight Allen & Overy’s continued investment in its international network with over 70 per cent of the new partners coming from outside London.” www.allenovery.com. “Proskauer Rose Continues Global Expansion of Private Invest Funds Practice with Addition of Daniel Schmidt & Olivier Dumas: . . . Proskauer Rose LLP, an international law firm with more than 750 lawyers worldwide, . . .” www.allbusiness.com, September 4, 2007. “CT TyMetrix Announces New Global Expansion and Enhanced Offerings: . . . adding to its global platform offerings to help customers reduce legal costs. . . ” www.manta.com/press, May 16, 2007. “‘K&L Gates’ global expansion makes a big splash in Miami Office: . . . ‘K&L Gates’ was one of the large law firms committed to making a difference in Europe. . .” www.dayton.bizjournals.com/southflorida/stories, February 29, 2008. “Global Expansion Solutions: When you want to expand globally, you don’t want to be stymied by the legal and cultural nuances of human capital management. Watson Wyatt takes care of the details . .. Expansion design and implementation . . . Expansion tools and templates.” www.watsonwyatt.com. The examining attorney further submitted evidence of at least eight third-party trademark registrations for “legal services” that disclaim the term “GLOBAL” by itself or in connection with a phrase. Finally, the examining attorney submitted evidence that applicant’s website touts Ser. No. 77325774 5 itself as an “international” law firm with services for “global” investors. www.portfolio-monitoring.com/about. Applicant argues that the mark is “at worst suggestive,” rather than merely descriptive, of its services because, “GLOBAL, as defined by the Examining Attorney, means total, complete, overall, and/or comprehensive” whereas “[l]egal services, by their nature, are limited to the jurisdiction recognized for the practice of one or more specified fields of law.” (Appl’s Brief at unnumbered page 7 of 9). Applicant further argues that “EXPANSION suggests taking something small, narrow in focus, or complex, and giving a more detailed treatment to increase the scope of options available” which is “simply not descriptive of legal services.” Id. Applicant’s arguments are not borne out by the evidence however, since numerous law firms refer to their “global expansion.” Accordingly, we find that the three words in applicant’s mark separately, and as presented together, are merely descriptive of legal services either 1.) rendered by a firm undertaking “global expansion”; or 2.) targeted to clients seeking “global expansion”; or both. Accordingly, consumers would require no imagination to arrive at the understanding that applicant’s proposed mark refers to a feature or function of its service. Ser. No. 77325774 6 The primary purposes for refusing registration of a merely descriptive mark are “(1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.” In re Abcor, 200 USPQ at 217. It would be difficult for competitors to describe this apparently popular feature of their own legal services, (i.e., that it is aimed at global expansion for themselves or their clients) if applicant were allowed to register “GLOBAL EXPANSION GROUP.” We find that the mark is merely descriptive of the identified services, and we affirm the refusal to register. Decision: The refusal to register under Trademark Act Section 2(e)(1) is affirmed.