Commission on Accredita-tion for Law Enforcement Agencies, Inc.

Trademark Trial and Appeal Board

Aug 17, 2001

No. 75195865 (T.T.A.B. Aug. 17, 2001)

8/17/01
Hearing: Paper No. 20
June 21, 2001 BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Commission on Accreditation for Law Enforcement
Agencies, Inc.
________

Serial No. 75/195,865
_______

Thomas J. Moore of Bacon & Thomas, PLLC for Commission on
Accreditation for Law Enforcement Agencies, Inc.

Barney L. Charlon, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Chapman, Bottorff and Holtzman, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
Commission on Accreditation for Law Enforcement
Agencies, Inc. (CALEA) has filed an application to register
the mark shown below

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/195865
2
for “setting and reviewing standards and practices in the
field of law enforcement; and inspections to determine
compliance with standards and practices in the field of law
enforcement” in International Class 42.1 Applicant’s
specimen of record is a seven-page typed document about
“The Accreditation Process,” the first page of which is
applicant’s letterhead stationery.
In the first Office action, the Examining Attorney
required a disclaimer of the descriptive words “law
enforcement accreditation” pursuant to Section 6(a), 15
U.S.C. §1056(a), of the Trademark Act. In response
thereto, applicant requested registration under Section
2(f), 15 U.S.C. §1052(f), and submitted the January 5, 1998
declaration of James D. Brown, associate director of
applicant.
The Examining Attorney then refused registration on
the basis that the wording “law enforcement accreditation”
is highly descriptive, if not generic,2 and also because
applicant’s evidence is insufficient to establish acquired

1 Application Serial No. 75/195,865, filed November 12, 1996,
based on Section 1(a) of the Trademark Act. The claimed date of
first use is 1980.
2 The Examining Attorney utilized the term “generic” in this
Office action, but did not issue a separate refusal to register
on that basis. Genericness is not an issue before the Board.
Ser. No. 75/195865
3
distinctiveness.3 In response to this Office action,
applicant argued that its claim of substantially exclusive
and continuous use for 18 years, coupled with its showing
that 182 law enforcement agencies have been accredited by
applicant is sufficient to allow publication. Applicant
submitted a supplemental response to the second Office
action consisting of 16 declarations from various law
enforcement officers.
The Examining Attorney issued a final Office action on
his requirement for a disclaimer of the merely descriptive
words “law enforcement accreditation,” attaching printouts
of several excerpted stories retrieved from the Nexis
database; and again rejecting applicant’s evidence of
acquired distinctiveness as insufficient.
Applicant filed a notice of appeal, and included
therewith the declaration of William Miller, applicant’s
chairman. The Board remanded the application to the
Examining Attorney for consideration of the new evidence,
who treated the declaration as a request for

3 The Examining Attorney referred to the burden of proving
acquired distinctiveness by “clear and convincing” evidence.
Applicant contends, correctly, that the requirement for “clear
and convincing evidence” is unsupported. However, perhaps the
Examining Attorney meant only that because of the highly
descriptive nature of the involved words, a higher quantum of
evidence is required to establish a prima facie showing of
acquired distinctiveness. The burden of proof will be fully
discussed later in this decision.
Ser. No. 75/195865
4
reconsideration, and denied same, attaching thereto further
excerpted stories retrieved from Nexis, and printouts of
pages from applicant’s website.
Both applicant and the Examining Attorney have filed
briefs. An oral hearing was held before this Board on June
21, 2001.
The issue before the Board is whether applicant has
submitted sufficient evidence that the words “law
enforcement accreditation” have acquired distinctiveness
under Section 2(f) of the Trademark Act thereby overcoming
the Examining Attorney’s requirement that the words be
disclaimed pursuant to Section 6(a).4
The Examining Attorney essentially contends that the
words “law enforcement accreditation” are highly
descriptive of “a process by which prescribed managerial
and organizational standards are adopted by law enforcement
agencies,” and the record shows that the words are not used
to identify applicant as the source of such services, but
rather are “used simply to describe the process by which

4 The issue of mere descriptiveness of the words “law enforcement
accreditation” is not before the Board. Applicant stated the
following in its brief (p. 14):
“There is no dispute that the term ‘law
enforcement accreditation’ in the abstract
is descriptive of the present services;
otherwise, Applicant would not have
asserted Section 2(f).”
Ser. No. 75/195865
5
law enforcement agencies are accredited.” (Final Office
action, p. 2.) Further, in light of the highly descriptive
nature of the words, the Examining Attorney contends that
applicant has not met its burden of establishing a prima
facie showing that the words “law enforcement
accreditation” have acquired distinctiveness as a source
indicator for applicant’s services. Specifically, the
Examining Attorney contends that in view of the highly
descriptive nature of the words involved herein applicant’s
lengthy use of the words is not sufficient to show acquired
distinctiveness; that there is demonstrated widespread
highly descriptive use of the words “law enforcement
accreditation” by others; that applicant itself has used
the words descriptively in material appearing on its
website; and that the declarations from 16 law enforcement
personnel are not persuasive because (brief, pp. 6-7):
“... all but one of the declarations
submitted by applicant were executed by
personnel of law enforcement agencies
that have been accredited by applicant.
(citation to record omitted) The
testimony of such individuals,
therefore, is of little probative value
since it is limited to those who have
already availed themselves of
applicant’s services and hence may be
biased and not necessarily reflective
of the views of consumers as a whole.
See In re Paint Products Company, 8
USPQ2d 1863,1866 (TTAB 1988)(affidavits
collected by applicant from
Ser. No. 75/195865
6
longstanding customers are not
persuasive on the issue of how the
average customer perceives the term at
issue). This is all the more so in the
present case where the declarants at
issue are likely to depend upon their
ongoing relationship with applicant in
order to retain their accreditation.”

Applicant, in urging reversal of the refusal, contends
that the words “law enforcement accreditation” have
acquired distinctiveness in the relevant market as shown by
the evidence of record; that the relevant market in this
case, that is, applicant’s customers and potential
customers, consists of “law enforcement agencies and
departments” (brief, p. 7); and that fair, good faith
descriptive uses of the words “law enforcement
accreditation,” including such use by applicant, do not
detract from and are not in conflict with applicant’s
showing of acquired distinctiveness.

I. The Burden of Proof
Applicant has the burden of establishing that the
words “law enforcement accreditation” have acquired
distinctiveness in relation to applicant’s identified
services. See Yamaha International Corp. v. Hoshino Gakki
Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir.
1988). An application may be published for opposition when
Ser. No. 75/195865
7
the applicant has established a prima facie case of
acquired distinctiveness. See Yamaha International v.
Hoshino Gakki, supra, at 1004. In order to establish
acquired distinctiveness, “an applicant must show that ‘in
the minds of the public, the primary significance of a
product feature or term is to identify the source of the
product rather than the product itself.’” In re Dial-A-
Mattress Operating Corporation, 240 F.3d 1341, 57 USPQ2d
1807, 1812 (Fed. Cir. 2001), quoting from the case of
Inwood Labs, Inc. v. Ives Labs., 456 U.S. 844, at footnote
11 (1982). The relevant public consists of potential as
well as actual purchasers.5
The issue of acquired distinctiveness is a question of
fact. See In re Loew’s Theatres, Inc., 769 F.2d 764, 226
USPQ 865, 869 (Fed. Cir. 1985). There is no specific rule
as to the exact amount or type of evidence necessary at a
minimum to prove acquired distinctiveness, but generally,
the more descriptive the term or phrase, the greater the
evidentiary burden to establish acquired distinctiveness.
That is, the less distinctive the term or phrase, the

5 Therefore, applicant’s argument that “[i]t seems reasonable to
assume that there are some law enforcement personnel that have
only recently become aware of Applicant’s service mark and,
therefore, the words LAW ENFORCEMENT ACCREDITATION in the service
mark do not yet have an acquired distinctiveness or secondary
meaning to these personnel” (reply brief, p. 3) is meritless.
Ser. No. 75/195865
8
greater the quantity and quality of evidence is needed to
prove acquired distinctiveness. See In re Bongrain
International (American) Corp., 894 F.2d 1316, 13 USPQ2d
1727 (Fed. Cir. 1990); and Yamaha International v. Hoshino
Gakki, supra at 1008. See also, 2 J. McCarthy, McCarthy on
Trademarks and Unfair Competition, §15:28 (4th ed. 1999).

II. The Evidence
As evidence in support of the Examining Attorney’s
position that the words are highly descriptive and that
applicant’s acquired distinctiveness evidence is
insufficient, the Examining Attorney made of record the
following material: (i) dictionary definitions of the
words “law,” “enforce,” (with “enforcement” as a noun) and
“accreditation”;6 (ii) several excerpted stories retrieved
from the Nexis database; and (iii) a few different items
printed out from applicant’s website.
Representative examples of the excerpted stories
retrieved from Nexis follow (emphasis added):
Headline: Reinventing or repackaging public
service? The case of community-oriented
policing.
...community policing is to endow large agencies
with some of the benefits of small agencies, and

6 The Examining Attorney submitted these dictionary definitions
with his brief and requested that the Board take judicial notice
thereof. The Examining Attorney’s request is granted. See TBMP
§712.01 and the rules and cases cited therein.
Ser. No. 75/195865
9
this would require greater structural change in
the former. The law enforcement accreditation
process prescribes the adoption of specific
managerial processes and organizational
mechanisms. ..., “Public Administration Review,”
November/December 1998;

Headline: Russell Thanks Voters
...enforcement and public safety issues are
important to every citizen. The campaign
provided an ideal opportunity to discuss some of
them, including law enforcement accreditation,
poor morale, jail security, as well as response
time and crime statistics reporting and more
aggressive domestic violence policies. ..., “News
& Record (Greensboro, NC),” December 21, 1998;

Headline: Ex-police chief pleads guilty to
larcenies
...Mr. Cowan also was ordered to reimburse the
victims’ money, perform at least 100 hours of
community service, and turn in his law
enforcement accreditation from the town of
Atkinson. ..., “Morning Star (Wilmington, NC),”
September 15, 1999;

Headline: Creative Negotiations Pay Off
...Received notice that the Sheriff’s Department
had been accredited by the state’s law
enforcement accreditation commission. Officials
said Hanover’s was one of only eight police and
sheriff’s departments that have received the
accreditation, “The Richmond Times Dispatch,”
February 18, 1998;

Headline: ‘Probably one of the worst moments of
my life’; Jackie Barrett had a fairly calm tenure
a Fulton County sheriff – until one of her
deputies was killed
...She worked for 10 years for the Georgia Police
Officers Standards and Training Council, the
state’s law enforcement accreditation agency,
before coming to Fulton County as then-Sheriff
Richard Lankford’s administrative assistant...,
“The Atlanta Journal and Constitution,” March 23,
2000;

Ser. No. 75/195865
10
Headline: Team Gives Accreditation to Daytona
Beach Police
...Small announced Friday that the city
department has been awarded accreditation by a
nonprofit accreditation commission. The
Commission for Florida Law Enforcement
Accreditation recently presented Small with a
certificate of accreditation, “The Orlando
Sentinel,” February 27, 1999; and

Headline: Hearing Next Week on Police
Accreditation
...Citizens interested in submitting written
comments are instructed to write to the Wisconsin
Law Enforcement Accreditation Group at 4760
Schneider Dr., Oregon, WI 53575, “Capital Times,
(Madison, WI.),” December 30, 1998.

A few quotations from the material printed out from
applicant’s website (www.calea.org) on April 13, 2000 are
reproduced below (emphasis added):
Time to Take Another Look at Law Enforcement
Accreditation, By Chief Sylvester Daughtry, Jr.,
Greensboro Police Department, North Carolina,
President, Commission on Accreditation for Law
Enforcement Agencies, Inc.,
...Just as accreditation was part of the answer
to problems of the past generation, so also is
accreditation part of the solution to issues
confronting law enforcement today. ...;

ACCREDITATION – Celebrating 20 Years of
Excellence, By Margaret J. Levine, [formerly
Associate Director of Commission on Accreditation
for Law Enforcement Agencies, Inc., currently
with Mobil Oil Corporation]...,
...they [four leading law enforcement executive
organizations] joined together to provide the
research and technical expertise, management and
administrative staff, and office accommodations
to develop and implement a law enforcement
accreditation program.
The idea for a law enforcement accreditation
program had actually originated years earlier in
Ser. No. 75/195865
11
the Police Management and Operations Division of
IACP [International Association of Chiefs of
Police].
...
At their 1984-1985 annual meetings, the
memberships of IACP, NOBLE [National Organization
of Black Enforcement Executives], NSA [National
Sheriff’s Association], and the National
Association of Counties adopted resolutions
supporting law enforcement accreditation.
...
The Commission’s [applicant’s] continuing
commitment to excellence also led to the
formation of its communications accreditation
program. ... Like the law enforcement
accreditation program, participation is
voluntary, and standards applicability is based
on an agency’s size and functional
responsibilities.

There is no question that this record establishes that
the word portion of applicant’s mark is highly descriptive.
Thus, a greater quantity and quality of evidence is
required in order for applicant to prove prima facie that
the words have acquired distinctiveness as indicating
source in applicant. We agree with applicant that the
relevant purchasers for applicant’s involved services
(“setting and reviewing standards and practices in the
field of law enforcement; and inspections to determine
compliance with standards and practices in the field of law
enforcement”) are law enforcement agencies and departments.
Turning then to the evidence submitted by applicant in
its attempt to prove acquired distinctiveness under Section
2(f) of the Trademark Act, we list same as follows:
Ser. No. 75/195865
12
(1) the January 5, 1998 declaration of James D.
Brown, applicant’s “associate director,” in which he
avers that applicant has had substantially exclusive
and continuous use of the mark since 1980; that by
September 1991, applicant had accredited over 182 law
enforcement agencies, with an additional 914 agencies
in some stage of the accreditation process; and that
as of May 1997, 10% of Canadian police officers at the
provincial and local levels were in agencies
accredited by applicant (the latter two statements
were also supported by photocopies of certain pages
from applicant’s September 1991 and May 1997
newsletters7, respectively);

(2) the May 20, 1999 declaration of William
Miller, applicant’s chairman, in which he verifies the
facts set forth in the application (which had been
signed by James D. Brown); and he avers that the mark
has been in substantially exclusive and continuous use
as a trademark on newsletters in the field of setting
reviewing standards and practices in the field of law
enforcement since 1980; and that the mark has been in
substantially exclusive and continuous use as a
service mark in connection with the services recited
in this application since 1980; and

(3) sixteen signed declarations from law
enforcement officers each including a copy of the
declarant’s resume; and attesting to his or her
familiarity with applicant; and that when he or she
hears “law enforcement accreditation” he or she thinks
of applicant; and that he or she has used “law
enforcement accreditation” to distinguish applicant’s
goods and services from those of competitors.

III. Analysis
Applicant’s September 1991 newsletter includes the
following statements: “The total number of accredited law

7 The statement regarding Canadian police officers appearing in
applicant’s May 1997 newsletter is unreadable in the photocopy
which was submitted to the Board.
Ser. No. 75/195865
13
enforcement agencies in the U.S. and Canada now is 182”
(p.1); and “The new total of accredited agencies in the
U.S. and Canada is 182. Meanwhile, the total number of
agencies in some stage of the accreditation process is now
914, with 416 of them in self-assessment.” (p. 2). The
main problem with the foregoing information is that
applicant has not provided a breakdown of its use of this
mark on the involved services in the United States per se.
That is, there is no breakdown of what part of the 182
accredited agencies and the 914 in-process agencies are law
enforcement agencies in the United States. Moreover, the
additional statement in Mr. James D. Brown’s declaration
that 10% of Canadian provincial and local police officers
are accredited, emphasizes applicant’s use in Canada,
rather than its use in the United States. Without
information on the nature and extent of applicant’s use of
the mark specifically in the United States, this evidence
is of limited value in proving that the words “law
enforcement accreditation” have acquired distinctiveness in
the United States.
In addition, the 182 accredited agencies and 914
agencies in-process are statistics about applicant’s
business in 1991, but were filed in this case over six
Ser. No. 75/195865
14
years later, and there are no more current numbers
regarding applicant’s business of record herein.
Turning to a consideration of the 16 declarations from
law enforcement personnel (some retired), they are all in a
similar form, giving the person’s current employment;
followed by a statement that the person is “familiar with
the Commission on Accreditation for Law Enforcement
Agencies, Inc.,” and a reference to an attached resume of
some type; followed by a statement that upon hearing the
words “law enforcement accreditation,” the person
“immediately think[s] of CALEA”; and finally a statement
that the person has “used ‘law enforcement accreditation’
for at least the past __ years, to distinguish CALEA’S
goods and services from those of any competitors.” Even
though applicant’s attorney presumably drafted the form
declaration used, we have no reason to believe the
individuals who signed the declarations failed to tell the
truth. However, these declarations must be viewed against
the background of the other evidence of record. See In re
Schenectady Varnish Co., 280 F.2d 169, 126 USPQ 395 (CCPA
1960). As explained below, their probative weight is
somewhat limited.
One of the declarations is from an officer in Canada,
again being of limited value to prove acquired
Ser. No. 75/195865
15
distinctiveness in the United States. Of the remaining 15,
almost all of the declarants were, according to their
resumes, either responsible for their department’s
participation in applicant’s (CALEA) law enforcement
accreditation program, or worked with or for CALEA as an
“Assessor,” “Chairman,” “Commissioner,” “Team Leader,” or a
member of CALEA’s Standards Review Task Force. Inasmuch as
these declarants have worked or currently work directly
with or for applicant on the very “law enforcement
accreditation” program for which applicant seeks to
register its composite mark, the probative value of their
declarations is somewhat limited. We emphasize that the
declarations are not self-serving because the declarants
are employed by law enforcement agencies or departments
which are accredited by applicant. Rather, the statements
by these declarants are of somewhat limited probative value
because these individuals worked directly with and/or for
applicant on the very “law enforcement accreditation”
program identified by applicant’s composite word and design
mark. Unsolicited letters written individually to
applicant about its involved services, or declarations from
law enforcement personnel who have not worked directly with
or for applicant regarding that person’s understanding
Ser. No. 75/195865
16
and/or recognition of the words “law enforcement
accreditation” as a mark, might have been more persuasive.
Further, the record before us includes no indication
that a “significant number” of relevant purchasers (law
enforcement agencies and departments in the United States)
of applicant’s services identify the words “law enforcement
accreditation” as a service mark, indicating applicant as
the source of the services. See Restatement (Third) of
Unfair Competition, §13 comment e (1995). Such agencies at
the local, state and federal levels surely must number in
the hundreds, if not thousands, yet the record before us
includes only 15 declarations.
While applicant’s use of the applied-for mark since
1980 is clearly a long use, it is but one relevant
consideration, which we find unpersuasive in light of the
lack of supporting evidence regarding applicant’s long use,
as well as the strong evidence of record regarding the
highly descriptive meaning of the words. The case cited by
applicant, In re Uncle Sam Chemical Co., Inc., 229 USPQ 233
(TTAB 1986), is readily distinguishable from the facts
before the Board with regard to applicant’s application.
In the Uncle Sam case, applicant sought to register the
mark SPRAYZON for “cleaning preparations and degreasers for
industrial and institutional uses.” The Board found that
Ser. No. 75/195865
17
applicant’s declaration of substantially exclusive and
continuous use for 18 years “together with evidence of
considerable sales of products sold under the mark”
sufficiently supported applicant’s claim of acquired
distinctiveness. By contrast, in the case now before us,
there is applicant’s declaration of substantially exclusive
and continuous use, but that statement is otherwise
supported by very minimal evidence of use; and this minimal
evidence covers both the United States and Canada, and
except for the declarations of law enforcement personnel,
relates to applicant’s use up to 1991.
Finally, applicant strongly contends that the many
descriptive uses of the words “law enforcement
accreditation,” including its own descriptive use in
material on its website, is simply appropriate descriptive
use which “does not detract from the acquired
distinctiveness of record.” (Supplemental brief, p. 5).
In essence, this is the “fair use” defense that issuance of
a registration to applicant would not preclude others from
using the words descriptively or generically. There is
case law which rather directly rejects the “fair use”
defense in ex parte appeals of refusals to register under
Section 2(e)(1). See In re Gray Inc., 3 USPQ2d 1558, 1559
(TTAB 1987); and In re State Chemical Manufacturing Co.,
Ser. No. 75/195865
18
225 USPQ 687, 690 (TTAB 1985). See also, In re Boston Beer
Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir.
1999). Inasmuch as the record clearly establishes
descriptive uses by others of “law enforcement
accreditation” in relation to the identified services, we
believe competitors would have a competitive need to use
and to continue to use these words in their descriptive
sense. See 2 J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition, §11:18 (4th ed. 2000).
In view of the highly descriptive nature of the words
“law enforcement accreditation” for applicant’s identified
services, and the weaknesses of applicant’s overall
evidence that the words have acquired distinctiveness, we
find that applicant has not met its burden to establish a
prima facie case of acquired distinctiveness. See In re
Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991); and In
re Redken Laboratories, Inc., 170 USPQ 526 (TTAB 1971).
(We note that applicant is the owner of Registration No.
2,163,396, issued June 9, 1998, for the identical services
for the identical eagle and banner design mark, but with
the wording LAW ENFORCEMENT CERTIFICATION. Applicant
disclaimed the words “law enforcement certification.” The
claimed date of first use is June 1996.)
Ser. No. 75/195865
19
Decision: The requirement under Section 6 for a
disclaimer of the words “law enforcement accreditation” is
proper. In the absence of a disclaimer of “law enforcement
accreditation,” the refusal to register is affirmed. If a
disclaimer is entered within thirty days from the mailing
date hereof, this decision will be vacated and the mark
will then be published for opposition. See Trademark Rule
2.142(g).