Craig R. Hersch

Trademark Trial and Appeal BoardMay 6, 2011

No. 77753231 (T.T.A.B. May. 6, 2011)

05 Mailed: May 6, 2011 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Craig R. Hersch ________ Serial No. 77753231 _______ Thomas F. Bergert of Williams Mullen, PC, for Craig R. Hersch Maureen Dall Lott, Trademark Examining Attorney, Law Office 117 (J. Brett Golden, Managing Attorney). _______ Before Walters, Zervas and Mermelstein, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: Craig R. Hersch has appealed from the final refusal of the examining attorney to register the mark THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Serial No. 77753231 2 on the Principal Register for the following International Class 45 services: legal services, namely, providing customized legal information, legal counseling, legal advice, legal document preparation, and litigation services in all areas of planning for tax, wills, trusts, asset protection, estate planning, estate trust management, probate and trust administration, and estate settlement; providing a website that features legal information on asset protection and estate planning. Applicant claims first use and first use in commerce of its mark in connection with the services on January 2009 and has disclaimed the wording FAMILY ESTATE.1 The only issue raised in the final action and discussed in the briefs is the examining attorney’s requirement pursuant to 15 U.S.C. §§ 1052(e)(1) and 1056(a) that applicant disclaim FAMILY ESTATE & LEGACY SOLUTION of the wording in the mark. Applicant and the examining attorney have filed appeal briefs. We affirm the requirement for a disclaimer. Merely descriptive terms are unregistrable under Trademark Act Section 2(e)(1) and, therefore, are subject to disclaimer if the mark is otherwise registrable. Failure to comply with a disclaimer requirement is grounds for refusal of registration. See In re Omaha National 1 Applicant describes his mark as “consisting of the words ‘The Family Estate & Legacy Solution’ within an oval shaped background with the ‘I’ in ‘FAMILY’ comprising a tree with three curved lines swept in front of the tree.” Serial No. 77753231 3 Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); and In re Ginc UK Ltd., 90 USPQ2d 1472 (TTAB 2007). 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 (CCPA 1978). It is the examining attorney’s position that the wording FAMILY ESTATE & LEGACY SOLUTION merely describes a feature of the services, with “family” referring to a group of relatives, “estate” referring to one’s property, “legacy” referring to a bequest and to money or property left to someone by a will, and “solution” referring to an answer to, or disposition of, a problem. Brief at unnumbered p. 5 - 6. (These terms are defined as stated in the dictionary definitions of record.) According to her, FAMILY ESTATE – which applicant has disclaimed - refers to family-related property, and applicant’s services pertain to the resolution of estate and family-related estate issues, including those related to family beneficiaries, family business succession planning, intra-family wealth Serial No. 77753231 4 transfers and protection and private family foundations. As evidence to support her position, she relies on internet printouts in the record which use “family estates.”2 Further, she maintains that LEGACY SOLUTION – which applicant has not disclaimed - merely informs the purchaser that applicant’s services provide an answer to or disposition of an inheritance problem. Brief at unnumbered p. 8. In addition to the dictionary definitions, she relies on a number of webpages including the following: • www.henryglasser.com – offering legal services relating to wills, estate planning, estate and trust administration, estate taxation, asset protection and probate, and inviting potential clients to “Discover Innovative Legacy Solutions With Your San Francisco Probate Attorney”; • www.kcattorneys.net – promoting (a) estate planning attorneys as “skilled at providing prompt legacy solutions” relating to wills, estate administration, and “civil litigation related to legacy disputes”; and (b) “appropriate and cost-effective legacy and succession solutions…”; • www.retirementsolutionsnm.com – offering “retirement & legacy solutions” for, inter alia, estate planning and inheritance planning; • www.cufn.org – offering “legacy solutions, strategic partnerships, and so much more” for a company that assists clients with, inter alia, estate planning; • www.planwellfinishstrong.com – offering “Wealth & Legacy Solutions” in the context of estate 2 Applicant does not contest the examining attorney’s disclaimer requirement for FAMILY ESTATE. Serial No. 77753231 5 planning and stating that “the legacy side of estate planning is often ignored”; • www.lauderhillcc.com – “We specialize[] in safe money solutions, attaini[n]g growth without risks and tax favorable distribution planning for retirees and pre-retirees. We focus our efforts on wealth accumulation, asset protection, income planning and legacy solutions”; • bbb.org – identifying Luke Financial Company LLC products and services as “... wealth accumulation, asset preservation, income planning and legacy solutions with an emphasis on client education”; • www.g-maurer.com - for estate planning specialists, stating “Julie’s practice focuses on helping to meet the needs of business owners and professionals through developing financial and legacy solutions for individuals and families”; and • www.cfs-wa.com – in the fields of financial and estate planning, stating, (a) “We define financial planning as holistic, integrated plan development, risk mitigation, asset management and legacy solutions”; and (b) the company brings “creative design ideas in the areas of retirement, wealth management, estate, gift and legacy planning.” Further, the examining attorney has offered the following uses of “legacy” in the context of estate planning: www.retirement.ameriprise.com Estate Planning … “Your life, your dreams, your legacy. Your legacy transcends money – it also encompasses your values”; and www.sundvicklegacycenter.com “The Sundvick Legacy Center encourages and assists the tradition of giving to charitable causes,” offering “Legacy Planning.” Serial No. 77753231 6 When the wording in the mark is considered as a whole, the examining attorney maintains that it merely describes “the resolution of family property and legacy issues.” Brief at unnumbered p. 8. Applicant offers three major arguments in support of registration. First, he argues that he is the owner of Registration No. 3695212 for the same mark as the mark identified in the present application, and both the present application and Registration No. 3695212 recite “estate planning,” “estate trust management” “probate and trust administration” and “estate settlement” in the recitation of services. The registration issued on October 13, 2009, with a disclaimer of FAMILY ESTATE. He maintains that because this registration issued without a disclaimer of LEGACY SOLUTION, so should the mark of the present application.3 Second, applicant argues that any meaning of LEGACY SOLUTION in the context of the services would not be 3 Additionally, we note that applicant has claimed ownership of Registration No. 3367989 for the mark for “estate trust management, namely, probate and trust administration; financial services, namely, estate settlement services.” The registration contains a disclaimer of ESTATE SETTLEMENT, but not of SOLUTION. Serial No. 77753231 7 readily understood. According to him, a consumer encountering the term LEAGACY SOLUTION must first believe and understand there is to be a “legacy problem” that requires a solution. Next, the consumer must know what a “legacy problem” is. And even in the context of the identified legal services, a consumer who knows what the services are is not likely to perceive the mark as immediately conveying “‘knowledge of a significant quality, characteristic, function, feature or purpose of the services’ with which it is used.” Brief at 5. Third, applicant argues that the examining attorney has offered no evidence of any third-party registrations where either LEGACY or SOLUTIONS was disclaimed, and that there are several relevant third-party registrations he has introduced into the record where LEGACY or SOLUTIONS was not disclaimed. In his brief, he cites the following:4 • Registration No. 2718308 for FAMILY LEGACY for “financial, tax and estate planning services” and “legal services”; • Registration No. 3643416 for PRESERVING YOUR LEGACY for “legal services in the field of trusts, estates and taxes”;5 • Registration No. 3579544 for CUMBERLAND LEGACY for “estate planning, financial advisory and 4 We consider those registrations set forth in applicant's brief; presumably they are the most relevant registrations because they appear in the brief. 5 This mark arguably is a unitary slogan. Serial No. 77753231 8 consultancy service” and “legal services; personal security consultation”; • Registration No. 3384238 (also registered to applicant) for THE GLOBAL PRIVACY SOLUTION for “Financial management consulting services in the field of asset protection and financial wealth management; fiduciary representatives, namely, fiduciary trustee and management services to businesses” and “Consulting and legal advisory services in the field of privacy and security laws, regulations, and requirements”; • Registration No. 3586003 for RESOLUTION STRATEGIES LLP THE STRATEGIC SOLUTION for “legal services.”6 Upon consideration of all of applicant’s and the examining attorney’s arguments and evidence of record, we find that the wording of the mark merely describes two features of applicant’s legal services, as asserted by the examining attorney. Specifically, THE FAMILY ESTATE & LEGACY SOLUTION, in its entirety, merely informs the prospective purchaser that applicant’s services provide strategies for family estate and legacy issues offered by 6 Several registrations made of record by applicant such as Registration No. 3161304 for LIVE WELL LEAVE A LEGACY for “legal services”; Registration No. 3582404 for THE ONE QUICK QUESTION SOLUTION for “legal services”; and Registration No. 3069062 for BUILD YOUR LEGACY for “legal services,” do not contain disclaimers; they may have been considered unitary slogans. Many of the registrations applicant placed in the record are irrelevant because the services recited are unrelated to those services set forth in the application. See, e.g., Registration No. 3366825 for STAR LEGACY for inter alia, “providing on-line consulting services regarding funeral service undertaking, funeral homes and funeral arrangement services.” Serial No. 77753231 9 applicant in rendering legal services.7 Applicant has disclaimed FAMILY ESTATE, and the evidence of record is sufficiently probative of the mere descriptiveness of FAMILY ESTATE. LEGACY SOLUTIONS, which has not been disclaimed, informs the purchaser that applicant’s legal services “in all areas of planning for tax, wills, trusts, asset protection, estate planning, estate trust management, probate and trust administration, and estate settlement” involve providing answers to questions or offering strategies regarding bequests of money or property offered by applicant to individuals and their families. “Legacy solutions” used in the websites of record – which are sufficient in number to establish a prima facie case – consistently and unambiguously apply this meaning. See, e.g., “[w]e focus our efforts on wealth accumulation, asset protection, income planning and legacy solutions” (www.lauderhillcc.com). We find that consumers, who are comprised of members of the general public, and particularly those in need of legal services such as those identified in the application, will immediately understand the meaning of THE FAMILY ESTATE & LEGACY SOLUTION without imagination, thought or conjecture. 7 The final action does not include THE as part of the disclaimer requirement. Because THE does not have trademark significance, Serial No. 77753231 10 Applicant’s arguments in favor of registration are not persuasive. Applicant’s registration for the same mark which does not include a disclaimer of LEGACY SOLUTION and its registration for THE ESTATE SETTLEMENT SOLUTION and Design mark without a disclaimer of SOLUTION does not persuade us to rule in applicant’s favor; although the Office strives for consistency in examination, we are not bound by prior decisions of examining attorneys and we determine each case on its own record. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). Additionally, applicant’s argument regarding the need for multistep reasoning rings hollow in light of the content of the websites which are of record and which all use “legacy solution[s]” in a clear and consistent manner, without any explanation of the term. Finally, the third-party registrations containing LEGACY or SOLUTION which do not have disclaimers of these terms are too few in number to demonstrate any Office policy regarding these terms, are to some extent for marks which are unitary slogans,8 or concern it too should be the subject of any disclaimer requirement in this mark. 8 If the matter that comprises the mark or relevant portion of the mark is unitary, no disclaimer of an element, whether descriptive, generic, or otherwise, is required. TMEP § 1213.05 (7th ed. 2010). See also Dena Corp. v. Belvedere International, Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991). Serial No. 77753231 11 services which are not sufficiently related to applicant’s services. For completeness, we point out too that no new and unique commercial impression is created in combining FAMILY ESTATE and LEGACY SOLUTION inasmuch as nothing in the combination results in a unitary mark with a unique, bizarre or otherwise nondescriptive meaning as applied to applicant's goods. Rather, the constituent elements retain their descriptive significance and their combination is itself merely descriptive of applicant's goods. See, e.g., In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER held merely descriptive of commercial and industrial cooling towers and accessories therefor, sold as a unit); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS found merely descriptive of computer software for use in development and deployment of application programs on global computer network); and In re Entenmann's Inc., 15 USPQ2d 1750 (TTAB 1990), aff'd per curiam, 928 F.2d 411 (Fed. Cir. 1991) (OATNUT held to be merely descriptive of bread containing oats and hazelnuts). Decision: The requirement for a disclaimer of FAMILY ESTATE & LEGACY SOLUTION is affirmed. However, this decision will be set aside if, within thirty days of the mailing date of this order, applicant submits to the Board Serial No. 77753231 12 a proper disclaimer of THE FAMILY ESTATE & LEGACY SOLUTION.9 See Trademark Rule 2.142(g); TBMP § 1218 (4th ed. rev. 2004). 9 An appropriate disclaimer is worded as follows: “No claim is made to the exclusive right to use THE FAMILY ESTATE & LEGACY SOLUTION apart from the mark as shown.”