Frederick D. Graves

Trademark Trial and Appeal BoardSep 21, 2012

No. 77761950 (T.T.A.B. Sep. 21, 2012)

Hearing: July 11, 2012 Mailed: September 21, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Frederick D. Graves ________ Serial No. 77761950 _______ Erik M. Pelton and Mark L. Donahey of Erik M. Pelton & Associates PLLC for Frederick D. Graves. Sandra M. Buja, Trademark Examining Attorney, Law Office 104 (Chris Doninger, Managing Attorney). _______ Before Kuhlke, Taylor and Greenbaum, Administrative Trademark Judges. Opinion by Greenbaum, Administrative Trademark Judge: Frederick D. Graves filed, on June 17, 2009, an intent-to-use based application to register on the Principal Register the standard character mark AMERICAN JUSTICE FOUNDATION (FOUNDATION disclaimed) for services ultimately identified as “promoting the interests of the legal and justice system” in International Class 35, and “providing a website featuring educational information in the fields of the legal and justice system” in International Class 45. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77761950 2 The examining attorney has refused registration under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that applicant's mark is merely descriptive in connection with its services.1 The appeal has been fully briefed, and an oral hearing was held. The examining attorney maintains that AMERICAN JUSTICE FOUNDATION merely describes the subject matter of applicant’s services, namely, a “FOUNDATION,” i.e., an institution, which promotes the interests of and provides educational information concerning the broad legal and ideological principles of the “AMERICAN JUSTICE” system. Essentially, she acknowledges that there are many meanings for the phrase AMERICAN JUSTICE, but argues that they all describe the overarching and well-understood ideology of the American jurisprudence system. It is applicant’s position, however, that the wording “AMERICAN JUSTICE” is too vague and nebulous to immediately describe a significant feature or characteristic of the 1 The examining attorney originally refused registration under Section 2(e)(2) of the Trademark Act on the grounds that the mark is primarily geographically descriptive of the services, and required a disclaimer of the word FOUNDATION. In response to the Office action, applicant argued against the 2(e)(2) refusal, and agreed to entry of the disclaimer. When the examining attorney made the Section 2(e)(2) refusal final, applicant concurrently filed a notice of appeal and a request for reconsideration. On reconsideration, the examining attorney withdrew the Section 2(e)(2) refusal in favor of the instant Section 2(e)(1) refusal. Serial No. 77761950 3 applied-for services with the required degree of particularity. Applicant also argues that when used in connection with applicant’s services, the term “FOUNDATION” creates a double entendre that consumers would understand to suggest “the metaphorical underpinnings supporting American justice.” Br. p. 16. A mark is merely descriptive if it immediately describes the ingredients, qualities or characteristics of the goods or services, or if it conveys information regarding a function, purpose or use of the goods or services. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-218 (CCPA 1978). It is not necessary, in order to find that a mark is merely descriptive, that the mark describe each feature of the goods or services, only that it describe a single, significant quality, feature, etc. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973). Further, it is well-established that the determination of mere descriptiveness must be made not in the abstract or on the basis of guesswork, but in relation to the goods or services for which registration is sought, the context in which the mark is used, and the impact that it is likely to Applicant filed a request for reconsideration of this refusal, which the examining attorney denied, and this appeal followed. Serial No. 77761950 4 make on the average purchaser of such goods or services. In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). A term which is suggestive, however, is registrable. A suggestive term is one that suggests, rather than describes, characteristics or attributes of a product, such that imagination, thought or perception is required to reach a conclusion about the nature of the goods or services. In re Gyulay, 820 F.2d 1216, 1217, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). There is often a fine line of distinction between a suggestive and a merely descriptive term, and it is sometimes difficult to determine when a term moves from the realm of suggestiveness into the sphere of impermissible descriptiveness. In re Recovery, Inc., 196 USPQ 830 (TTAB 1977). Analysis The record demonstrates varying interpretations of the phrase “American justice,” including due process, fair trial and innocent until proven guilty2; derogatory uses such as “rape, torture, imprisonment and disintegration of innocent people”3, and “locking up teenagers for crimes they didn’t commit”4; and applicant’s own view, namely, “that all persons are created beings endowed with inalienable rights 2 See 8/25/10 Request for Reconsideration, Exhibits A-E. Serial No. 77761950 5 derived from our Creator, by whatever Name various religions of history choose to identify the Unseen Hand that orders our universe.”5 Given the varying connotations of the phrase “American justice,” including several that directly contradict each other, we find that the phrase lacks a definitive meaning when used in connection with “promoting the interests of the legal and justice system”, and “providing a website featuring educational information in the fields of the legal and justice system”. This is borne out by the need for applicant to explain the nature of its services on its website. See American Wine Trade, Inc. v. Baroness Small Estates, Inc., ___ USPQ2d ____ (TTAB, Canc. No. 92051369, Sept. 17, 2012). Rather, the term has a more nebulous meaning and, as such, falls short of describing applicant’s services in any one degree of particularity. See In re TMS Corp. of the Americas, 200 USPQ 57 (TTAB 1978)(finding THE MONEY SERVICE suggestive of financial services providing transfers of funds); and Holiday Inns, Inc. v. Monolith Enterprises, 212 USPQ 949, 952 (TTAB 1981)(finding THE AMERICAN CAFÉ not merely descriptive of a café offering 3 See 8/25/10 Request for Reconsideration, Exhibit K, emphasis in original. 4 See 8/25/10 Request for Reconsideration, Exhibit L. 5 See Applicant’s “Declaration of Trust,” attached to the 9/15/10 Office action. Serial No. 77761950 6 restaurant services because the concept of “American food” is too vague and nebulous). Thus, the evidence is insufficient for us to conclude that consumers would understand AMERICAN JUSTICE to describe, with the requisite degree of immediacy, a specific or significant feature, function, characteristic or purpose of applicant’s services. As to the double entendre argument, applicant raised this argument in response to the Section 2(e)(1) refusal, but specifically requested removal of the disclaimer, for the first time, in his main brief on appeal. It therefore is unclear whether applicant preserved his right to appeal the requirement. Nonetheless, for completeness, we address the disclaimer requirement. The term “foundation” is defined, in relevant part, as a “charitable or educational organization.”6 Applicant’s website explains: “AMERICAN JUSTICE FOUNDATION is a non- profit trust. . . [that] exists to teach you and your children how to obtain and secure justice for your lives and for future generations.”7 Thus, as used in connection with applicant’s services, the word FOUNDATION does not 6 See page from website www.encarta.com, attached to the 9/16/09 Office action. 7 See printout from applicant’s website, http://www.americanjusticefoundation.com/, attached to the 2/25/10 Office action. Serial No. 77761950 7 create a “unitary double entendre” (Br. p. 12); rather, the term FOUNDATION specifically indicates the type of organization involved, and is at least merely descriptive of applicant’s services. Accordingly, we maintain the disclaimer requirement for the word FOUNDATION, which already has been entered. 15 U.S.C. § 1056. In summary, although the Office has met its burden to establish that the term FOUNDATION is merely descriptive of applicant’s services, the Office did not meet its burden to establish that the term AMERICAN JUSTICE is merely descriptive. Thus, the mark as a whole is not merely descriptive. To the extent we have any doubt as to the mere descriptiveness of the mark as a whole in connection with the identified services, we resolve such doubt in applicant's favor and publish the mark for opposition. In re Morton-Norwich Products, Inc., 209 USPQ 791 (TTAB 1981). Decision The refusal to register applicant’s mark AMERICAN JUSTICE FOUNDATION under Section 2(e)(1) of the Trademark Act is reversed. The requirement for a disclaimer of FOUNDATION is affirmed. Inasmuch as the disclaimer of FOUNDATION has already been entered, the application will proceed to publication.