Mary Ann Walker

Trademark Trial and Appeal Board

Aug 3, 1999

No. 74579223 (T.T.A.B. Aug. 3, 1999)

Hearing: Paper No. 18
October 20, 1998 ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG 3, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Mary Ann Walker
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Serial No. 74/579,223
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William C. Steffin of Lyon & Lyon for Mary Ann Walker
Kelley L. Wells, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney)
_______
Before Cissel, Seeherman and Hairston, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Mary Ann Walker has appealed from the refusal of the
Trademark Examining Attorney to register 1-800-636-3636 as
a mark for "preparing and placing radio, newspaper, and
television advertising for others and providing an attorney
referral service for others."1 Applicant seeks registration

1 Application Serial No. 74.579,223, filed September 21, 1994,
and asserting first use and first use in commerce as early as
September 4, 1984.
Ser. No. 74/579,223
2
under the provisions of Section 2(f) of the Trademark Act.2
Registration has been refused pursuant to Sections 1, 2, 3
and 45 of the Trademark Act, 15 U.S.C. 1051, 1052, 1053 and
1127, on the basis that the asserted mark does not function
as a service mark because it is merely informational, and
that applicant’s evidence of acquired distinctiveness is
not persuasive of a different result.3 We read this

2 Although applicant, in her response to the first Office
action, sought registration under Section 2(f) in the
alternative, that is, if her arguments about the inherent
distinctiveness of its mark were not persuasive, and has made
references in her briefs to what might be construed as an
argument that the mark is inherently distinctive, her briefs are
primarily directed to the point that the telephone number has
acquired distinctiveness and there is no reference that this
argument has been made in the alternative. In any event, at the
oral hearing applicant’s attorney specifically stated that
applicant was not contending that the mark was inherently
distinctive, but only that it had acquired distinctiveness. In
view thereof, the only issue we have considered in this appeal is
whether the telephone number has acquired distinctiveness as a
mark.
3 In its reply brief applicant states that the final refusal was
not based on the lack of inherent distinctiveness or secondary
meaning, but only on the assertion that the mark failed to
function as a mark because it was merely informational.
Applicant states that, as a result, in its appeal brief it only
addressed the argument relating to the failure of the mark to
function as a service mark, and therefore the other bases for
refusal should be deemed to have been withdrawn. First, the
refusal that 1-800-636-3636 fails to function as a mark is, in
effect, a refusal because the asserted mark is not inherently
distinctive. As for the refusal that the asserted mark has not
been shown to have acquired distinctiveness, it is true that,
although in the second Office action the Examining Attorney found
the Section 2(f) evidence to be insufficient to establish that
the mark has acquired distinctiveness, in the final Office action
the Examining Attorney stated that applicant’s evidence "that the
matter has acquired distinctiveness is of no avail." Although
the Examining Attorney should have stated that the evidence
submitted by applicant was insufficient to demonstrate that the
Ser. No. 74/579,223
3
statement as a refusal based on the insufficiency of
applicant’s evidence to demonstrate that its purported mark
has acquired distinctiveness.
Applicant and the Examining Attorney have filed
briefs,4 and applicant filed a reply brief. An oral hearing
was held before this Board.
In view of applicant’s acknowledgment that its
asserted mark is not inherently distinctive, we need only
consider whether applicant has demonstrated that her
telephone number has acquired distinctiveness, such that it
is recognized as a mark for applicant’s identified
services.
Clearly applicant’s asserted mark, 1-800-636-3636, is
a telephone number and, in that respect, serves an

telephone number had acquired distinctiveness as a mark, we do
not consider the irregularity in the language used to render the
final refusal premature. Indeed, there is no question that
applicant was aware that the sufficiency of her evidence of
acquired distinctiveness was at issue in the proceeding, since
both her appeal brief and reply brief discuss this point
extensively.
4 With her brief the Examining Attorney submitted yellow pages
directory listings, and asked that we take judicial notice of
"the fact that businesses have telephone numbers and that they
frequently and sometimes prominently utilize these phone numbers
in advertising." Applicant has objected. Although we can and do
take judicial notice of the generally known fact that businesses
have telephone numbers, see Fed. R. Evid. 201, the exhibit
attached to the Examining Attorney’s brief, purporting to show
prominent use of telephone numbers in advertisements, is not
properly a subject of judicial notice. Because this material was
not submitted during the examination phase, and in view of
applicant’s objection, it has not been considered.
Ser. No. 74/579,223
4
informational function. The question for us is whether,
considering the evidence of record, applicant has shown
that this telephone number also serves an additional
function, namely, to act as a source-identifier for the
services identified in applicant’s application. In this
connection, it is not sufficient that consumers know that
by calling 1-800-636-3636 they can reach applicant; rather
they must regard this number as indicating, in the manner
of a mark, the source of applicant’s services.
We take judicial notice that telephone numbers are
used by virtually all businesses. Given this ubiquitous
use, the degree of evidence necessary to show that
consumers regard this particular telephone number as a
service mark of applicant, rather than merely as a way of
contacting applicant, must necessarily be high.
With respect to its service of preparing and placing
radio, newspaper, and television advertising for others,
applicant has submitted as a specimen what appears to be a
flyer. At the bottom of the flyer is the name and address
for Walker Advertising, Inc., which is a corporation owned
by applicant. The advertisement states "Los Defensores
produces impressive results by purchasing a substantial
amount of advertising time on the Southland’s key Spanish-
speaking television and radio stations…." It is not
Ser. No. 74/579,223
5
entirely clear from the record, but it appears from the
specimens that applicant, through Walker Advertising, Inc.,
offers her advertising service to attorneys who become part
of the Los Defensores, Inc. organization. In other words,
attorneys become part of applicant’s Los Defensores, Inc.
lawyer referral service. The telephone number
1-800-636-3636 prominently appears on the advertisement,
above the words "Y El Exito Legal Esta A Su Alcance."
Applicant has not furnished a translation of these words,
and we therefore cannot view the Spanish statement as in
any way promoting to the consumers of applicant’s
advertising services that the telephone number is a
trademark, such that these consumers would recognize it as
a mark.5 Further, all of the information applicant has
provided with respect to the use and advertising of her
purported mark, and customers of her services, is in
connection with her Los Defensores, Inc. company.
Applicant has provided no sales and advertising figures
with respect to the identified advertising services.

5 The burden is on applicant to prove acquired distinctiveness.
If the evidence which applicant submits is in a language other
than English, it is applicant’s responsibility to provide a
translation. (As an aside, we have ascertained that the phrase
can be roughly translated "And legal success is within your
reach." Nothing about this phrase would lead consumers to
conclude that the telephone number shown above it is a
trademark.)
Ser. No. 74/579,223
6
Accordingly, applicant’s evidence of acquired
distinctiveness of the telephone number with respect to her
advertising services is woefully inadequate to demonstrate
that the number would be perceived as a mark by the
relevant consumers of such services.
Applicant has not provided any information about the
activities of Los Defensores, Inc., other than to say that
she has personal knowledge of the services provided by it,
and that since 1984, over 200,000 consumers of Los
Defensores’ services have been referred to attorneys. From
this we conclude that Los Defensores, Inc. is a lawyer
referral service. Applicant has also stated, in her first
declaration, that through this corporation, of which she is
sole shareholder, she has used the mark 1-800-636-3636
continuously in commerce since 1984; that the mark has been
advertised extensively on television and radio, and placed
on promotional items such as T-shirts, cup holders and
caps; and that since 1984 over $20 million has been spent
promoting the mark.
In addition to the information provided in the first
declaration, applicant submitted a second declaration
stating that she directed that consumers who have used Los
Defensores, Inc.’s services should be contacted. As a
Ser. No. 74/579,223
7
result, 37 signed a form bearing the following statement at
the top:
For at least ___ years now I have seen
"I-800-636-3636" advertised in
connection with the attorney referral
and advertising services provided by
Los Defensores, Inc.
I have come to look upon the "1-800-
636-3636" trademark as a symbol
identifying the services provided by
Los Defensores, Inc., and not of any
other company in this field.
Below this statement are signatures of various individuals,
along with the date they signed the form and the number of
years referred to in the first paragraph.
The photograph submitted by applicant shows a cap with
the asserted mark printed above a logo which includes the
words LOS DEFENSORES, which is in turn above the same
Spanish-language phrase used on the specimen for her
advertising services, namely, "Y El Exito Legal Esta A Su
Alcante." This same photograph shows a T-shirt, the top of
which has been folded over, so that all that is visible is
the asserted mark and the Spanish-language phrase. The cup
holder, which is also in the photograph, shows portions of
the asserted mark above a phrase which is too small for us
to read. As noted, all three promotional items referred to
by applicant in her declaration are shown in a single
photograph, which is itself of a rather small size. As a
Ser. No. 74/579,223
8
result, none of the items appears particularly clear, to
the extent that it is a struggle to see what appears on the
lower portion of the cap, and we have been unable to read
all the wording on the cup holder. Moreover, portions of
the items are blocked from view. We do not know if
applicant deliberately folded the T-shirt in such a way to
obscure additional wording or marks, but the result is that
we are unable to ascertain the impact these items would
have on consumers. From the portions of the items we can
view, we cannot conclude that the telephone number printed
on them conveys the impression to consumers that
1-800-636-3636 is a trademark for lawyer referral services.
As for applicant’s television and radio advertising,
she has not shown the manner in which the telephone number
is used in such commercials. Thus, although applicant
asserts that she has expended over $20 million in
television and radio advertising and distribution of
promotional items, based on the record before us we cannot
conclude that the telephone number has been promoted in
such a way that the public would recognize it as a
trademark.
Similarly, applicant has not provided any materials
regarding her use of the number in connection with her
lawyer referral services, such that we can conclude that
Ser. No. 74/579,223
9
the impact of the use since 1984 has been as a trademark,
rather than as a merely informational telephone number.
The document signed by 37 consumers of Los Defensores,
Inc.’s lawyer referral services is, to some extent,
evidence of the public perception of the number. Although
case law states that form declarations are acceptable to
show acquired distinctiveness of a mark, clearly
information which has been provided in an individual’s own
words is of greater probative value. The evidence provided
in this case is of particular concern because applicant’s
legal referral services are apparently directed to a
Spanish-speaking audience, as evidenced by the Spanish-
language slogan shown on the promotional items, and the
statement, in applicant’s reply brief, that the number is
advertised in Spanish. p. 2. It is unclear whether
Spanish-speaking consumers would understand the somewhat
technical language employed in the form statement of
acquired distinctiveness. Further, the statement says that
the signers have seen the mark "advertised in connection
with the attorney referral and advertising services
provided by Los Defensores, Inc.," but it appears to us,
from the information in the file, that applicant’s
advertising services are rendered through Walker
Advertising, Inc., not Los Defensores, Inc. Certainly
Ser. No. 74/579,223
10
applicant’s declaration indicates that Los Defensores,
Inc.’s customers use attorney referral services, not
applicant’s advertising services. In view of the
foregoing, we believe that the letter signed by 37
customers is entitled to little weight. See In re EBSCO
Industries Inc., 41 USPQ2d 1913 (TTAB 1996).
In any event, the evidence required to show acquired
distinctiveness is directly proportional to the
descriptiveness or, in this case, non-distinctiveness, of
the mark at issue. See Yamaha International Corp. v.
Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed.
Cir. 1988). Given the ubiquitous use by businesses of
telephone numbers as a purely informational vehicle,
applicant has not met its burden of proving that its
telephone number 1-800-636-3636 has acquired
distinctiveness as a mark for applicant’s identified
services.
Decision: The refusal of registration is affirmed.
R. F. Cissel
E. J. Seeherman
P. T. Hairston
Administrative Trademark Judges
Trademark Trial and Appeal Board