Murphy Law Firmv.Michles & Booth, P.A.

Trademark Trial and Appeal Board

Mar 14, 2005

No. 91159613 (T.T.A.B. Mar. 14, 2005)

omelko
Mailed: March 14, 2005

Opposition No. 91159613

Murphy Law Firm

v.

Michles & Booth, P.A.

Before Hohein, Hairston and Chapman,
Administrative Trademark Judges.

By the Board:

Background

On November 5, 2002, Michles & Booth, P.A. (hereinafter
“applicant”) filed an application for the mark DON’T BE A
VICTIM TWICE for services described as “advertising of law
firm” based on an alleged bona fide intention to use the
mark in commerce.1 During the course of examination, the
examining attorney issued an Office action in which he
indicated the following:
The wording “advertising of law firm” in the
recitation of services is unacceptable as indefinite.
It does not appear from the record that the applicant
intends to be in the business of advertising law firms
for others but rather intends to offer services of a
law firm in relation to the proposed mark. For
example, the wording “services of a law firm namely
legal services” is acceptable and may be adopted, if
accurate.

1 Application Serial No. 78181658, filed November 5, 2002.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Opposition No. 91159613
2
Applicant responded that it was not in the business of
advertising law firms for others and amended its recitation
of services to that proposed by the examining attorney. The
mark was subsequently published for opposition.
Murphy Law Firm (hereinafter “opposer”) opposed
registration based on allegations of priority of use of the
identical mark for “legal services” and a likelihood of
confusion due to applicant’s mark for its legal services;
the improper broadening of applicant’s recitation of
services in the involved application; and applicant’s lack
of bona fide intent to use its mark in commerce in
connection with the services identified in the application
as originally filed.
Applicant, in its answer, denied the salient
allegations of the notice of opposition and asserted the
affirmative defenses of estoppel and lack of standing.2
This case now comes up for consideration of opposer’s
motion (filed on August 3, 2004) for summary judgment on the
issue of whether applicant improperly broadened the
recitation of services in the involved application or, in
the alternative, whether applicant lacked a bona fide intent
to use the mark in connection with the services as
originally identified; and applicant’s cross-motion (filed

2 Although applicant also pleaded the affirmative defense of
unclean hands, the Board, on June 14, 2004 granted opposer’s
motion to strike such defense.
Opposition No. 91159613
3
September 14, 2004) for summary judgment in its favor on
those two issues as well as for summary judgment on the
issue of priority of use. The motions have been fully
briefed by the parties.3
Summary judgment is an appropriate method of disposing
of cases in which there is no genuine issue of material fact
in dispute, thus leaving the case to be resolved as a matter
of law. See Fed. R. Civ. P. 56(c). The party moving for
summary judgment has the initial burden of demonstrating the
absence of any genuine issue of material fact. See Celotex
Corp. v. Catrett, 477 U.S. 317 (1986), and Sweats Fashions
Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793
(Fed. Cir. 1987). A factual dispute is genuine, if, on the
evidence of record, a reasonable finder of fact could
resolve the matter in favor of the non-moving party. See
Opryland USA Inc. v. Great American Music Show Inc., 970
F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992), and Olde Tyme
Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542
(Fed. Cir. 1992). The evidence must be viewed in a light
most favorable to the non-movant, and all justifiable
inferences are to be drawn in the non-movant’s favor. See

3 Applicant’s consented motion (filed September 3, 2004) to
extend its time to respond to opposer’s motion for summary
judgment is hereby approved; and opposer’s consented motion
(filed September 21, 2004) to extend its time to file a reply
brief for its summary judgment motion is hereby approved.
Opposition No. 91159613
4
Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993), and Opryland USA, supra.
The mere fact that both parties have filed motions for
summary judgment does not necessarily mean that there is no
genuine issue of material fact, and that trial is
unnecessary. See University Book Store v. University of
Wisconsin Board of Regents, 33 USPQ2d 1385 (TTAB 1994); and
10A Wright, Miller & Kane, Federal Practice & Procedure:
Civil 3rd, § 2720 (1998).
Standing
We turn first to the question of if there is a genuine
issue of material fact as to whether opposer has standing to
bring this opposition. In Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023 (Fed. Cir. 1999), the Court of Appeals
for the Federal Circuit enunciated a liberal threshold for
determining standing, that is, whether one's belief that one
will be (is) damaged by the registration is reasonable and
reflects a real interest in the case.
In its motion, opposer has provided the declaration of
Peyton P. Murphy, a principal in opposer’s law firm, who
declares that opposer has continuously used DON’T BE A
VICTIM TWICE as a service mark for legal services since
before the November 5, 2002 filing date of the involved
application. Specifically, Mr. Murphy avers that opposer’s
television commercial using the phrase DON’T BE A VICTIM
Opposition No. 91159613
5
TWICE aired at least as early as July 15, 2002 and, since
then, it has aired two hundred to three hundred times per
year; and that opposer has also used the phrase in
advertising in the yellow pages and on its letterhead
stationery since before November 5, 2002, and continuing to
the present. In support of its motion, opposer includes a
copy of the television broadcast invoice and a copy of
opposer’s brochure.
In response, applicant argues that opposer does not
have standing because applicant first used DON’T BE A VICTIM
TWICE in 2001 and opposer first used the same mark in 2002;
that because applicant has prior use of the service mark,
opposer cannot demonstrate that it will suffer damage if
applicant registers the mark; and that, as such, opposer
does not have standing to bring this opposition.
While not pleaded as a basis for its standing, opposer
argues in reply that it has conclusively demonstrated its
standing by submitting evidence of its use of the identical
mark in connection with legal services prior to the filing
date of the involved application. Opposer has submitted a
copy of the Office action notifying it of the suspension of
opposer’s application4 pending determination of the
registrability of the involved application.

4 Application Serial No. 78251783, filed May 19, 2003.
Opposition No. 91159613
6
It is pointed out that applicant’s arguments are
directed to the issue of priority of use rather than
standing, which requires only a showing of a real interest
to bring this proceeding. Opposer’s submission of the
Office action referenced above sufficiently demonstrates
that, contrary to applicant’s contentions, there is no
genuine issue of material fact as to opposer’s standing in
that it has a real interest in this proceeding. See
Cunningham v. Laser Golf Corp., 222 F.3d 942, 55 USPQ2d 1842
(Fed. Cir. 2000); and The Hartwell Co. v. Shane, 17 USPQ2d
1569 (TTAB 1990).
Cross-Motions for Summary Judgment on the Issue of whether
Applicant Improperly Broadened the Recitation of Services in
the Involved Application

Opposer maintains that applicant’s amendment of the
recitation of services in its involved application
effectively constitutes a wholesale replacement of
applicant’s original recitation (advertising services) with
a completely different recitation (legal services). Opposer
further argues that the standard in ex parte cases--that an
applicant can amend the application to clarify or limit, but
not to broaden, the recitation of services--should apply to
inter partes cases as well. Opposer’s rationale is that if
a broadening amendment is permitted, prejudice may result
against third parties who search the USPTO records during
the period between the original filing date and the entry of
Opposition No. 91159613
7
the amendment and act, or do not act, in reliance on the
original recitation of services.
In response, applicant provides the declaration of
Marcus J. Michles, II, a principal in applicant’s law firm,
who declares that the original recitation of services in the
involved application was intended to reflect applicant’s
intent to use the service mark in its efforts at marketing
the legal services applicant provides; that in response to
the examining attorney’s statement that the wording of the
recitation of services was indefinite, applicant amended its
recitation of services to that suggested by the examining
attorney, who then accepted the amendment. Applicant relies
on TMEP § 1402.07(b) (3d ed. Rev. 2), to support its
position.
In reply, opposer argues that the word “advertising”
identifies a well-recognized, separate service for which
applicants may apply to register marks.
In this case, we agree with applicant that its
amendment is permissible to clarify an ambiguity. As stated
in TMEP § 1402.07(b) (3d ed. Rev. 2), in pertinent part:
An applicant may amend an ambiguous identification
of goods or services (i.e., an identification that
fails to indicate a type of goods or services) in
order to specify definite goods or services within
the scope of the indefinite terminology....
Likewise, if the applicant includes wording in an
indefinite identification of goods or services
that, in context, is obviously surplus, the
applicant may amend the identification to specify
goods or services within the scope of the
Opposition No. 91159613
8
indefinite terminology. In many cases, the
surplus wording will not restrict the range of
permissible amendments.
Example - If the applicant begins an
indefinite identification of goods with
surplus wording such as “sale of . . .,”
“publishing of . . .,” “advertising of .
. .,” “manufacture of . . .,” or similar
wording, the applicant may amend to
specify either goods or services within
the scope of the existing
identification. However, the specific
terms used to preface the goods do
establish some limitation as to scope.
“Sale of” may justify an amendment to
retail or mail order services for
specific goods, but not to custom
manufacturing or advertising agency
services related to those goods.
Opposer’s arguments would have some merit if
applicant had initially identified its services in the
application as “advertising services of law firm.” We
find, however, that as a matter of law, applicant
properly clarified its ambiguous recitation of services
rather than impermissibly broadening such. The amended
recitation, that is “services of a law firm namely
legal services,” is the operative recitation of
services.
Accordingly, opposer’s motion for summary judgment
on this issue is denied and applicant’s cross-motion
for summary judgment on this issue is granted.
Opposition No. 91159613
9
Cross-Motions for Summary Judgment on the Alternative Issue
of whether Applicant Lacked a Bona Fide Intent To Use the
Mark in Connection with the Services as Originally
Identified

In the alternative, opposer argues that applicant
admitted, in response to opposer’s request for admission,
that it did not have a bona fide intent to use the mark in
connection with “advertising of law firm” and, in response
to the examining attorney’s Office action, stated that “[i]t
is true that we are not in the business of advertising law
firms for others. We only intend to offer the services of a
law firm in relation to the proposed mark.” Opposer has
included a copy of applicant’s signed response to opposer’s
request for admission, and a copy of applicant’s response to
the examining attorney. As such, opposer argues that
applicant did not have the requisite bona fide intent to use
the mark on the services recited in the application as
originally filed.
Inasmuch as we have determined that applicant properly
amended its initially ambiguous recitation of services from
“advertising of law firm” to “services of a law firm namely
legal services,” opposer’s motion for summary judgment on
the alternate ground that applicant lacked the requisite
bona fide intent to use the mark in connection with
“advertising of law firm” is not well taken.
Opposition No. 91159613
10
Accordingly, opposer’s motion for summary judgment on
this issue is denied; and applicant’s cross-motion for
summary judgment on this issue is granted.
Applicant’s Motion for Summary Judgment on the Issue of
Priority of Use

Pursuant to Section 2(d) of the Trademark Act, a
plaintiff must assert, and then prove, at trial or on
summary judgment, that defendant’s mark, as applied to its
goods or services, so resembles plaintiff’s previously used
or registered mark or its previously used trade name as to
be likely to cause confusion, mistake or deception. It is
noted that the only real issue raised in applicant’s motion
for summary judgment, and in opposer’s response, is the
question of priority of use. Neither party has attempted to
establish that a genuine issue of material fact exists in
regard to the question of likelihood of confusion, since in
essence the parties claim rights in the identical mark for
identical services.
Applicant has included with its motion the declaration
of Marcus J. Michles, II, a principal in applicant’s law
firm, who declares that in late 2001, he created the phrase
DON’T BE A VICTIM TWICE to be used as a service mark in
connection with the firm’s advertising efforts for its legal
services; that in December 2001, the firm arranged for the
production of a television advertisement using the mark
DON’T BE A VICTIM TWICE for its legal services which aired
Opposition No. 91159613
11
for the first time on December 31, 2001, and ran for a
month; that since that time applicant has continued using
the mark in connection with its services and has expanded
its use to print and radio advertising.
In support of its motion, applicant includes copies of
its business records relating to the television, radio and
print advertisements, specifically (i) an invoice from
Vision Design Productions, dated December 18, 2001,
referencing two thirty second television commercials; (ii)
undated transcripts of radio advertisements; (iii) print
advertisements, including one dated April 11, 2003; and (iv)
invoices showing advertising in these media during the time
frame of February 12, 2002 to March 14, 2004.
In response, opposer argues that applicant has not
indisputably established a date of use as a service mark
prior to opposer’s July 15, 2002 date of use and, therefore,
cannot claim priority over opposer. In particular, opposer
maintains that applicant has not made of record specimens of
its claimed use via radio and television commercials and,
therefore, has not established that such usage constitutes
service mark usage (as opposed to descriptive,
informational, or generic usage). In addition, opposer
argues that the print advertisements for which applicant has
provided copies show dates of such use that are subsequent
to opposer’s use of July 15, 2002. Further, opposer submits
Opposition No. 91159613
12
that opposer’s explicit statement that its use was “at least
as early as July 15, 2002” plainly allows for the
possibility at some future time in this proceeding to submit
evidence of use earlier than July 15, 2002. Opposer
concludes that the insufficiency of the evidence submitted
by applicant to establish applicant’s use of the term DON’T
BE A VICTIM TWICE results in a genuine issue of material
fact with respect to priority of use.
In reply, applicant argues that opposer has failed to
put forward evidence necessary to support its claim of
priority of use. Specifically, applicant maintains that
applicant has come forward with evidence that it first used
DON’T BE A VICTIM TWICE in commerce on or about December 31,
2001, and that it has continued to use the mark in the
months and years that followed. Applicant further argues
that despite having the opportunity to do so, opposer has
failed to come forward with any evidence of its own use
prior to December 31, 2001; and that the only evidence
opposer has produced indicates that opposer’s first use is
six months after applicant’s first use. Further, applicant
argues, opposer’s statement that later in the proceeding it
may prove use earlier than applicant’s December 31, 2001
date fails to satisfy opposer’s obligation to defend against
applicant’s motion for summary judgment on the issue of
priority of use.
Opposition No. 91159613
13
In response to opposer’s contention that it is
impossible to conclude that applicant used the mark DON’T BE
A VICTIM TWICE to identify and distinguish the source of
applicant’s services, applicant argues that the transcripts
of its radio advertisements show that the mark is used
therein in a prominent position, preceded by information
regarding the legal services offered by applicant and
immediately followed by the applicant’s name and contact
information.
Included with applicant’s reply is the declaration of
Margaret Edwards, an employee of applicant, who declares
that in December 2001, applicant arranged for the production
and broadcast of two television advertisements using the
mark DON’T BE A VICTIM TWICE, copies of which appear on the
videotape submitted with the reply brief.
The Board has viewed the specimens for which applicant
claims its earliest use date, namely the videocassette for
the two commercials applicant’s principal declares were
aired on December 31, 2001. Before the actual commercial, a
page appears on the screen that shows the December 31, 2001
date. The commercials clearly show service mark use of the
mark DON’T BE A VICTIM TWICE in relation to legal services.
The commercials identify applicant’s law firm and a
telephone number so that potential clients may contact the
firm for legal services. The phrase is emphasized by the
Opposition No. 91159613
14
appearance of the words DON’T BE A VICTIM TWICE on the
screen at the same time the speaker speaks them, and by the
speaker pausing before and after speaking the phrase.
Applicant’s evidence shows that it has used the mark
DON’T BE A VICTIM TWICE since December 31, 2001 and
continuing to the present.
We disagree with opposer’s argument that the phrase
DON’T BE A VICTIM TWICE may be used in a descriptive,
informational or generic manner. Opposer submitted no
evidence to support this argument. Furthermore, the
argument is somewhat disingenuous since opposer is using the
identical phrase for the identical services. We find that
when viewed in connection with the services recited in the
application, there is no uncertainty as to the service mark
significance of the phrase.
We find no merit in opposer’s argument that opposer may
offer proof of use earlier than applicant has established at
some time later in this proceeding. Applicant offered
evidence of its claim of priority of use of the mark and it
was opposer’s responsibility to come forward with its own
evidence, if available, of use earlier than that which
applicant established by its motion for summary judgment.
In countering a motion for summary judgment, more is
required than mere assertions of counsel. The non-movant
may not rest on its conclusory pleadings but, under Fed. R.
Opposition No. 91159613
15
Civ. P. 56, must set out, usually in an affidavit by one
with knowledge of specific facts, what specific evidence
could be offered at trial. Sweats Fashions v. Pannill
Knitting Co., 4 USPQ2d 1794 (Fed. Cir. 1987).
Applicant’s evidence has established that there is no
genuine issue as to priority of use; that it is applicant
which has priority of use rather than opposer; and that
applicant is entitled to judgment as a matter of law on this
issue.
Accordingly, applicant’s motion for summary judgment on
the issue of priority of use is granted.
Having decided all the issues raised in the notice of
opposition in favor of applicant, the opposition is
dismissed.