REDACTED
`
`COPY READY
`
`FOR
`
`SCANNING
`
`

`
`BakerHostet|er
`
`May 28, 2014
`
`TTAB
`
`Baker&HostetIer LLP
`
`2929 Arch St: eat
`Cira Centre. 12th Floor
`Philadelphia. PA l9'104—28s'3t
`T 2 l 5.5('l8.31()()
`F 215.568.3439
`wwwbakc-rlaw.com
`
`Jacqueline M. Lesser
`direct dial: 215.564.2155
`JLesser@bakerlaw.com
`
`VIA EXPRESS MAIL
`
`.
`
`Trademark Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1451
`
`f_
`
`,4. gr’ 7677717
`
`/.
`
`Alexandria VA 22314
`
`Re:
`
`In the United States Patent and Trademark Of ice
`Before the Trademark Trial and Appeal Board
`Interlocutory Attorney: George Pologeorgis
`Larry Pitt Associates, P. C. v. Lundy Law, LLP
`Opposition No. 91210158
`
`Dear Sirs:
`
`Pursuant to C.F.R. §2.126, please find Opposer’s Opposition to Summary Judgment,
`and Declarations of Jacqueline M. Lesser and Phyllis Meloff, and Expert Report of Ross
`Fishman.
`
`Certain of the documents and statements made in these papers rely on documents which
`the Applicant has marked confidential, pursuant to the Protective Order set by the
`Board. Pursuant to Board practice, a paper submission of the redacted set of these
`confidential papers, and a paper submission of an unredacted set of these papers are
`herewith submitted to the Board.
`
`Respectfully,
`
`44471/eQL§<2.9{£a,<z,a/\
`
`Jacqueline M. Lesser
`
`J ML/_jw
`Enclosures
`
`llllllll
`
`lllllllllllllllllllllllllllllllllllll
`
`
`*05-28-2014*
`US. Patent and Tradernark0!f\oe#72
`
`llllllll
`
`Atlanta
`/"/OLISZO/7
`
`Chicago
`[.03 Angeles
`
`C/nc//mart"
`New York
`
`C/eve/and
`Or/rmdo
`
`Co/L/nibus
`Pl?//ado/‘L7/’i/'a
`
`(:lt%l7l’C-PI’
`Costa Mesa
`Seat:/e
`‘::'l.’;::<r.v’;//rm‘-:.>;L /.‘1>-II";
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`LARRY PITT & ASSOCIATES, P.C.
`
`Opposition No 91210158
`
`Opposer,
`
`LUNDY LAW, LLP
`
`Applicant
`
`CONFIDENTIAL (REDACTED)
`LARRY PITT & ASSOCIATES’ OPPOSITION TO
`MOTION FOR SUMMARY JUDGMENT
`
`CERTIFICATE OF MAILING
`EXPRESS MAIL LABEL NO. EG314876665US
`
`I hereby certify that this paper is being deposited with
`the United States Postal Service as Express Mail in an
`envelope addressed to the Trademark Trial and Appeal
`Board, U.S. Patent and Trademark Office, Madison
`East, Concourse Level Room C 55, 600 Dunlany Street,
`Alexandria, VA 22314 on the date shown below
`
`
`
`

`
`TABLE OF CONTENTS
`
`I......... ..INTRODUCTION..............................................................................................................1
`
`II. ...... ..STATEMENT OF FACTS ................................................................................................2
`
`A. ...... ..Larry Pitt and Law Firm Marketing ...................................................................2
`
`B. ...... ..Lundy Law’s Marketing of INJURED? REMEMBER THIS NAME ..............4
`
`III. .... ..LUNDY LAW’S CLAIMED STATEMENT OF FACTS ............................................ ..7
`
`IV...... ..ARGUMENT .................................................................................................................... ..8
`
`A. ...... ..Lundy Law has failed to demonstrate an absence of genuine issues to all
`material facts ........................................................................................................ ..9
`
`B. ...... ..Genuine material facts are in dispute on the issues of genericness,
`distinctiveness and whether the phrase functions as a trademark................ ..10
`
`1. ....... ..The phrase is generic. ............................................................................ ..10
`
`2. ....... ..The phrase is merely descriptive and nondistinctive .......................... ..l2
`
`3. ....... ..The phrase does not function as a trademark. .................................... ..14
`
`V. ...... ..CONCLUSION .............................................................................................................. ..16
`
`

`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`
`In re Bed & Breakfast Registry,
`229 USPQ 818 (Fed. Cir. 1986) ............................................................................................. ..13
`
`BellSouth Corp. v. DataNational Corp.,
`60 F. 3d 1565,35 USPQ2d 1554 (Fed. Cir. 1995) ................................................................ ..10
`
`Callaway Vineyard & Winery v. Endsley Capital Group, Inc.,
`63 USPQ 1919 (TTAB 2002) ................................................................................................ ..10
`
`In re Chippendales USA, Inc.,
`622 F.3d 1346, 96 USPQ 2d 1681 (Fed. Cir. 2010) .............................................................. ..12
`
`Continental Airlines Inc. v. United Air Lines Inc.,
`53 USPQ 2d 1385 (TTAB 1999) ........................................................................................... ..10
`
`Copelands ’ Enterprises Inc. v. CNVInc.,
`945 F.2d 1563, 20 USPQ 2d 1295 (Fed. Cir. 1991) ................................................................ ..8
`
`In re Cox Enterprises Inc.,
`82 USPQ 2d 1040 (TTAB 2007) ........................................................................................... ..13
`
`In re Deutsche Airbus GmbH,
`224 USPQ 611 (TTAB 1984). Case ...................................................................................... ..10
`
`Dewalt, Inc. v. Magna Power Tool Corp.,
`289 F. 2d 656, 129 USPQ 275 (C.C.P.A. 1961) .................................................................... ..12
`
`In re Eagle Crest,
`96 USPQ 1227 (TTAB 2010) ................................................................................................ ..15
`
`In re European-American Bank & Trust Co.,
`201 USPQ 788 (TTAB 1983) ................................................................................................ ..16
`
`Flatley v. Trump,
`11 USPQ2d 1284 (TTAB 1989) .............................................................................................. ..9
`
`Interactive Products Corp. v. A2Z Mobile Office Solutions, Inc.
`326 F.3d 687 (6th Cir. 2003) ................................................................................................. ..14
`
`KP Permanent Make-up, Inc. LLP v. Lasting Impression I Inc.
`543 U.S. 111 (2004). Fishman Report at 8 ............................................................................ ..13
`
`

`
`Loglan Institute Inc. v. Logical Language Group, Inc.,
`962 F. 2d 1038, 22 USPQ 2d 1531 (Fed. Cir. 1992) ............................................................. ..11
`
`Lundy Law LLP v. Larry Pitt & Associates,
`Case 2:13—cv-01161—JHS (E.D. Pa.) ........................................................................................ ..3
`
`In re Manco Inc. ,
`24 USPQ 2d1938 (TTAB 1992) ............................................................................................ ..16
`
`Meyers v. Brooks Shoe, Inc.,
`912 F. 2d 1459, 16 USPQ2d 1055 (Fed. Cir. 1990) ................................................................ ..9
`
`In Re Nett Designs Inc.,
`236 F.3d 1339,57 USPQ 2d 1564 (Fed. Cir. 2001) ........................................................... ..8, 9
`
`Olde Tyme Foods Inc. v. Roundy's Inc.,
`961 F.2d 200, 22 USPQ2d 1542 (Fed.Cir. 1992) .................................................................... ..9
`
`Phillip Morris Incorporated, et al. v. Williamson Tobacco Corporation,
`230 USPQ 172 (TTAB 1986) ................................................................................................ ..10
`
`R.J.Ants, Inc. v. Marinelli Enters.,
`771 F. Supp. 2d 475 (E.D.Pa. 2011) ...................................................................................... ..15
`
`In re Reed Elsevier Props. Inc.,
`82 USPQ 2d 1378 (Fed. Cir. 2007)........................................................................................ ..10
`
`Remington Products Inc. v. North American Philips Corporation,
`892 F. 2d 1576, 13 USPQ 2d 1444 (Fed. Cir. 1990) ............................................................. ..12
`
`In re Scholastic Testing Service, Inc.,
`196 USPQ 517 (TTAB 1977) ............................................................................................ ..7, 11
`
`In re The Standard Oil Co,
`275 F.2d 945, 125 USPQ 227 (C.C.P.A. 1960) ..................................................................... ..15
`
`In re Sun Oil Co.,
`426 F. 2d 201 (CCPA 1970) .................................................................................................. ..12
`
`T. Marzetti Co. v. Roksam Baking Co.,
`102 USPQ 2d 1801 (6th Cir. 2012) ....................................................................................... ..14
`
`University Book Store v. University of Wisconsin Bd. ofRegents,
`33 USPQ 2d 1385 (TTAB 1994) ............................................................................................. ..8
`
`In re Volvo Cars ofNorth America, Inc.,
`46 USPQ 2d 1455 (TTAB 1998) ........................................................................................... ..16
`
`

`
`In re Wakefern Food Corp.,
`222 USPQ 76 (TTAB 1984) .................................................................................................. ..16
`
`Statutes
`
`15 U.S.C.§1051et seq...................................................................................................... ..5,13,15
`
`37 C.F.R.§§2.34(a) ......................................................................................................................... ..5
`
`37 C.F.R.§2.51(a) ........................................................................................................................... ..5
`
`Fed. R. Civ. P. 56 .................................................................................................................. .. 3; 8; 9
`
`Other Authorities
`
`
`10A Wright, Miller & Kane, Federal Practice and Procedure‘ Civil 3d §2727
`(1998) ....................................................................................................................................... ..8
`
`iii
`
`

`
`I.
`
`INTRODUCTION
`
`Opposer Larry Pitt & Associates, P.C. (“Larry Pitt”) hereby opposes Lundy Law’s
`
`motion for summary judgment.
`
`This Opposition involves the general right of law firms to ask their own potential clients
`
`to remember their name or telephone number in advertising and associated marketing materials.
`
`Lundy Law is seeking protection of the phrase REMEMBER THIS NAME as a trademark based
`
`on its own use of this common instruction. The phrase actually used by Lundy Law is
`
`“INJURED? REMEMBER THIS NAME 1-800-LUNDYLAW” — not simply the command to
`
`“REMEMBER THIS NAME,” which is the phrase sought to be registered. The common
`
`instruction to “REMEMBER THIS NAME” accompanied by the name of the law firm, or the
`
`instruction to “REMEMBER THIS NUMBER” used over a business’ telephone number is — and
`
`has been — used by countless other businesses and law firms. Lundy Law’s objective in
`
`attempting to register such a common and ordinary phrase is to prevent other law firms from a
`
`basic marketing concept. Opposer, Larry Pitt, a law firm and competitor of Lundy Law, has
`
`opposed this attempt to register a phrase that is — and should be — in the public domain.
`
`Lundy Law’s summary judgment motion can be boiled down to the following arguments,
`
`none of which are material to this matter: 1. Lundy Law claims that it has used the phrase
`
`REMEMBER THIS NAME; 2. the Trademark Office has accepted the phrase initially for
`
`registration; and 3. the individual word components of the phrase, and in particular, the
`
`combination of “remember this” are not defined by a dictionary as meaning a “law firm” and; 4.
`
`other companies have registered slogans that include the term “remember.” These arguments —
`
`and what Lundy Law considers supporting “facts” are an insufficient basis for summary
`
`judgment. Lundy Law’s motion for summary judgment does not address the Very legal or factual
`
`

`
`issues of this Opposition, namely, that the phrase cannot be protected. Accordingly, Lundy
`
`Law’s summary judgment motion should be denied.
`
`II.
`
`STATEMENT OF FACTS1
`
`A.
`
`Larfl Pitt and Law Firm Marketing
`
`Opposer, Larry Pitt, is a law firm located in the greater Philadelphia area offering
`
`representation in personal injury, workers’ compensation and social security disability matters.
`
`Meloff Decl. ‘H2. Like many attorneys practicing in these areas, it advertises to the general
`
`public. Meloff Decl.1l 3. Larry Pitt, Esq. has practiced law for more than 37 years, and Opposer,
`
`Larry Pitt & Associates, P.C. has been in business for more than 33 years. Meloff Decl. 112.
`
`Opposer was one of the first law firms to publicly advertise. Meloff Decl. 1l3. This advertising
`
`includes advertising located in and around public transportation. Meloff Decl. 113. The primary
`
`goal of such advertising is for consumers to remember the name and phone number of the law
`
`firm. Meloff Decl. at 1] 4. Without question, successful attorney advertising leads to consumers
`
`to remember the name and number of a law firm. Fishman Report at 5 and 6. Lundy Law does
`
`not dispute this. In particular, consumers seeking representation on personal matters rely on
`
`public advertising when seeking legal counsel. Fishman Report at 4 and 5. In fact, for many
`
`attorneys, public advertising of the firm name and telephone number is its chief method of
`
`marketing. Fishman Report at 4. The success of such law firms hinge on whether potential
`
`clients are able to remember the f1rm’s name and the firm’s number. Fishman Report at 6.
`
`1 The declarations of Phyllis Meloff (“Meloff Decl.”), dated May 27, 2014 and Jacqueline M/
`Lesser (“Lesser Decl.”), dated May 28, 2014 , and the Expert Report of Ross Fishman (“Fishman
`Report”), dated May 28, 2014 are submitted herewith.
`
`2
`
`

`
`In April 2012, Larry Pitt created new advertising, as shown below:
`
`Injured at work?
`Injured in an accident?
`
`0 Workers Compensation Law
`- Personal Injury Law
`- Social Security Disability
`
`The ads included Larry Pitt’s name and number with the words “REMEMBER THIS
`
`NUMBER” over 1-888-PITT.LAW. Meloff Decl. W5 and 6. The phrase “REMEMBER THIS
`
`NUMBER” appeared as part of the advertising copy over the telephone number. It was included
`
`after discussions with, and with the input and at the suggestion of Larry Pitt’s advertising
`
`agency, Titan 360. Meloff Decl. W5 and 6. These ads were distributed in the Philadelphia area
`
`to over 800 locations. MeloffDec1. 117.
`
`In October 2012, Lundy Law applied to register the phrase “REMEMBER THIS NAME”
`
`and on March 4, 2013, filed suit against Larry Pitt, contending that the use of the instruction
`
`REMEMBER THIS NUMBER over Larry Pitt’s telephone number constituted trademark
`
`infringement of Lundy Law’s use of the phrase REMEMBER THIS NAME.2 The complaint
`
`2 Copies of the Complaint and motion papers in Lundy Law LLP v. Larry Pitt & Associates, Case
`2:13-cv-01161-JHS (E.D. Pa.) are attached as Exhibit A to the Declaration of Jacqueline M.
`Lesser in support of Larry Pitt’s motion under Fed. R. Civ. P. 56(d). (TTAB Dkt. 8).
`
`3
`
`

`
`was voluntarily dismissed without prejudice prior to Larry Pitt’s answer of the complaint, or a
`
`ruling on the then-pending preliminary injunction motion.
`
`B.
`
`Lundy Law’s Marketing of INJURED? REMEMBER THIS NAME
`
`Lundy Law is also a law firm located in Philadelphia. Like Opposer, and countless other
`
`law firms and other businesses, Lundy Law uses advertising on and around public transportation
`
`to advertise its firm. Lundy Law engages in advertising of its name and phone number, which
`
`always includes the name “Lundy Law. As Leonard Lundy, the principal of the firm has stated,
`
`“We needed something memorable, our own icon so to speak. .. Our name is our phone number,
`
`is our website,” says Lundy. It was so easy to remember...” Lesser Decl. 116. (emphasis added).
`
`Lundy Law states that it began use of the phrase on a banner at a Philadelphia Souls Game in
`
`May 2011. Lesser Decl. 112 3 The phrase was not intended
`
` Lesser Decl. 117.
`
`(LUNDY01615). As Tami Sortman, Lundy Law Director of Marketing instructed: the slogan
`
`was used in all marketing and advertising materials above the name Lundy Law. Lesser Decl.
`
`1l_ LUNDY01615 REDACT). The phrase had not left much of a consumer impression prior to
`
`the filing of the trademark application even after advertising commenced. Almost eight months
`
`later, Lundy Law’s director of marketing conceded that
`
`_ Lesser Decl. 117. (LUNDY01588)
`
`The phrase used by Lundy Law was “INJURED? REMEMBER THIS NAME. 1-800-
`
`LUNDY LAW,” but the trademark application that Lundy Law filed was for a portion of the
`
`entire phrase: REMEMBER THIS NAME. In the application, Leonard Lundy, as officer and
`
`signatory states: “to the best of his/her knowledge and belief no other person, firm, corporation,
`
`or association has the right to use the mark in commerce...” Lundy Law made this statement by
`
`
`
`3 Lundy Law’s response to Interrogatory No. 5
`
`

`
`selective ignorance:
`
`there were countless references to the memorability of law flI’lTl names,
`
`other lawyer promotional pieces that use REMEMBER THIS NAME or REMEMBER THIS
`
`NUMBER. Fishman Report at Attachment B. Yet, Lundy Law did not even conduct a common-
`
`law trademark search of slogans before it attempted to register “REMEMBER THIS NAME.”
`
`Lesser Dec]. 113. 4
`
`In connection with its trademark application, Lundy Law submitted the following
`
`specimen of use:
`
`
`
`The specimen shows the use of the phrase INJURED? REMEMBER THIS NAME as
`
`shorthand for: “if you are injured, remember this name, 1-800-LUNDYLAW.” Despite the fact
`
`that the slogan sought to be registered is different from the slogan on the specimen, the
`
`Trademark Examining Attorney accepted the specimen without requiring a substitute.5 In fact,
`
`every reference produced by Lundy Law in discovery shows the use of the phrase as a
`
`4 Lundy Law’s Admissions 15 and 16
`5 An application based on Trademark Act Section 1(a) must include a specimen showing the
`applied-for mark in use in commerce for each class of goods and/or services. 37
`C.F.R.§§2.34(a)(l)(iv), TMEP §§904, 904.07(a). The mark on the drawing must be a
`substantially exact representation of the mark on the specimen. 37 C.F.R.§2.51(a); TMEP§
`807. l2(a).
`
`

`
`component of “INJURED? REMEMBER THIS NAME” or a similar phrase. 6 There are no uses
`
`of REMEMBER THIS NAME alone. In every instance, the phrase is used with the Lundy Law
`
`name. The name LUNDY LAW is much larger than any of the advertising copy — including the
`
`“INJURED? REMEMBER THIS NAME” tagline.
`
`INJLIREB? REMEMBER THIS NAME
`
`H\ll,lw'\ DINKHH [H X \\('Illl\| I25‘ Cl I'\1['l\\.'\llU\‘
`
`w\\'\\‘.Lund§‘Law.com
`
`iI{E‘l\IEMBEl:
`
`“WI
`
`6 Declaration of Leonard Lundy, submitted in support of summary judgment.
`
`6
`
`

`
`III.
`
`LUNDY LAW’S CLAIMED STATEMENT OF FACTS
`
`The following “facts” presented in support of Lundy Law’s motion are either not
`
`material to Lundy Law’s motion, or disputed:
`
`1. Lundy Law’s use of the mark
`REMEMBER THIS NAME began on
`May 16, 2011. Since that time, the
`mark has been used extensively and
`continuously by Lundy.
`
`On October 31, 2012, Lundy Law filed
`an application, Serial No. 85/767,757
`with the USPTO, to register on the
`Principal Register the mark
`REMEMBER THIS NAME for legal
`services in International Class 45. See
`
`the attached Declaration of Magdalena
`Lozada attached with a true and correct
`copy of the current file history of
`Application Serial No. 85/767,757,
`attached as Exhibit 26.
`
`Disputed, Applicant has put forth no evidence
`substantiating a date of first use, or that this
`use was as a trademark in interstate commerce.
`
`It is disputed that the mere filing of the
`application purports to give the Applicant
`rights in a phrase as a trademark.At the time of
`the filing of the application, third parties had
`been using REMEMBER THIS NAME,
`REMEMBER THIS NUMBER, and the
`concept of memorability of law firm names
`well known. Fishman Report at 5 and 6.
`
`Application Serial No. 85/767 included,
`as a specimen of Lundy Law’s use of
`the mark, a photograph of Lundy Law’s
`advertising promonently displayed on
`the back of a SEPTA bus.
`
`Admitted that Lundy Law has advertised the
`phrase INJURED? REMEMBER THIS
`NAME, prominently on the back of a SEPTA
`bus. This use shows that the phrase does not
`function as a trademark.
`
`The REMEMBER THIS NAME
`
`Admitted
`
`application was published for
`Opposition on April 9, 2013
`
`The USPTO found the mark
`REMEMBER THIS NAME to be
`
`inherently distinctive as evidenced by
`the fact that it was an application on the
`Principal Register that was published
`for Opposition without a showing of
`acquired distinctiveness.
`
`Disputed. Decisions of the USPTO are not
`binding authority on whether a mark is
`inherently distinctive. A generic term should
`not remain registered simply because other
`such marks appear on the register. In re
`Scholastic Testing Service, Inc., 196 USPQ
`517 (TTAB 1977).
`
`Application Serial No. 85/767,757 was
`published for legal services, in
`International Class 45.
`
`Admitted.
`
`

`
`7. The REMEMBER THIS NAME mark
`is not the name or an acronym or
`initialization for legal services and it
`does not describe a quality,
`characteristic, function, feature,
`purpose or use of Applicant’s legal
`services.
`
`8. The USPTO routinely allows
`trademarks that are phrases or slogans
`on the Principal Register without a
`showing of acquired distinctiveness
`where the phrase or slogan is not
`descriptive of an applicant’s goods or
`services. Examples of such
`registrations are listed hereinafter and
`are shown in the attached declaration of
`Magdalena Lozada and exhibits
`attached as Exhibits 27-26.
`
`Disputed. REMEMBER THIS NAME
`describes the goal of a legal service provider in
`advertising its services, and an instruction to a
`consumer when seeking legal representation.
`See Report of Ross Fishman.
`
`Disputed. Third party registrations submitted
`are of very limited probative value. It is well-
`settled that neither the Board nor the Federal
`Circuit is bound by prior determinations by the
`USPTO. See In Re Nett Designs Inc., 236 F.
`3d 1339, 57 USPQ 2d 1564, 1566 (Fed. Cir.
`2001).
`
`IV.
`
`ARGUMENT
`
`Summary judgment is only appropriate where there are no genuine issues of material fact
`
`in dispute, and additional evidence, beyond that which is already available in connection with the
`
`motion, could not be reasonably expected to change the result. Fed.R.Civ. P 56(c); University
`
`Book Store v. University of Wisconsin Bd. ofRegents, 33 USPQ 2d 1385, 1389 (TTAB 1994).
`
`The movant has the burden of showing the absence of any genuine issue as to all the material
`
`facts, and that it is entitled to judgment as a matter of law. Copelands ’ Enterprises Inc. v. CNV
`
`Inc., 945 F.2d 1563, 20 USPQ 2d 1295 (Fed. Cir. 1991). The movant is held to a stringent
`
`standard on summary judgment. See 10A Wright, Miller & Kane, Federal Practice and
`
` j
`Procedure‘ Civil 3d §2727 (1998).
`
`“In deciding a motion for summary judgment, the Board may not resolve an issue of fact;
`
`it may only determine whether a genuine issue of material fact exists. TBMP §528.01, Meyers v.
`
`Brooks Shoe, Inc., 912 F. 2d 1459, 16 USPQ2d 1055, 1057 (Fed. Cir. 1990). (Summary
`
`

`
`judgment reversed, movant did not meet its initial burden). All doubts as to whether or not
`
`particular factual issues are genuinely in dispute must be resolved against the moving party and,
`
`similarly, all inferences to be drawn from the undisputed facts must be viewed in the light most
`
`favorable to the nonmoving party. Flatley v. Trump, 11 USPQ2d 1284, 1287 (TTAB 1989) and
`
`cases cited therein. See also, Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d
`
`1542, 1544 (Fed.Cir. 1992).
`
`A.
`
`Lundy Law has failed to demonstrate an absence of genuine issues to all
`material facts
`
`At the outset, Lundy Law must meet its prima facie burden that would afford it the right
`
`to judgment if undisputed. Fed. R. Civ. P. 56. Yet, Lundy Law submits no facts that would be
`
`conclusively determinative of a right to register. To meet its threshhold burden, Lundy Law must
`
`make some relevant showing that the phrase REMEMBER THIS NAME is not generic, merely
`
`descriptive, and that it acts as a mark. First, the Trademark Examining Attorney’s initial
`
`acceptance of REMEMBER THIS NAME is not conclusive evidence of registrability since the
`
`Board is not bound by the decisions of examining attorneys during ex parte examination. In re
`
`Nett Designs, Inc. 57 USPQ 2d at 1566. Second, the fact that there are third party slogan
`
`registrations that include the term “remember” without a showing of secondary meaning is
`
`immaterial, and irrelevant to the issue of genericness or descriptiveness. The Board is not bound
`
`by other registrations for slogans that include the word “remember” but must decide each case on
`
`its own merits.” Id. at 1566. Third, Lundy Law submits no evidence of acquired distinctiveness
`
`— it merely relies on an argument that the common phrase is inherently distinctive. Lastly, Lundy
`
`Law’s only argument that the phrase function as a mark is to imply that all of the advertising is
`
`large, and in certain instances many words on the ads are in separate colors. Motion at 16. Not
`
`only has Lundy Law missed its initial burden of proof on summary judgment, but even if the
`
`

`
`burden has shifted to Opposer, summary judgment must be denied because of the genuine
`
`material facts in dispute.
`
`B.
`
`Genuine material facts are in dis ute on the issues of enericness
`distinctiveness and whether the phrase functions as a trademark.
`
`1.
`
`The phrase is generic.
`
`Genericness by its nature is a factual issue. In re Reed Elsevier Props. Inc., 82 USPQ 2d
`
`1378, 1380 (Fed. Cir. 2007). It is determined by actual common usage. In re Deutsche Airbus
`
`GmbH, 224 USPQ 611, 614 n. 12 (TTAB 1984). Case law has recognized that competitor use of
`
`a phrase — or even particular terms within a phrase — is persuasive evidence of genericness.
`
`BellSouth Corp. v. DataNational Corp., 60 F. 3d 1565, 35 USPQ2d 1554 (Fed. Cir. 1995),
`
`Phillip Morris Incorporated, et al. v. Williamson Tobacco Corporation, 230 USPQ 172, 176
`
`(TTAB 1986). As shown in the attached Fishman Report, there are many third party instances of
`
`the phrase “REMEMBER THIS NAME.” It does not matter whether, as Lundy Law argues, the
`
`individual words, “remember,” “this” and “name,” or this partial phrase “REMEMBER THIS
`
`NAME” (as opposed to “INJURED? REMEMBER THIS NAME,” which is how the phrase is
`
`used in the specimens submitted to the USPTO) appear in a dictionary separately or in
`
`combination as a synonym for “law firm.” Motion at 10 -11. Any number of generic words or
`
`slogans are not found in dictionaries. Continental Airlines Inc. V. United Air Lines Inc., 53 USPQ
`
`2d 1385, 1393 (TTAB 1999). The instruction to “REMEMBER THIS NAME” is in common
`
`USE.
`
`The questions of genericness, and nondistinctiveness arise as a factual issue as of the time
`
`that registration is sought. Callaway Vineyard & Winery v. Endsley Capital Group, Inc., 63
`
`USPQ 1919 (TTAB 2002). At the time that Lundy Law submitted its application to register
`
`REMEMBER THIS NAME, third party law firms and other businesses were using
`
`“REMEMBER THIS NAME” and “REMEMBER THIS NUMBER” in their own advertising.
`
`10
`
`

`
`Fishman Report; Attachment B. Larry Pitt was already using REMEMBER THIS NUMBER
`
`within the context of its own advertising. Meloff Decl. 1111 6 and 7. Other law firms routinely ask
`
`consumers to remember their names and numbers. Fishman Report at 6, Attachment B; Lesser
`
`Decl. 113.7 Without question, law firms that advertise publicly do so with the ultimate goal of
`
`having consumers remember their name, and their number, so that consumers may call and retain
`
`the firm for services. Fishman Report at 6. In particular, clients for personal services, such as
`
`personal injury matters, are generally unsophisticated and seek representation based on public
`
`advertising. Fishman Report at 5. Thus, instructive phrases above a name or telephone number
`
`are essential to this advertising. Fishman Report at 6. The point of all of these ads is to get the
`
`viewer to remember the name to call. There is nothing source indicating about this common
`
`instruction.
`
`The concept of name recollection in attorney advertising is a generic concept that is
`
`widespread in the legal community. Fishman Report at 5 and 9. Verbalizing a generic concept
`
`does not make the generic concept a trademark. See e.g. Loglan Institute Inc. v. Logical
`
`Language Group, Inc., 962 F. 2d 1038, 22 USPQ 2d 1531 (Fed. Cir. 1992) (registration of name
`
`of new logical language inappropriate as generic concept, registration cancelled). Third party
`
`registration of a generic term, does not lend credibility to a claim that others have registered
`
`“REMEMBER THIS” marks. A generic term should not remain registered simply because other
`
`such marks appear on the register. In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB
`
`1977). While there may be other ways for a law firm to encourage consumers to “REMEMBER
`
`THIS NAME,” the sheer fact that other equally generic phrases are available for competitive use
`
`does not mean that Lundy Law may claim exclusive rights to a particular generic phrase. In re
`
`Sun Oil Co., 426 F. 2d 201 (CCPA 1970).
`
`
`
`7 Lundy Law’s Admissions 1 and 2
`
`11
`
`

`
`2.
`
`The phrase is merely descriptive and nondistinctive
`
`In context, it is clear that if the slogan is not generic, it is a merely descriptive phrase that
`
`others have the right to use, and is unregistrable for this reason. Remington Products Inc. v.
`
`North American Philips Corporation, 892 F. 2d 1576, 13 USPQ 2d 1444, 1448 (Fed. Cir. 1990).
`
`(reversing the Board’s decision that TRAVEL CARE was suggestive and registrable). Law firms
`
`have the right to ask consumers to remember them — that is the goal of law firm advertising.
`
`Fishman Report at 6. Meloff Decl. 114. The phrase: “INJURED? REMEMBER THIS NAME” is
`
`shorthand for “Are you injured? Remember the name and number of this law firm, 1-800-
`
`LUNDYLAW.” The shorthand version of a common phrase does not make the shorthand
`
`version more protectable as a trademark. Id. at 1448 (travel care as short hand for travel personal
`
`care is not suggestive, but generic or merely descriptive and thus unregistrable).
`
`Further, “where opposer is not claiming trademark rights but merely freedom to continue
`
`[to use] a descriptive use, the situation must be judged and the right to registration decided on the
`
`basis of the factual situation as of the time when registration is sought.” Dewalt, Inc. v. Magna
`
`Power Tool Corp., 289 F. 2d 656, 129 USPQ 275, 277 (C.C.P.A. 1961). Phrases generally
`
`common in a particular field of use cannot be inherently distinctive.
`
`In re Chippendales USA,
`
`Inc., 622 F.3d 1346, 96 USPQ 2d 1681, 1687 (Fed. Cir. 2010). It is very clear that, at the time
`
`that registration was sought, there was considerable press in the legal community on the
`
`memorability of law firm names. Fishman Report, Attachment B. Personal injury law firms are
`
`extraordinarily direct in terms of the service they are marketing and the recognition of their
`
`name. Fishman Report at 5. Third party law firms have consumers to remember their names and
`
`numbers. Fishman Report at 6. Countless articles have appeared in the press on whether a law
`
`firm name and number is memorable. Businesses generally have asked consumers to remember
`
`12
`
`

`
`their name, or remember their number. Fishman Report, Attachment B. Like other firms, Lundy
`
`Law wants its name to be “memorable.” Lesser Dec]. 113.8
`
`A claim of inherent or acquired distinctiveness must be determined from the perspective
`
`of the relevant class or classes of actual or prospective purchasers for applicant’s goods. See In
`
`re Cox Enterprises Inc., 82 USPQ 2d 1040, 1042 (TTAB 2007); In re Bed & Brealdast Registry,
`
`229 USPQ 818, 819 (Fed. Cir. 1986). Consumers faced with multiple law firms, look to the
`
`name of the firm for source identification — not statements such as “CALL TODAY,” ‘NO FEE
`
`UNLESS WE WIN”, ‘INJURED? WE CAN HELP?‘ or “INJURED? REMEMBER THIS
`
`NAME.” Fishman Report at 5 and 6. These are all common phrases with no independent source
`
`indication. Such a common instruction as “REMEMBER THIS NAME” or “REMEMBER
`
`THIS NUMBER” should not be given the benefits of Section 7(b) of the Lanham Act. Dewalt
`
`129 USPQ at 279 -280. ( affording DeWalt registration to a common phrase “Power Shop”,
`
`would “put it in possession of prima facie proof of a right it does not have, which it might at any
`
`time decide to assert against Magna.”). There is no indication that the Lanham Act was meant to
`
`deprive commercial speakers of the ordinary utility of descriptive words. KP Permanent Make-
`
`up, Inc. LLP v. Lasting Impression I Inc. 543 U.S. 111, 121 (2004). Fishman Report at 8. Lundy
`
`Law has already brought suit against Larry Pitt for Larry Pitt’s use of the descriptive,
`
`instructional request to consumers to “REMEMBER THIS NUMBER.” Registration of the
`
`co