Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA609574
`ESTTA Tracking number:
`06/12/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91210158
`Defendant
`Lundy Law, LLP
`MANNY D POKOTILOW
`CAESAR RIVISE BERNSTEIN COHEN & POKOT
`1635 MARKET ST , SEVEN PENN CENTER 12TH FLOOR
`PHILADELPHIA, PA 19103
`UNITED STATES
`trademarks@crbcp.com, mlozada@crbcp.com
`Opposition/Response to Motion
`Manny D. Pokotilow
`mlozada@crbcp.com, mpokotilow@crbcp.com
`/mdp/
`06/12/2014
`L118140003 Lundy Reply Pitt Opposition MSJ 6 12 2014.pdf(955099 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`LARRY PITT & ASSOCIATES, P.C.
`
`Opposer,
`
`Vs.
`
`LUNDY LAW,LLP
`
`Applicant.
`
`Opposition No. 91210158
`A.S.N. 85/767,757
`
`'
`
`APPLICANT, LUNDY LAW’S REPLY TO
`LARRY PITT & ASSOCIATES’ OPPOSITION TO
`
`MOTION FOR SUMMARY JUDGMENT
`
`

`
`TABLE OF CONTENTS
`
`INTRODUCTION ....................................................................................................... ..1
`
`LUNDY’S OBJECTIONS TO CERTAIN ARGUMENTS OF COUNSEL AND
`ENTRY OF TESTIMONY AND DOCUMENTS IN THE RECORD ....................... ..2
`
`III.
`
`SUMMARY JUDGMENT SHOULD BE GRANTED ............................................... ..5
`
`A. Pitt Has Failed to Show the Mark REMEMBER THIS NAME was
`Descriptive as of October 31, 2012, the Filing Date of the Application ............... ..5
`
`B. Pitt has Failed to Show that the Mark REMEMBER THIS NAME is Generic ..... ..7
`
`C. There is no Genuine Issue of Material Fact ........................................................... ..8
`
`IV.
`
`CONCLUSION .......................................................................................................... ..1O
`
`

`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`De Walt, Inc. v. Magna Power Tools,
`48 CCPA 909, 289 F2‘"' 656, 659 129 USPQ 275 (CCPA 1961) ........................................... ..6
`
`Perma Cream Enterprises, Inc. v. Preco Industries Limited, 23 USPQ 2d 1134, 1135 ................ ..1
`
`Plyboo America, Inc. v. Smith & Fang, C0., 51 USPQ 2d 1633, 1641 (TTAB 1999) .............. ..2, 7
`
`OTHER AUTHORITIES
`
`First Amendment ....................................................................................................................... ..4, 5
`
`McCarthy on Trademarks and Unfair Comp§1i_tion §20:3 (2013) ................................................. ..7
`
`McCarthy on Trademarks and Unfair Qgglpetition §20:19 (2013) ........................................... ..1, 6
`
`

`
`I.
`
`INTRODUCTION
`
`The purpose of this Reply Brief is to rebut the new arguments raised in Opposer, Larry
`
`Pitt’s1 Opposition to Motion for Summary Judgment and to object to the evidence of Pitt for
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`which there is not authentication, antecedent basis or which is unsubstantiated expert opinion by
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`a person not qualified to give such opinion. Applicantz also objects to Pitt raising a new defense
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`not previously pleaded, namely, the mark REMEMBER THIS NAME is only a portion of a mark
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`as used by Lundy3 .
`
`As will hereinafter be seen, Opposer has not established any genuine issue of material
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`fact for trial. Opposer has not shown a single third party use of REMEMBER THIS NAME for
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`legal or related services or goods at the time the application for this mark was filed by Lundy.
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`Opposer has also not shown any basis for arguing that REMEMBER THIS NAME is generic or
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`descriptive or a term in common use in the legal field. As will hereinafter be seen, if an opposer
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`is not claiming trademark rights, but merely alleging freedom to continue a descriptive use, the
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`situation of descriptiveness must be judged as of the time of application by applicant.4 The
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`application was filed on October 31, 2012 and accordingly the mark REMEMBER THIS NAME
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`was not common in the field of legal services at the time the application to register the mark was
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`filed nor has Opposer shown that it is now. For these reasons, summary judgment should be
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`entered dismissing the opposition to the mark REMEMBER THIS NAME.
`
`I Opposer, Larry Pitt & Associates is referred to herein as either Opposer or Pitt.
`2 Applicant, Lundy Law, LLP is referred to herein as either Applicant or Lundy Law.
`3 Perma Cream Enterprises, Inc. v. Preco Industries Limited, 23 USPQ 2d H34, H35 fn2
`(TTAB 1992). “To state the obvious, a party may not avoid summary judgment by contending
`that genuine issues material fact exist as to issues not raised in the pleadings.”
`4 McCarthy on Trademarks and Unfair Competition (2013), 20:19 pgs. 20-69 and 20-70
`1
`
`

`
`II.
`
`LUNDY’S OBJECTIONS TO CERTAIN ARGUMENTS OF COUNSEL AND
`
`ENTRY OF TESTIMONY AND DOCUMENTS IN THE RECORD
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`Lundy objects to the argument of Pitt’s counsel set forth on page 1 of its Memorandum
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`that the mark REMEMBER THIS NAME was not what Lundy was using as a trademark because
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`such a defense was never before pleaded, nor asserted in any answers to any interrogatories of
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`Applicant. Also, any arguments that the word or mark REMEMBER THIS NAME were in
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`common use is without antecedent basis in the evidence admissible in this case.
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`Lundy objects to the following testimony set forth in the Expert Report of Ross Fishman
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`for which he was not qualified to give and any facts to which he testified for which there is no
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`evidentiary support. The statements in ‘R3 of p. 55 should be struck not only as legal conclusion,
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`but also an expert opinion for which Ross Fishman has no expertise. That is, the professional
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`qualifications set forth in the Expert Report of Ross Fishman make it clear that he has been
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`working for the past 24 years as a full time law firm marketing professional and in this role has
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`created marketing campaigns for law firms. This does not make Ross Fishman an expert in
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`trademark law for which he concludes that “REMEMBER THIS NAME is not a trademark that
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`should give the firm any exclusive use.” Accordingly, 113 of p. 5 should be struck not only as a
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`legal conclusion, but also as an expert opinion for which Ross Fishman has no expertise.6 The
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`statement
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`in 114, p.
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`5 should be deleted because Mr. Fishman has not demonstrated any
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`knowledge of Lundy or its advertising agency’s thought process or what it wants to achieve.
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`Nor, is Mr. Fishman a survey expert that has done a survey to determine how viewers will
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`perceive Lundy Law’s advertising. The first sentence in 115, p. 5, should be struck because there
`
`5 For ease of reference, pages 5-9 of the Expert Report of Ross Fishman are attached as Exhibit
`
`A 6
`
`Testimony of an expert who is not an expert in trademark law is of no probative value. Plyboo
`America, Inc. v. Smith & Fang, C0,, 51 USPQ 2d 1633, 1641 (TTAB l999)
`2
`
`

`
`is no evidence that Mr. Fishman has any basis to know what Lundy Law believes. The statement
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`by Mr. Fishman in the third sentence of 1T5, p. 5 that “usages like that of Lundy Law are merely
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`generic statements” is merely a conclusion of law for which Mr. Fishman has demonstrated no
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`expertise. The 5”‘ sentence of 15 of p. 5 that contains the statement that Lundy Law does not
`
`deserve trademark protection is a legal conclusion for which Mr. Fishman has no demonstrated
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`expertise and should also be struck. The 6”‘ sentence of 115 of p. 5 contains the statement
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`“consumers do not recognize this statement as originating with one firm or company” which
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`should be struck because Mr. Fishman is not an expert in consumer surveys or has shown any
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`knowledge of how customers perceive trademark usage. The first sentence of 116 on p. 5 should
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`be struck because it contains the statement “Finally, Remember this name used by Lundy Law is
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`designed to drive potential clients to the Lundy Law name.” In the absence of testimony from
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`Applicant or its advertising agency, Mr. Fishman has no knowledge what RTM was designed to
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`do. The 3”’ sentence of 116, p. 5 should also be struck.
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`It states “Neither ‘REMEMBER THIS
`
`NAME’ or ‘REMEMBER THIS NUMBER’ (as used by Larry Pitt in its own advertising) is as a
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`brand or trademark.” This statement is a legal opinion for which Mr. Fishman has not identified
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`any qualification that he has to give such a legal opinion. Footnote 1 on p. 5 should be struck as
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`a legal opinion for which Mr. Fishman has not suggested or shown he has any qualification to
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`give.
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`In 1l2, p. 6, there is no antecedent basis that other firms use the phrase “REMEMBER
`
`THIS NUMBER” other than the Opposer at the time the application was filed and accordingly
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`the first sentence should be struck for lack of an antecedent basis. The first sentence of I13, p. 6
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`should also be struck because there is no antecedent basis for the statement “Law firms, besides
`
`Lundy Law, use the phrase ‘REMEMBER THIS NAME’, other
`
`firms use the phrase
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`REMEMBER THIS NUMBER” because there are no such firms which have been cited in this
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`

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`Opposition for which there is testimony that a firm other than Pitt used it at the time that the
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`application was filed on October 31, 2012. Attachment B contains only three law firm
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`advertisements. That of Lundy Law, a law firm named the Tabor Law Firm and the law firm
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`named Deluca & Maucher. There is no statement by Mr. Fishman when the downloads were
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`made of any of these three advertisements, nor is there any suggestion that the dates of these
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`advertisements being used is other than the date of the Expert Report of May 28, 2014, a year
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`and a half after the application in this case was filed. The statement in the third sentence “In no
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`instance do the phrases REMEMBER THIS NAME or REMEMBER THIS NUMBER confuse
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`potential clients” should be struck because Mr. Fishman has no qualifications as a trademark
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`expert and it calls for a legal conclusion. The statement in the fourth sentence of 1l3 of p. 6 states
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`“These are generic phrases” is a legal conclusion and one that Mr. Fishman has demonstrated no
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`expertise and therefore should be struck. The statement in the last sentence of ‘H3 of p. 6
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`“’REMEMBER THIS’ with either the word ‘NAME’ or ‘NUMBER’
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`is not a brand or a
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`trademark that
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`is exclusive to one law firm” is a legal conclusion and Mr. Fishman has
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`demonstrated no expertise in this area and therefore should be struck.
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`The entire section of the Fishman Expert Report starting on p. 6 entitled “Policy
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`Competition” should be struck because it’s a statement as to the meaning of the Federal
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`Trademark Commission’s regulations in association with trademark law and to that extent should
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`be completely struck because there is no evidence that any experience or education by Mr.
`
`Fishman suggests that he is qualified to make statements made in this section of his Expert
`
`Report. Merely having familiarity with regulations promulgated by the Federal Trademark
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`Commission does not make one an expert. The section of the Expert Report starting on p. 8
`
`entitled “First Amendment Issues” should also be struck. Mr. Fishman has shown no expertise
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`

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`in the area of law relating to the First Amendment or the trademark law and how the two play
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`against each other in the determination of fair use. Accordingly,
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`the statement
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`in the last
`
`paragraph of this section, on p. 6, ‘[12 results in Mr. Fishman concluding that the registration of
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`the phrase REMEMBER THIS NAME would prohibit third party uses of REMEMBER THIS
`
`NAME and therefore would violate the First Amendment is a conclusion for which Mr. Fishman
`
`has no qualifications or expertise to make.
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`Paragraph 3, p. 9 under “Conclusion”, all of the statements made in this section should be
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`struck because they are made with no expertise as a trademark lawyer or in the case of the
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`second sentence as a survey expert and without any evidence to support that firms routinely ask
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`consumers to remember firm names. There is no evidence that as of the time the application was
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`filed on October 31, 2012 any firm was specifically using the term “REMEMBER THIS
`
`NAME” or “REMEMBER THIS NUMBER”, other than Lundy Law or Pitt. The documents in
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`Exhibit A to the Fishman exhibit are not authenticated as to the date they were first produced or
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`the date they were downloaded by Mr. Fishman and should be struck.
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`In addition to the foregoing, the last paragraph of p. 5 of Pitt’s Memorandum should be
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`struck because it raises an argument that was not pleaded. That is, this is an argument that
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`Lundy’s application did not show use of the mark REMEMBER THIS NAME in the specimen
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`submitted with Lundy’s application and it was not pleaded in the Opposition.
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`III.
`
`SUMMARY JUDGMENT SHOULD BE GRANTED
`
`A.
`
`Pitt Has Failed to Show the Mark REMEMBER THIS NAME was
`
`Descriptive as of October 31, 2012, the Filing Date of the Application.
`
`Applicant, Lundy Law, LLP filed an application to register the mark REMEMBER THIS
`
`NAME on October 31, 2012. At that time, the only use shown by Pitt that was taking place of a
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`third party using the same or similar words was that of the Opposer, Larry Pitt. All of
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`5
`
`

`
`the internet downloads by Ross Fishman in Exhibit A are not properly identified by date and
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`accordingly are not authenticated as to when the use took place as to any of the uses shown in
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`Exhibit A of the Ross Fishman Expert Report. Accordingly, only the Declaration of Phyllis
`
`Melloff which states that Mr. Pitt began using the mark in April, 2012 is evidence of any use
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`other than Lundy Law of the words REMEMBER THIS followed by the term NAME or
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`NUMBER prior to the filing date of October 31, 2012. Also, the use of Opposer’s term
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`REMEMBER THIS NUMBER is clearly a trademark use as seen from Exhibit A of the Melloff
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`Declaration. This is the only testimony of any use prior to October 31, 2012 other than Lundy
`
`Law’s use of the mark REMEMBER THIS NAME.
`
`In De Walt, Inc. v. Magma Power Tools, 48
`
`CCPA 909, 289 F.2"d 656, 659 129 USPQ 275 (CCPA 1961) the applicant had attempted to
`
`register the mark POWER SHOP.
`
`The opposer had shown that
`
`it used POWER SHOP
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`descriptively prior to the filing of the application to register the mark by the applicant.
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`In
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`determining whether the mark was descriptive, the Court of Customs and Patent Appeals did not
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`determine whether the mark was descriptive as of the date that the mark had first been used by
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`the applicant.
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`In this respect,
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`the Court stated “Our conclusion that where opposer is not
`
`claiming trademark rights but merely a freedom to continue 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.” Prof McCarthy in his leading text McCarthy on Trademarks and
`
`Unfair Competition7 confirms that DeWalt is the law as to the date the descriptiveness is
`
`determined. He states “If an opposer is not claiming trademark rights, but merely alleging
`
`freedom to continue a descriptive use, the situation of descriptiveness must be judged as of the
`
`time of application by applicant.” There is no showing or suggestion that there was any
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`7 See Footnote 4, supra at fn 13.
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`

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`descriptive use of the term REMEMBER THIS NAME or REMEMBER THIS NUMBER prior
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`to Lundy’s first use or its filing of the application. Rather, what appears to be the case is, like
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`Opposer Pitt, one firm, Deluca & Maucher is now imitating Applicant’s use of the mark
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`REMEMBER THIS NAME as a trademark. Similarly, one firm Tabor Law Firm is imitating
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`Pitt’s use.
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`In any event, there is no showing of any common use of the term REMEMBER THIS
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`NAME, even descriptively in the legal services field at the time Lundy adopted the mark or filed
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`application to register the mark. And even now there is little or no use in the legal field.
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`Moreover, Pitt has also raised as an argument that whether a mark is descriptive or distinctive is
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`a question of fact and therefore there is a dispute as to that fact. However, in this case, the fact
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`finder, the Trademark Trial and Appeal Board must determine whether there is descriptive use
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`based upon the undisputed facts in this case.
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`In this respect, Pitt has failed to show the mark
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`REMEMBER THIS NAME is descriptive of legal services or the quality, characteristic, feature
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`or use of legal services. Being descriptive of what is desired of an advertisement is none of the
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`above. See pp. 12-14 of Lundy Law’s Motion for Summary Judgment.
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`It is the burden of opposer to show by a preponderance of the evidence that a mark is
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`generic, merely descriptive or not acting as a mark.
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`It is not applicant’s burden as misstated by
`
`Pitt (p.9). McCarthy on Trademarks and Unfair Competition §20:3 (2013), Plyboo America,
`
`Inc., v. Smith & Fong Co., 51 USPQ 2d 1633, 1640 (TTAB 1999).
`
`Opposer Pitt has not satisfied its burden.
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`B.
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`Pitt has Failed to Show that the Mark REMEMBER THIS NAME is
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`Generic.
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`The test for generic is simple, do the words REMEMBER THIS NAME resemble the
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`genus of legal services? Nowhere does Pitt even suggest that REMEMBER THIS NAME is the
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`name of legal services or suggest that it resembles the genus of legal services. Simply speaking,
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`7
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`

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`the words REMEMBER THIS NAME is not the genus of legal services. Accordingly, Pitt’s
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`arguments are completely without merit and should be rejected. Lundy Law’s Motion for
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`Summary Judgment, pp 9~l2.
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`C.
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`There is no Genuine Issue of Material Fact.
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`In Lundy Law’s Motion for Summary Judgment, the undisputed material facts were set
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`forth on pages 2-4. The first statement of fact by Lundy was that Lundy Law’s use of the mark
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`REMEMBER THIS NAME began on May 16, 2011. Since that time the mark has been used
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`extensively and continuously by Lundy. This was “disputed” by Pitt as follows: “Applicant has
`
`put forth no evidence substantiating a date of first use or that this use was as a trademark in
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`interstate commerce.” This is directly contradicted by ‘[14 of the Declaration of L. Leonard Lundy
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`which states,
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`“Lundy Law’s use of the mark REMEMBER THIS NAME for legal services
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`began on May 16, 2011. Since that time the mark has been used extensively and continuously by
`
`Applicant.” Mr. Lundy also describes the advertisements shown in Exhibits l—25A that are and
`
`have been used by Lundy Law. The Declaration of Magdalena Lozada, introduced as Exhibit 26,
`
`a true and correct copy of the current file history of Application Serial No. 85/767,757 for the
`
`mark REMEMBER THIS NAME that was downloaded from the USPTO on August 6, 2013 (see
`
`‘ll5). The Declaration of Leonard Lundy states that REMEMBER THIS NAME was first used in
`
`commerce at least as early as May 16, 2011. As to fact No. 2 that on October 31, 2012 Lundy
`
`Law filed 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, the
`
`fact was not disputed. Rather, what was disputed was “the mere filing of the application purports
`
`to give the Applicant rights in a phrase as a trademark. Pitt further goes on to state “at the time
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`of the filing of the application third parties had been using REMEMBER TI-IIS NAME,
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`

`
`REMEMBER THIS NUMBER and the concept of memorability of law firm names was well
`
`known.” However, as set forth above, the only parties using the mark REMEMBER THIS
`
`NAME was Lundy Law and the only party using the mark REMEMBER THIS NUMBER at the
`
`time the application was filed was Pitt. Statement of Fact 3 that A.S.N. 85/767,757 included as a
`
`specimen of Lundy’s use of the mark, a photograph of Lundy’s advertising prominently
`
`displayed on the back of a SEPTA bus.” The defendant admitted the same, however, alleges,
`
`this use shows that the phrase does not function as a trademark. However, that is a conclusion of
`
`law for the fact finder to make. With respect to Statement of Fact 5, that the USPTO found the
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`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. Opposer stated that it was disputed. However, Pitt conclusorily states
`
`the following statement of law that the “decisions of the USPTO are not binding authority on
`
`whether a mark inherently is distinctive” and “a generic term should not remain registered
`
`simply because other such marks appear on the register. With respect
`
`to Fact 7 that
`
`REMEMBER THIS NAME mark is not the name or an acronym or initialization for legal
`
`services and it does not describe the quality, characteristic, function, feature, purpose or use of
`
`Applicant’s legal services, Pitt’s response was “Disputed.” “REMEMBER THIS NAME
`
`describes the goal of a legal service provider in advertising its services, and an instruction to a
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`consumer when seeking legal representation. See Report of Ross Fishman.” Assuming for the
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`sake of the Motion for Summary Judgment only that what Pitt is stating is true, it does not in any
`
`way ‘make REMEMBER THIS NAME an acronym or initialization for legal services and it does
`
`not describe the quality, characteristic, function, feature or purpose or use of Applicant’s legal
`
`services. With respect to Fact 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 are descriptive of Applicant’s goods or services. Examples are shown in Exhibits 27-
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`46.” But, Pitt disputed Fact 8 and stated again as conclusions of law that “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 United States Patent and Trademark
`
`Office.” Thus, as can be seen, Pitt has not provided any evidence that any of the facts upon
`
`which Applicant relied for Summary Judgment are in dispute. Accordingly Summary Judgment
`
`is appropriate because of the lack of dispute of any genuine issue of material fact.
`
`IV.
`
`CONCLUSION
`
`In light of the foregoing,
`
`it
`
`is respectfully submitted that Summary Judgment
`
`is
`
`appropriate where there are no genuine issues of material dispute and the Opposer has not
`
`produced evidence that
`
`the mark REMEMBER THIS NAME is either generic or merely
`
`descriptive of legal services. Nor has Pitt shown that REMEMBER THIS NAME is commonly
`
`used in the legal services field or was at the time registration was sought. Pitt’s conclusory
`
`statement that the mark REMEMBER THIS NAME has not been used as a trademark was never
`
`properly pleaded and is clearly without merit and should be rejected and Summary Judgment
`
`granted to dismiss the Opposition.
`
`>'= * * SIGNATURE PAGE FOLLOWING * * *
`
`10
`
`

`
`Respectfully submitted,
`
`CAESAR, RIVISE, BERNSTEIN,
`COHEN & POKOTILOW, LTD.
`
`Dated: June 12, 2014
`
`By
`
`/MPokotilow/
`Manny D. Pokotilow
`Salvatore R. Guerriero
`
`1635 Market Street
`
`12th Floor — Seven Penn Center
`
`Philadelphia, PA 19103-2212
`Attomeysfor Applicant Lundy Law, LLP
`
`CERTIFICATE OF MAILING
`
`The undersigned hereby certifies that the within LUNDY LAW’S REPLY TO LARRY
`PITT & ASSOCIATE’S OPPOSITION TO MOTION FOR SUMMARY JUDGMENT is being
`electronically filed with the Trademark Trial and Appeal Board, via the Electronic System for
`Trademark Trial and Appeals (ESTTA) on this day, June 12, 2014.
`
`/MPokotilow/
`
`Manny Pokotilow
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that, on this same day, the within LUNDY LAW’S
`REPLY TO LARRY PITT & ASSOCIATE’S OPPOSITION TO MOTION FOR SUMMARY
`
`JUDGMENT is being served upon Opposer, via First Class Mail in an envelope addressed to:
`
`Jacqueline Lesser
`Nancy Frandsen
`Baker & Hostetler LLP
`Cira Centre — 12”‘ Floor
`2929 Arch Street
`
`Philadelphia, PA 19104-2891
`
`/MPokotilow/
`
`Manny Pokotilow
`
`ll
`
`

`
`EXHIBIT A
`
`

`
`The law firm that operates under the trade name “Lundy Law” has been successful in the
`promotion of its name ~ Lundy Law — through its marketing strategies.’ The name is simple,
`concise, easy to recall, and includes an alliteration. The sole common denominator among all of
`the advertising for the firm is this simple name ~ Lundy Law.
`
`Some advertising for Lundy Law uses the general phrase “Remember this name” as a prelude to
`the brand name of Lundy Law, that is: “Remember this name. Lundy Law.” However, the firm
`is inconsistent with the use of the phrase? In some advertisements, the phrase “Remember this
`name” does not appear at all, for example in the firm’s Linkedln profile 3 or YouTube videofl
`Also, the phrase “Remember this name” is generally presented as part ofa larger statement. For
`example, the Lundy Law website includes videos that end with the statement “You only have to
`do one thing. Remember this name. Lundy Law.” Public advertising uses “Injured? Remember
`this name.”
`
`Considering both the inconsistent use, or absence of use, of the phrase “Remember this name”
`within the marketing of Lundy Law and the nature of the term itself, nothing about the phrase
`brings it under the umbrella of the firm’s brand, which is simply “Lundy Law.” From the
`marketing perspective, this leads to the conclusion that “Remember this name” is not a
`trademark that should give the firm any exclusive use.
`
`“Remember this name” represents the objective of the advertisement, not the identity of the
`brand. The advertisement is designed to encourage people to know the brand —— “Lundy Law.”
`The use of the phrase reflects that which Lundy Law wants to achieve, that viewers of its
`advertisements will remember Lundy Law.
`
`“Remember this name” and phrases that Lundy Law believes are comparable terms, e.g.
`“Remember our number,” are being used in advertisements both within in and outside of the
`legal industry. See Attachment A. These usages, like that of Lundy Law, are merely generic
`statements that are designed to drive the potential client to the brand name. They do not deserve
`trademark protection. Consumers do not recognize this statement as originating with one firm or
`company.‘ The following uses are instructive of the general use of the phrase within the context
`of attorney advertising.
`
`Finally, “Remember this name” used by Lundy Law is designed to drive potential clients to the
`Lundy Law name. Lundy Law uses “Remember this number” inconsistently, before its name,
`and its l-800-LUNDYLAW number. Neither “Remember this name” or “Remember this
`number” (as used by Larry Pitt in its own advertising) is as a brand or trademark.
`
`
`
`1 Interestingly, this trade name seems to be inconsistent with Philadelphia Ethics Op. 91-2
`that deems it misleading for a law firm to go by a single lawyer's name if it is not a sole
`practitioner. s nu ma.
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`Z https://twltter.com/Lundy_Law
`3 http://www.linkedin.com/company/lundy-law
`4 https://www.youtube.com/watch?v=1VP67Sie1U8
`
`5
`
`

`
`On its website, Lundy Law states “Remember this name” followed not by the name, but by the
`firm’s telephone number (1-800-LUNDY LAW). The embedded videos on that website state,
`“You only have to do one thing. Remember this name. Lundy Law.” The firm’s Twitter profile
`uses “If you've been injured in an accident REMEMBER THIS NAME. Serving PA NI DE”
`
`Larry Pitt & Associates, like other law firms, uses the phrase “Remember this number.” This
`advertising always and only refers to the f1rm’s number — 1-888-PITT LAW. Many personal
`injury firms have a phone number related to the firm’s name. An easy-to-remember telephone
`number is so important to some lawyers, that they participate in programs that license phone
`numbers like 1-800-HURT 911. These numbers are as integral to the marketing of the firm’s
`services as any aspect of their advertising.
`
`Just as some law firms, besides Lundy Law, use the phrase “Remember this name,” other firms
`use the phrase “Remember this number.” See Attachment B. In no instance do the phrases
`“Remember this name” or “Remember this number” confuse potential clients. These are
`generic phrases that stress the importance of a particular firm’s name, or telephone number to
`encourage people to call it when they need the services provided by the firm. “Remember this”
`with either the word “name” or “number” is not a brand or trademark that is exclusive to one law
`firm.
`
`(b)
`
`Policy Competition
`
`As a legal marketing professional, I am familiar with the regulations promulgated by the Federal
`Trade Commission. The Federal Trade Commission, which is charged by Congress to prevent
`unfair methods of competition and unfair or deceptive acts or practices in or affecting commerce
`has been an advocate for competition for legal services since at least the 1970s. 5 Between 1989
`and 2007, the FTC issued no fewer than 11 staff letters to various states commenting on their
`proposed advertising rule changes. It has also commented on at least one ethics opinion that
`interprets a state’s rules governing lawyer advertising.
`
`In its 2007 letter to the Indiana Supreme Court, the FTC staff lauded the state’s proposal to adopt
`less-restrictive rules and stated 6:
`
`The FTC enforces laws prohibiting unfair methods of competition and unfair or deceptive acts or
`practices in or affecting commerce, including deceptive and misleading advertising practices.
`Pursuant to its statutory mandate, the Commission encourages competition in the licensed
`professions, including the legal profession, to the maximum extent compatible with other state
`and federal goals. In particular, the Commission seeks to identify and prevent, where possible,
`business practices and regulations that impede competition without offering countervailing
`benefits to consumers. The Commission and its staff have had a1ong~standing interest in the
`effects on consumers and competition arising from the regulation of lawyer advertising.
`
`'5 15 USC Sec 45
`5 http: //wvvw.ftc.gov/ sites/d efault/flles/documents/advocacy_documents/ftc-staff-
`comment—ms.lilia—g.judson-executive-director—indiana-supreme—court-concerning
`proposed-rules-attorney~advertlsing/V070010.pdf
`
`6
`
`

`
`Debate about attorney advertising involves important policy concerns, such as preventing
`statements that would deceive or mislead lay people and thereby undermine public trust in
`lawyers and the legal system. The FTC staffs view is that consumers are better off if concerns
`about potentially misleading advertising are addressed through the adoption of advertising
`restrictions that are narrowly tailored to prevent deceptive claims. By contrast, imposing overly
`broad restrictions that prevent the communication of truthful and non-misleading information
`that some consumers may value is likely to inhibit competition and frustrate informed consumer
`choice. Similarly, imposing restrictions on some types of solicitation may increase consumer
`search costs. In addition, research has indicated that overly broad restrictions on truthful
`advertising may adversely affect prices paid and services received by consumers.
`
`V
`
`The FTC letters set out an abundance of research concluding that competition is advantageous to
`consumers. The research demonstrates that lawyer advertising results in higher demand for legal
`services, lower prices, and higher quality. On the other hand, the imposition of restrictions on
`lawyer advertising has resulted in higher prices.7
`
`The FTC communications on the issue of misleading communications are an important aspect of
`this analysis of whether the Lanham Act may restrict truthful, public domain statements such as
`“Remember this name,” or “Remember this number” before law firm names and telephone
`numbers in advertising. The use of such a statement is generally a truthful statement. In its
`November 3, 1989 letter to the Ohio State Bar Association, it states, “This is not to say that
`advertising is invariably benign. It may sometimes be unfair or deceptive, or may violate other
`legitimate ggoals of public policy. We believe, however, that truthful advertising is generally
`beneficial.”
`'
`
`
`
`7 See footnote 6 ofthe May 11, 2007 letter to the Indiana Supreme Court setting out the
`research at .1 .9
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`Timothy J. Muris, California Den cal Association v. Federal Trade Commission: The Revenge ofFootnote 17, 8 SUP. Cr. Econ.
`Rev. 265, 293-304 (2000) (discussing the empirical literature on the effect of advertising restrictions in the professions
`and citing, among others: James H. Love Sriack H. Stephen, Advertising, Price and Quality in Seifireguiating Professions: A
`Survey, 3 inn. 1. Econ. Bus. 227 (1996); J. Howard Beales & Timothy J. Muris, State and Federal Regulation ofNational
`Advertising 8-9 (1993); RS. Bond, 1.]. Kwoka, i.]. Phelan 8; LT. Witten, Eflects ofRestrictions on Advertising an