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TTAB: ‘Hollywood Lawyers Online' Mark Refers to Place, Not Industry; Unregistrable

Wednesday, May 7, 2014

By Tamlin H. Bason  

May 2 --A company that offers attorney referrals for entertainment practitioners cannot register the “Hollywood Lawyers Online” mark because the public will associate the first word in the mark with a place, not the entertainment industry, the Trademark Trial and Appeal Board held May 2.

The board affirmed a refusal to register the mark on the grounds that it was primarily geographically descriptive under Section 2(e)(2) of the Lanham Act. In so holding, the board rejected the applicant's argument that consumers would understand the term “Hollywood” to be a reference to the entertainment industry rather than to a section of Los Angeles, California.

The board noted that the term can have different connotations depending on the context in which it is used. But in this case, the board said that there is nothing in the record to suggest that the applicant is using the term in a manner that would call the public's attention to the entertainment-related meaning of the term.

Registration Sought for Attorney Referral Service

In its application, Hollywood Lawyers Online identified the services for which it sought registration as “attorney referrals; providing a web site featuring business information in the form of audio and video interviews, transcripts and other educational materials; providing an online video business directory.”

The examining attorney denied registration after determining that Hollywood referred to a place. Accordingly, the mark was primarily geographically descriptive and thus barred from registration under Section 2(e)(2) of the Lanham Act, the examining attorney held. That section prohibits the registration of a mark which “when used on or in connection with the goods of the applicant is primarily geographically descriptive of them.” 15 U.S.C. § 1052(e)(2). Hollywood Lawyers Online appealed.

Distinguishing Lawyers From Fries

Administrative Trademark Judge Karen Kuhlke said that to establish that a mark is primarily geographically descriptive under Section 2(e)(2), the examining attorney must show that (1) the mark's primary significance is a generally known geographic location; and (2) that the relevant public would be likely to believe that the goods originate in the place named in the mark.

Relying heavily on In re International Taste Inc., 53 U.S.P.Q.2d 1604 (T.T.A.B. 2000), the applicant argued that the examining attorney erred in determining that Hollywood is generally known as a geographic location. The mark at issue in International Taste was a design mark for “Hollywood Fries” that included a star above the words. The board determined that the mark was not primarily geographically descriptive for French fries and restaurant services because the term Hollywood, when paired with a star, clearly alludes to the entertainment meaning of Hollywood.

The board in International Taste first noted that “[t]here is no question that 'Hollywood' is a section of Los Angeles.” But, “the star design feature which forms part of applicant's mark increases the commercial impression of the term as connoting the entertainment industry and decreases the connection to the town of Hollywood, California,” International Taste held.

The board had little trouble distinguishing the instant case fromInternational Taste. For one thing, the board noted that there is nothing in the Hollywood Lawyers Online mark that would increase the commercial impression of the term as connoting an association with the entertainment industry.

“In fact, we find quite the opposite; that the additional wording LAWYERS ONLINE immediately describes the applied-for services, i.e., attorney referrals provided online, and does not allude to the entertainment industry,” the board said.

Connotation Depends on Context

Affirming the examining attorneys finding with respect to the first factor, the board said:

While the word HOLLYWOOD may have different connotations depending on context, here in the context of applicant's applied for services, namely, “attorney referrals; providing a web site featuring business information in the form of audio and video interviews, transcripts and other educational materials; providing an online video business directory” and without additional elements in the mark to detract from the geographic significance, there is no allusion to the alternative meaning referencing the “glamour” of the film industry.  

 

With respect to the second prong, the board determined that the average consumer would associate the services being offered with the section of Los Angeles that is known as Hollywood. The board accordingly affirmed the examining attorney's refusal to register the mark.

Administrative Trademark Judges Michael B. Adlin and Angela Lykos joined the board's decision.

The Patent and Trademark Office was represented by Examining Attorney Carolyn P. Cataldo, Alexandria, Va. Hollywood Lawyers Online was represented by Suzanne R. Natbony, the company's general counsel.

 

To contact the reporter on this story: Tamlin Bason in Washington at tbason@bna.com

To contact the editor responsible for this story: Naresh Sritharan at nsritharan@bna.com


Text is available at http://pub.bna.com/ptcj/TTAB85662420.pdf.

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