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.
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.
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.
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 email@example.com
To contact the editor responsible for this story: Naresh Sritharan at firstname.lastname@example.org
Text is available at http://pub.bna.com/ptcj/TTAB85662420.pdf.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to email@example.com.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to firstname.lastname@example.org.
Put me on standing order
Notify me when new releases are available (no standing order will be created)