TTAB Rejects Opposition to “CREEL” for Legal Services: Acquired Distinctiveness Trumps Section 2(e)(4) Surname Claim – Trademark
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In a 55-page opinion, the Council dismissed this eight-year battle between two groups of Mexican lawyers over the registration of trademarks CREEL and CREEL, GARCÍA-CUÉLLAR, AIZA AND ENRIQUEZ for “legal services”. The opponent alleged that both marks are misleading or falsely descriptive under sections 2(a) and 2(e)(1) of the Lanham Act, falsely suggest a connection under section 2(a) and include the name of an individual living in violation of Section 2(c), and further that the CREEL mark is primarily only a surname within the meaning of Section 2(e)(4). The Board found that the opponent had failed to establish a prima facie case with respect to its claims, except for the surname claim. The opponent has proven that CREEL is above all only a surname, but the plaintiff has overcome this refusal by proving acquired distinctiveness. This summary will try to touch on the strong points.
Creel Abogados, SC and Carlos Creel Carrera v. Creel, García-Cuellar, Aiza y Enríquez, SCopposition n° 91217047 (May 27, 2022) [not
precedential] (Opinion of Judge Christopher Larkin).
The opponent Carlos Creel is a former partner in the applicant law firm, founded in 1936 by his father. Carlos Creel left the company in 2013, but the company continued to operate under the name Creel, García-Cuéllar, Aiza, y Enríquez and used logos that emphasize the word CREEL.
Section 2(a) Deceptiveness and Section 2(e)(1) Misleading Misdescription: The opponents argued that the opposing marks incorrectly indicate that a lawyer named “Creel” is an associate of the plaintiff’s firm and that consumers are likely to believe that the plaintiff’s law firm is affiliated with opponents. Alternatively, the opponents have argued that the term CREEL is an erroneous description of the character, characteristics and quality of the plaintiff’s legal services. The Commission noted two “fundamental problems” with these arguments: first, the lack of a legal basis that a surname can be merely descriptive of goods and services; and second, the absence of evidence to prove that CREEL is merely descriptive of the legal department, as well as other elements of these allegations.
The opponents’ assertions regarding the public perception of the CREEL mark were based solely on legal arguments. “The record simply lacks ‘facts and evidence’ showing what consumers are likely to think when they see ‘the opposing mark in connection with legal services. The opponents’ “total failure” to establish a prima facie case doomed both claims.
Section 2(a) False Link and Section 2(c) No Consent: Opponents argued that Carlos Creel is well enough known that consumers believe he is somehow associated with the plaintiff. However, there was no evidence regarding his notoriety as a lawyer. In short, the opponents “completely failed to establish a prima facie case in their main case.”
Section 2(e)(4) Mainly just a surname: The Commission concluded that, although “Creel” is not a common surname, it is not so uncommon that it is not likely to be perceived as a surname in the context of legal services. The fact that several of the people involved in this saga are called “Creel” supports this conclusion, as do census listings and news reports about people named “Creel”.
The plaintiff argued that “creel” has meanings other than the surname, particularly in the contexts of fishing and weaving, but the Board emphasized that the term must be considered in the context of the goods and services at issue. . The Board agreed with opponents that “plaintiff did not name his law firm after a fishing rod…or a loom.” The plaintiff followed the common practice of retaining the name of a retired or deceased partner (Carlos Creel’s father) in the name of the law firm.
Distinction earned: The Board exercised its discretion in allowing the applicant to add a claim of acquired distinctiveness to the final decision, since the matter was attached to the pleadings and was informed by the parties. The Commission observed that, as a general rule, five years of use alone is not sufficient to establish the acquired distinctiveness of a surname. Plaintiff’s testimony established that it registered the domain name creel.mx in 2009, that the CREEL mark had appeared on its masthead for many years, that it had served numerous US-based clients, and had close ties with a number of major US law firms. She maintains an English website to market her services to potential US clients. Further, there was no evidence of third party use of a CREEL formative mark in connection with legal services in the United States.
The record shows that the mark CREEL has been used by the plaintiff on an essentially exclusive and continuous basis in commerce with the United States in connection with legal services for at least 10 years, and there is additional evidence discussed above that the plaintiff has obtained recognition by US law firms. and customers under the CREEL brand.
The Board has concluded that the applicant’s mark CREEL has acquired distinctiveness for legal services and is entitled to inclusion in the Main Register under Section 2(f).
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