Prof. Goldman’s research uncovered compelling evidence for why Mr. Menhart’s application is very likely to be rejected under §2(e)(1) as merely descriptive. Indeed, Prof. Goldman may have done a great service to Mr. Menhart’s future assigned examining attorney by providing all the evidence he or she will need to support a descriptiveness rejection.
In addition to the plethora of convincing reasons provided by Prof. Goldman (not to mention some of his fun facts about Mr. Menhart), I would add the fact that several other trademark applicants have sought registration of a similar mark in the past – none with any success:
- CYBERLAW (for development and dissemination of legal educational materials) – §1(a) application filed April 2, 1996, abandoned December 26, 2000.
- A CYBER LAW OFFICE (for legal services provided licensed attorneys by global computer network) – §1(b) application filed June 9, 1999, abandoned March 16, 2000.
- CYBERLAWZ (for legal services) -- §1(b) application filed October 13, 1999, abandoned August 29, 2000.
- CYBERLAW ADVISOR (for legal advice and services related to the law of computers, the Internet and electronic commerce) – 1(b) filed February 7, 2000, abandoned February 15, 2001.
Granted, we don’t know the exact grounds of rejection in each application because the PTO’s TDR system does not have the complete file available online for these older applications. Nonetheless, the single §1(a) application went abandoned after a final refusal and the other three §1(b) applications went abandoned after the initial non-final action.
However, there may be another explanation for the above applications being rejected, and the explanation may actually may bode well for Mr. Menhart. The above applications may not have been rejected for descriptiveness, but instead rejected based on §2(d) as likely to be confused with the registered mark CYBERLAWYER (for attorney referrals and providing legal information), which was registered October 15, 1996, but subsequently cancelled July 19, 2003, for failure to file a Section 8 declaration of continued use. Perhaps, there is now an opening for Mr. Menhart to receive a registration for his mark.
Mr. Menhart attempts to defend his application in his own blog post (link here) responding to a blog post by Corynne McSherry of the Electronic Frontier Foundation (link here) in which she was critical of Mr. Menhart’s attempt to claim trademark rights to the term.
Notably, in defense of his application, Mr. Menhart states: “The mark [CyberLaw] was granted to Attorney Jonathan Rosenoer of Greenbrae, California in 1996. Mr. Rosenoer let his protection expire in 2000. All such information is publicly available to Ms. McSherry or anyone else at the USPTO web site.” However, this particular application cited by Menhart is among the list of application cited above that were not registered. If you click on the link for CYBERLAW, one can see that Mr. Rosenoer was never granted a registration for this mark. The application was suspended for sometime and then a final refusal was issued (with no appeal filed).
So Mr. Menhart is incorrect in his assertion regarding any prior grant of a registration on the mark “CyberLaw.” If anything, Mr. Menhart should have cited to the CYBERLAWYER mark, which seems more supportive of his position that the PTO has shown willingness in the past to allow such a mark to be registered. Of course, one big difference is that CYBERLAWYER was registered in 1996 – when the Internet was still in its infancy and the use of the prefix “Cyber-” was not as much a part of the mainstream lexicon as it is today. Twelve years have passed, and the term has become much more prevalent since that time.
As most trademark practitioners will tell you, you never know how the PTO is going to respond to an application. Perhaps the past registration of CYBERLAWYER may provide Mr. Menhart with enough of an opening to argue that his mark is at least suggestive.
Most likely, however, Mr. Menhart’s only chance at obtaining a registration on the Principal Register is to argue acquired distinctiveness under §2(f). But given the ubiquitous use of the term CyberLaw, it would seem nearly impossible to argue convincingly that the consuming public has come to associate the mark CYBERLAW with Menhart’s services – especially after less than one year in use.
Perhaps Mr. Menhart will settle for a registration on the Supplemental Register. If the mark is refused registration based on descriptiveness, Mr. Menhart can try to argue that the mark is still capable of distinguishing his services. It’s still an uphill battle given the widespread use of the term (i.e., if its used by so many others to describe an area of the law, how can is possibly distinguish Mr. Menhart’s services). But if the PTO is willing to allow supplemental registration, it may be better than nothing – at least if he can’t have a registration on the Principal Register, he can be assured no one else can (at least not for related goods and services).