ESTTA Tracking number:
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`ESTTA1419897
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`Filing date:
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`03/06/2025
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Ex Parte Appeal -
`Serial No.
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`98115823
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`Appellant
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`Lewitt, Hackman, Shapiro, Marshall & Harlan
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`Applied for mark
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`JUSTICENTER
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`Correspondence
`address
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`Submission
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`Attachments
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`Appealed class
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`Filer's name
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`Filer's email
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`Signature
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`Date
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`TAL GRINBLAT
`LEWITT, HACKMAN, SHAPIRO, MARSHALL & HARLAN
`16633 VENTURA BLVD., SUITE 1100
`ENCINO, CA 91436
`UNITED STATES
`Primary email: tgrinblat@lewitthackman.com
`818-907-3284
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`Appeal brief
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`Justicenter Appeal Brief Final.pdf(562845 bytes )
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`Class 045. First Use: None First Use In Commerce: None
`All goods and services in the class are appealed, namely: Attorney services; At-
`torney services, namely, representation of clients in personal injury matters;
`Legal services
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`Tal Grinblat
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`tgrinblat@lewitthackman.com, hnurinda@lewitthackman.com,
`arozzen@lewitthackman.com
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`/Tal Grinblat/
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`03/06/2025
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEARL BOARD
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`International Class 45
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`In re Application of
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`Lewitt, Hackman, Shapiro, Marshall & Harlan )
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`Mark: JUSTICENTER
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`Serial Number: 98,115,823
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`Filed: August 3, 2023
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`Examining Attorney: Thomas Young
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`Law Office: 120
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`APPLICANT’S BRIEF IN SUPPORT
`OF APPROVAL FOR REGISTRATION IN
`INTERNATIONAL CLASS 45
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`DESCRIPTION OF THE RECORD
`The evidence of record in this case consists of Applicant’s application for registration in
`International Class 45 (filed on August 3, 2023); Office Action No. 1 (mailed April 4, 2024);
`Applicant’s Response to Office Action No. 1 (filed on September 30, 2024); Final Office Action
`(mailed October 10, 2024); Applicant’s Request for Reconsideration (filed December 26, 2024);
`and the Examining Attorney’s letter denying Applicant’s Request for Reconsideration (mailed
`December 27, 2024).
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`ISSUE PRESENTED
`Whether Applicant’s mark, JUSTICENTER (“Applicant’s Mark”), when used in
`connection with providing attorney services, namely, representation of clients in personal injury
`matters; and legal services in International Class 045, is merely descriptive.
`APPLICANT’S REQUEST
`Based on the record, including, specifically, the above-referenced Office Actions and
`Applicant’s Responses thereto, and Applicant’s Appellate Brief, Applicant respectfully requests
`that the Board approve Applicant’s Mark for publication in the Official Gazette of the United
`States Patent and Trademark Office.
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`ARGUMENT
`Applicant respectfully submits the following arguments in addition to the arguments and
`evidence previously provided in Applicant’s Response to Office Action No. 1 and Request for
`Reconsideration.
`A. Applicant’s Mark Is At Best Suggestive.
`1. Applicant’s Mark Does Not Immediately Convey The Nature of Its Services.
`To be refused registration under the Trademark Act, under Section 2(e)(1), a mark must
`be merely descriptive. A merely descriptive mark must not do anything other than describe the
`goods, services, or the characteristics, quality or function of the goods or services. See In re
`Colonial Stores, Inc., 394 F.2d 549 (C.C.P.A. 1968). A mark should not be denied registration if
`it has the capacity to draw attention to what the product or service is or what its characteristics
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`are, but does not otherwise immediately describe the goods or services, or the characteristics,
`quality or function of those goods or services. See In re Quick-Print Copy Shops, Inc. 616 F.2d
`523, 525.
`A merely descriptive mark must directly provide the consumer with reasonably accurate
`knowledge of the characteristics of the product or service in connection with which it is used.
`See In re Chamber of Commerce of the U.S., 675 F.3d 1297, 1300 (Fed. Cir. 2012). If the
`information about the product or service is indirect or vague, then the mark is considered
`suggestive, not descriptive and entitled to registration. Blisscraft of Hollywood v. United Plastics
`Co., 294 F.2d 694, 699 (2d. Cir. 1961); see also J. McCarthy, McCarthy on Trademarks and
`Unfair Competition §11.19 , at 11-44 to 11-45 (5th ed. 2017). A merely descriptive mark must
`“immediately convey” the thought of the services. In re Bed & Breakfast Registry, 791 F.2d 157,
`159-160 (Fed. Cir. 1986), citing In re American Society of Clinical Pathologists, Inc., 442 F.2d
`1404-1407 (C.C.P.A. 1971).
`Applicant’s Mark is not “merely descriptive” as JUSTICENTER does not directly convey
`the type services Applicant provides, the manner in which Applicant’s services are being offered,
`or the nature and extent of Applicant’s services. Applicant’s Mark does not “immediately”
`convey knowledge of the ingredients, qualities, or characteristics of the services with which it is
`used. In re Quick-Print Copy Shops, Inc., supra, 616 F.2d 523, 525. JUSTICENTER requires
`imagination, thought, or perception to reach a conclusion regarding the nature of the services,
`making it at best suggestive. Id.
`The “JUSTICENTER” application is for attorney services and legal services, namely,
`representation of clients in personal injury matters. “JUSTICENTER” has no meaning in
`connection with Applicant’s services. The Mark does not directly convey attorney services or
`representation of clients in personal injury matters. Instead, it suggests a place or source where
`justice can be found or sought. However, the nature of this “justice,” the means by which it is
`sought or delivered and the target consumer is not immediately apparent from the Mark.
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`The third-party usage examples provided by the Examining Attorney in the Office
`Actions are different from the Mark and do not demonstrate that Applicant’s mark is descriptive.
`Unlike the examples provided by the Examining Attorney, the Mark does not readily identify a
`connection with providing legal services in personal injury matters or legal services generally.
`For example, “Justice Center for the Protection of People With Special Needs,” identifies with
`greater certainty the target consumer for the services offered. Similarly, “Public Justice Center”
`more closely describes the nature of services provided, namely services related to the public
`benefit such as civil rights, healthcare, human rights, and housing. “Liberty Justice Center” also
`noticeably identifies the nature of its services given that the services provided relate to
`fundamental rights, including free speech, which are typically tied to the meaning of “liberty”.
`Interestingly, the Council of State Governments’ (“CSG”) Justice Center referenced by the
`Examining Attorney does not appear to provide any legal services, rather the focus appears to be
`geared toward policy changes in state and local governments.
`Applicant’s Mark does not signal, identify or immediately convey that legal services are
`provided, nor does it identify or describe with specificity or generally that the legal services
`provided under the Mark relate to personal injury. The Examining Attorney’s inclusion of the
`CSG Justice Center demonstrates this fact as CSG does not use their mark for legal services at
`all, but rather for increasing public awareness and public safety. The term Justice Center
`therefore is an abstract term that does not immediately describe legal services generally nor
`personal injury legal services specifically. The definition of “Justice,” provided by the
`Examining Attorney is broad and relates to anything that has the quality of being just and fair
`(April 4, 2024, Non-Final Office Action, Ex. A). The dictionary definition included in the Office
`Action defines “justice” as the attainment of what is just, “especially that which is fair, moral,
`right, merited…” Despite the broad definition, in denying the application, the Examining
`Attorney took a narrow view of the term “Justice” to focus only on what is “in accordance with
`the law.” But even that does not describe Applicant’s services. Applicant’s services are
`providing legal representation to injured persons. The term “justice” is simply too abstract and
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`does not permit a viewer to ascertain and understand the services Applicant offers. The use of
`“Justice” requires consumers to use some imagination to reach a conclusion as to the nature of
`the services provided under the Mark given that it could be refer to any type of service that may
`have a public benefit component, and not necessarily legal services. Additionally, even when
`used in connection with legal services, the mark in and of itself does not directly or immediately
`describe the nature of Applicant’s services. Accordingly, the mark is not descriptive and is
`entitled to registration.
`2. JUSTICENTER Requires Consumers To Use Imagination To Determine
`Applicant’s Services.
` A term is suggestive if it requires imagination, thought and perception to reach a
`conclusion as to the nature of the goods or services. Stix Products, Inc. v. United Merchants &
`Mfrs., Inc., 295 F. Supp. 479, 488 (S.D.N.Y. 1968); see also WE Media, Inc. v. Cablevision Sys.
`Corp., 94 Fed. Appx. 29 (2d Cir. 2004). A court’s primary criterion for determining whether a
`word is descriptive is the “imagination” test. Zobmondo Entm’t, LLC v. Falls Media, LLC, 602
`F.3d 1108, 1115 (9th Cir. 2010). A mark is more likely suggestive if it passes the imagination test,
`which asks whether the mark “requires a mental leap from the mark to the product.” Fortune
`Dynamic, Inc. v. Victoria’s Secret Stores Brand Mgmt., Inc., 618 F.3d 1025, 1033 (9th Cir. 2010).
`A suggestive term suggests, rather than describes some particular characteristic of the goods or
`services to which it applies and requires the consumer to exercise imagination to draw a conclusion
`as to the nature of the goods and services. Heartsprings, Inc. v. Heartspring, Inc, 143 F.3d 550,
`555 (10th Cir. 1998).
`The mark “JUSTICENTER” fails to provide the average consumer direct information
`about the qualities or characteristics of Applicant’s services without the consumer having to
`perform extra steps to make a “mental leap of imagination” to determine what the services could
`be. This demonstrates the Mark is not descriptive taken as a whole. The Mark does not draw an
`immediate connection in the mind of the consumer to the type of services offered by Applicant.
`Thought and imagination taking more time than a mere instance are necessary to connect the plain
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`meaning of the Mark to the services offered by Applicant—specifically, attorney services, namely,
`representation of clients in personal injury matters and legal services. Thus, the Mark is
`suggestive. Even a mark that requires only a small amount of imagination is registrable. Stonefire
`Grill, Inc. v. FGF Brands, Inc., 987 F.Supp.2d 1023, 1048 (C.D. Cal. 2013).
`The Mark does not directly describe legal services or representation of clients in personal
`injury matters. Instead, it suggests a place or source where justice can be found or sought.
`However, the nature of this “justice” and the means by which it is sought or delivered is not
`immediately apparent from the Mark. The Mark does not readily identify a connection with
`providing legal services in personal injury matters or legal services generally. Because thought
`and imagination taking more time than a mere instant are necessary to connect the plain meaning
`of the Mark to Applicant’s services, “JUTICENTER” is not merely descriptive of Applicant’s
`services and should be permitted to proceed to registration.
`3. JUSTICENTER Is A Telescoped Mark With No Definition.
`“JUSTICENTER” is a telescoped, unitary mark with a unique, non-descriptive meaning
`and should be considered in its entirety. The Board has consistently held that a mark comprising a
`combination of merely descriptive components is registerable if the combination of terms creates
`a unitary mark with a unique, non-descriptive meaning or the composite has a bizarre or
`incongruous meaning as applied to the goods or services. See In re Colonial Stores Inc., supra,
`394 F.2d at 552-53 (SUGAR & SPICE held to be not merely descriptive of bakery products); In
`re Shutts, 217 U.S.P.Q. 363 (T.T.A.B. 1983) (SNO-RAKE held to be not merely descriptive of a
`snow removal hand tool); In re Vienna Sausage Mfg. Co., 156 U.S.P.Q. 155, 156 (T.T.A.B. 1967)
`(FRANKWURST held to be not merely descriptive for wieners, the Board finding that although
`“frank” may be synonymous with “wiener” and “wurst” is synonymous with “sausage,” the
`combination of both terms are incongruous and result in a mark that is no more than suggestive of
`the nature of the goods); In re John H. Breck, Inc., 150 U.S.P.Q. 397, 398 (T.T.A.B. 1966) (TINT
`TONE held to be suggestive for hair coloring, the Board finding that the words overlap in
`significance and their combination is somewhat incongruous or redundant and does not
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`immediately convey the nature of the product); see also In re America Online, Inc., 77 U.S.P.Q.2d
`1618, 1623 (T.T.A.B. 2006) (INSTANT MESSENGER held not descriptive for real time text
`messaging service).
`In this instance, the mark “JUSTICENTER” must be viewed and perceived as a unitary
`mark. A viewer of the Mark would not immediately understand what the term means with regards
`to Applicant’s services. A consumer encountering the Mark would need to engage in a multi-step
`thought process to reach a conclusion about the nature of the associated services. First, the
`consumer would need to recognize the individual words "justice" and "center.” Then, the consumer
`would need to combine these words in their mind to form a concept of a "justice center.” However,
`even at this point, the nature of the services associated with a "justice center" is not immediately
`clear. Therefore, the Mark is entitled to registration even if any component of the Mark is
`descriptive, which Applicant denies.
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`4. The USPTO Has Allowed Other Telescoped Marks Containing the term
`“Justice” to Register.
`Other similarly structured marks, described below, bearing the term “justice” in connection
`with a variety of services have been approved for registration. See also Request for
`Reconsideration, Declaration of T. Grinblat (filed December 26, 2024).
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`Mark
`JUSTICEWORKS
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`Registration No.
`3,200,902
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`JUSTICEHOME
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`5,122,172
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`Services
`services related to providing
`life
`skills
`training
`for
`delinquent
`and dependent
`youth and cognitive and
`behavior
`counseling
`for
`delinquent
`and dependent
`youth
`for charitable services related
`to providing health care
`services
`in
`the nature of
`wellness programs, drug use
`testing, counseling in health.
`nutrition and lifestyle, and
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`JUSTICEAPP
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`6,310,847
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`providing wellness and well-
`being
`services,
`namely,
`personal
`assessments
`and
`counseling.
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`for
`downloadable software
`legal document preparation,
`searching for pro bono legal
`services, searching for paid
`legal services, legal research,
`legal referrals, and providing
`information in the field or law
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`The above registrations demonstrate that telescoped marks containing the word “Justice”
`are registrable as trademarks. They also support Applicant’s view that “Justice” as a telescoped
`mark requires consumers to use imagination and thought to reach a conclusion as to the nature of
`the services provided given that such marks could refer to any type of service that is for the public
`benefit. Finally, the above registrations demonstrate that the USPTO has registered telescoped
`marks containing the word JUSTICE for various goods and services even some related to law
`(such as the JUSTICEAPP mark referred to above).
`Again, the definition of “Justice,” provided by the Examining Attorney is broad and relates
`to anything that has the quality of being just and fair. As a whole, Justicenter as one telescoped
`word has no meaning. Even if Applicant’s Mark is separated into two words and analyzed
`separately, the Mark still does not directly provide consumers with knowledge of the services
`Applicant provides. At best, Applicant’s Mark is suggestive and entitled to registration.
`Accordingly, Applicant respectfully requests that its mark be approved for publication and
`registration.
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`CONCLUSION
`Based upon the record and Applicant’s brief, Applicant respectfully requests that the
`Board find that Applicant’s Mark is in condition for registration for use in connection with the
`recited services in International Class 045.
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`Dated: March 6, 2025
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`Respectfully submitted,
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`Tal Grinblat
`Tal Grinblat
`Attorney for Applicant
`California State Bar Member #192842
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`9
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