To:
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`Subject:
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`Sent:
`Sent As:
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`TAL GRINBLAT(tgrinblat@lewitthackman.com)
`U.S. Trademark Application Serial No. 98115823 - JUSTICENTER - - 992079-
`20 - Examiner Brief
`April 29, 2025 02:31:35 PM EDT
`tmng.notices@uspto.gov
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`Attachments
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`United States Patent and Trademark Office (USPTO)
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`U.S. Application Serial No.  98115823
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`Mark:   JUSTICENTER
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`Correspondence Address:  
`TAL GRINBLAT
`LEWITT HACKMAN SHAPIRO MARSHALL & HARLAN
`16633 VENTURA BLVD SUITE 1100
`ENCINO CA 91436
`UNITED STATES
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`Applicant:   Lewitt, Hackman, Shapiro, Marshall & Harlan
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`Reference/Docket No.  992079-20
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`Correspondence Email Address:   tgrinblat@lewitthackman.com
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`EXAMINING ATTORNEY’S APPEAL BRIEF
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`EXAMINING ATTORNEY’S APPEAL BRIEF
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`STATEMENT OF THE CASE
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`    Lewitt, Hackman, Shapiro, Marshall & Harlan (“Applicant”) has appealed the Trademark Examining
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`Attorney’s[1] final refusal to register the applied-for mark JUSTICENTER in standard characters for
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`“Attorney services; Attorney services, namely, representation of clients in personal injury matters;
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`Legal services” in International Class 045 on the Principal Register on the ground that the mark is
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`merely descriptive of the applicant’s services under Trademark Act Section 2(e)(1), 15 U.S.C. Section
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`1052(e)(1). It is respectfully requested that the refusal be affirmed.
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`FACTS
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`    Applicant filed this application on August 03, 2023, applying to register the mark
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`JUSTICENTER
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`in standard characters for “Attorney services; Attorney services, namely, representation of clients in
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`personal injury matters; Legal services” in International Class 045 on the Principal Register. In the first
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`Office action dated April 04, 2024, registration was refused under Section 2(e)(1) of the Trademark Act
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`on the grounds that the mark was merely descriptive of a characteristic and feature of the applicant’s
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`services.
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`    The applicant submitted arguments against the refusal in its September 30, 2024 communication. On
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`October 10, 2024, the refusal to register the mark under Section 2(e)(1) was maintained and made 
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`final.  The applicant filed a Request for Reconsideration on December 26, 2024, which was denied on
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`December 27, 2024.  This appeal followed.  
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`ISSUE
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`The sole issue on appeal is whether the mark JUSTICENTER is merely descriptive of a characteristic,
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`quality, function, feature, purpose, or use of the applicant’s services under Trademark Act Section
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`2(e)(1).
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`ARGUMENT
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`A. The Applied-For Mark Immediately Describes the Applicant’s Services.
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`    The applicant has applied to register the mark
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`JUSTICENTER for “Attorney services; Attorney
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`services, namely, representation of clients in personal injury matters; Legal services” in International
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`Class 045. Registration was refused because the applied-for mark merely describes a characteristic or
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`feature of the applicant’s services, namely, that applicant’s attorney and legal services feature a place
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`where consumers have the opportunity to attain what is fair in accordance with the law. Trademark Act
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`Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
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`    Trademark Act Section 2(e)(1) bars registration of an applied-for mark on the Principal Register that
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`merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of an
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`applicant’s services without sufficient proof the mark has acquired distinctiveness. See 15 U.S.C.
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`§1052(e)(1). See, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015).
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`A mark is merely descriptive if “it immediately conveys knowledge of a quality, feature, function, or
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`characteristic of [an applicant’s] goods or services.” In re The Chamber of Commerce of the U.S., 675
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`F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft,
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`488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).
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`    The determination of whether a mark is merely descriptive is made in relation to an applicant’s
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`services, not in the abstract. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247,
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`1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51
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`USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the
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`“documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary
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`definition). “Whether consumers could guess what the product [or service] is from consideration of the
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`mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
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`    In the present case, the wording JUSTICENTER describes a feature and characteristic of applicant’s
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`services. The applied for mark, consisting of the wording “JUSTICE” and “CENTER”, is a “telescoped
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`mark” which consists of two or more words combined to create a single word that shares letters. The
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`combination of “JUSTICE”, which is defined as “the attainment of what is fair… in accordance with
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`the law”, and “CENTER”, which is defined as a place where a service is provided, immediately
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`conveys that applicant’s attorney services provide consumers with a place where they can seek and
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`receive fair and just outcomes in accordance with the legal system. October 10, 2024 Final Office
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`Action, TSDR p. 3 (“Final Action”).
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`    A telescoped mark is merely descriptive or generic if the individual words are descriptive or generic
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`and if the words retain their descriptive or generic meaning within the telescoped mark.  See In re
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`Omaha Nat’l Corp., 819 F.2d 1117, 1118, 2 USPQ2d 1859, 1860 (Fed. Cir. 1987) (holding FIRSTIER
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`merely descriptive of banking services);  In re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1083 (TTAB
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`2010) (holding NANDRIVE, a telescoped mark of the generic term “nand drive,” generic for electronic
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`integrated circuits, including flash memory drives); TMEP §§1209.01(c)(i), 1209.03(d). Here, because
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`“JUSTI” is not a separate, recognized term, the examining attorney reasons that the words JUSTICE
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`and CENTER retain their descriptive meaning within the telescoped term that comprises the mark.
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`    Moreover, in context of the attorney related services, businesses and legal institutions, including
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`applicant’s competitors, use the wording in the applied-for mark to identify a place where people seek
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`legal help and remedies in accordance with the law. October 10, 2024 Final Action, TSDR p. 6-47. For
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`example:
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`•
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`William Wayne Justice Center for Public Interest law provides services that “increase access to
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`justice” and educate on legal issues. Id at 6.
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`•
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`Legal Aid Justice Center provides attorney services in the nature of representation of
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`“[r]esidents who have been detained in hearings in immigration court.”  Id at 9.
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`•
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`National Immigration Justice center provides “direct legal services to and advocates
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`[through]… impact litigation.”  Id at 12.
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`•
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`Liberty Justice Center provides legal services, noting that they “fight for the constitutional
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`rights of American families, workers, advocates, and entrepreneurs.”  Id  at 14.
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`•
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`The Edward P. Swyer Justice Center “combines theory and practice and acts as an in-house
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`public interest law firm, providing free legal services to eligible clients.”  Id  at 18.
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`•
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`Family Justice Center “provide[s] coordinated advocacy, government, civil legal services and
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`social services” to patrons.  Id  at 24.
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`•
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`Tahirih Justice Center provides “client-centered
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`legal services
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`includ[ing] screening,
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`assessment, counsel and advice, and/or full-scale legal representation.”  Id  at 27.
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`•
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`MacArthur Justice Center “fight[s] for real solutions to problems with [the] criminal legal
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`system.”  Id  at 27.
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`•
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`•
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`Global Justice Center provides legal services “to protect reproductive rights.”  Id  at 34.
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`Survivors Justice Center provides “legal services and support for victims of sexual assault to
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`seek justice by holding their perpetrators accountable.”  Id at 37.
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`•
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`Safe Family Justice Centers provides “advocacy and support services to individuals.”  Id  at 41.
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`Thus, the evidence in the record establishes that, not only is the wording descriptive of information
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`featured by the applicant’s services, but there is a competitive need for legal and attorney services
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`providers to use the wording JUSTICE CENTER in the marketplace.
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`    Based on the foregoing, the applied-for mark JUSTICENTER merely describes a place where
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`patrons go to seek attorney services and a just outcome in accordance with the legal system.
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`B) The mark is a Telescoped mark that Describes Applicant’s services.
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`    Applicant argues that JUSTICENTER is a unitary mark with no definition and requires imagination
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`to determine applicant’s services. January 08, 2025 Appeal Brief, TSDR p. 7 ("Appeal Brief").[2]  A
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`term or phrase is unitary if it consists of elements that create a single commercial impression or have a
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`distinct commercial impression independent of the constituent elements.  TMEP §§1213.05,
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`1213.05(b).  The test for determining whether a mark is unitary focuses on whether the elements of a
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`mark are so integrated or merged together that they cannot be regarded as separable.  In re Lego Juris
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`A/S, 2022 USPQ2d 443, at *6 (TTAB 2022) (citing In re EBS Data Processing, Inc., 212 USPQ 964,
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`966 (TTAB 1981));  TMEP §1213.05; see In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983). 
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`However, if the elements are considered separable, the matter is not unitary and the unregistrable
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`constituent elements may be disclaimed.  See In re Ginc UK Ltd., 90 USPQ2d 1472, 1477 (TTAB
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`2007); In re Brown-Forman Corp., 81 USPQ2d 1284, 1288 (TTAB 2006); TMEP §1213.05(b)(iv), (g),
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`(g)(i).  In this case, as mentioned above, because JUSTI has no meaning on its own, the singular
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`elements of the mark do not have their own commercial impression outside the telescoped word
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`consisting of the defined terns "JUSTICE" and "CENTER".   October 10, 2024, Final Action at p. 4.
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`The elements are not so integrated as to be regarded as inseparable, because in reference to the attorney
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`related services, it is clear that the mark is a telescoped version of the commonly used phrase JUSTICE
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`CENTER. 
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`    Applicant also suggests that, although the individual terms in the mark may be descriptive, the
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`combination of the mark a whole requires a “mental leap of imagination,” and as such, the mark is not
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`merely descriptive of applicant’s services. January 08, 2025  Appeal Brief, TSDR p. 6. Generally, if the
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`individual components of a mark retain their descriptive meaning in relation to the services, the
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`combination results in a composite mark that is itself descriptive and not registrable. In re Phoseon
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`Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012); TMEP §1209.03(d); see, e.g., In re Cannon Safe,
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`Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal
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`gun safes, because “each component term retains its merely descriptive significance in relation to the
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`goods, resulting in a mark that is also merely descriptive”). Only where the combination of descriptive
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`terms creates a unitary mark with a unique, incongruous, or otherwise non-descriptive meaning in
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`relation to the services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549,
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`551, 157 USPQ 382, 384 (C.C.P.A. 1968). Moreover, as mentioned above, a “telescoped mark,” which
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`consists of two or more words combined to create a single word that shares letters, is merely descriptive
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`or generic if the individual words are descriptive or generic and if the words retain their descriptive or
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`generic meaning within the telescoped mark. See In re Omaha Nat’l Corp., 819 F.2d 1117, 1118, 2
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`USPQ2d 1859, 1860 (Fed. Cir. 1987) (holding FIRSTIER merely descriptive of banking services); In
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`re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1083 (TTAB 2010) (holding NANDRIVE, a telescoped
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`mark of the generic term “nand drive,” generic for electronic integrated circuits, including flash
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`memory drives); TMEP §§1209.01(c)(i), 1209.03(d).
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`    Here, the evidence in the record establishes that both the individual components and the telescoped
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`result are descriptive of applicant’s services and, accordingly, the composite result does not create a
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`unique, incongruous, or non-descriptive meaning in relation to the services. Specifically, the evidence
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`in the record establishes that the composite wording “JUSTICE CENTER" is commonly used to
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`describe a place or institution that provides legal services to achieve a favorable outcome in accordance
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`with the law.  October 10, 2024 Final Action, TSDR p. 3. Thus, as noted by applicant, the mark
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`references  "a place or source where justice can be found or sought” and is, as such, used descriptively
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`in the marketplace to describe and identify attorney and legal services. January 08, 2025  Appeal Brief,
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`TSDR p. 7.
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`    Applicant also notes that the mark must be viewed as a whole, and upon doing so, the mark is
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`suggestive and does not immediately describe applicant’s services; specifically because it does not
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`identify applicant’s personal injury legal services. Id. Here, applicant’s services are not exclusively
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`limited to personal injury legal services as applicant’s identification of services identifies “attorney
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`services” and “legal services” broadly. As such, it is not necessary to provide evidence that specifically
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`mentions personal injury law.     
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`    Moreover, “[a] mark may be merely descriptive even if it does not describe the ‘full scope and
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`extent’ of the applicant’s goods or services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71
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`USPQ2d 1370, 1371 (Fed. Cir. 2004); TMEP §1209.01(b). Instead, it is enough if a mark describes
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`only one significant function, attribute, or property. In re The Chamber of Commerce of the U.S., 675
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`F.3d 1297, 1298-1300, 102 USPQ2d 1217, 1218-1219 (Fed. Cir. 2012) (finding the mark NATIONAL
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`CHAMBER to be merely descriptive where it described only one of the applied-for services, namely,
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`“[p]roviding online directory information services featuring information regarding local and states
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`Chambers of Commerce.”); TMEP §1209.01(b). Here, the applied-for mark JUSTICENTER describes
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`significant features of the applicant’s attorney and legal services, namely, that the applicant provides
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`personal injury legal services to patrons looking to receive a just outcome based on the legal system.
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`    Thus, based on the foregoing, the applied-for mark, JUSTICENTER, remains merely descriptive as it
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`immediately describes a significant feature of the applicant’s legal and attorney services.
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`    Lastly, applicant argues that the Office has allowed other telescoped marks that contain the word
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`JUSTICE. January 08, 2025  Appeal Brief, TSDR p.8-9. In this case, unlike the registrable marks
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`applicant mentioned, there is no non-descriptive or non-generic wording present in applicant’s mark.
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`The respective marks, namely, JUSTICEWORKS, JUSTICEHOME, and JUSTICEAPP, all contain
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`non-descriptive wording that allows the marks to be registrable. That is not the case here, and as such,
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`applicant’s mark JUSTICENTER is descriptive of applicant’s services and not registrable.
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`    In addition, 
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`prior decisions and actions of other trademark examining attorneys in applications for
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`other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial
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`and Appeal Board. TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122
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`USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands
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`on its own merits. In re Cordua Rests., Inc., 823 F.3d 594, 600, 118 USPQ2d 1632, 1635 (Fed. Cir.
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`2016) (citing In re Shinnecock Smoke Shop, 571 F.3d 1171, 1174, 91 USPQ2d 1218, 1221 (Fed. Cir.
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`2009); In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)).  As
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`such, applicant's inclusion of prior registered, telescoped marks that contain the word JUSTICE are not
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`persuasive to obviate the refusal here, because prior registered marks are not binding on this case.
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`CONCLUSION
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`    The applied-for mark, JUSTICENTER, merely describes a characteristic or feature of the applicant’s
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`services, namely, that the attorney and legal services provided by applicant at a place where patrons can
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`seek a just outcome based on the law. While doubt as to a mark’s descriptiveness should be resolved on
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`applicant’s behalf, the evidence of record leaves no doubt that the mark is merely descriptive. See, e.g.,
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`In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1571 4 USPQ2d 1141, 1144 (Fed.
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`Cir. 1987). 
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`    For the foregoing reasons, it is respectfully submitted that the refusal of registration under
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`Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), be affirmed.
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`Respectfully submitted,
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`/R. Oroma Womeodu/
`Robin Womeodu
`Trademark Examining Attorney
`Law Office 120
`(571) 272-4601
`Robin.Womeodu@uspto.gov
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`/David Miller/
`Managing Attorney
`Law Office 120
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`End Notes
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`1.
`2.
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`The Office reassigned this matter to the undersigned examining attorney on March 17, 2025.
`In order to minimize confusion, all citations are to the TSDR page number record regardless of
`the page numbers that appear on Applicant’s brief. 
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`United States Patent and Trademark Office (USPTO)
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`USPTO OFFICIAL NOTICE
`
`Examining attorney’s appeal brief has issued
`on April 29, 2025 for
`U.S. Trademark Application Serial No.  98115823
`
`A USPTO examining attorney has issued an appeal brief. Follow the steps below.
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`(1)   Read the appeal brief. This email is NOT the appeal brief.
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`(2)  Submit reply brief within 20 days of April 29, 2025 , if you wish to do so.  If
`submitted, a reply brief must be submitted using the Electronic System for
`Trademark Trials and Appeals (ESTTA) and received by the USPTO on or before
`11:59 p.m. Eastern Time of the last day of the reply period.
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`(3)  Direct questions about the appeal proceeding to the Trademark Trial and
`Appeal Board at 571-272-8500 or TTABInfo@uspto.gov.
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`