The Trademark Trial and Appeal Board (“TTAB”) refused registration of #LAW on the Principal Register finding that #LAW failed to function as a trademark. Pound Law, LLC (“Pound Law” or “Applicant”) was unable to convince the Board that its vanity phone number functions as a trademark for legal services and legal referral services. In re Pound Law, LLC, No. 87724338, 2022 WL 16960106 (TTAB Nov. 9, 2022).
Florida-based Pound Law initially filed to protect #LAW on the Principal Register on December 18, 2017. The application claimed ownership of Pound Law’s prior Supplemental Register registration for #LAW (U.S. Reg. No. 3,240,931) and claimed acquired distinctiveness based on five or more years of use:
The Examiner determined that Applicant’s use evidence was “insufficient to show acquired distinctiveness because of the highly descriptive nature of the applied-for mark.” Registration on the Principal Register was refused.
Applicant responded to this refusal with additional evidence and an assertion that #LAW is a specific alphanumeric phone number, not a hashtag. The Examiner maintained the descriptiveness refusal and further refused registration on the basis that #LAW was generic and failed to function as a trademark. The Examiner contended that #LAW “would be perceived by consumers merely as a hashtag followed by the generic term LAW” and served no source-indicating function. After several more rounds of unsuccessful arguments, Applicant appealed to the Board in 2021.
In its precedential ruling, the Board agreed with the Examiner’s final position that #LAW fails to function as a trademark because “consumers would not perceive Applicant’s use of #LAW as a source indicator, but rather only as a means to contact Applicant.” Decision at 9. Pound Law’s evidence of use of #LAW seemed to show a way to contact the Applicant, but did not clearly show that potential purchasers of legal and legal referral services would perceive #LAW as identifying the origin of such services. Applicant’s pronunciation as “POUND LAW” notwithstanding, consumers would likely view #LAW as a hashtag commonly used by numerous third parties. Consumers might understand #LAW as a mnemonic phone number rather than a hashtag, but based on the Applicant’s examples of use, they likely would still not view the mark as indicating the origin of the identified services. In fact, calling #LAW will evidently reach one of various unrelated law firms in multiple locations.
After reviewing the record, the Board held that Applicant was not using #LAW as a source indicator and that the mark cannot function as a trademark. Although the Board agreed that “an alphanumeric phone number that is used as a source-indicator can be registered under certain circumstances, the refusal in this case rests on our finding based on the entire record before us demonstrating Applicant does not use #LAW as a source indicator.” The Board upheld the refusal based on failure to function as a mark.
Applicant has continued its fight for registration filing action against the USPTO in January 2023, seeking to reverse the decision.