TTAB Dismisses Opposition To “CREEL” For Authorized Providers: Acquired Distinctiveness Overcomes Section 2(e)(4) Surname Claim – Trademark

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In a 55-site view, the Board dismissed this eight-calendar year-aged&#13
TTABattle among two sets of Mexican attorneys around registration of&#13
the marks CREEL and CREEL,&#13
 for “authorized companies.”&#13
Opposer alleged that both of those marks are misleading or deceptively&#13
misdescriptive beneath Sections 2(a) and 2(e)(1) of the Lanham Act,&#13
falsely counsel a connection beneath Portion 2(a), and comprise the&#13
title of a dwelling unique in violation of Area 2(c), and&#13
additional that the CREEL mark is mostly simply a surname beneath&#13
Part 2(e)(4). The Board identified that opposer failed to make out a&#13
prima facie situation as to its statements, other than for the surname assert.&#13
Opposer proved that CREEL is largely simply a surname, but&#13
applicant overcame that refusal by way of evidence of obtained&#13
distinctiveness. This summary will try out to hit the superior&#13
points. &#13
Creel Abogados, S.C. and Carlos Creel Carrera v. Creel,&#13
García-Cuéllar, Aiza y Enríquez,&#13
, Opposition No. 91217047 (Might 27, 2022) [not
precedential] (Impression by Choose Christopher Larkin).

Opposer Carlos Creel is a previous associate of the applicant regulation&#13
agency, which was founded in 1936 by his father. Carlos Creel still left&#13
the firm in 2013, but the business ongoing to run underneath the identify&#13
Creel, García-Cuéllar, Aiza, y Enríquez and to&#13
use logos that emphasize the term CREEL.

Part 2(a) Deceptiveness and Segment 2(e)(1) Deceptive&#13
 Opposers argued that the opposed&#13
marks falsely show that a law firm named “Creel” is a&#13
spouse in applicant’s company and shoppers will very likely believe that&#13
that the applicant regulation organization is affiliated with opposers.&#13
Alternatively, opposers argued that the time period CREEL is&#13
misdescriptive as to a character, aspect, and good quality of&#13
applicant’s lawful products and services. The Board noted two&#13
“elementary problems” with these arguments: to start with, the&#13
absence of authorized authority that a surname may possibly be basically descriptive&#13
of products and providers and 2nd, the absence of evidence to establish&#13
that CREEL is basically descriptive of lawful company, as effectively as other&#13
things of these promises.

Opposers’ statements relating to general public notion of the mark&#13
CREEL ended up centered only on legal argument. “The history simply just&#13
lacks ‘facts and evidence’ displaying what customers are&#13
very likely to consider when they see” the opposed mark in link&#13
with legal solutions. Opposers’ “utter failure” to&#13
create a prima facie situation doomed equally claims.


Carlos Creel

Area 2(a) Wrong Connection and Portion 2(c) Deficiency of&#13
 Opposers argued that Carlos Creel is&#13
adequately nicely-recognized that buyers will consider that he is in&#13
some way connected with applicant. Nonetheless, there was no proof&#13
with regards to his prominence as a attorney. In quick, opposers&#13
“totally unsuccessful to set up a prima facie circumstance in their&#13
circumstance in chief.”

Area 2(e)(4) Primarily Just a&#13
 The Board located that, whilst&#13
“Creel” is not a popular surname, it is not so rare as to&#13
be not probably to be perceived as a surname in connection with authorized&#13
products and services. The simple fact that quite a few of the folks concerned in this&#13
saga are named “Creel” supports that acquiring, as do&#13
census listings and information articles about persons named&#13

Applicant argued that “creel” has non-surname&#13
meanings, notably in the contexts of fishing and weaving, but&#13
the Board pointed out that the phrase will have to be thought of in the&#13
context of the goods and companies at challenge. The Board agreed with&#13
opposers that “Applicant did not identify its legislation organization soon after a&#13
fishing rod . . . or a weaving loom.” Applicant followed the&#13
prevalent observe of retaining the name of a retired or departed&#13
lover (Carlos Creel’s father) in the law agency name.

Obtained Distinctiveness: The Board&#13
exercised its discretion in allowing Applicant to include a declare of&#13
obtained distinctiveness at ultimate selection, given that the issue was&#13
joined in the pleadings and was briefed by the parties. The Board&#13
observed that, commonly, 5 years’ use alone is not more than enough&#13
to establish acquired distinctiveness of a surname. Applicant’s&#13
testimony founded that it registered the area identify
in 2009, that the mark CREEL has appeared on its masthead for a lot of&#13
yrs, that it has served lots of U.S.-primarily based clients and has shut&#13
associations with a selection of best U.S. law firms. It maintains a&#13
English language web page to industry its companies to future U.S.&#13
clientele. Also, there was no evidence of third-social gathering use of a&#13
CREEL-formative mark in relationship with legal expert services in the&#13

The file displays that the CREEL mark&#13
has been made use of by Applicant substantially solely and&#13
consistently in commerce with the United States in link with&#13
legal companies for at the very least 10 yrs, and there is more&#13
evidence mentioned over that Applicant has achieved recognition by&#13
United States legislation corporations and consumers under the mark CREEL.

The Board observed that applicant’s CREEL mark has obtained&#13
distinctiveness for lawful solutions and is entitled to registration&#13
on the Principal Sign-up beneath Segment 2(f).

The written content of this report is meant to provide a common&#13
information to the subject matter matter. Professional tips ought to be sought&#13
about your certain conditions.

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