In a 55-site view, the Board dismissed this eight-calendar year-aged
TTABattle among two sets of Mexican attorneys around registration of
the marks CREEL and CREEL,
GARCÍA-CUÉLLAR, AIZA Y
ENRÍQUEZ for “authorized companies.”
Opposer alleged that both of those marks are misleading or deceptively
misdescriptive beneath Sections 2(a) and 2(e)(1) of the Lanham Act,
falsely counsel a connection beneath Portion 2(a), and comprise the
title of a dwelling unique in violation of Area 2(c), and
additional that the CREEL mark is mostly simply a surname beneath
Part 2(e)(4). The Board identified that opposer failed to make out a
prima facie situation as to its statements, other than for the surname assert.
Opposer proved that CREEL is largely simply a surname, but
applicant overcame that refusal by way of evidence of obtained
distinctiveness. This summary will try out to hit the superior
Creel Abogados, S.C. and Carlos Creel Carrera v. Creel,
García-Cuéllar, Aiza y Enríquez,
S.C., Opposition No. 91217047 (Might 27, 2022) [not
precedential] (Impression by Choose Christopher Larkin).
Opposer Carlos Creel is a previous associate of the applicant regulation
agency, which was founded in 1936 by his father. Carlos Creel still left
the firm in 2013, but the business ongoing to run underneath the identify
Creel, García-Cuéllar, Aiza, y Enríquez and to
use logos that emphasize the term CREEL.
Part 2(a) Deceptiveness and Segment 2(e)(1) Deceptive
Misdescriptiveness: Opposers argued that the opposed
marks falsely show that a law firm named “Creel” is a
spouse in applicant’s company and shoppers will very likely believe that
that the applicant regulation organization is affiliated with opposers.
Alternatively, opposers argued that the time period CREEL is
misdescriptive as to a character, aspect, and good quality of
applicant’s lawful products and services. The Board noted two
“elementary problems” with these arguments: to start with, the
absence of authorized authority that a surname may possibly be basically descriptive
of products and providers and 2nd, the absence of evidence to establish
that CREEL is basically descriptive of lawful company, as effectively as other
things of these promises.
Opposers’ statements relating to general public notion of the mark
CREEL ended up centered only on legal argument. “The history simply just
lacks ‘facts and evidence’ displaying what customers are
very likely to consider when they see” the opposed mark in link
with legal solutions. Opposers’ “utter failure” to
create a prima facie situation doomed equally claims.
Area 2(a) Wrong Connection and Portion 2(c) Deficiency of
Consent: Opposers argued that Carlos Creel is
adequately nicely-recognized that buyers will consider that he is in
some way connected with applicant. Nonetheless, there was no proof
with regards to his prominence as a attorney. In quick, opposers
“totally unsuccessful to set up a prima facie circumstance in their
circumstance in chief.”
Area 2(e)(4) Primarily Just a
Surname: The Board located that, whilst
“Creel” is not a popular surname, it is not so rare as to
be not probably to be perceived as a surname in connection with authorized
products and services. The simple fact that quite a few of the folks concerned in this
saga are named “Creel” supports that acquiring, as do
census listings and information articles about persons named
Applicant argued that “creel” has non-surname
meanings, notably in the contexts of fishing and weaving, but
the Board pointed out that the phrase will have to be thought of in the
context of the goods and companies at challenge. The Board agreed with
opposers that “Applicant did not identify its legislation organization soon after a
fishing rod . . . or a weaving loom.” Applicant followed the
prevalent observe of retaining the name of a retired or departed
lover (Carlos Creel’s father) in the law agency name.
Obtained Distinctiveness: The Board
exercised its discretion in allowing Applicant to include a declare of
obtained distinctiveness at ultimate selection, given that the issue was
joined in the pleadings and was briefed by the parties. The Board
observed that, commonly, 5 years’ use alone is not more than enough
to establish acquired distinctiveness of a surname. Applicant’s
testimony founded that it registered the area identify creel.mx
in 2009, that the mark CREEL has appeared on its masthead for a lot of
yrs, that it has served lots of U.S.-primarily based clients and has shut
associations with a selection of best U.S. law firms. It maintains a
English language web page to industry its companies to future U.S.
clientele. Also, there was no evidence of third-social gathering use of a
CREEL-formative mark in relationship with legal expert services in the
The file displays that the CREEL mark
has been made use of by Applicant substantially solely and
consistently in commerce with the United States in link with
legal companies for at the very least 10 yrs, and there is more
evidence mentioned over that Applicant has achieved recognition by
United States legislation corporations and consumers under the mark CREEL.
The Board observed that applicant’s CREEL mark has obtained
distinctiveness for lawful solutions and is entitled to registration
on the Principal Sign-up beneath Segment 2(f).
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