Allianz Life Insurance Company of North America

Trademark Trial and Appeal Board

Mar 11, 2005

No. 75587761 (T.T.A.B. Mar. 11, 2005)

Mailed: 3/11/2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Allianz Life Insurance Company of North America
________

Serial No. 75587761
_______

Eric D. Paulsrud of Leonard, Street and Deinard for
applicant.

Russ Herman, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______

Before Quinn, Hohein and Rogers, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Allianz Life Insurance
Company of North America to register the mark WEALTHCARE
for “insurance services, namely, underwriting, claims
processing, claims administration, consultation and
brokerage, in the fields of health care insurance, life
insurance and annuities.”1

1 Application Serial No. 75587761, filed November 12, 1998, based
on an allegation of a bona fide intention to use the mark in
commerce. Applicant subsequently filed an amendment to allege
use wherein applicant alleged first use of the mark anywhere and
first use in commerce on February 2, 1999.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75587761
2
The trademark examining attorney ultimately refused
registration under Section 2(e)(1) of the Trademark Act on
the ground that applicant’s mark, when used in connection
with applicant’s services, is generic.
Applicant, while maintaining that the mark is
inherently distinctive, asserted, in the alternative, a
claim under the provisions of Section 2(f) of the Trademark
Act that its mark has acquired distinctiveness for its
services in commerce. The examining attorney, in response
to applicant’s alternative claim, simply maintained that a
claim of acquired distinctiveness was futile in view of the
genericness of the term sought to be registered. The
examining attorney took no explicit position on the
sufficiency of the Section 2(f) evidence in the event that
the term is found not generic, but rather merely
descriptive. In support of the refusal, the examining
attorney introduced excerpts of articles retrieved from the
NEXIS database.
When the refusal of genericness under Section 2(e)(1)
was made final, applicant appealed. Applicant and the
examining attorney filed briefs. An oral hearing was not
requested.
The essence of applicant’s argument is that the record
lacks clear evidence of genericness. Applicant asserts
Ser No. 75587761
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that there is no evidence that WEALTHCARE is the name of
the genus of applicant’s services, or that the public
recognizes and refers to the genus of the identified
services by the name WEALTHCARE. Applicant, although
acknowledging that the examining attorney’s NEXIS evidence
shows “occasional use” of the terms “wealth care” and
“wealthcare” in a generic/descriptive manner, points out
that many of the references are from foreign publications.
Further, applicant indicates that none of the references
involve the type of insurance services offered by
applicant. In this connection, applicant states that the
examining attorney failed to support his statements that
“goal based financial advice” and “professional management
and planning of one’s financial portfolio” “could very well
include information about insurance services.” Applicant
highlights the fact that the record is devoid of evidence
showing applicant or any third party in the field using the
term in a generic manner or descriptive manner in
connection with insurance services. Applicant also argues
that the term is not even merely descriptive, but rather
is, at worst, only suggestive. In the event that the term
WEALTHCARE is found to be merely descriptive, applicant
alternatively claims the benefits of Section 2(f), pointing
to applicant’s sales and advertising efforts in connection
Ser No. 75587761
4
with the proposed mark. In support of its position,
applicant submitted the declarations of two officers,
together with promotional and informational materials.
The examining attorney maintains that the term “wealth
care” is the name of “a major business category that
includes income tax planning, estate planning, retirement
planning and insurance.” According to the examining
attorney, “wealth care” is “a term of art routinely used in
the financial and insurance industries to identify products
and services designed to safeguard investment assets while
still providing a maximum investment return.” The
examining attorney claims that “[a]lthough not voluminous,
the NEXIS evidence of record provides sufficient proof that
the public understands WEALTHCARE to refer to the genus of
services identified in the application.”
A procedural matter requires our attention, however,
before turning to the merits of this appeal. The first
refusal raised by the examining attorney was based on mere
descriptiveness under Section 2(e)(1). In response,
applicant argued against the refusal, maintaining that its
proposed mark is inherently distinctive. Nonetheless, in
the same response, applicant also raised its alternative
claim of acquired distinctiveness. The examining attorney,
in his Office action dated April 25, 2003, stated that “the
Ser No. 75587761
5
mark is so highly descriptive of the goods [sic] and
services offered that a request for registration pursuant
to Section 2(f) of the Act must be denied....The term has
acquired generic significance and cannot be rescued by
proof of secondary meaning regardless of the amount of
evidence.” After applicant filed a response, the examining
attorney issued a final refusal based on genericness. In
his appeal brief, the examining attorney reiterated that
“[s]ince applicant’s mark is the common descriptive name of
the services provided, it is disqualified from registration
under Section 2(f) of the Trademark Act.”
When an applicant claims acquired distinctiveness in
the alternative, the examining attorney should treat
separately the questions of (1) the underlying basis of
refusal; and (2) assuming the matter is determined to be
otherwise registrable on a showing of acquired
distinctiveness, whether acquired distinctiveness has
actually been established. TMEP §1212.02(c) (3d ed. 2d rev.
May 2003). In the present case, the examining attorney did
not follow the proper procedure. In maintaining the
genericness refusal, the examining attorney essentially
indicated that no amount of Section 2(f) evidence could
overcome the refusal. What the examining attorney failed to
do was to consider the possibility that the mark would be
Ser No. 75587761
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found not to be generic, but rather merely descriptive, and
then further consider the sufficiency of the evidence of
acquired distinctiveness.
Given the examining attorney’s original refusal and his
later position on genericness, it is apparent that, at best,
the examining attorney would view applicant’s proposed mark
as highly descriptive. In such cases, a greater evidentiary
showing must be made in order to establish acquired
distinctiveness. See Yamaha International Corp. v. Hoshino
Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1008 (Fed.
Cir. 1988). It is reasonable to presume, therefore, that
the examining attorney would view the Section 2(f) evidence
as insufficient to overcome his view that the proposed mark
is highly descriptive. In view thereof, and in the
interests of judicial economy, we will also, in this
decision, consider the issues of mere descriptiveness and
the sufficiency of applicant’s claim of acquired
distinctiveness.
Genericness
A designation is a generic name if it refers to the
class or category of goods and/or services on or in
connection with which it is used. In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir.
Ser No. 75587761
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2001), citing H. Marvin Ginn Corp. v. International
Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ
528 (Fed. Cir. 1986). The test for determining whether a
designation is generic is its primary significance to the
relevant public. Section 14(3) of the Trademark Act; In re
American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832
(Fed. Cir. 1999); Magic Wand Inc. v. RDB Inc., 940 F.2d
638, 19 USPQ2d 1551 (Fed. Cir. 1991); and H. Marvin Ginn
Corp. v. International Association of Fire Chiefs, Inc.,
supra. The United States Patent and Trademark Office has
the burden of establishing by “clear evidence” that a
designation is generic and thus unregistrable. In re
Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141 (Fed. Cir. 1987). Evidence of the
relevant public’s understanding of a designation may be
obtained from any competent source, including testimony,
surveys, dictionaries, trade journals, newspapers, and
other publications. In re Northland Aluminum Products,
Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985).
At the outset, we take judicial notice of the meanings
of the terms comprising applicant’s proposed mark. The
term “wealth” is defined as “large possessions; abundance
of things that are objects of human desire; all property
that has a money value or an exchangeable value.” The term
Ser No. 75587761
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“care” means “charge, supervision, management;
responsibility for or attention to safety or well-being.”
Webster’s Third New International Dictionary (unabridged
ed. 1993).
We first turn to consider the category or genus of
services and, in this connection, it is imperative to
understand the specific nature of the services rendered
under the proposed mark. Applicant’s services are recited
as “insurance services, namely, underwriting, claims
processing, claims administration, consultation and
brokerage, in the fields of health care insurance, life
insurance and annuities.” Applicant’s promotional
materials reveal that the product sold via its services
under the mark is a single premium immediate annuity; the
annuity is protected from risk, and monthly payments to the
insured are guaranteed until death. If death occurs prior
to receiving income equal to the insured’s paid premium,
then payments are guaranteed to continue to the insured’s
heirs. Applicant lists the benefits to consumers of its
single premium immediate annuity as follows: a guaranteed
retirement fund totally protected from risk; absolutely no
possibility of outliving one’s income; a way for one’s
income to keep pace with the stock market; the potential
for up to 60% additional income if disability or serious
Ser No. 75587761
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illness strikes; and a guarantee that all unused funds will
be passed on to one’s heirs.
Based on the record, we find that applicant’s genus of
services may be broadly characterized as “insurance
services.” More specifically, the genus of applicant’s
services is accurately identified by the recitation of
services in the application.
We next must determine whether the term WEALTHCARE is
understood by the relevant public primarily to refer to
that genus of services. The relevant purchasers are
ordinary consumers of insurance services, including such
services which involve annuities.
The only evidence relied upon by the examining
attorney in support of the genericness refusal are excerpts
of articles retrieved from the NEXIS database. Many of the
excerpts (by our count, fifteen of the thirty-three
stories) are from foreign publications or from wire
services. As for the foreign publications, we have no idea
whether or not the publications were distributed in the
United States such that the stories therein had any
exposure to prospective consumers in this country. In re
Men’s International Professional Tennis Council, 1 USPQ2d
1917, 1918 (TTAB 1986). Further, as to the wire services,
excerpts of wire service reports or releases, in
Ser No. 75587761
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appropriate circumstances, can be accorded some probative
value. In re Cell Therapeutics Inc., 67 USPQ2d 1795, 1798
(TTAB 2003). There is nothing in the record, however, to
indicate that these wire service reports have been
broadcast or otherwise distributed so as to reach
appreciable members of the relevant public. Accordingly,
the wire excerpts of record have much less probative value
than the excerpts appearing in newspapers and magazines.
In re Men’s International Professional Tennis Council,
supra at 1918 n.5.
The following representative excerpts comprise the
examining attorney’s most probative NEXIS evidence:
The conference highlighted the
opportunities in PFP but also explained
the downside of the wealth-care arena.
(Accounting Today, January 29, 2001)

Today, however, let’s focus on a
related “Health-Care/Wealth-Care”
topic, long-term-care insurance.
(Capital, April 11, 2000)

Our wealth care pledge provides
complete coverage, no deductibles; go
to the agent of your own choosing.
(Pittsburgh Post-Gazette, October 22,
1994)

1st Global uses 10 areas of wealth care
concern to accomplish this including
tax planning, investment planning,
retirement planning, disability and
income protection....
(Practical Accountant, September 2003)

Ser No. 75587761
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....how to successfully build a wealth
care business into their existing
practice.
(Accounting Today, July 21, 2003)

It will focus on what Carter calls
“wealth care” products....
(The State Journal, August 27, 2001)

Contrary to the common perception of
most accountants, a comprehensive
wealth care practice entails much more
than asset management services.
(Accounting Today, July 23, 2001)

“We plan to offer sophisticated and
proactive ‘wealth care’ services to
families....”
(Charleston Daily Mail, July 13, 2001)

The second, entitled “The Wealth Care
Kit,” discusses insurance, income tax
planning and estate planning, among
other issues.
(Newsday, May 19, 2002)

A review of applicant’s promotional materials shows
that applicant consistently uses the term WEALTHCARE with
initial capital letters, and that applicant’s use is more
in the manner of a service mark than a generic term: “Now
you can be sure your wealth is cared for. There is
WealthCare. WealthCare is a new type of single premium
immediate annuity. WealthCare offers benefits not
available from any other plan. WealthCare offers you more
when you need it most. WealthCare. When you care about
your money.” Applicant, in its promotional literature,
Ser No. 75587761
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also states: “You have cared for your assets all your
life. Now, it is time for your assets to care for you.”
In support of its claim of registrability, applicant
submitted the declaration (along with promotional
materials) of Carolyn Cosgrove, the assistant secretary of
applicant’s predecessor in interest (dated March 8, 2000).
The present applicant, that is, the assignee, updated the
information furnished by Ms. Cosgrove by way of the
declaration of Charles Wikelius, a senior vice president of
applicant. The declaration is accompanied by additional
promotional materials. Mr. Wikelius asserts that applicant
offers a line of insurance and annuity products under the
mark WEALTHCARE, and that applicant has used the mark
WEALTHCARE for its insurance services and products in
commerce continuously since at least as early as Februrary
1999. Mr. Wikelius goes on to state that applicant’s
WEALTHCARE insurance products and annuities are now sold
through approximately 800 agents nationwide; that applicant
has received premiums exceeding $80.7 million through the
sale of over 1,100 policies across the country; that
advertising expenditures have been “significant and
ongoing” since the mark was first introduced in 1999; that
applicant now has a family of products available under the
WEALTHCARE brand (including WEALTHCARE ELITE with premiums
Ser No. 75587761
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exceeding $680,000); and that as a result of applicant’s
use and promotional activities involving its mark
WEALTHCARE, consumers recognize the mark as indicating
applicant as the source of its annuities. In this
connection, Mr. Wikelius states that no other company in
the insurance field uses the term WEALTHCARE as a mark for
insurance products or services and that applicant’s use has
been exclusive in the field since February 1999. Mr.
Wikelius further indicated that he is unable to provide the
exact amount applicant has spent advertising the mark and
the services rendered thereunder because applicant does not
account separately for such expenditures.
We find that neither the quality nor the quantity of
the examining attorney’s evidence is of the caliber upon
which to affirm the genericness refusal.2 Under the
applicable case law, the examining attorney’s burden to
establish genericness is not an easy one. Undoubtedly, the
NEXIS evidence herein includes some evidence of what would
appear to be generic or highly descriptive uses. In some
instances, however, the NEXIS evidence is of questionable
value. The context of use of the terms “wealth care” or

2 As noted earlier, the examining attorney himself recognized
that his evidence of genericness is “not voluminous.” (Brief, p.
6).
Ser No. 75587761
14
“Wealth Care” is unclear in certain of the excerpts, that
is, we are unable to determine what exactly the terms are
referring to. Other uses seem to focus on financial
planning, or the term “Wealth Care” is capitalized. One of
the articles (not reproduced above) uses “wealth care” to
refer to hospitals’ practice of giving better medical care
to paying patients. Thus, some of the articles relied upon
by the examining attorney are ambiguous or irrelevant, and
are neutral in our analysis. See Plyboo America Inc. v.
Smith & Fong Co., 51 USPQ2d 1633 (TTAB 1999).
The record is also devoid of direct evidence of any
generic uses of “wealthcare” or “wealth care” by
competitors in the insurance field. Moreover, applicant’s
promotional materials do not show any clear misuse of the
term in a generic manner. Rather, applicant consistently
uses WEALTHCARE in a service mark manner.
Ultimately, if we are to find that WEALTHCARE is
generic, we must conclude that the evidence clearly shows
that the term is understood by the relevant public
primarily to refer to the name of the category of insurance
services offered by applicant. Based on the relatively
sparse record introduced by the examining attorney, we are
unable to conclude that the evidence clearly shows that
Ser No. 75587761
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applicant’s proposed mark is generic. In re Merrill Lynch,
Pierce, Fenner and Smith, Inc., supra.
Mere Descriptiveness
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). A term need not immediately convey an
idea of each and every specific feature of the applicant’s
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
is being used or is intended to be used on or in connection
with those goods or services, and the possible significance
that the term would have to the average purchaser of the
goods or services because of the manner of its use or
Ser No. 75587761
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intended use. That a term may have other meanings in
different contexts is not controlling. In re Bright-Crest,
Ltd., 204 USPQ 591, 593 (TTAB 1979). It is settled that
“[t]he question is not whether someone presented with only
the mark could guess what the goods or services are.
Rather, the question is whether someone who knows what the
goods and services are will understand the mark to convey
information about them.” In re Tower Tech Inc., 64 USPQ2d
1314, 1316-17 (TTAB 2002); see also In re Patent &
Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998);
In re Home Builders Association of Greenville, 18 USPQ2d
1313 (TTAB 1990); and In re American Greetings Corporation,
226 USPQ 365 (TTAB 1985).
Although we have determined that the NEXIS evidence
falls short of clearly showing the genericness of the term
WEALTHCARE for applicant’s insurance services, we find that
the evidence is sufficient to show the highly descriptive
nature of the term for such services. Applicant assures
prospective purchasers that, by availing oneself of
applicant’s services, “your wealth is cared for.” The term
WEALTHCARE is merely descriptive of a function or purpose
of applicant’s insurance services, that is, to care for or
manage the insured’s wealth. There is nothing in the mark
that is incongruous or ambiguous, nor is there anything
Ser No. 75587761
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which would require the exercise of imagination, cogitation
or mental processing or necessitate the gathering of
further information in order for the highly descriptive
significance of the term to be readily apparent to
purchasers of applicant’s insurance services.
Further, we note that the NEXIS excerpts of record
provide more support for a descriptiveness refusal than
they do for the genericness refusal. That is, the evidence
has to be both clear and specifically indicate use of the
proposed mark as the name of a class of services for it to
establish that the proposed mark is generic. On the other
hand, the evidence supports a descriptiveness refusal even
when it illustrates various descriptive meanings, because
it shows that consumers are predisposed to view the term as
having one of the various descriptive connotations,
depending on the context of use.
Acquired Distinctiveness
In view of our finding that applicant’s mark is merely
descriptive, we turn to applicant’s alternative claim of
acquired distinctiveness under Section 2(f). On the
Section 2(f) issue, applicant has the burden of proving
that its designation has acquired distinctiveness. In re
Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295
(CCPA 1954)(“[T]here is no doubt that Congress intended
Ser No. 75587761
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that the burden of proof [under Section 2(f)] should rest
upon the applicant”). “[L]ogically that standard becomes
more difficult as the mark’s descriptiveness increases.”
Yamaha International Corp., supra at 1008. In this case,
that standard is difficult to meet in view of the highly
descriptive nature of applicant’s term.
As noted above, applicant submitted the declaration of
Mr. Wikelius, a senior vice president of applicant. Given
that the term WEALTHCARE is highly descriptive when used in
connection with applicant’s services, we find that the
totality of the Section 2(f) evidence is insufficient to
establish acquired distinctiveness.
Applicant’s revenues in the form of premium payments
suggest that applicant has enjoyed some relatively modest
degree of success. It is difficult, however, to accurately
gauge the level of this success in the vast insurance field
in the absence of additional information such as
applicant’s market share or how it ranks in terms of sales
in the industry. Standing alone, the total premium figures
(around $81 million) and number of insureds (about 1,100)
appear to be less than impressive in the large insurance
field. In any event, the premiums paid show only the
popularity of applicant’s single payment immediate
annuities, not that relevant customers of such insurance
Ser No. 75587761
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services have come to view WEALTHCARE as applicant’s
source-identifying mark. In re Bongrain International
Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990); and
In re Recorded Books Inc., 42 USPQ2d 1275 (TTAB 1997).
Further, although applicant states that it has extensively
promoted its services, no figures relating to expenditures
have been submitted (and, indeed, such figures are not
separately kept for applicant’s mark). Lastly, applicant’s
proposed mark has been in use since only 1999, a relatively
short period of time.
We conclude that the evidence is insufficient to
support registration of applicant’s highly descriptive mark
on the Principal Register pursuant to the provisions of
Section 2(f). Given the highly descriptive nature of
WEALTHCARE for applicant’s insurance services, much more
evidence (especially in the form of direct evidence from
customers) than what applicant has submitted would be
necessary to show that the mark has become distinctive of
applicant’s services. That is to say, the greater the
degree of descriptiveness, the greater the evidentiary
burden on the applicant to establish acquired
distinctiveness. Yamaha International Corp. v. Hoshino
Gakki Co., supra; and In re Merrill Lynch, Pierce, Fenner &
Smith, Inc., supra.
Ser No. 75587761
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Decision: The refusal to register on the ground of
genericness is reversed. The refusal to register on the
ground of mere descriptiveness is affirmed, and we find
that applicant has failed to establish acquired
distinctiveness of the term WEALTHCARE for its insurance
services.