Allied Resident/Employee Screening Service, Inc.

Trademark Trial and Appeal Board

May 18, 2004

No. 76229388 (T.T.A.B. May. 18, 2004)

Mailed: May 18, 2004
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________
In re Allied Resident/Employee Screening Service, Inc.
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Serial No. 76229388
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Michael R. Clogan of Strasburger & Price, LLP for Allied
Resident/Employee Screening Service, Inc.
Susan Kastriner Lawrence, Trademark Examining Attorney, Law
Office 116 (Meryl L. Hershkowitz, Managing Attorney).
_______
Before Seeherman, Walters and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On March 22, 2001, Allied Resident/Employee Screening
Service, Inc. (a Texas corporation) filed an application to
register the mark RESIDENTCHECK on the Principal Register
for services then identified as “conducting background
investigations for others” in International Class 35. The
application is based on applicant’s claimed date of first
use and first use in commerce of January 24, 2001.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76229388
2
The Examining Attorney required that applicant amend
the identification of services due to indefiniteness
thereof and classification in two classes; and refused
registration on the ground that applicant’s mark,
RESIDENTCHECK, is merely descriptive of applicant’s
services under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1).
Applicant ultimately submitted identifications of
services that read as follows: “conducting background
investigation[s] for others of potential residents credit
history” in International Class 36; and “conducting
background investigations for others, namely, reviewing
employment history and criminal background” in
International Class 42, both of which were accepted by the
Examining Attorney.1
1 Applicant’s further proposed amendment to the International
Class 36 services was not accepted by the Examining Attorney.
Neither applicant nor the Examining Attorney treated this as an
issue on appeal before the Board. The Board will determine this
case based on the identifications of services set forth above.
In addition, applicant offered to divide out the International
Class 36 services and seek registration of the mark on the
Supplemental Register for those services. (Applicant’s April 30,
2003 response, pp. 4-5.) The Examining Attorney explained, inter
alia, in her July 17, 2003 Office action that the proper
procedure (which includes a fee) for seeking a divisional
application was not followed by applicant and therefore the
request to divide (and thus seek registration of the mark for the
International Class 36 services on the Supplemental Register) was
denied. Applicant did not further pursue this matter. Thus, the
only issue before the Board is whether the mark RESIDENTCHECK is
merely descriptive of applicant’s services as identified herein
in International Classes 36 and 42.
Ser. No. 76229388
3
When the refusal to register the mark as merely
descriptive was made final, applicant appealed to this
Board. Both applicant and the Examining Attorney have
filed briefs; an oral hearing was not requested by
applicant.
The test for determining whether a mark is merely
descriptive is whether the term or phrase immediately
conveys information concerning a significant quality,
characteristic, function, ingredient, attribute or feature
of the goods or services in connection with which it is
used. See In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215 (CCPA 1978); In re Eden Foods Inc., 24 USPQ2d 1757
(TTAB 1992); and In re Bright-Crest, Ltd., 204 USPQ 591
(TTAB 1979). Further, it is well-established that the
determination of mere descriptiveness must be made not in
the abstract, but in relation to the goods or services for
which registration is sought, the context in which the term
or phrase is being used on or in connection with those
goods or services, and the impact that it is likely to make
on the average purchaser of such goods or services. See In
re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); and
In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991).
Consequently, “[w]hether consumers could guess what the
product [or service] is from consideration of the mark
Ser. No. 76229388
4
alone is not the test.” In re American Greetings Corp.,
226 USPQ 365, 366 (TTAB 1985). Rather, the question is
whether someone who knows what the goods or services are
will understand the term or phrase to convey information
about them. See In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990).
Applicant essentially contends that the mark must be
looked at as a whole and not dissected into its parts, and
when so analyzed the mark is suggestive; that imagination
and thought are required to understand the meaning of the
mark in relation to the services; that the terms “resident”
and “check” each have multiple meanings (e.g., “resident”
can refer to “not migratory” or “a physician serving a
residency,” and “check” can refer to “exposure of a chess
king to an attack” or “a written order directing a bank to
pay money as instructed”); that the USPTO has allowed
registration of marks structurally similar to applicant’s
mark (e.g., CARCHECK, SHELF-CHECK, SCHOOLCHECK); that the
mark clearly does not merely describe the International
Class 42 services because those services do not specify
that the background investigations are of potential
residents; and that doubt is resolved in applicant’s favor.
Essentially, the Examining Attorney’s position is that
applicant’s mark, RESIDENTCHECK, consists of two
Ser. No. 76229388
5
descriptive words; that neither the combination of the two
words nor the order thereof creates a unique or incongruous
mark; and that the mark merely describes the purpose of
both of applicant’s services -- its investigations of
potential residents’ credit histories and its
investigations of employment histories and criminal
background. The Examining Attorney correctly asserts that
there is no requirement that a mark describe all attributes
of a product or service in order to be merely descriptive
thereof. See In re Quik-Print Copy Shop, Inc., 616 F.2d
523, 205 USPQ 505 (CCPA 1980); In re Richardson Ink
Company, 511 F.2d 559, 185 USPQ 46 (CCPA 1975); and In re
Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d
unpub’d but appearing at 871 F.2d 1097, 10 USPQ2d 1879
(Fed. Cir. 1989). See also, 2 J. Thomas McCarthy, McCarthy
on Trademarks and Unfair Competition, §11:51 (4th ed.
2001).
The Examining Attorney has made of record the
following definitions from The American Heritage Dictionary
of the English Language (Third Edition 1992):
(1) resident noun …2. one who
resides in a particular place
permanently or for an extended
period…; adjective 1. dwelling in
a particular place; residing….;
and
Ser. No. 76229388
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(2) check noun …4. the act or an
instance of inspecting or testing,
as for accuracy or quality;
examination… 5. a standard for
inspecting or evaluating; a test…;
verb transitive …5. to inspect so
as to determine accuracy, quality,
or other condition; test… 6. to
verify by consulting a source or
authority….;
verb intransitive …3. to be
verified or confirmed; pass
inspection… 4. to make an
examination or investigation;
inquire….
The Examining Attorney also refers to (i) applicant’s
specimen of record (a printout of a page from its web
site), and (ii) printouts of other pages from applicant’s
web site put into the record, one of which includes a
“button” titled “Resident Screening,” and all showing uses
such as the following:
Welcome to ResidentCheck!
Allied’s ResidentCheck service provides
detailed credit and background
information and online leasing
recommendations. …
Resident Screening
…When it comes to screening prospective
residents, let Allied Resident
Screening help you increase your NOI
and manage your risk.
Applicant submitted a typed listing of 21 registered
marks, all including the word “check,” and asserted that
none is under Section 2(f) of the Trademark Act, none is on
Ser. No. 76229388
7
the Supplemental Register, and none includes a disclaimer
of the term “check.”2 The Examining Attorney made of record
numerous third-party registrations wherein the term “check”
was disclaimed or the registrations were on the
Supplemental Register.
Based on the record before us, we find that consumers
will immediately understand the ‘RESIDENTCHECK’ mark to
refer to a primary purpose of both of applicant’s
background investigation services, namely, investigating or
checking the credit, employment and criminal backgrounds of
persons who have applied to rent particular apartments or
other types of dwellings.
We agree with the Examining Attorney that the
combination of the words RESIDENT and CHECK into
“RESIDENTCHECK” does not create a unique mark with a non-
descriptive meaning. Rather, the term immediately
describes the purpose of both services in connection with
which applicant uses its mark. The term immediately
2 Normally, typed listings are not sufficient to make third-party
registrations of record. See In re Duofold, Inc., 184 USPQ 638
(TTAB 1974). However, in the final Office action, the Examining
Attorney did not explain that a typed list is insufficient to
make registrations of record; instead, the Examining Attorney
discussed the third-party registrations on the merits.
Therefore, the Examining Attorney waived her objection (raised
for the first time in her brief on appeal at footnotes 1 and 3)
to applicant’s submission of a typed list of third-party
registrations. We have considered applicant’s list of third-
party registrations for whatever probative value it may have.
Ser. No. 76229388
8
informs consumers that applicant’s services (conducting
investigations of potential resident’s credit histories and
conducting investigations of employment histories and
criminal background) involve investigations of potential
resident’s credit and other background histories.
We are of the opinion that the term RESIDENTCHECK is
no more than a combination of two merely descriptive terms,
with the composite mark remaining merely descriptive. See
In re Omaha National Corporation, 819 F.2d 1117, 2 USPQ2d
1859 (Fed. Cir. 1987) (FIRSTIER (in stylized form) merely
descriptive for banking services). The fact that the
International Class 42 services are not limited to checking
background of “potential residents” is not determinative.
While applicant’s identification for this international
class of services is not limited to “potential residents,”
it does not exclude such persons as the subjects of the
background investigations and, therefore, the
identification encompasses employment and criminal
background checks of potential residents. As such, the
term immediately and without conjecture or speculation
describes a significant purpose of the International Class
42 services as well as those in International Class 36.
Applicant’s mark, RESIDENTCHECK, considered as a
whole, when applied to applicant’s services, is merely
Ser. No. 76229388
9
descriptive of a significant purpose of the services
(providing background checks of potential residents). See
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987)
(APPLE PIE merely descriptive for potpourri); In re Omaha
National Corporation, supra; In re Cryomedical Sciences
Inc., 32 USPQ2d 1377 (TTAB 1994) (SMARTPROBE merely
descriptive of disposable cryosurgical probes); In re
Copytele Inc., 31 USPQ2d 1540 (TTAB 1994)(SCREEN FAX PHONE
merely descriptive of facsimile terminals employing
electrophoretic displays); and In re Truckwriters Inc., 219
USPQ 1227 (TTAB 1983), aff’d unpub’d Appeal No. 84-689
(Fed. Cir., November 1, 1984) (requirement for a disclaimer
of the merely descriptive term “writers” for insurance
agency services affirmed).
We find that the case cited by and most strongly
argued by applicant is readily distinguishable from the
facts herein. Particularly, the nature of that mark is
significantly different from applicant’s mark in that
applicant’s mark has a readily understood meaning. In the
case of In re TBG Inc., 229 USPQ 759 (TTAB 1986) the mark
SHOWROOM ONLINE for “leasing computer databases and video
disks in the field of interior furnishings and related
products of others” was held not merely descriptive because
Ser. No. 76229388
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the mark “has no obvious meaning in relation to applicant’s
services.”
With respect to the list of third-party registrations
submitted by applicant, this evidence is not persuasive of
a different result in this case. While uniform treatment
under the Trademark Act is an administrative goal, the
Board’s task in an ex parte appeal is to determine, based
on the record before us, whether applicant’s mark is merely
descriptive. As often noted by the Board, each case must
decided on its own merits. We are not privy to the records
of the third-party registration files and, moreover, the
determination of registrability of those particular marks
by the Trademark Examining Attorneys cannot control our
decision in the case now before us. See In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)
(“Even if some prior registrations had some characteristics
similar to [applicant’s application], the PTO’s allowance
of such prior registrations does not bind the Board or this
court.”)
Decision: The refusal to register on the ground that
the mark is merely descriptive under Section 2(e)(1) of the
Trademark Act is affirmed as to both classes of services.