Assurant, Inc.

Trademark Trial and Appeal Board

Aug 21, 2013

No. 85494137 (T.T.A.B. Aug. 21, 2013)

Mailed:
August 21, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Assurant, Inc.
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Serial No. 85494137
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Marsha Stolt of Moss & Barnett, P.A. for Assurant, Inc.

Courtney McCormick Alvarez, Trademark Examining Attorney,
Law Office 108 (Andrew Lawrence, Managing Attorney).
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Before Seeherman, Cataldo and Bergsman, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Assurant, Inc. has applied to register PREAUTHORIZED
DEBIT PROTECTION in standard characters as a mark for
services ultimately identified as “underwriting and
administration of payment protection insurance, namely,
insuring payment of preauthorized payments.”1 Applicant has
disclaimed exclusive rights to PROTECTION apart from the

1 Serial No. 85494137, filed December 13, 2011, based on Section
1(b) of the Trademark Act (intent-to-use).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 85494137
2
mark as shown. Request for reconsideration, filed January
10, 2013.
The examining attorney issued a final refusal of
registration pursuant to Section 2(e)(1) of the Trademark
Act, 15 U.S.C. § 1052(e)(1), on the ground that applicant’s
mark is merely descriptive of the identified services.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1), if it forthwith
conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the
goods or services. 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 to be merely descriptive; rather, it is
sufficient that the term describes one significant
attribute, function or property of the goods or services.
In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); 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 on or in
connection with the goods or services, and the possible
Ser. No. 85494137
3
significance that the term would have to the average
purchaser of the goods or services because of the manner of
its 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).
In support of her position that the mark is
descriptive, the examining attorney has submitted
definitions of the following terms:
Preauthorized payment: arrangement (such as
direct debit payment or standing order) under
which a bank is authorized by a customer to debit
his or her account for a regular bill’s amount or
for loan installments
BusinessDictionary.com

Debit: the recording or an entry of debt in an
account
Dictionary.com

Protection: Insurance. Coverage
(Dictionary.com, based on Random House Dictionary
© 2012); coverage for loss provided by insurance
(Merriam-Webster’s Dictionary of Law © 1996.

In addition, the examining attorney has submitted a
number of articles in which “preauthorized debit” is used
as a term of art:2
“Preauthorized Debit Definition” (title)
Description: A preauthorized debit is an
arrangement to withdraw funds directly from a
bank account at predetermined intervals, such as
monthly.

2 We have given no weight to articles from other countries or by
entities located in other countries, as they do not necessarily
show the meaning of the term “preauthorized debit” in the United
States.
Ser. No. 85494137
4
www.ehow.com

Stopping a Pre-authorized Debit From Being Paid
(title)
At the time we are retained, clients frequently
tell us that they have authorized monthly debits
from their checking account by debt collectors….
Gillman & Gillman, LLC
http://gillmanandgillman.com

How can I stop a pre-authorized debit from being
paid from my share draft account? (title)
MyCreditUnion.gov, Consumer Assistance Center
http://ncua.parature.com

Answers about Automatic Withdrawals (title)
How can I stop a pre-authorized debit from being
paid from my checking account?
Comptroller of the Currency, Administrator of
National Banks, U.S. Department of the Treasury
www.helpwithmybank.gov

Direct debit (title of article)
A direct debit or direct withdrawal is a
financial transaction in which one person
withdraws funds from another person’s bank
account. … It is also called pre-authorized debit
(PAD) or pre-authorized payment (PAP).
Wikipedia
http://en.wikipedia.org

Applicant has agreed that the examining attorney’s
submissions “show descriptive uses of the term
“preauthorized debit” in connection with banking services.”
Response filed July 3, 2012. We would go further: the
evidence shows that “preauthorized debit” is a term of art
in the credit field.3 Further, the evidence shows that

3 We note that some of the articles use a hyphen in the term,
i.e., “pre-authorized.” The lack of a hyphen in applicant’s mark
does not affect the meaning of the word. Not only are there
articles that use “preauthorized” without a hyphen, but the
Ser. No. 85494137
5
“protection” means “coverage” when used in the context of
insurance services, and applicant has admitted the
descriptiveness of this word in connection with its
services by its disclaimer in response to the examining
attorney’s requirement.
Applicant’s services are identified in its application
as “underwriting and administration of payment protection
insurance, namely, insuring payment of preauthorized
payments.” When these terms are combined in the phrase
PREAUTHORIZED DEBIT PROTECTION, consumers viewing the mark
in connection with the identified services will immediately
understand that a significant characteristic of the
services is to insure payment of preauthorized debits. As
a result, the mark PREAUTHORIZED DEBIT PROTECTION is merely
descriptive of the insurance services.
Applicant argues that PREAUTHORIZED DEBIT PROTECTION
“could suggest that consumers protect themselves from
unforeseen circumstances by preauthorizing debits from an
account, or that consumers protect the payments of debits
from an account that have already been authorized, or that
a financial institution protect itself in connection with

presence or absence of a hyphen would not affect a customer’s
understanding of the word. Applicant does not argue to the
contrary.

Ser. No. 85494137
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payments that have been authorized by customers,” and that
“[a] potential customer would not know what services are
being offered under the Applicant’s mark until it
investigates further.” Brief, p. 7. However, as noted
above, 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. When viewed in
the context of applicant’s identified services, the mark
immediately tells consumers of this characteristic of the
insurance services, i.e., that they provide protection to
the consumer by covering preauthorized debits.
Applicant also contends that its mark is not merely
descriptive because no one else uses the term
“preauthorized debit protection.” However, as the
examining attorney has pointed out, the fact that a party
is the first or only user of a term does not mean that the
term is not merely descriptive. See In re Phoeseon Tech.,
Inc., 103 USPQ2d 1822 (TTAB 2012). That is especially
pertinent in the present situation, as applicant has stated
that its service is “a unique new product offering in the
insurance industry.” Brief, p. 10. When third parties do
start to provide such an insurance service, they should not
be precluded from using a term that describes it simply
because applicant began offering the service first.
Ser. No. 85494137
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Finally, applicant points to other marks that have
been registered on the Principal Register, claiming that
its mark is comparable. The particular mark that applicant
identifies in its brief is Registration No. 3464259 for
COMMERCE CREDIT PROTECTION for “financial services, namely,
debt protection programs featuring debt cancellation, where
all or part of the debt will be canceled.” This
registration does not support applicant’s position, in that
it includes a disclaimer of CREDIT PROTECTION, thereby
indicating that this phrase is merely descriptive. Unlike
applicant’s mark, the registered mark includes the
suggestive term COMMERCE, and the inclusion of this term is
presumably the reason this mark was found to be
registrable. However, applicant’s mark PREAUTHORIZED DEBIT
PROTECTION, as previously discussed, includes the
descriptive term of art “preauthorized debit,” and
combining this term with the descriptive term PROTECTION
results in a mark that as a whole is merely descriptive.
Decision: The refusal of registration is affirmed.