Bank Mutual Corp.

Trademark Trial and Appeal Board

Feb 4, 2005

No. 78155909 (T.T.A.B. Feb. 4, 2005)

Hearing: December 1, 2004 Mailed: February 4, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re Bank Mutual Corporation
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Serial No. 78155909
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Robert L. Titley of Quarles & Brady LLP for Bank Mutual
Corporation.

LaVerne T. Thompson, Trademark Examining Attorney, Law Office 116
(Meryl Hershkowitz, Managing Attorney).
_______

Before Chapman, Holtzman and Drost, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Bank Mutual Corporation to
register the mark BANKMUTUAL for "banking services; brokerage
services in the fields of annuities, insurance and mutual funds"
in International Class 36.1
The trademark examining attorney refused registration on the
ground that the mark is merely descriptive of the services under
Section 2(e)(1) of the Trademark Act.

1 Application Serial No. 78155909, filed August 20, 2002, based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 78155909
2
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs.2 An oral
hearing was held.3
The examining attorney contends that each word in BANKMUTUAL
is descriptive of applicant's services and that the combination
does not change the descriptive meaning of the mark as a whole.
The examining attorney reasons that applicant is a bank that
provides mutual funds, and that "the elimination of the term
'fund' from applicant's mark is insignificant" because
applicant's customers would "read into the applicant's mark the
word 'fund' and understand that applicant's mark is the
descriptive term "bank mutual fund." In support of her position,
the examining attorney submitted excerpts of articles obtained
from the Nexis database containing references to "mutual banks"
and "bank mutual funds." The examining attorney also made of
record a definition of "bank" that includes "mutual bank,"4 and

2 Because applicant filed its appeal brief prior to consideration of
its request for reconsideration by the examining attorney, following
the examining attorney's denial of the request for reconsideration, the
Board allowed applicant time to file a supplemental brief, and
applicant did so.

3 The application was assigned to a different examining attorney,
Michael Baird, to argue this case at the hearing.

4 This definition was obtained from an online dictionary located at
http://dictionary.law.com.

Serial No. 78155909
3
included with her appeal brief a definition of "mutual" as
"mutual fund."5
Applicant does not dispute the descriptive meaning of the
terms "bank" or "mutual fund" or even "bank mutual fund" in
relation to mutual fund services offered by a bank. Applicant
contends, however, that "mutual" alone is not the equivalent of,
or synonymous with, "mutual fund" and that the word "fund" should
not be implied in its mark. Applicant points out that its mark
is not "bankmutualfunds" and contends that it would not be
perceived that way. Applicant has attached to its reply brief
relevant pages from Webster's Third New International Dictionary
and The Random House Dictionary of the English Language to show
that unlike the reference supplied by the examining attorney, the
term "mutual" is defined in these dictionaries without reference
to "mutual fund" and that instead, "mutual fund" is defined only
as a separate entry.6
A term is merely descriptive within the meaning of
Section 2(e)(1) if it immediately conveys knowledge of a
quality, characteristic, function, feature, purpose or use of the

5 The American Heritage Dictionary of the English Language (4th ed.
2000) from www.bartleby.com. The Board may properly take judicial
notice of dictionary definitions, including online dictionaries which
exist in printed format. See In re CyberFinancial.Net Inc., 65 USPQ2d
1789, 1791 n.3 (TTAB 2002). See also University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982),
aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

6 Applicant has not provided a copyright or publication date for these
dictionaries. We nonetheless consider them of record.
Serial No. 78155909
4
goods or services with which it is used or intended to be used.
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Moreover, the question of whether a particular term is
merely descriptive must be determined not in the abstract, but in
relation to the goods or services for which registration is
sought. See In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB
1986).
Applicant's services are identified as banking services and
brokerage services in the field of, inter alia, mutual funds,
which would include bank mutual funds. We find that BANKMUTUAL
describes a significant aspect of those services. The term
immediately, and without conjecture, informs banking customers
that applicant's bank features mutual fund products, including
bank mutual funds.
Applicant acknowledges (Reply Brief, p. 2), and the Nexis
excerpts submitted by the examining attorney show, that the term
"bank mutual fund" has a readily understood meaning in relation
to banking services. Some examples of these excerpts are
reproduced below (emphasis added):
The latest and certainly not the last study about bank
mutual funds has shown that most bank customers know that
the Federal Deposit Insurance Corp. doesn't stand behind
mutual funds sold through banks. The Banking Attorney
(December 19, 1994).

The community bank, which has made a strong move into Monroe
County in the last eight years helped introduce the upstate
area to concepts such as the ATM, buying insurance from the
Serial No. 78155909
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bank, check imaging and in-house bank mutual funds. They
all were part of President George Hamlin IV's desire to be
his customers' "primary care physician for financial
affairs." Rochester Democrat and Chronicle (December 7,
2003).

Bank mutual fund operations, one of the industry's most
promising new businesses, are suddenly caught in a
regulatory drumfire. ... The big worry is that the bank
mutual fund boom could go bust if stock and bond markets
drop, hurting both consumers and banks. The American Banker
(June 25, 1993).

In a dismal time for equity markets, bank mutual funds
performed roughly in line with the rest of the fund industry
last year – they were clobbered about as badly. The
American Banker (January 8, 2003).

Last year, bank mutual fund sales fell to $32 billion, their
lowest level since 1995 and 31% below the high water mark of
$46.3 billion posted in 1998. National Underwriter
(December 16, 2002).

Although the mark BANKMUTUAL does not include the word
"fund," in the context of the mark as a whole, and when the mark
is viewed in connection with brokerage services in the field of
mutual funds, including bank mutual funds, the word "fund" would
be understood. The definition of "mutual" as "mutual fund"
obtained by the examining attorney from a 2004 edition of a
standard dictionary is evidence that the word "mutual" itself
(i.e., without the word "fund"), would be perceived in the
context of this brokerage service as referring to a "mutual
fund."7 No imagination would be required by a banking customer

7 As for the dictionaries relied on by applicant that do not include a
definition of "mutual" as "mutual fund," without any copyright or
Serial No. 78155909
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to understand the significance of "mutual" in relation to the
mutual fund product offered by applicant's bank or to make the
transition from "bank mutual" to "bank mutual fund." See, e.g.,
In re Abcor Development Corp., 588 F.2d 811, 813, 200 USPQ 215
(Fed. Cir. 1978) (GASBADGE is merely descriptive of a badge which
detects gaseous pollutants even though the common compound word
would be "gas monitoring badge").
In addition, the term BANKMUTUAL is also merely descriptive
of a type of bank known as a "mutual bank."8
The definition of "bank" submitted by the examining attorney
includes a description of a "mutual bank" as follows: "...Most
banks are so-called 'commercial' banks with broad powers. In the
east and midwest there are some 'savings' banks which are
basically mutual banks owned by the depositors, concentrate on
savings accounts, and place their funds in such safe investments
as government bonds." The following Nexis excerpts similarly
demonstrate the meaning of "mutual bank" as a recognized type of
bank (emphasis added):

publication date for those dictionaries, we cannot presume that they
reflect the public's current perception of the term.

8 Applicant notes that the examining attorney did not specifically rely
on this rationale as a basis for refusing registration under Section
2(e)(1). While the Board's determination is limited to the stated
statutory ground for refusal, the Board need not limit its
determination to the reasons for the refusal set forth by the examining
attorney. See In re D.B. Kaplan Delicatessen, 225 USPQ 342 (TTAB
1985).
Serial No. 78155909
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Throughout the transition from credit union to mutual bank
to commercial bank, Moltzan and his growing staff worked
diligently to get their name out. The Daily Record
(Baltimore, MD) (March 15, 2003).

But Hancock County Savings President and Chief Executive
Officer Harry A. Comm is quick to point out that Hancock
County Savings, as a mutual bank, is as much a product of
its community as its community is a product of it. The
State Journal (February 28, 2003).

The retreat was organized to discuss what had to be done to
keep the bank healthy and the staff's morale high. Many of
the ideas we discussed would be applicable to other
community banks, whether mutual-or stockholder-owned. The
American Banker (October 30, 2002).

BFC began negotiations to make the acquisition in early
1986, contemplating a voluntary supervisory conversion in
which Southeast would convert from a mutual bank to a stock
federal savings bank and become a BFC subsidiary. Mergers &
Acquisitions Litigation Reporter (February 2003).

"The image-what he wanted to make the bank become-is that
people will be banking with us because it's the right thing
to do. ... We're creating this image and this presence:
we're a mutual bank; we can't be bought out; we're locally
controlled." Vermont Business Magazine (January 1, 2003).

Applicant admits that a "mutual bank" refers to a type of
bank (brief, p. 4) and acknowledges that "had applicant's mark
been MUTUALBANK" applicant would concede that its mark is
descriptive. (Id.) It is applicant's position, however, that
the reversal of the terms from their normal order creates an
incongruity or arbitrariness that makes the mark as a whole
registrable. In this regard, applicant points to Aluminum
Fabricating Co. v. Season-All Window Corp., 259 F.2d 314, 119
USPQ 61 (2d Cir. 1958), wherein the court upheld the USPTO's
Serial No. 78155909
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finding that SEASON-ALL, the reverse of the descriptive term "all
season," created a quality of arbitrariness as used on storm
doors and windows sufficient to justify registration.
The mere transposition of words does not automatically turn
a common descriptive term or designation into a registrable mark.
See In re Dairimetics, Ltd., 169 USPQ 572 (TTAB 1971) and In re
Vasco Metals Corp., 154 USPQ 191 (TTAB 1967). The resulting term
may be registrable if it creates a different meaning or
commercial impression. However, unlike the transposition of "all
season" to "season-all," reversing the order of the words in
"mutual bank" does not result in a new term with a different
meaning as used in connection with banking services. Although
not the typical or conventional way of referring to a mutual
bank, the transposed term "BANKMUTUAL" for banking services still
signifies a mutual bank.
Applicant argues that registration of BANKMUTUAL "will not
render it difficult for others to describe their bank as a
'mutual bank' nor deprive banks and others from promoting mutual
funds." (Brief, p. 5.) While a competitive need to use a term
is strong evidence that the mark is merely descriptive, it is not
a prerequisite for finding that a term is merely descriptive.
The fact that applicant may be the only entity using the term
"BANKMUTUAL" does not justify registration where, as here, the
term unquestionably conveys a merely descriptive meaning and
Serial No. 78155909
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would be perceived as such by the relevant public. See In re
National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB
1983).
Decision: The refusal to register under Section 2(e)(1) of
the Trademark Act is affirmed.