Bennis

Trademark Trial and Appeal Board

Sep 11, 2007

No. 78251943 (T.T.A.B. Sep. 11, 2007)

Mailed:
September 11, 2007
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bennis
________

Serial No. 78251943
_______

Anthony J. DeGidio of Fraser, Clemens, Martin & Miller LLC
for Gary Bennis.

Wiliam H. Dawe, III, Trademark Examining Attorney, Law
Office 108 (Andrew Lawrence, Managing Attorney).
_______

Before Quinn, Walsh and Cataldo, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Gary Bennis (applicant) has applied to register the
mark LOWAPR.COM, as amended, in standard-character form on
the Principal Register for services now identifed as,
“providing information via the Internet, in the field of
debt and credit, namely credit repair, debt consolidation,
credit cards, home and auto financing, insurance, and
consumer protection laws” in International Class 36.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78251943
2
Applicant claims both first use of the mark anywhere and
first use of the mark in commerce on July 17, 1999.
The Examining Attorney has finally refused
registration on the grounds: (1) that the mark merely
describes the services under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1); and (2) that
applicant has failed to show that the mark has acquired
distinctiveness under Trademark Act Section 2(f), 15 U.S.C.
§ 1052(f).
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs. Although applicant
has not said so explicitly in his brief, we believe and
assume that he wishes to argue first that his mark is
inherently distinctive, and in the alternative, if we find
that it is not, that his mark has acquired distinctiveness.
We affirm the refusal concluding that the mark is merely
descriptive, and thus not inherently distinctive, and
furthermore that applicant has failed to establish that his
mark has acquired distinctiveness.
The Descriptiveness Refusal
A term is merely descriptive of services within the
meaning of Section 2(e)(1) if it forthwith conveys an
immediate idea of an ingredient, quality, characteristic,
feature, function, purpose or use of the services. See,
Serial No. 78251943
3
e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 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 services in order to be
considered merely descriptive; it is enough that the term
describes one significant attribute or function of the
services. See In re H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB
1982); and In re MBAssociates, 180 USPQ 338, 339 (TTAB
1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the services identified
in the application, and the possible significance that the
term would have to the average purchaser (user) of the
services because of the manner of use. In re Polo
International Inc., 51 USPQ2d 1061, 1062 (TTAB 1999); and
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
When two or more merely descriptive terms are
combined, we must determine whether the combination of
terms evokes a new and unique commercial impression. If
each component retains its merely descriptive significance
in relation to the services, then the resulting combination
is also merely descriptive. See, e.g., In re Tower Tech,
Serial No. 78251943
4
Inc., 64 USPQ2d 1314, 1317 (TTAB 2002)(SMARTTOWER merely
descriptive of commercial and industrial cooling towers).
Applicant argues that LOWAPR.COM is not merely
descriptive because the mark does not describe the services
he has identified in the application. Applicant states:
The relevant industry used by the Examining Attorney
was presumably the banking industry. The correct
relevant industry is more accurately cast as an
informational website with information of interest to
consumers, relating to debt management, consumer
protection laws, insurance and credit. While LOW APR
may be a feature of a loan service it is not a feature
of this information website but rather a feature of a
feature… It is thus difficult to imagine a consumer
who upon hearing “LOWAPR” immediately calls to mind a
website such as applicant’s.”

Applicant’s Brief at 4.
Applicant submitted a copy from early 2002 of what
appears to be the home page from his web site (Exhibit D to
Applicant’s Response of April 29, 2004). The page states
“Welcome to LowAPR.com” and immediately below includes a
series of topics which appear to function as “buttons” to
access relevant information. The first three topic
headings/buttons are: LowAPR Credit Cards, LowAPR
Mortgages, Low APR Loans. On the same page under the
heading “For All Your Lending Needs!” the site lists
categories, including the following: Credit Card Center,
Home Loan Center, Consumer Loan Center and Student Loan
Center.
Serial No. 78251943
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Applicant explains the operation of its service as
follows: “… the relevant trade is the operation of an
informational web site. Monies are generated by charging
many of the websites which are linked to an advertising
fee. Visitors get the information for free.” Applicant’s
Response of April 29, 2004 at 3.
The Examining Attorney has submitted a copy of another
page from applicant’s website with the heading “Mortgage
Center” showing four separate advertisements related to
home loans with links to the advertiser.
The Examining Attorney has also submitted copies of
additional pages from applicant’s website which include
general information for borrowers; this information appears
to be derived from government sources. In this material,
under the heading “Rates,” the text from applicant’s site
states, “Ask about the loan’s annual percentage rate (APR).
The APR takes into account not only the interest rate but
also points, broker’s fees, and certain other credit
charges that you may be required to pay, expressed as a
yearly rate.” These pages from applicant’s site also
include a glossary of terms with the following definition:
“Annual Percentage Rate (APR) is the cost of credit
expressed as a yearly rate. The APR includes the interest
rate, points, broker fees, and certain other credit charges
Serial No. 78251943
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that the borrower is required to pay.” There is no dispute
that this is the commonly understood meaning of APR.
For completeness we also note that the Examining
Attorney has provided a definition of “low” from the online
version of The American Heritage Dictionary of the English
Language (3rd ed. 1992), which, in relevant part, provides -
adj. “10. e. Relatively small. Used of a cost, price or
other value: a low fee; a low income.” The Examining
Attorney has also provided evidence of third-party use of
“low APR” in relation to credit cards, for example at low-
intro-apr.net, 1placeloan.com and rewardscards.com and in
relation to auto loans, for example at about.com.
Marks which identify the subject matter of web sites
are merely descriptive, as in the case of printed
publications. See, e.g., In re Medical Digest, Inc., 148
USPQ 570 (TTAB 1965) (OB/GYN DIGEST held merely descriptive
of magazine). See also In re Cox Enterprises Inc., 82
USPQ2d 1040, 1043-1044 (TTAB 2007) (“THEATL” held merely
descriptive of magazines, newspapers, and directories,
since at least one class of relevant purchasers are
residents of Atlanta, Georgia, and visitors to Atlanta
area.); In re Classic Media Inc., 78 USPQ2d 1699 (TTAB
2006) (“SATURDAY MORNING T.V.” held merely descriptive of
“entertainment in the nature of on-going television
Serial No. 78251943
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programs in the field of comedy.”). There is no reason to
treat an information service rendered through the Internet,
such as the one identified by applicant, any differently
than a printed publication which serves the same purpose.
See In re Reed Elsevier Properties Inc., 77 USPQ2d 1649
(TTAB 2005) (LAWYERS.COM held generic for “providing access
to an online interactive database featuring information
exchange in the fields of law, legal news, and legal
services.”).
Furthermore, although applicant does not appear to
dispute the point, we note for completeness that the “.com”
element in the mark is not distinctive, nor does it render
the mark, when viewed in its entirety, distinctive. See In
re Oppendahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370
(Fed. Cir. 2004); In re Reed Elsevier Properties Inc., 77
USPQ2d at 1657-58.
Accordingly, we conclude that LOWAPR.COM is merely
descriptive of “providing information via the Internet, in
the field of debt and credit, namely credit repair, debt
consolidation, credit cards, home and auto financing,
insurance, and consumer protection laws.” The evidence of
record establishes that “APR” is merely descriptive of a
significant featue of various types of financing, including
home loans, credit cards and auto loans, among others. We
Serial No. 78251943
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conclude further that the evidence of record establishes
that “low” delineates a generally desirable, commonly
identified feature of APR as applied to these forms of
financing. Finally, we conclude that the evidence of
record estalishes that financing with a “low APR” feature
is a significant charateristic of applicant’s service.
That is, applicant’s service is substantially devoted to
information about and identification of financing featuring
“low APR.” The prominent display of the topic headings,
LowAPR Credit Cards, LowAPR Mortgages and Low APR Loans, on
applicant’s site, the evidence that applicant’s site
provides links to parties offering low APR financing and
other evidence of record establishes that applicant’s
LOWAPR.COM mark is merely descriptive.
Acquired Distinctiveness
As we noted, applicant argues in the alternative that
his mark has acquired distinctiveness. Section 2(f)
contemplates that, in the case of a mark found to be merely
descriptive under Section 2(e)(1), but not generic, an
applicant may nonetheless establish that the mark is
entitled to registration by showing that the mark has
acquired distinctiveness. 15 U.S.C. § 1052(f). The
applicant bears the burden of establishing acquired
distinctiveness. Yamaha Intl. Corp. v. Hoshino Gakki Co.
Serial No. 78251943
9
Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1004-1008 (Fed. Cir.
1988).
Section 2(f) provides, in part, “The Director may
accept as prima facie evidence that the mark has become
distinctive, as used on or in connection with the
applicant’s goods in commerce, proof of substantially
exclusive and continuous use thereof as a mark by the
applicant in commerce for the five years before the date on
which the claim of distinctiveness is made.” 15 U.S.C.
§ 1052(f). In considering a claim of acquired
distinctiveness, the Examining Attorney must determine,
based on the degree of descriptiveness of the mark in
question, whether a five-year claim or other evidence
proffered is adequate to establish acquired
distinctiveness. See In re America Online Inc., 77 USPQ2d
1618 (TTAB 2006); In re Mine Safety Appliances Co., 66
USPQ2d 1694, 1697 (TTAB 2002).
Here applicant has submitted what he represents to be
a five-year claim under Section 2(f), as well as other
evidence to show that his mark has become distinctive.
However, the five-year claim is defective. In his April
29, 2004 response at page 2 applicant states that “… the
mark has been in substantially exclusive and continuous use
by applicant in commerce for the five years before the date
Serial No. 78251943
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on which this claim of distinctiveness is made.” Later, on
the same page, applicant states, “These exhibits show that
the LOWAPR designation has been in continuous use since
1999 and in July of this year it will have been in use for
five years.” (Emphasis provided.) The application claims
first use in commerce on July 17, 1999. Thus, the mark had
not been in use for five years at the time applicant made
the five-year claim.
Also, the five-year claim relates to the mark LOWAPR,
rather than the mark, as amended, LOWAPR.COM. Furthermore,
applicant has also submitted a copy of an assignment to
show that he is entitled to claim use of the mark by a
predecessor, again as of the July 17, 1999 date. Exhibit A
to the April 29, 2004 Response. The assignment recites the
following: “WHEREAS, assignor first began to use the mark
in commerce for commercial purposes on 7/17/1999.”
However, the mark assigned to applicant in this document is
LOWAPR.NET, not LOWAPR.COM. Accordingly, we reject
applicant’s five-year claim as defective. We hasten to add
that, even if we had a proper five-year claim, we would
find such a claim insufficient in the circumstances of this
case due to the high degree of descriptiveness of
LOWAPR.COM.
Serial No. 78251943
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We now turn to applicant’s other evidence of acquired
distinctiveness. The purpose of applicant’s evidence,
including the referenced assignment, appears to be merely
to show that applicant used the mark on and since the
claimed date of first use. The evidence fails to address
either the extent of that use or the impact of that use on
potential users of its identified services. The
applicant’s evidence also includes archival records to show
that he used his mark from July 17, 1999.1 None of this
evidence is probative of whether or not applicant’s mark
has acquired distinctiveness. It merely shows that
applicant, or his predecessor, used certain versions of the
LOWAPR.COM mark on Internet web pages.
The only other evidence of record which arguably
relates to applicant’s claim of acquired distinctiveness is
evidence from searches for “lowapr.com” from the
Overture.com and WebCrawler.com search engines. Exhibits F
and G to Applicant’s Response of April 29, 2004. Applicant
offers this evidence to show how he “advertised” his mark
and services. However, this evidence likewise lacks
probative value with regard to whether or not applicant’s

1 For the purposes of this ex parte case we will take the
archival records applicant offers with regard to his own web site
at face value. Cf. Paris Glove of Canada, Ltd. v. SBC Sporto
Corp.,__USPQ2d__, Cancellation No. 92044132 (TTAB, August 22,
2007).
Serial No. 78251943
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mark has acquired distinctiveness. If it shows advertising
at all, it fails to show the extent or impact of that
advertising. We would expect that a search in any search
engine for the specific Internet domain name “lowapr.com”
would yield results relating to the site associated with
that domain name. This evidence in no way demonstrates
that anyone has performed this search on these or any other
search engines and thereby accessed applicant’s site and
services. Thus, it does not show that anyone has been
exposed to and come to associate applicant’s mark with his
services. We have no evidence, such as advertising efforts
and expenditures, volume of traffic on applicant’s site or
any other evidence which would show that potential users of
applicant’s services have come to associate the LOWAPR.COM
mark with applicant. Cf. In re America Online Inc., 77
USPQ2d at 1625 (INSTANT MESSENGER held to have acquired
distinctiveness for telecommunications services and other
related services.).
Accordingly, we conclude that applicant has failed to
show that LOWAPR.COM has acquired distinctiveness for
“providing information via the Internet, in the field of
debt and credit, namely credit repair, debt consolidation,
credit cards, home and auto financing, insurance, and
consumer protection laws.”
Serial No. 78251943
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Decision: We affirm the refusal to register the mark
under Trademark Act Sections 2(e)(1) and 2(f).