Capital Bluecross

Trademark Trial and Appeal Board

Sep 16, 1997

EX (T.T.A.B. Sep. 16, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT 16, 97
Paper No. 11
JQ
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Capital Bluecross
________
Serial No. 74/659,192
_______
Russell D. Orkin of Webb Ziesenheim Bruening Logsdon Orkin &
Hanson for applicant.
David M. Mermelstein, Trademark Examining Attorney, Law
Office 103 (Michael Szoke, Acting Managing Attorney).
_______
Before Sams, Quinn and Hairston, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Capital Bluecross to
register the mark CHECK IT OUT for “arranging for automatic
payments of health care subscribers’ monthly premium by
obtaining authorization to debit the subscribers’ account at
Ser No. 74/659,192
2
a financial institution and supervising such payment
arrangements for subscribers.”1
The Trademark Examining Attorney has refused
registration on the ground that applicant does not perform a
“service” as contemplated by Sections 1, 2, 3, and 45 of the
Trademark Act, as amended, 15 U.S.C. §§ 1051, 1052, 1053 and
1127.
Applicant’s principal activities involve providing
health insurance to subscribers. As a convenience to its
subscribers, applicant offers an automated payment option
that will deduct the health insurance premium directly from
the subscriber’s personal banking account. The details of
this payment option are explained in one of applicant’s
brochures, the pertinent part of which is reproduced below:

1 Application Serial No. 74/659,192, filed April 11, 1995, based
on a bona fide intention to use the mark in commerce. Applicant
subsequently filed an amendment to allege use setting forth
dates of first use of May 15, 1995.
Ser No. 74/659,192
3

Applicant, in urging that the refusal to register be
reversed, argues that an automatic debit payment plan option
is not mandatory or required in the health insurance
industry. In this connection, applicant submitted the
declaration of Mary Jane Forbes, applicant’s vice president,
general counsel and corporate secretary, wherein she states,
in pertinent part, that applicant’s services of arranging
for automatic payments of health care subscribers’ monthly
premium by obtaining authorization to debit the subscribers’
account at a financial institution and supervising such
payment arrangements “are a real activity where the
subscribers benefit because they no longer incur the cost
and time to assure that their health insurance coverage is
maintained; that this service is not a normally performed
activity by health insurance providers for subscribers; and
Ser No. 74/659,192
4
that these services are therefore not merely an ancillary
activity necessary to the corporation’s larger business.”
Applicant emphasizes the point that the services for which
registration of CHECK IT OUT is sought are not normally
expected by consumers of health insurance and constitute a
different economic activity not normally provided by health
insurance carriers. Applicant also points to the fact that
it uses a mark for the identified services which is
different from the mark used to identify applicant’s
Ser No. 74/659,192
5
principal services.2
The Examining Attorney contends, in refusing
registration, that the activity at issue here simply
constitutes the acceptance of payment for applicant’s own
services. The Examining Attorney goes on to contend that
the acceptance of payment by automatic debit, although
different from the traditional payments by cash, check or
credit card, benefits no one other than the payee (that is,
the provider of the activity). While applicant’s activity
may go a step beyond what is traditionally offered in the
health insurance industry, this activity, according to the
Examining Attorney, amounts to nothing more than agreeing to
accept payment in another form. The Examining Attorney
concludes, therefore, that the automatic payment plan, as
offered by applicant, is incidental to the sale of health
insurance, and it is not a service over and above that
routinely and ordinarily involved in the sale (i.e., the
payment of premiums) of health insurance.
Section 3 of the Trademark Act provides for the
registration of service marks. Section 45 of the Act
defines, in relevant part, “service mark” as “any word,

2 Applicant has made reference to a third-party registration
which shows that the Office has issued to a utility company a
registration of a mark for services of a type identified in
applicant’s application. Applicant failed to submit a copy of
the registration, and the Board does not take judicial notice of
registrations that reside in the Patent and Trademark Office.
Thus, the registration is not of record and has not been
considered. In re Duofold Inc., 184 USPQ 638 (TTAB 1974).
Ser No. 74/659,192
6
name, symbol, or device, or any combination thereof used by
a person...to identify and distinguish the services of one
person, including a unique service, from the services of
others and to indicate the source of the services, even if
that source is unknown.”
The Federal Circuit has observed that
[t]he Act does not define “services,”
nor does the legislative history provide
such a definition. However, our
predecessor court stated that the term
“services” was intended to have broad
scope, reasoning that “no attempt was
made to define ‘services’ simply because
of the plethora of services that the
human mind is capable of conceiving.”
[emphasis added]
In re Advertising & Marketing Development Inc., 821 F.2d
614, 2 USPQ2d 2010, 1013 (Fed. Cir. 1987), citing American
International Reinsurance Co., Inc. v. Airco, Inc., 570 F.2d
941, 197 USPQ 69, 71 (CCPA 1978), cert. denied, 439 U.S.
866, 200 USPQ 64 (1978). The Court, on another occasion,
opined that the omission of a definition of “services” in
the Act “suggest[s] that the term should be liberally
construed.” American International Reinsurance Co., supra
at 71. Indeed, prior case law evidences the wide and
diverse range of activities that have been found to be
“services” sufficient to support a service mark
registration. See: J. T. McCarthy, McCarthy on Trademarks
and Unfair Competition, § 19:85 (4th ed. 1996). The Federal
Ser No. 74/659,192
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Circuit has found it instructive to view a service as “the
performance of labor for the benefit of another.” In re
Advertising & Marketing Development Inc., supra at 2014.
The issue here is whether the automatic debit payment
plan in connection with which applicant has shown that it
uses CHECK IT OUT (i.e., the plan as explained in the
brochure of which a portion is reproduced above) is an
activity that can be properly characterized as a service in
connection with which a service mark can be registered.
An activity that is clearly separate from or over and
above that normally expected from one engaged in the sale or
distribution of goods and services in a particular field is
a service in connection with which a service mark can be
registered. In re Dr Pepper Co., 836 F.2d 508, 5 USPQ2d
1207, 1208 (Fed. Cir. 1987). See also: In re John Breuner
Co., 136 USPQ 94 (TTAB 1963). That an applicant uses, in
conjunction with such activity, a mark different from that
used in conjunction with its principal goods or services is
also a factor to be considered in determining whether the
activity is a service for which a service mark may issue.
In re Forbes Inc., 31 USPQ2d 1315, 1318 (TTAB 1994); and In
re Congoleum Corporation, 222 USPQ 452, 453-54 (TTAB 1984).
The statute makes no distinction between services on
the basis of primary, incidental or ancillary. They need
only be services. The fact that a service may be incidental
Ser No. 74/659,192
8
to a principal service does not make it any less of a
service. In re John Breuner Co., supra at 95. In the
present case, applicant’s principal activity is the
provision of health insurance. Although applicant’s CHECK
IT OUT automatic debit payment plan is intended to
facilitate the purchase of health insurance from applicant,
applicant is nonetheless rendering a service by making the
payment plan available to its subscribers. According to the
declaration of Ms. Forbes, the only evidence on this point,
the automatic debit payment plan “is not a normally
performed activity by health insurance providers for
subscribers.” We find, quite frankly, this claim to be
surprising, but the record is devoid of any evidence to the
contrary.3 Essentially, the undisputed evidence of record
establishes that an automatic debit payment plan for
subscribers’ premiums is not mandatory or required in the
health insurance industry.
Further, the benefits resulting from the plan inure to
applicant’s subscribers as well as to applicant. That is to
say, the subscribers enjoy the advantages of an automatic
debit payment plan, including the relief from remembering to
pay their premiums on time, preparing checks and mailing
checks. The plan also reduces subscribers’ costs for stamps

3 We suspect that the business world will someday soon reach a
point where automatic debit payment services might not be
perceived by consumers as a separate service, but rather as an
activity that is ordinary and necessary in doing business.
Ser No. 74/659,192
9
and checks. The convenience of applicant’s plan may be
especially important to the elderly, handicapped or
otherwise infirm who might miss a premium payment due to the
difficulty for them in mailing a check.
An additional factor in reaching our decision is that
applicant advertises its automatic payment plan as a
separate service and, in doing so, uses a mark different
from the one it uses to identify its health insurance
services. There is nothing in the record to suggest that
applicant uses CHECK IT OUT in conjunction with any goods or
services other than its automatic payment plan services.
This tends to show that applicant’s automatic payment plan
services constitute an activity separate from its principal
activity of providing health insurance.
Decision: The refusal to register is reversed.
J. D. Sams

T. J. Quinn
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
Ser No. 74/659,192
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