Charles A. Bruning

Trademark Trial and Appeal Board

Jul 16, 1997

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

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 16, 97
Paper No. 16
RLS/CCR
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Charles A. Bruning
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Serial No. 74/497,740
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Marshall A. Burmeister for Charles A. Bruning.
Mark Mullen, Trademark Examining Attorney, Law Office 101
(Chris Wells, Managing Attorney)
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Before Simms, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Charles A. Bruning (applicant) has appealed from the
final refusal of the Trademark Examining Attorney to
register the mark AMERICAN DEPOSITORS INSURANCE CORPORATION
for brokering, selling or servicing insurance policies for
depositors against failure of a depositee to fulfill its
contract with depositors.1 The Examining Attorney has
refused registration under Section 2(e)(2) of the Act, 15

1 Application Serial No. 74/497,740, filed March 7, 1994, based
upon applicant's bona fide intention to use the mark in commerce
under Section 1(b) of the Act, 15 USC Section 1051(b).
Applicant has disclaimed exclusive right to use the words
"DEPOSITORS INSURANCE CORPORATION" apart from the mark.
Ser. No. 74/497,740
2
USC Section 1052(e)(2), arguing that applicant's mark is or
will be primarily geographically descriptive of applicant's
services. Applicant's attorney and the Examining Attorney
have submitted briefs but no oral hearing was requested.
According to applicant's attorney, applicant will offer
a unique kind of insurance product which will protect that
portion of a depositor's deposit which exceeds the portion
protected by the Federal Deposit Insurance Corporation.
Essentially, it is the Examining Attorney's position that
applicant's mark is primarily geographically descriptive
because it describes the origin of applicant's services.
The Examining Attorney argues that the wording "DEPOSITORS
INSURANCE CORPORATION" is a descriptive entity designation--
that is, the term "DEPOSITORS INSURANCE" indicates a type of
insurance provided for depositors--and that the mark as a
whole signifies depositors insurance that emanates from
America or is of American origin. Brief, 4. Because
applicant is domiciled in the United States and insures
depositors only in American banks, the Examining Attorney
maintains that the term AMERICAN used in applicant's mark
primarily denotes the Unites States as the origin or scope
of applicant's services.
Applicant, on the other hand, argues that his mark will
not have the significance that the Examining Attorney
ascribes to applicant's mark. More particularly, applicant
argues that, in accordance with good grammar, the term
"AMERICAN" modifies the noun immediately following it,
Ser. No. 74/497,740
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namely, the word "DEPOSITORS," and that this latter word,
being plural and not possessive, negates ownership of the
"INSURANCE CORPORATION" by the "DEPOSITORS."
Hence, the mark means an "INSURANCE
CORPORATION" for that group of people
described as "AMERICAN DEPOSITORS"...
...It is interesting to note that
one may be a foreigner and own deposits
in the United States, as is not
uncommon, and hence it is not necessary
for a depositor to be an American to be
an "AMERICAN DEPOSITOR". The applicant
seeks to provide insurance products
which will extend insurance to those
FDIC insured depositors above the upper
limit of FDIC protection. Since FDIC
insurance to protect deposits is a
United States phenomenon, the phrase
"AMERICAN DEPOSITORS" has the inference,
when considered in relation to
applicants [sic] narrow range of
services, of "FDIC INSURED DEPOSITOR".
The mark AMERICAN DEPOSITORS INSURANCE
CORPORATION is thus suggestive of an
organization for providing insurance for
depositors protected by the Federal
Deposit Insurance Corporation...
...The phrase "AMERICAN DEPOSITORS"
is simply used by the applicant to
suggest a group consisting of those
persons who own deposits in United
States banking institutions. It is the
applicant's position that the phrase
"AMERICAN DEPOSITORS" is not used in a
geographic sense. This fact becomes
even more clear when one recognizes that
some of these members of the group are
not residents or citizens of the United
States. Those persons who have deposits
in United States banking institutions
are not confined to any geographical
area. (Applicant's brief, 2-4)
Applicant thus concedes that his customers ("AMERICAN
DEPOSITORS") include persons who do not reside in the United
Ser. No. 74/497,740
4
States and may not be citizens of this country. Applicant
also argues that his mark would not be perceived as
primarily geographically descriptive because the purchasing
public is a relatively sophisticated and knowledgeable group
of people, because his proposed services are not common
insurance services but new services occupying a very narrow
niche in the insurance industry and because the term
"AMERICAN" in his mark is a modifier of "DEPOSITORS" and
suggests the nature of the insurance rather than the
location of the source of the insurance services.
Further, if the term "AMERICAN" is
construed to be geographic as used in
the mark AMERICAN DEPOSITORS INSURANCE
CORPORATION, the rejection should still
be reversed because a services/place
relationship has not been established,
and there is no reason to believe that
the purchasing public would care about
the location of the source of
applicant's services. (Brief, 8)
In order for registration to be properly refused under
Section 2(e)(2), it is necessary for the Office to establish
that (1) the primary significance of the mark sought to be
registered is the name of a place generally known to the
public and (2) the public would make a goods or services/
place association, that is, believe that the goods or
services for which the mark is sought to be registered
originate in that place. See In re Societe Generale des
Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450,
1452 (Fed. Cir. 1987); University Bookstore v. University of
Ser. No. 74/497,740
5
Wisconsin Board of Regents, 33 USPQ2d 1385, 1402 (TTAB
1994); and In re California Pizza Kitchen Inc., 10 USPQ2d
1704, 1705 (TTAB 1988).
Upon careful consideration of this record and the
arguments of the attorneys, we agree with the Examining
Attorney that applicant's mark is primarily geographically
descriptive of applicant's services. That the term "AMERICA
or "AMERICAN" primarily signifies the name of a place
generally known to the public may be assumed. We also
believe that the public, who encounter applicant’s services
rendered in this country to depositors in American banks,
will correctly believe that applicant’s depositors insurance
services emanate from America.
While we have considered applicant's argument
concerning his belief as to the significance of his mark to
the purchasing public, we cannot subscribe to that argument.
For applicant's argument to have any validity it would seem
to us that the expression "AMERICAN DEPOSITORS" would be
argued to signify depositors who are American citizens or
who at least reside in this country. However, applicant
does not contend that this is the significance of that part
of his mark. Rather, applicant argues that this expression
will signify those people of any citizenship who own
deposits in American banks. It seems to us more plausible
that the general public will perceive applicant's mark as
signifying a corporation that is of American origin that
offers insurance to depositors. Accordingly, we believe
Ser. No. 74/497,740
6
that the primary significance of applicant's mark, as
applied to his services, is geographic in nature. See also
In re Cambridge Digital Systems, 1 USPQ2d 1659 (TTAB 1986)
and In re BankAmerica Corporation, 231 USPQ 873 (TTAB 1986).
Decision: The refusal of registration is affirmed.
R. L. Simms
G. D. Hohein
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial and
Appeal Board
Ser. No. 74/497,740
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