Cooper

Trademark Trial and Appeal Board

Mar 30, 2007

No. 78462908 (T.T.A.B. Mar. 30, 2007)

Mailed: March 30, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Cooper
________

Serial No. 78462908
_______

Diane M. Reed of Knobbe, Martens, Olson & Bear, LLP for
Steven D. Cooper.

Ameeta Jordan, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Grendel, Walsh and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Steven D. Cooper, an individual citizen of the United
States, has applied to register the mark ERSOP in standard
character form on the Principal Register for
“Administration of retirement benefit rollover plans” in
International Class 36.1

1 Application Serial No. 78462908 was filed August 5, 2004, based
upon applicant’s assertion of March 23, 2001 as the date of first
use of the mark anywhere and in commerce in connection with the
services.

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78462908
2
The trademark examining attorney2 refused registration
under Section 2(e)(1) of the Trademark Act on the ground
that applicant’s mark is merely descriptive of a feature or
quality of applicant’s services.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed main briefs on
the appeal and applicant filed a reply brief. In addition,
applicant’s counsel and the examining attorney presented
arguments directed toward the issue on appeal in an oral
hearing held on December 21, 2006.
Applicant contends that the federal Employee
Retirement Income Security Act (ERISA) permits individuals
to invest funds from their retirement plans in franchises
or other new businesses; that he provides services related
to such investments; and that he coined the terms
“Entrepreneur Rollover Stock Ownership Plan” and “ERSOP” as
trademarks for such services. Applicant argues that
neither ERSOP nor Entrepreneur Rollover Stock Ownership
Plan is used in common parlance by either the financial
community or the general public. Applicant further argues
that the evidence submitted by the examining attorney

2 The above application originally was examined by another
examining attorney, but subsequently was reassigned to the
attorney whose name is shown to prepare the appeal brief.

Ser No. 78462908
3
primarily falls into three categories: references to use
of ERSOP as a trademark by applicant; subsequently
discontinued use of ERSOP as a trademark by applicant’s
former business associate Leonard Fischer and Benetrends,
Inc., a company formed by Mr. Fischer; and misuse of ERSOP
by entities known to applicant; and that, as a result, the
examining attorney’s evidence is insufficient to support
the instant refusal to register.3
In support of his arguments in favor of registration,
applicant has made of record a screenshot from an Internet
website containing an article concerning use of retirement
funds to purchase franchises; portions of the application
file from application Serial Nos. 765158264 and 781845885,
both for the mark ERSOP; and printouts from the USPTO’s
Trademark Electronic Search System (TESS) of those
applications and, in addition, application Serial No.
78185889, also for the mark ERSOP.6

3 Applicant’s request, raised in his main brief, for suspension
of the instant appeal and remand of the application to the
examining attorney for consideration of additional evidence, was
withdrawn by applicant’s counsel at oral hearing.

4 Filed May 21, 2003 by Benetrends, Inc.; abandoned January 26,
2005.

5 Filed November 13, 2002 by Benetrends, Inc.; abandoned October
23, 2003.

6 Filed November 16, 2002 by Leonard Fischer; abandoned October
31, 2003.
Ser No. 78462908
4
The examining attorney maintains that ERSOP “is used
commonly within the business sector in reference to a
mechanism for financing a business through use of
retirement funds” (brief, unnumbered p.3); and that ERSOP
is “widely recognized” (Id.) as an acronym therefor.7 The
examining attorney argues that the evidence of record
demonstrates that ERSOP “describes the characteristic or
quality of Applicant’s services that ‘ERSOP’ or
‘Entrepreneur Stock Ownership Plans’ are provided through
Applicant’s services” (brief, unnumbered p.4); and that the
evidence does not indicate proprietary use, but rather
generally refers to ERSOP in connection with the use of
retirement funds as a means of financing a franchise. The
examining attorney further argues that while applicant may
have been the first user of ERSOP, the term is now commonly
used to describe the type of services offered thereby; and
that allowing registration of ERSOP deprives applicant’s
competitors of an apt description of their services.
In support of the refusal to register, the previous
examining attorney has made of record articles from the

7 The examining attorney alternately asserts that the evidence of
record shows that ERSOP stands for Entrepreneur Rollover Stock
Ownership Plan (brief, unnumbered p.3) and Entrepreneur Stock
Ownership Plan (brief, unnumbered p. 4).

Ser No. 78462908
5
Nexis electronic database as well as articles and
screenshots of web pages retrieved from the Internet.
Applicant argues in reply that the examining
attorney’s evidence fails to demonstrate that third party
use of ERSOP is so pervasive that consumers would view it
as a descriptive term; that applicant’s competitors use
different marks and descriptive terms in connection with
their services; and that, as a result, registration of
ERSOP by applicant will not inhibit competition by
depriving such competitors of an apt description of their
services.
It is well settled that a term is considered to be
merely descriptive of goods and/or services, within the
meaning of Section 2(e)(1) of the Trademark Act, if it
immediately describes an ingredient, quality,
characteristic or feature thereof or if it directly conveys
information regarding the nature, function, purpose or use
of the goods and/or services. See Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052. See also In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
It is not necessary that a term describe all of the
properties or functions of the goods and/or services in
order for it to be considered to be merely descriptive
thereof; rather, it is sufficient if the term describes a
Ser No. 78462908
6
significant attribute or feature about them. Moreover,
whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods and/or services
for which registration is sought. See In re Bright-Crest,
Ltd., 204 USPQ 591 (TTAB 1979). Thus, "[w]hether consumers
could guess what the product is from consideration of the
mark alone is not the test." In re American Greetings
Corp., 226 USPQ 365 (TTAB 1985).
In this case, the evidence made of record by the
examining attorney fails to support a finding that, as used
in connection with applicant's services, the term ERSOP
would immediately describe, without conjecture or
speculation, a significant characteristic or feature
thereof. We note initially that while applicant does not
expressly state in his brief that ERSOP is an acronym for
“Entrepreneur Rollover Stock Ownership Plan,” he does
indicate that he coined both terms and common sense
suggests that the former is an acronym for the latter.
Further, the examining attorney’s evidence provides ample
support for such a finding.8 However, such a finding does

8 There is no support in the evidence of record for the examining
attorney’s assertion in the alternative that ERSOP is an acronym
for “Employee Stock Ownership Plan.” A single discussion posted
on the Internet website Financial-Planning.com posits a relation
between ERSOP and another financing mechanism known as ESOP, but
does not provide a definition of either term.

Ser No. 78462908
7
not, by itself, compel a determination that ERSOP merely
describes a feature or characteristic of applicant’s
services. That is to say, simply because the evidence of
record shows that ERSOP stands for entrepreneur rollover
stock ownership plan, it does not necessarily show that
ERSOP merely describes applicant’s administration of
retirement benefit rollover plans.
As noted above, the examining attorney has introduced
as evidence articles from the Nexis computer database as
well as articles and advertisements from Internet web
pages. The following examples are illustrative:

The Entrepreneur Rollover Stock Ownership Plan
(ERSOP) allows a prospective franchisee to
release the money in his or her retirement plan
and use it for a fresh start in business. Your
new prospect can do this without penalty and
without taxes, using a section of the Employee
Retirement Income Security Act that’s not
commonly known. An ERSOP provides this potential
new business owner with a proven method to use
his or her IRA or 401(k) rollover assets to
invest in a franchise just like the ones you
sell.

Experience has taught us that the biggest hurdle
to overcome in beginning the ERSOP process is
client fear….

The ERSOP is an exciting tool that can be used to
substantially increase franchise sales.
Fortunately it’s also cost-efficient. The ERSOP
program even makes sense for surprisingly small
funds. We have completed transactions for
individuals with as little as $20,000.00 in their
retirement accounts….
Ser No. 78462908
8
(Franchising World, October 2003)

The SBA is my only financing option. Other
choices are home equity loans or a government-
approved IRA rollover program, ERSOP.
(St. Louis Post-Dispatch, Inc., May 6, 2005)

Entrepreneur Rollover Stock Ownership
Plan – ERSOP
You Can Use Your 401(k) or IRA Rollover Assets to
Finance YOUR Franchise or Business Acquisition

Under the Entrepreneur Rollover Stock Ownership
Plan (ERSOP) you can reinvest your retirement
funds in franchises, property, equipment or
working capital. BeneTrends will obtain a
favorable Letter of Determination directly from
the IRS on your ERSOP.
BeneTrends charges a flat fee for their services.
(www.certifiedbb.com/ersop.html)

ERSOP Program Lets You Use Retirement Dollars for
Business Acquisition

Distributions from retirement plans typically are
taxed at ordinary income rates (upwards to 50%)
but our Entrepreneur Rollover Stock Ownership
Plans (ERSOP) allow you to avoid these taxes.
The ERSOP program is in complete compliance with
the Employee Income Security Act of 1974 (ERISA)
and comes with an IRS letter of compliance.
(www.sunbeltfresno.com/buy/000040.html)

Entrepreneur Rollover Stock Ownership Plan
(ERSOP) – Using Retirement $$ to Start a Business
Excerpt: “Be aware that ERSOP is a marketing
phrase, rather than an Internal Revenue Service
term, and most of the business and estate-
planning experts we talked to weren’t familiar
with the plan. While the promoters assure
potential investors that they have obtained
favorable IRS ‘determination letters’ about the
plans’ legality, critics point out that
Ser No. 78462908
9
determination letters can be challenged. No
binding IRS ruling for or against this kind of
plan seems to exist.” (BusinessWeek Online)
(www.heintzberger.com/distributions.html)

Steven D. Cooper
President of SDCooper Company
Steve is a co-developer of the ERSOP program and
coined the name Entrepreneur Rollover Stock
Ownership Plan which enables prospective buyers
to use their 401(k) or IRA to purchase their new
business or franchise. He was instrumental in
developing the exit strategies which popularized
ERSOPs, making them practical. He has taken the
ERSOP program on the road attending numerous
seminars and tradeshows in the last 5 years,
presenting the program to hundreds of groups and
groups of hundreds nationwide….
(www.franchise.org/content).

The above examples, which are representative of the
evidence made of record by the examining attorney, clearly
make reference to ERSOP in connection with the utilization
of retirement funds as a means of financing businesses,
including franchises.9 However, these articles and
advertisements, some of which are written about applicant
and companies related to him, fall short of demonstrating
that ERSOP merely describes a feature or characteristic of
applicant’s recited services, namely, administration of

9 In addition, the examining attorney has made of record lists of
links to Internet web pages containing highly truncated
references to ERSOP. These lists, however, are presented in such
abbreviated form and contain so little information as to be of
very limited probative value to our consideration of the issue on
appeal.

Ser No. 78462908
10
retirement benefit rollover plans. Moreover, some of the
articles appear to use ERSOP as a trademark in relation to
financial services. Thus, we find that the evidence made
of record by the examining attorney in this case fails to
support her contention that the mark ERSOP merely describes
a function, feature or characteristic of the services.
Finally, if doubt exists as to whether a term is
merely descriptive, it is the practice of this Board to
resolve doubts in favor of the applicant and pass the
application to publication. See In re Gourmet Bakers Inc.,
173 USPQ 565 (TTAB 1972). In this way, anyone who believes
that the term is, in fact, descriptive, may oppose and
present evidence on this issue to the Board.
Decision: The examining attorney’s refusal of
registration is reversed. Accordingly, the involved
application will be forwarded for registration in due
course.