Coventry First, LLC

Trademark Trial and Appeal Board

Mar 28, 2013

No. 77625177 (T.T.A.B. Mar. 28, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
March 28, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Coventry First, LLC
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Serial No. 77625177
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Jamie B. Bischoff and Troy E. Larson of Ballard Spahr LLP for Coventry First, LLC

Christopher Buongiorno, Trademark Examining Attorney, Law Office 102 (Mitchell
Front, Managing Attorney).
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Before Kuhlke, Mermelstein, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
On December 3, 2008, Coventry First, LLC applied to register LIFESPAN, in
standard character form, on an intent-to-use basis pursuant to Trademark Act
Section 1(b), 15 U.S.C. § 1051(b), for services ultimately identified as:
• Providing for others a financial index in the nature of quantitative
measurements for measuring the expected average lifetime for human
populations, including both historical and projected values; market analysis
and compilations of data in the field of life insurance in connection with
human mortality rates, in International Class 35; and
• Financial services, namely, facilitating and arranging for the issuance of
swaps, notes, bonds, and option contracts in connection with life insurance
products based on the underlying value of life insurance products and the
related projected and actual human mortality rates; financial risk
Serial No. 77625177
2

management services, namely, providing data useful in the structuring and
consummation of commercial transactions in which human mortality and
longevity are a feature; financial forecasting in the field of life insurance in
connection with human mortality rates, in International Class 36.1
The examining attorney has refused registration on the ground that the
applied-for mark is merely descriptive of applicant’s services pursuant to
Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1).
Applicant timely appealed, and the appeal is fully briefed.
Procedural Issue
Before turning to the merits of the refusal, we address a procedural issue
raised by applicant in its appeal brief, beginning with a summary of a portion of the
application’s prosecution history.
On August 24, 2009, the application was finally refused on the ground of a
likelihood of confusion with Registration No. 2453680 pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d). On February 24, 2010, applicant filed:
(1) a petition to cancel the cited registration, (2) a request for reconsideration and
for suspension of the application pending resolution of the cancellation proceeding,
and (3) a notice of appeal. The appeal was instituted and the application was
suspended the following day by the Board.
On August 2, 2011, applicant submitted a consent agreement between it and
the owner of the cited prior registration and requested resumption of its application.
The Section 2(d) refusal was subsequently withdrawn. However, on October 11,
2011, the examining attorney issued a priority Office action for the first time

1 Application Serial No. 77625177.
Serial No. 77625177
3

refusing registration under Section 2(e)(1) of the Trademark Act.2 Applicant
submitted a response and evidence on December 2, 2011, but the refusal was made
final on December 5, 2011. After two other orders, on April 27, 2012, the Board
issued an order resuming proceedings in the previously filed appeal and allowing
applicant 60 days to file a brief directed to the Section 2(e)(1) refusal.3
Applicant timely filed its appeal brief on June 26, 2012 without seeking
remand of the application so it could submit additional evidence or otherwise
objecting to the April 27, 2012 order. In its brief, applicant suggests that it should
have been given six months to request reconsideration and/or file a notice of appeal
of the descriptiveness final refusal.4 However, if a new final refusal is issued
following filing of an appeal and a request for remand, the six-month response
clause is omitted from the Office action and the appeal is resumed. See Trademark
Trial and Appeal Board Manual of Procedure (TBMP) § 1204 (3d ed. rev. 1 June
2012) (“The new final Office action does not give the applicant an automatic right to
file a request for reconsideration . . . and because an appeal had previously been
filed, any request for further consideration of the application by the examining
attorney must be made by a request for remand, for which good cause must be
shown.”). See also Section 2.142(d) of the Trademark Rules, 37 C.F.R. § 2.142(d).

2 It is unfortunate that the descriptiveness issue was not raised on initial examination.
3 The examining attorney erroneously states in his brief that the applicant filed a request
for reconsideration on April 5, 2012, and proceedings resumed on April 16, 2012. Applicant
filed only one request for reconsideration, of the Section 2(d) refusal, in February 2010.
4 See Appeal Brief at 4-5.
Serial No. 77625177
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Analysis
We now consider the merits of the appeal. 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 goods with which it is
used. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217,
1219 (Fed. Cir. 2012); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987).
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,
the context in which the term is used, and the possible significance that the term is
likely to have to the average purchaser encountering the goods or services in the
marketplace. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978); In re Engineering Sys. Corp., 2 USPQ2d 1075, 1076 (TTAB 1986); In re
Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). It is settled that “[t]he
question is not whether someone presented with only the mark could guess what
the goods or services are. Rather, the question is whether someone who knows
what the goods or services are will understand the mark to convey information
about them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
Applicant explains that it is a pioneer in the life settlement industry.5 A life
settlement, also known as a “viatical settlement” under some circumstances, is a
financial transaction in which the owner of a life insurance policy sells that policy to

5 Appeal Brief at 5.
Serial No. 77625177
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a third party for more than its cash or surrender value but less than its face value.6
The purchaser of the policy continues to pay the premiums on the policy “with the
hope that the death benefit that it will ultimately receive when the insured
individual dies is more than the total of the acquisition cost of the policy plus the
cost of the ongoing premium payments.”7 Rather than actual life settlements, the
specific services applicant intends to offer under the LIFESPAN mark are synthetic
assets linked to the performance of an index that tracks policies and/or insured
lives; the index “can be used to mimic, or hedge, a portfolio of life settlement assets
or other risks related to longevity and/or mortality.”8
Applicant argues that its mark is suggestive, requiring a number of mental
leaps to connect to the term LIFESPAN to its services, and that the term is
intended only “to subtly convey the idea that mortality rates are a common thread”9
among applicant’s services. Applicant states that: “The mark suggests that the
average lifetime of human populations has some relation to Applicant’s services for
investing in pools of life settlement assets.”10
The examining attorney submitted a dictionary definition of “lifespan” as
meaning “the length of time that a person or animal lives or is expected to live.”11
Another definition of “lifespan” is “the average length of life of a kind of organism

6 Id.; see also Response to Office Action, December 2, 2011, Exhibit B (Wikipedia article on
life settlement).
7 Appeal Brief at 6.
8 Id.
9 Id. at 9.
10 Reply Brief at 3.
11 Examiner’s Amendment/Priority Action, October 11, 2011, at 2.
Serial No. 77625177
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. . . especially in a particular environment or under specified circumstances.”12
Words related to “lifespan” include “longevity.”13
In light of these definitions, it is clear that the term LIFESPAN immediately
conveys knowledge of significant features of applicant’s identified services rather
than subtly suggesting them. Applicant’s Class 35 services are “providing for others
a financial index in the nature of quantitative measurements for measuring the
expected average lifetime for human populations, including both historical and
projected values” and “market analysis and compilations of data in the field of life
insurance in connection with human mortality rates.” We find that investors who
know what applicant’s services are will understand the term LIFESPAN to convey
information about them; that is, that they measure “the expected average lifetime
for human populations” and provide analysis and data “in connection with human
mortality rates.” Similarly, “human mortality rates,” or “human mortality and
longevity,” are a key feature of all of applicant’s Class 36 services.
Applicant argues that, “even armed with the knowledge that Applicant’s
services bear some relationship to the length of time one lives or is expected to live,
the relevant consumer would not immediately discern that Applicant’s services are
investment services related to a synthetic asset market based on an index that

12 Merriam-Webster Online Dictionary, retrieved from merriam-
webster.com/dictionary/lifespan. The Board may take judicial notice of dictionary
definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 213 USPQ 594,
596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online
dictionaries that exist in printed format or have regular fixed editions. In re Red Bull
GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
13 Id.
Serial No. 77625177
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tracks mortality experiences.”14 However, 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 single,
significant feature or attribute. See In re Chamber of Commerce, 102 USPQ2d at
1219; In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed.
Cir. 2004) (“A mark may be merely descriptive even if it does not describe the full
scope and extent of the applicant’s goods or services.”) (quotation omitted); In re
H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB 1982); In re MBAssociates, 180 USPQ
338, 339 (TTAB 1973).
Applicant relies on In re Southern Nat’l Bank of North Carolina, 219 USPQ
1231 (TTAB 1983), in which the Board reversed the refusal to register the term
MONEY 24 as merely descriptive of “banking services, namely, automatic teller
machine services.” The Board reasoned in part that “one must mentally reverse the
order of the elements of the mark and add the word ‘hour’ or possibl[y] ‘hours a day’
after ‘24’ to transform the mark into a readily comprehensible expression.” Id. at
1232. Here, applicant seeks to register only one word, a word with a meaning
synonymous to essential features of its services.
Applicant also submitted copies of eleven third-party registrations –
including Registration No. 2453680, initially cited against the application under
Trademark Act Section 2(d) – each consisting of or incorporating the term

14 Appeal Brief at 9.
Serial No. 77625177
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LIFESPAN.15 Most of these registrations are for goods and services very different
from the services involved in this case. More importantly, they are not conclusive
on the question of descriptiveness because prior decisions in other applications are
not binding on the Board and each case must stand on its own merits. In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re
Scholastic Testing Serv., Inc., 196 USPQ 517, 519 (TTAB 1977).
In sum, we find that, in relation to applicant’s identified services, the term
LIFESPAN is merely descriptive within the meaning of Section 2(e)(1).
Decision: The examining attorney’s refusal to register applicant’s mark
under Section 2(e)(1) of the Trademark Act is affirmed.

15 Response to Office Action, December 2, 2011, Exhibit C.