Equity Ladder

Trademark Trial and Appeal Board

Apr 22, 2014

No. 85784891 (T.T.A.B. Apr. 22, 2014)

Mailed: April 22, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Equity Ladder
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Serial No. 85784891
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Matthew H. Swyers of The Trademark Company for Equity Ladder.

Morgan L. Meyers, Trademark Examining Attorney, Law Office 117 (Hellen Bryan-
Johnson, Managing Attorney).
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Before Bucher, Kuhlke and Masiello, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
On November 21, 2012, applicant, Equity Ladder, filed Application Serial No.
85784891, to register on the Principal Register the mark EQUITY LADDER in
standard characters for services identified as “Financial consulting; Financial
investment in the field of real estate; Providing information in the field of real
estate via the Internet,” in International Class 36. Applicant filed the application
under Section 1(a) of the Trademark Act, 15 U.S.C. § 1052(a), based on allegations
of first use and first use in commerce on October 23, 2012 and included a disclaimer
for the word EQUITY.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
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Registration has been refused on the ground that EQUITY LADDER is
merely descriptive of applicant’s goods and services under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1).
The test for determining whether a mark is merely descriptive is whether it
immediately conveys information concerning a significant quality, characteristic,
function, ingredient, attribute or feature of the product or service in connection with
which it is used, or intended to be used. See, e.g., In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (internal citations
omitted). See also In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370,
1371 (Fed. Cir. 2004), quoting, Estate of P.D. Beckwith, Inc. v. Commissioner, 252
U.S. 538, 543 (1920) (“A mark is merely descriptive if it ‘consist[s] merely of words
descriptive of the qualities, ingredients or characteristics of’ the goods or services
related to the mark.”) The determination of whether a mark is merely descriptive
must be made in relation to the goods or services for which registration is sought.
Chamber of Commerce of the U.S., 102 USPQ2d at 1219. It is not necessary, in
order to find a mark merely descriptive, that the mark describe each feature of the
goods or services, only that it describe a single, significant ingredient, quality,
characteristic, function, feature, purpose or use of the goods or services. Chamber of
Commerce of the U.S., 102 USPQ2d at 1219; In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987).
Where a mark consists of multiple words, the mere combination of descriptive
words does not necessarily create a nondescriptive word or phrase. In re Phoseon
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Tech., Inc., 103 UPQ2d 1822, 1823 (TTAB 2012); and In re Associated Theatre Clubs
Co., 9 USPQ2d 1660, 1662 (TTAB 1988). If each component retains its merely
descriptive significance in relation to the goods or services, the combination results
in a composite that is itself merely descriptive. Oppedahl & Larson LLP, 71
USPQ2d at 1371. However, a mark comprising a combination of merely descriptive
components is registrable if the combination of terms creates a unitary mark with a
unique, nondescriptive meaning, or if the composite has a bizarre or incongruous
meaning as applied to the goods or services. See In re Colonial Stores Inc., 394 F.2d
549, 157 USPQ 382 (CCPA 1968); In re Shutts, 217 USPQ 363 (TTAB 1983).
The examining attorney argues that:
An average consumer encountering applicant’s real estate focused
webpage1 with the name EQUITY LADDER will immediately know,
without having to resort to any thought, analysis or guesswork, that
the proprietor is utilizing the commonly referred to equity ladder
financial strategy to purchase multiple properties for the purpose of
building up equity, or climbing the “equity ladder.” According to page
2 of the applicant’s website, applicant’s services include buying
multiple properties and reselling them, thus allowing their customers
to begin climbing an equity ladder by utilizing the equity in one
property to purchase another. … “EQUITY LADDER” is considered a
term of art in the financial and real estate fields, indicating that the
applicant’s financial services include helping customers to purchase a
second real estate investment that will allow them greater equity. …
The mark describes the feature of the services based on utilizing a
ladder strategy, or series of steps or stages by which someone moves up
to a higher or better position by building up equity with multiple real
estate investment properties.1

The examining attorney relies on the following evidence:
(1) The most relevant dictionary definitions for EQUITY and LADDER:

1 Ex. Att. Br. pp. 5, 8.

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Equity … 6. The market value of a debtor’s property in excess of all
debts to which it is liable;2

Ladder … a series of steps or stages by which someone moves up to a
higher or better position.3

(2) Printouts from third-party websites showing use of the phrase “equity ladder” to
describe a financial investment strategy in real estate:
Can You Really Climb the Equity Ladder? I’m working on a post that
explores the concept of the homebuying “equity ladder” (or “property
ladder”), in which the lifetime buying plan of the typical American
homebuyer is assumed to look like: -Buy a cheap starter home … 4-5
years later, sell and upgrade to a nice mid-range home … -5-10 years
later, sell and upgrade again … -20 or so years later, sell your
McMansion and downsize … cashing out piles of equity to fund your
retirement. (Blog called “Seattle Bubble” focusing on “local real estate
news, statistics, and commentary,” http://seattlebubble.com/blog, First
Office Action (March 25, 2013));

Climbing the Equity Ladder in Hampden … Many people buy a second
house only to find themselves buying yet another. Once you start
climbing the equity ladder its [sic] kind of hard to stop! (website titled
“RonHoward & Associates of Re/Max Preferred” located in Baltimore,
Maryland, http://www.hampdenareahomes.com, First Office Action);
and

Scaling The Equity Ladder in Newberg Oregon … If you presently find
yourself to be in the excellent position of looking to purchase a second
land then best wishes. The equity that you are in position to gain from
this particular purchase may be significant, keep in mind to plan

2 Collins English Dictionary (http://www.collinsdictionary.com, retrieved March 25, 2013),
First Office Action (March 25, 2013).

3 Merriam-Webster’s Online Dictionary (11th ed. 2013). The examining attorney’s request
that the Board take judicial notice of the definition for “ladder” is granted. In re Red Bull
GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). See also University of Notre Dame du Lac v.
J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).

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appropriately, in order to maximize your gain.
(http://businessremedy.net, First Office Action).4

(3) Applicant’s website printout (attached to applicant’s August 12, 2013 Response
to the Office Action), and its specimen of use shown below:

Applicant argues that the proposed mark EQUITY LADDER is only
suggestive of its services because “there is no instantaneous connection as to the
nature of the services provided by the Applicant … Some degree of imagination is
required to associate the term EQUITY LADDER with the Applicant’s services.

4 We have not considered the website printout attached to the final office action, which is
from a foreign website (Sydney, Australia) and is of limited probative value as to the
meaning of this term in the United States. While the Board accepts such evidence if it is
written in English, its probative value depends on the circumstances. Here, where the
identified services involve real estate investment it is less likely, although not out of the
question, U.S. consumers are viewing foreign websites on this issue, and the record does not
show U.S. consumer exposure to the article. See In re King Koil Licensing Co., 79 USPQ2d
1048, 1050 (TTAB 2006).

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And even if that imagination is utilized, we are still left wondering what type of
services EQUITY LADDER provides. In short, there is no evidence in the record
which indicates the instant association between the mark and the services required
to maintain the record.”5
First, there is no “wondering what type of services” are provided inasmuch as
the analysis of mere descriptiveness is not made in the abstract but rather in the
context of the applied-for services. Second, there is, in fact, evidence of record that
points to this term, EQUITY LADDER, used in the real estate industry to describe
an investment strategy that involves buying multiple real estate properties. In
addition, applicant’s services, as revealed by its specimen of use and website,
provide access to the equity ladder strategy through group-based investing.
Applicant also argues that competitors do not need to use this exact phrase
inasmuch as “there any number of phrases that could be used to conjure up the idea
of EQUITY LADDER.” This is not the test for mere descriptiveness; it is not
necessary to show competitor use of or need for the term to establish mere
descriptiveness. An applicant may be the first and only user of the term. In re Nat’l
Shooting Sports Found., Inc., 219 USPQ2d 1018 (TTAB 1983). It is well settled that
the fact that applicant may be the first or only producer of such goods and services,
and the first or only one to use the term does not render the phrase incongruous or
distinctive. Phoseon Technology Inc., 103 USPQ2d at 1826. “The fact that
applicant may be the first and/or only entity using the phrase [EQUITY LADDER]

5 App. Br. p. 12.

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is not dispositive where, as here, the term unequivocally projects a merely
descriptive connotation. Moreover, it is not necessary that the term be in common
usage in the particular industry before it can be found merely descriptive.” In re
Sun Microsystems Inc., 59 USPQ2d 1084, 1087 (TTAB 2001) (internal citations
omitted).
Applicant’s argument that the terms “equity” and “ladder” have several
definitions in other contexts, is misplaced. As noted above, the determination of
descriptiveness is made in relation to the relevant services. DuoPross Meditech
Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir.
2012). “That a term may have other meanings in different contexts is not
controlling.” In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB
2012). This does not obviate its mere descriptiveness in connection with the
identified goods and/or services. In re RiseSmart Inc., 104 UPSPQ2d 1931, 1933
(TTAB 2012). In the context of the financial real estate investment services
identified in the application, a consumer would perceive the word EQUITY to mean
the market value of property in excess of related indebtedness and the word
LADDER to mean a series of steps by which one moves up to a higher or better
position. We further note that there is nothing incongruous about the combination
of these terms in applicant’s mark, nor do they present a double entendre as was
found in Colonial Stores, Inc., 157 USPQ at 385 (SUGAR AND SPICE not merely
descriptive of bakery products because it brings to mind the nursery rhyme). In any
event, the webpages submitted by the examining attorney demonstrate use of the
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phrase “EQUITY LADDER” to describe a real estate investment strategy that
utilizes the market value of property in stages to move into a better or higher
position.
Applicant made of record several third-party registrations that include the
terms “EQUITY” or “LADDER” as part of the marks and argues that these terms
have “consistently been treated as suggestive” by the USPTO.6
The question of whether a mark is merely descriptive must be determined
based on the evidence of record at the time the registration is sought and the
allowance of prior registrations “does not bind the Board.” In re Nett Designs Inc.,
236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Certainly consistency is
important, and to the extent a sustained clear practice would be revealed by USPTO
records, that could provide some context for a term in a particular industry. This
record, however, does not provide such context. None of the third-party
registrations includes both terms. Moreover, in several examples the marks are
unitary and would not require a disclaimer. See, e.g., Reg. No. 3422069 for the
mark IF YOU BUILD IT … THE EQUITY WILL COME; Reg. No. 3465965 for the
mark EQUITYKEY; Reg. No. 3247057 for the mark EQUITITLE; Reg. No. 3150819
for the mark SPEEDEQUITY; and Reg. No. 3899926 for the mark DREAMEQUITY.
We further note that applicant included a disclaimer for the term EQUITY in its
application as filed.
Based on this record, the examining attorney has established a prima facie
case that EQUITY LADDER immediately describes a significant feature of the

6 App. Br. p. 15.
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services, namely that applicant’s financial services feature the equity ladder
investment strategy, and applicant has not sufficiently rebutted it.
Finally, applicant argues that we should resolve doubt in its favor; however,
we have no doubt that this mark is merely descriptive in connection with the
identified services. In re Finisar Corp., 78 USPQ2d 1618, 1624 (TTAB 2006); In re
Atavio, 25 USPQ2d 1361, 1362 (TTAB 1992).
Decision: The refusal to register the mark as merely descriptive of the
identified services under Section 2(e)(1) of the Trademark Act is affirmed.