Florida Family Insurance Services, LLC

Trademark Trial and Appeal Board

Jul 23, 2002

No. 75877976 (T.T.A.B. Jul. 23, 2002)

Paper No. 12
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Florida Family Insurance Services, LLC
________
Serial No. 75/877,976
_______
Paul E. Schaafsma and Joseph M. Talarico of Foley and
Lardner for Florida Family Insurance Services, LLC.
Jeremy M. Klass, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Cissel, Walters and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Florida Family Insurance Services, LLC sought to
register the term BIG RE INTERMEDIARIES on the Principal
Register in conjunction with services recited, as amended,
as “insurance services, namely, the brokering of
reinsurance,” in International Class 36.1
Registration was finally refused pursuant to Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on
1 Application Serial No. 75/877,976 was filed on December 22,
1999 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce under Section 1(b) of the Act.
Absent any subsequent allegation of use, this application remains
an intent-to-use application.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/877,976
- 2 -
the ground that applicant’s mark is merely descriptive of
its services.
Applicant filed this appeal, but did not request an
oral hearing before the Board. Both applicant and the
Trademark Examining Attorney have fully briefed the case.
We affirm the refusal to register.
The test for determining whether a mark is merely
descriptive is whether the term immediately conveys
information concerning a quality, characteristic, function,
ingredient, attribute or feature of the product or service
in connection with which it is used, or is intended to be
used. In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979);
In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986).
It is not necessary, in order to find a mark merely
descriptive, that the mark describe each feature of the
goods, only that it describe a single, significant quality,
feature, etc. In re Venture Lending Associates, 226 USPQ
285 (TTAB 1985). Further, it is well established that the
determination of mere descriptiveness must be made not in
the abstract or on the basis of guesswork, but in relation
to the services in connection with which registration is
sought, the context in which the mark is used, or is
intended to be used, and the impact that it is likely to
Serial No. 75/877,976
- 3 -
make on the average purchaser of such goods or services.
In re Recovery, 196 USPQ 830 (TTAB 1977).
We must consider the issue of descriptiveness before
us in relation to the services identified in the instant
application, i.e., reinsurance brokerage services. While
we must consider the mark in its entirety, it is
permissible, as argued by the Trademark Examining Attorney,
to focus sequentially on the various components of a
composite mark to understand what its overall connotation
will be to members of the relevant public.
The record herein makes it clear that the term “RE”
has gained wide acceptance in the insurance industry as a
shortened form of “Reinsurance.”2 Equally clear from the
Lexis/Nexis excerpts submitted by the Trademark Examining
Attorney is the fact that reinsurance brokers, such as
applicant, often function as “intermediaries” between the
reinsurance companies and the ceding3 insurance company:
“YDJ Reinsurance Intermediaries LLC, a reinsurance
brokerage firm…” (A.M. Best Company, Nov. 17, 2000), and
2 From the Lexis/Nexis excerpts placed into the record by the
Trademark Examining Attorney, we see trade names for insurance
intermediaries, such as Sten-Re, American Re, North American Re,
U.S. Re Corp., Inter-Ocean Re, Aon Re Worldwide, Sedgwick Re,
WinterBrook Re Intermediaries, Trenwick American Re, Alexander
Re, Munich Re, Zurich Centre Re Group-U.S., Allmerica Re division
of Hanover, IPC Re, USF Re, Crump Re and Magnant Re.
3 To “Cede” is to transfer to a reinsurer all or part of the
insurance or reinsurance risk written by a ceding company.
Serial No. 75/877,976
- 4 -
“Aside from employing brokers, reinsurance intermediaries
today now hire lawyers, mathematicians…” (Business
Insurance, Nov. 10, 1997). Accordingly, we find that “RE
INTERMEDIARIES” is a highly descriptive term for
reinsurance brokers such as applicant, and for the services
that such firms provide.
As to the word “big,” classified within the category
of merely descriptive designations are those expressions
that Professor McCarthy refers to as “puffing” or “self-
laudatory terms.”4 As noted by the Trademark Examining
Attorney, words like “big” are commonly used in trademarks
and service marks as a laudatory term. However, a term
indicating nothing but high quality or large size surely
cannot function inherently as an indicative of origin to
the purchasing public. See In re Bush Bros. & Co. 884 F.2d
569, 12 USPQ2d 1058 (Fed. Cir. 1989) [DELUXE]; Exquisite
Form Industries, Inc. v. Exquisite Fabrics of London, 378
F.Supp. 403, 183 USPQ 666 (S.D.N.Y. 1974) [EXQUISITE]; In
re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995)
[SUPER BUY]; In re Ervin, 1 USPQ2d 1665 (TTAB 1986) [THE
ORIGINAL]; In re Inter-State Oil Co., 219 USPQ 1229 (TTAB
1983) [PREFERRED]; In re Royal Viking Line A/S, 216 USPQ
4 2 J. McCarthy, McCarthy on Trademarks & Unfair Competition,
§ 11.17 (4th ed. 2001).
Serial No. 75/877,976
- 5 -
795 (TTAB 1982) [WORLD CLASS]; and In re Wileswood, Inc.,
201 USPQ 400 (TTAB 1978) [AMERICA’S BEST POPCORN! and
AMERICA’S FAVORITE POPCORN!]. Each of the expressions from
these reported decisions indicate that the objects to which
they are applied stand out preeminently above the class to
which they belong by reason of some outstanding achievement
or quality. This is especially relevant when the word
“big” is used in this particular business inasmuch as
several of the Lexis/Nexis excerpts suggest that ongoing
industry consolidation has resulted in increasingly large,
global megabrokers:
… Over the past 12 months, such household
names … have been lost in the consolidation
frenzy… At the same time, other reinsurance
brokers also have joined forces to form new
global players… As brokers still sort out
the effects of consolidation, they agree
that the merger and acquisition movement is
not over yet… “New Brokers Debut in Top 10:
Consolidations Form Dominant Global
Players,” Business Insurance, November 10,
1997.
… The reinsurance intermediaries in the
United States number around 90 firms, with
that number drastically reduced when we are
talking about reinsurance brokers that are
capable of brokering a complete reinsurance
program for a property and casualty company…
The top 10 reinsurance intermediaries in the
United States have certain general
characteristics… “Small, Medium-Sized
Brokers Losing Independence,” National
Underwriter, June 19, 1989.
Serial No. 75/877,976
- 6 -
Hence, based upon this record, we find that when the
laudatory term BIG is placed directly in front of the
highly descriptive designation, RE INTERMEDIARIES,
applicant’s claimed service mark immediately conveys
information concerning characteristics or attributes of
applicant’s reinsurance brokerage services, namely, that
applicant purports to be a big reinsurance broker, which
functions as an intermediary between the reinsurance
underwriting company and the ceding insurance company.5
Applicant argues that the Trademark Examining Attorney
has improperly dissected the composite mark. In the event
that the combined term, “BIG RE,” for example, were to have
another specific connotation, it might be possible for the
entire composite herein to take on another meaning.
However, nowhere has applicant identified any alternative,
non-descriptive meaning for this combined term, “BIG RE.”
Hence, we find that the entire term BIG RE INTERMEDIARIES
is merely descriptive of the recited services.
Decision: The refusal to register is affirmed.
5 There is nothing in the record indicating whether or not
applicant’s assets and transactions would qualify it for
inclusion in the class of the behemoths in the industry. In any
case, whether a megabroker or not, Section 2(e)(1) precludes
registration of this matter to applicant as being either merely
descriptive, or in the alternative, as being deceptively
misdescriptive.