Florida State University Credit Union

Trademark Trial and Appeal Board

Jul 12, 2010

No. 77415033 (T.T.A.B. Jul. 12, 2010)

Hearing: Mailed:
5/6/10 7/12/10

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Florida State University Credit Union
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Serial No. 77415033
_______

Theodore A. Breiner of Breiner & Breiner for Florida State
University Credit Union.

Matt Einstein, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).
_______

Before Quinn, Zervas and Walsh, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Florida State University Credit Union filed, on March
6, 2008, an intent-to-use application to register the mark
COLLEGIATE COMMUNITY FINANCIAL for “credit union services.”
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that applicant’s mark, as
proposed to be used in connection with applicant’s
services, is merely descriptive thereof.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Ser No. 77415033
2
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.1
Applicant’s counsel and the examining attorney appeared at
an oral hearing before this panel.
Applicant contends that its mark is a coined name, a
composite of three unrelated words that are not normally
used together. Thus, applicant claims, the mark is not
needed by others to describe their credit union services
and, in this connection, applicant points to the absence of
evidence of any third-party uses of “collegiate community
financial.” Further, applicant argues, the mark is subject
to a number of different meanings (although it fails to
identify any of them). In support of its position that the
mark is just suggestive, applicant submitted copies of six
third-party registrations of marks (covering financial
services) that include at least one of the words present in

1 Applicant submitted, for the first time with its appeal brief,
an exhibit of which, according to applicant, the Board may take
judicial notice. The examining attorney objected to the evidence
as being untimely submitted. Although the submission was
untimely under Trademark Rule 2.127(d), applicant requested, in
any event, that the Board take judicial notice of the document
retrieved from the website of the World Council of Credit Unions
showing that, as of 2008, there were 7,969 credit unions in the
United States. This information is not proper subject matter for
judicial notice. TBMP §704.12 (2d ed. rev. 2004). Accordingly,
the request is denied, and we have not considered this evidence
in making our determination. We hasten to add, however, that
even if considered, this evidence does not mandate a different
decision on the merits.
Ser No. 77415033
3
applicant’s mark, yet none of the registrations issued
under Section 2(f) with a claim of acquired distinctiveness
or included a disclaimer. Applicant also referenced seven
additional third-party marks (covering a variety of goods
and/or services far removed from the financial sector)
found by the Board, in precedential decisions, to be not
merely descriptive. Applicant urges that the third-party
marks create, at the very least, doubt as to the mere
descriptiveness of applicant’s mark.
The trademark examining attorney maintains that the
applied-for mark immediately describes the intended users
and function of applicant’s services, namely “applicant
offers money services to people living in the area of, and
related to a college.” That is, “the mark merely describes
that applicant offers financial services to a collegiate
community.” (Brief, p. 5). The examining attorney
submitted nineteen registrations covering financial
services wherein the words “collegiate,” “community” and/or
“financial” are disclaimed apart from the mark. Additional
registrations show the same words disclaimed apart from
marks specifically for credit union services.
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the products and/or
Ser No. 77415033
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services it identifies. In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009, 1009 (Fed. Cir. 1987). Whether a particular
term is merely descriptive is determined in relation to the
goods and/or services for which registration is sought and
the context in which the term is used, not in the abstract
or on the basis of guesswork. In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re
Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words,
the question is not whether someone presented only with the
mark could guess the goods and/or services listed in the
identification of goods and/or services. Rather, the
question is whether someone who knows what the goods and/or
services are will understand the mark to convey information
about them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-
1317 (TTAB 2002); In re Patent & Trademark Services Inc.,
49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders
Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB
1990); In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
The following dictionary definitions (all retrieved
from www.encarta.msn.com) are of record:
collegiate: of college: belonging to,
appropriate to, or being a college,
including its students and their
pursuits.

Ser No. 77415033
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community: people in an area: a group
of people who live in the same area, or
the area in which they live; people
with a common background: a group of
people with a common background or with
shared interests within society.

financial: connected with money:
relating to or involving money or
finance.

Based on the commonly understood and readily
recognized meanings of the words comprising applicant’s
mark, we find that COLLEGIATE COMMUNITY FINANCIAL is merely
descriptive of credit union services. The mark immediately
describes the fact that applicant’s financial services,
namely credit union services (obviously a type of financial
service) are offered to a collegiate community, that is, a
community affiliated with a college. Nothing in the mark
is incongruous, indefinite or ambiguous when considered in
relation to applicant’s credit union services and,
consequently, no imagination, cogitation or gathering of
further information would be necessary in order for
customers to perceive the merely descriptive significance
of COLLEGIATE COMMUNITY FINANCIAL.
The competing evidence of third-party registrations
submitted by applicant and the examining attorney is of
little probative value in determining whether the mark
involved herein is merely descriptive. Although the number
Ser No. 77415033
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of registrations falls in favor of the examining attorney’s
position, as often stated, each case must stand on its own
record and, in any event, the Board is not bound by the
actions of prior examining attorneys. See In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001) (“Even if some prior registrations had some
characteristics similar to [applicant’s] application, the
PTO’s allowance of such prior registrations does not bind
the board or this court.”). See also In re International
Taste Inc., 53 USPQ2d 1604, 1606 (TTAB 2000) (“With respect
to third-party registrations which include disclaimers...we
do not have before us any information from the registration
files as to why an Examining Attorney required and/or why
the applicant/registrant offered such disclaimers.”). The
lack of probative value is especially true when considering
the third-party marks for services far removed from credit
union services.
We also are not persuaded by applicant’s claim that no
other entity has a need to use the mark and that, indeed,
no other entity uses it. The fact that applicant may be
the first and/or only user of a merely descriptive
designation does not justify registration if the only
significance conveyed by the term is merely descriptive.
See In re National Shooting Sports Foundation, Inc., 219
Ser No. 77415033
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USPQ 1018 (TTAB 1983). Moreover, it is not necessary that
the term be in common usage in a particular industry before
it can be found merely descriptive. See In re Sun
Microsystems Inc., 59 USPQ2d 1084, 1087 (TTAB 2001).
Anyone marketing financial services, including credit union
services, to a community affiliated with a college might
well have occasion to use the words “collegiate community
financial” to describe their services.
Decision: The refusal to register is affirmed.