Fortis Benefits Insurance Co.

Trademark Trial and Appeal Board

Apr 17, 2001

No. 75242114 (T.T.A.B. Apr. 17, 2001)

4/17/01
Paper No. 19
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Fortis Benefits Insurance Company
________
Serial No. 75/242,114
_______
Marsha Stolt of Fish & Richardson P.C., P.A. for Fortis
Benefits Insurance Company.
Amos T. Matthews, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Cissel, Hairston and Hanak, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On February 14, 1997, applicant filed the above-
referenced application to register the mark "DCP” on the
Principal Register for “insurance services, namely, claims
administration and processing,” in Class 36. The
application was based on applicant’s assertion that it
possessed a bona fide intention to use the mark in commerce
in connection with the services.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/242,114
2
After the application was approved for publication,
applicant filed a Statement of Use claiming that applicant
had used the mark in interstate commerce since June 20,
1997 by applying it to advertising and promotional
materials for applicant’s services. Specimens of use were
attached.
The Examining Attorney found the specimens to be
unacceptable as evidence of use of the mark in connection
with the services recited in the application. Applicant
responded by submitting additional specimens, but the
Examining Attorney did not accept them either.
Applicant then filed a Notice of Appeal, amended the
recitation of services to state the services with which the
mark is used as “insurance services, namely, claims
administration and processing provided by employees who
have completed specialized training and the subject,” in
Class 36, and requested reconsideration of the requirement
for substitute specimens.
The Board instituted the appeal, but suspended action
on it and remanded the application to the Examining
Attorney for reconsideration of the requirement for
substitute specimens. Upon reconsideration, he maintained
that the specimens applicant has submitted are not
Ser No. 75/242,114
3
acceptable, and returned the application file to the Board
for resumption of action on the appeal.
Both applicant and the Examining Attorney filed appeal
briefs, but applicant did not request an oral hearing
before the Board.
The sole issue in this appeal is the acceptability of
the specimens of use submitted by applicant. Based on
careful consideration of the record in this application and
the arguments presented by both applicant and the Examining
Attorney, we find that the requirement for acceptable
specimens is well taken.
Section 1(a)(1) of the Lanham Act provides that an
application for registration must include specimens
evidencing the use of the mark sought to be registered.
Implicit in this section is that the specimens must show
the mark used to identify the services specified in the
application. In re Adair, 45 USPQ2d 1211 (TTAB 1997).
The Examining Attorney does not contend that applicant
is not rendering the services recited in the application,
and he readily concedes that the letters sought to be
registered appear in several different places in the
printed advertisements submitted by applicant as specimens
of use. The problem the Examining Attorney has with the
specimens is that they show use of “DCP” as a designation
Ser No. 75/242,114
4
used to signify the educational achievements or
qualifications of the individual employees who work for
applicant, rather than as a service mark used to identify
the source of the services applicant provides.
The specimens originally submitted with the
application are advertisements which show the letters
sought to be registered in two places. The text of the
advertisement begins with the following statement:
“To insure competency in all aspects of
disability claims management, Fortis Benefits
Insurance Company has implemented a new skills
certification program with an emphasis on continuing
education for disability claims employees.”
The program is further described as consisting of
tests on a range of subjects that all disability claims
employees of applicant are required to complete. The
advertisement goes on to state that
“[u]pon completion, employees earn a diploma
(sic) and the right to use the Disability Claims
Professional (DCP1) designation, exclusive to Fortis
Benefits, after their names. ‘The DCP designation
sets us apart in the industry as an organization that
values and promotes knowledge, continuous learning and
development, and the professionalism of its claims
staff,’ says Tom. ‘It was introduced to recognize
1The specimens show the service mark designation indicated by the
letters “SM” in superscript each time the letters “DCP” appear,
but the equipment on which this opinion is produced is incapable
of printing this symbol.
Ser No. 75/242,114
5
disability claims employees for their accomplishments
in continuing education.”
A box inserted in the middle of the page on which this
text appears lists highlights of the program, including the
notation “DCP designation introduced to recognize
continuing education efforts.”
The second specimen submitted by applicant is another
printed advertisement for applicant’s services. The
following is thr only part of the advertisement which uses
the letters sought to be registered. It appears under the
heading of “Who processes the claims?”:
“All members of the disability claims area are
required to earn the Disability Claims Professional
(DCP) designation, exclusive to Fortis Benefits.
Earning this designation involves taking eleven exams
designed to test product and procedure knowledge and
claims management thinking. To maintain the
designation, disability claim employees must
successfully complete an annual exam on topics not
included in their original testing. They must also
pass a recertification test consisting of previous
exam material every other year.”
We agree with the Examining Attorney that as used by
applicant in the specimens, the letters “DCP” indicate that
applicant’s employees have met applicant’s requirement that
they pass tests which measure their knowledge in the field
of processing claims, but neither of the specimens
submitted by applicant shows the letters applicant seeks to
Ser No. 75/242,114
6
register used as a service mark to identify the source of
the insurance services recited in the application.
The Board has held that a term used solely as a
designation for those who have completed an applicant’s
educational course does not function as a mark to identify
and distinguish the applicant’s educational services from
similar services provided by others. In re Thacker, 228
USPQ 961 (TTAB 1986). In that case, we drew the analogy
to a number of previous decisions involving the issue of
whether titles or degrees were being used as certification
marks or as collective membership marks, rather than as
service marks. We concluded that unless the specimens of
record in an application clearly show the matter sought to
be registered used “in a manner which would be perceived as
identifying the services of applicant rather than the
individuals who complete applicant’s educational course,”
registration is not warranted.
In the case at hand, the specimens, as noted above, do
not show the letters “DCP” used to identify the source of
the insurance services set forth in the application.
Instead, what the specimens show is that individual
employees of applicant are authorized to use the letters
after their names as a “designation” that they have met
applicant’s standards for “knowledge, continuous learning
Ser No. 75/242,114
7
and development, and professionalism…” Use in this manner,
as a designation of the qualifications of the individuals,
is not use of the letters to indicate the source of the
services performed for applicant by such individuals, so
the facts that all authorized users of the designation are
employees of applicant and that all employees handling
disability claims for applicant are required to obtain and
maintain their status as Disability Claims Professionals,
or “DCPs,” is irrelevant.
The instant case is not analogous to In re Advertising
& Marketing Development, 821 F.2d 614, 2 USPQ2d 2010 (Fed.
Cir. 1987). There, the issue was whether the mark was
being used as a service mark for both for the service of
promoting the sale of the goods and services of the
applicant’s clients as well as for the services provided by
the clients themselves. The applicant was an advertising
agency which sold promotional campaigns in which the term
sought to be registered was used by applicant’s clients to
promote the services of the clients, but the record also
included specimens in which the mark clearly was used by
the applicant to identify the promotional services
applicant provided to its clients.
In the case at hand, however, we are not presented
with a single instance in which the letters sought to be
Ser No. 75/242,114
8
registered are used in any way other than in reference to
the fact that individuals employed by applicant have met
applicant’s training requirements.
Applicant’s basic argument is that “[a]pplicant
believes that the Examining Attorney has inappropriately
focused his attention on the few sentences surrounding the
mark as it is used in the Specimen Brochure, rather than
viewing the mark as it is used within the context of the
Specimen Brochure as a whole.” (brief p. 3). While both
the Board and the Examining Attorney have considered both
specimens in their entireties in order to evaluate the
registrability of the designation in issue, it is
completely appropriate to focus our attention on precisely
how the letters are used in the specimen advertisements
because it is this use which must provide the basis upon
which we determine whether or not the letters are used as a
mark to identify applicant’s services and distinguish them
from similar services rendered by others.
Because the specimens submitted by applicant do not
show the letters sought to be registered used as a service
mark to identify the source of the services recited the
application, the requirement for acceptable specimens under
Section 1(a)(1) of the Lanham Act is well taken.
Decision: The refusal to register is affirmed.
Ser No. 75/242,114
9
Ser No. 75/242,114
10