Fuxa & Lewis, LLC

Trademark Trial and Appeal Board

Aug 27, 2009

No. 77101190 (T.T.A.B. Aug. 27, 2009)

Mailed: August 27, 2009
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Fuxa & Lewis, LLC
________

Serial No. 77101190
_______

Nicholas R. Lewis of Christopher & Weisberg, P.A. for
Fuxa & Lewis, LLC.

Frank J. Lattuca, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Seeherman, Hairston and Walters, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Fuxa & Lewis, LLC filed an application to register the
mark CLAIMDOLLARS (in standard character form) for services
identified as:
data compiling and analyzing in the field of
insurance; management and compilation of
computerized databases; and providing an on-line
computer database featuring trade information in
the field of insurance in International Class 35;
and

claims adjustment in the field of insurance;
providing information in insurance matters;
insurance claims processing; insurance claims
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77101190
2
administration; electronic processing of
insurance claims and payment data; appraisals for
insurance claims of personal property; and
appraisals for insurance claims of real estate in
International Class 36.1

The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act on the ground
that applicant’s mark is merely descriptive of the
identified services.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
The examining attorney maintains that the mark
CLAIMDOLLARS is merely descriptive of applicant’s services
in Classes 35 and 36. It is the examining attorney’s
position that the term “claim dollars” is “used in the
insurance industry to describe money paid out on insurance
claims” and that “claim dollar amounts” would be the “data
for and focus of” applicant’s services. (Brief,
unnumbered, p. 3). In support of the refusal, the
examining attorney submitted the following relevant
definitions from The American Heritage Dictionary of the
English Language (Fourth Edition 2000):
claim: n. 4. a. A demand for payment in
accordance with an insurance policy or other
formal arrangement. b. The sum of money demanded.

1 Serial No. 77101190, filed on February 7, 2007, alleging a bona
fide intention to use the mark in commerce.
Serial No. 77101190
3
dollar: 1. A basic unit of currency in … the
United States … .

In addition, the examining attorney made of record excerpts
of articles from the LEXIS/NEXIS database and the Internet
wherein the term “claim dollars” is used. The following
are representative examples:
From 2001 and 2002, the company reduced its
worker’s compensation claims by 40 percent and
its claim dollars by 70 percent.
Occupational Health & Safety; September, 2003.

“Now, with a depressed stock market, interest
rates at their lowest point in 40 years, and
rising claim dollars, many insurers have
implemented sharp premium increases to counteract
growing losses or have exited the business of
providing medical liability insurance entirely.”
Puget Sound Business Journal; September 13, 2002.

The Insurance Information Institute suggests that
this is occurring to the tune of something in the
neighborhood of 18 percent of the auto insurance
premium dollar. That much goes into lawyer fees
and defense costs. That’s their figure, not
mine. The claim dollar is roughly 60 percent of
the premium dollar, so that figure is magnified
to 30 percent of the claim dollar. Considering
that billions of claim dollars are spent
annually, that’s a lot of millions for the
lawyers.
Claims Magazine; October 2001.

It noted that during the 2003 Atlantic hurricane
season, “22 percent of hurricane related claim
dollars paid to Allstate customers were for
damages caused by flooding. Those claim dollars
were paid through the National Flood Insurance
Program to customers that had purchased flood
insurance.”
http://www.insurancejournal.com

Serial No. 77101190
4
On a prior engagement, a policyholder was
negotiating settlements with its excess insurance
carriers, Mr. Talbot worked with the policyholder
to evaluate possible insurance settlement
scenarios, with claim dollars in excess of $1
billion.
http://www.zoominfor.com/people/Talbot_Michael

HEADLINE: Hurricane Katrina and Insurance: Two
Years Later $40.6 Billion in Insurance Claim
Dollars Aid Recovery
http://www.insurancenewsnet.com

In nearly every case, claims involve diseases or
conditions that benefit from early detection and
treatment. I have listed the five major causes
of long term care insurance claims (with the
percentage of claim dollars they represent), and
what you can do to reduce your own risk.
http://www.longtermcareplanner.com

“We’re concerned that the rate reductions
required by this (legislation) are not tied to
actual reductions in claim dollars companies may
be paying out.”
http://www.collegian.psu.ed

The Claim Services department at IOA is the
solution to your problem. Our goal is to help
our clients reduce the claim dollars spent on
each and every claim.
http://www.ioausa.com

Applicant, in urging reversal of the refusal to
register, contends that “the term ‘claim dollars’ does not
directly denote the proposed description of services, nor
can the ‘claim dollars’ term be directly used to describe
the proposed services. Many meanings could result from use
of the term.” (Brief, p. 6) Further, applicant argues
that “considerable imagination or additional information
Serial No. 77101190
5
[is required] to readily equate CLAIMDOLLARS with
[applicant’s services],” and that this case is “directly
analogous” to In re Colonial Stores, Inc., 394 F.2d 549,
147 USPQ 382 (C.C.P.A. 1968), where the Court held that
SUGAR & SPICE was not merely descriptive of bakery
products. (Brief, p. 6)
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). A term need not immediately convey an
idea of each and every specific feature of the applicant’s
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods or services for
which registration is sought, the context in which it is
being used or is intended to be used on or in connection
Serial No. 77101190
6
with those goods or services, and the possible significance
that the term would have to the average purchaser of the
goods or services because of the manner of its use; that a
term may have other meanings in different contexts is not
controlling. In re Bright-Crest, Ltd., 204 USPQ 591 (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 convey information about them.” In re
Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
We have carefully considered the evidence of record
and the arguments made by applicant and the examining
attorney, and we conclude that the term CLAIMDOLLARS is
merely descriptive of applicant’s services. Applicant’s
services are identified as:
data compiling and analyzing in the field of
insurance; management and compilation of
computerized databases; and providing an on-line
computer database featuring trade information in
the field of insurance in International Class 35;
and

claims adjustment in the field of insurance;
providing information in insurance matters;
insurance claims processing; insurance claims
administration; electronic processing of
insurance claims and payment data; appraisals for
insurance claims of personal property; and
appraisals for insurance claims of real estate in
International Class 36.
Serial No. 77101190
7
The LEXIS/NEXIS and Internet evidence shows that
“claim dollars” is a term used in the insurance field to
describe the money paid out in insurance claims. The
evidence also shows that managing or reducing “claim
dollars” is a concern of insurance companies, e.g. “the
company reduced … its claim dollars by 70 percent;” “with a
depressed stock market … and rising claim dollars, many
insurers have implemented sharp premium increases;” “[t]he
claim dollar is roughly 60 percent of the premium dollar,
so that figure is magnified to 30 percent of the claim
dollar;” “not tied to actual reductions in claim dollars
companies may be paying out;” and “our goal is to help our
clients reduce the claim dollars spent on each and every
claim.”
We find, therefore, that the term “claim dollars”
would immediately inform the clients of applicant’s
services that a salient feature or characteristic of those
services is the management or reduction of the amount paid
out on clients’ insurance claims, i.e., “claim dollars.”
Applicant’s mark CLAIMDOLLARS is simply a combined version
of the descriptive term “claim dollars” without a space
between the two words. As a single term, CLAIMDOLLARS is
equally descriptive of applicant’s services. It has
frequently been held that “telescoping” or joining two
Serial No. 77101190
8
words which as a whole are merely descriptive of the goods
or services into a single term does not avoid a finding of
mere descriptivnes for the combined term. See, e.g., In re
Omaha National Corp., 819 F.2d 1117. 2 USPQ2d 1859 (Fed.
Cir. 1987) [FIRSTIER, telescoped equivalent of “first tier”
is merely descriptive of banking services]; and In re A La
Vielle Russie Inc., 60 USPQ2d 1895, 1897, n.2 (TTAB
2001)[“the compound term RUSSIANART is as merely
descriptive as its constituent words, ‘Russian art’”].
Given the specific meaning of “claim dollars” which is
directly relevant to applicant’s services in the insurance
field, we are not persuaded by applicant’s contention that
many meanings could result from use of the term. We must
determine whether the term is merely descriptive as it is
used in connection with the recited services, not in the
abstract. In re Bright-Crest Ltd., supra. Furthermore,
applicant’s argument that the term does not “directly
denote” (i.e., name or designate) applicant’s services is
also unpersuasive because the issue before us is mere
descriptiveness, not genericness. Finally, we find that
the instant mark is not analogous to the mark SUGAR & SPICE
in In re Colonial Stores Inc., supra. In that case, the
Court found that SUGAR & SPICE functioned as a trademark
for bakery products because “sugar and spice” is a well-
Serial No. 77101190
9
known phrase taken from a nursery rhyme. The mark created
a “double entendre” where one of the meanings was not
merely descriptive in relation to the goods. Applicant has
not explained how the mark CLAIMDOLLARS creates a double
entendre, and it is not readily apparent to us. To be
found a double entendre, the non-descriptive meaning must
be readily recognizable. See In re The Place Inc., 76
USPQ2d 1467 (TTAB 2005) [“The multiple interpretations that
make an expression a ‘double entendre’ must be associations
that the public would make fairly readily,” quoting TMEP
§1213.05(c)].
We conclude that applicant’s applied-for mark
CLAIMDOLLARS is merely descriptive of applicant’s services
in Classes 35 and 36.
Decision: The refusal to register under Section
2(e)(1) is affirmed as to the services in Classes 35 and
36.