Joshua David Mellberg, LLC

Trademark Trial and Appeal Board

Apr 4, 2017

No. 76717807 (T.T.A.B. Apr. 4, 2017)

Mailed:
April 4, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Joshua David Mellberg, LLC
________

Serial No. 76717807
_______

David G. Bray of Dickinson Wright PLLC,
for Joshua David Mellberg, LLC.

Thomas Young, Trademark Examining Attorney, Law Office 120
David Miller, Managing Attorney.
_______

Before Quinn, Ritchie, and Kuczma, Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Joshua David Mellberg, LLC (“Applicant”) filed an application to register
on the Principal Register the mark SOCIAL SECURITY/ANNUITY
STRATEGIES, in standard character format, for services ultimately
identified as “financial planning and retirement financial planning services,”
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 76717807
2
in International Class 36.1 The application disclaims the exclusive right to
use the term “SOCIAL SECURITY” apart from the mark as shown.
The Trademark Examining Attorney refused registration on the ground
that the applied-for mark is merely descriptive of the services pursuant to
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). When the refusal
was made final, Applicant filed this appeal, which is fully briefed. For the
reasons discussed below, we affirm the refusal to register.
Mere Descriptiveness
A term is deemed to be merely descriptive of goods or services, within the
meaning of 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 In re Chamber of Commerce of the U.S., 675 F.3d 1297,
102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Gyulay, 820 F.2d 1216,
3 USPQ2d 1009 (Fed. Cir. 1987)); see also In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). 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
on or in connection 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

1 Serial No. 76717807, filed on April 2, 2015, under Section 1(b) of the Trademark
Act, 15 U.S.C. §1051(b), based on Applicant’s assertion of a bona fide intent to use
the mark in commerce.
Ser. No. 76717807
3
different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591,
593 (TTAB 1979). Moreover, 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 to convey information about them.” In
re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). See also In re
Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998); In re
Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and
In re American Greetings Corporation, 226 USPQ 365 (TTAB 1985). On the
other hand, if a mark requires imagination, thought and perception to
ascertain the nature of the goods or services, then the mark is suggestive.
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd, 695 F.3d 1247, 103
USPQ2d 1753, 1755 (Fed. Cir. 2012) (citing In re Abcor Dev. Corp. 200 USPQ
215).
A composite of descriptive terms is registrable only if it has a separate,
non-descriptive meaning. In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ
382, 385 (CCPA 1968) (holding SUGAR & SPICE not merely descriptive of
bakery products). The Examining Attorney argues that the applied-for mark
SOCIAL SECURITY/ ANNUITY STRATEGIES is descriptive because it:
merely describes a characteristic or feature of applicant’s
services namely, that applicant’s financial planning and
retirement financial planning services feature information and
advice on Social Security benefits and annuities, including how
Ser. No. 76717807
4
to optimize the value of one’s fixed payments received from
Social Security.2

Applicant argues, by contrast, that it would take a “mental leap” for
consumers to determine that SOCIAL SECURITY/ANNUITY STRATEGIES
“represents the combination of both social security benefits and annuity
strategies.”3 In particular, Applicant argues that it provides advice on
“insurance and investments intended to coordinate with guaranteed Social
Security Benefits that retirement income needs are met.”4 Applicant further
elaborates that it “provides a service intended to seamlessly combine social
security benefits and annuity strategies, two concepts that are not naturally
associated together.”5 The Examining Attorney submitted the following
definitions of “social security,” “annuity,” and “strategy” in relevant part:
social security: 1. Any government system that provides
monetary assistance to people with an inadequate or no income.6

annuity: 2. A contract or agreement by which one receives fixed
payments on an investment for a lifetime or for a specified
number of years.7 1.1. A form of insurance or investment
entitling the investor to a series of annual sums.8

strategy: A plan of action or policy designed to achieve a major
or overall aim: time to develop a coherent economic strategy. 9

2 6 TTABVUE 3-4.
3 4 TTABVUE 8.
4 4 TTABVUE 6.
5 11 TTABVUE 2.
6 Oxforddictionaries.com/us. Attached to January 28, 2016 Final Office Action, at 3.
7 Ahdictionary.com. Attached to July 14, 2015 Office Action, at 9.
8 Oxforddictionaries.com/us. Attached to January 28, 2016 Final Office Action, at 6.
Ser. No. 76717807
5
The Examining Attorney also submitted the following definition of the “/”
symbol on brief, asking that we take judicial notice thereof:
slash: 2. An oblique stroke (/) in print or writing, used between
alternatives (e.g. and/or), in fractions (e.g. ¾), in rations (e.g.
miles/day), or between separate elements of a text.10

The Examining Attorney submitted a number of third-party web pages
that refer to the concept of Social Security as being an “annuity” program or
that refer specifically to Social Security as a type of annuity, in some cases
noting that this is a “strategy” that may be used for retirement financial
planning. Some examples include the following (emphasis added):
The Wall Street Journal: An Annuity Plan Called Social
Security: Deferring Benefits Can Yield a Significant
Advantage: By Carolyn T. Geer; September 29, 2013; Know how
to get a great deal on an annuity today? Tap your 401(k) or IRA
for living expenses in your first few years of retirement so you
can postpone taking Social Security. . . .But for every year you
defer past that, up to age 70, your Social Security benefits will
rise by 6% to 8%. Those are real, inflation-adjusted rates of
return, guaranteed by the U.S. government. Where else can you
get a return like that these day with real interest rates close to
zero? Wsj.com.11

Center for Retirement Research at Boston College: Should you
Buy an Annuity from Social Security?: By Steven A. Sass;
May 2012; Households now retiring need to transform their
401(k) and IRA savings into retirement income. One way is to
delay claiming Social Security to increase their monthly benefit,
using savings to pay current expenses while they wait. In effect,
they are buying an annuity from Social Security. The savings

9 Oxforddictionaries.com/us. Attached to January 28, 2016 Final Office Action, at 9.
10 Oxforddictionaries.com/definitions.us. Attached to 6 TTABVUE 11-12. See, e.g., In
re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013) (Board may take
judicial notice of online dictionaries that exist in printed format or have regular
fixed editions).
11 July 14, 2015 Office Action, at 11.
Ser. No. 76717807
6
used is the “price” and the increase in their monthly benefit the
Annity income it “buys.” [sic] Buying an annuity from Social
Security is generally the best deal in town, especially in today’s
low interest-rate environment. http://crr.bc.edu.12

Social Security Choices: How Valuable is Your Social Security?:
If you are a married couple and you both have earned Social
Security benefits, look at Your Social Security Statements you
receive each year. Many retirement advisors recommend that
you should spend no more than 4% of your retirement savings
each year to protect yourself against future inflation. If we use
this as a guideline, then a Social Security annuity that pays
you and your spouse $3500 a month or $42,000 a year will
actually pay you more than you should be spending out of
savings of more than $1 million. Socialsecuritychoices.com.13

RAND Labor and Population: Project: Valuing the Social
Security Annuity: Background: Currently, few Americans opt
to annuitize their Social Security payments. A better
understanding of individuals’ preference for annuitization will
inform the debate on Social Security reform. Overview: The
Financial Literacy Center is evaluating to what extent
individuals value having Social Security payouts in the form of
annuities versus lump-sum amounts. Rand.org.14

The Briarwood Community: Create Your Own Social Security
“Annuity”: Posted August 9, 2012; Many retirees hope to use
their hard-earned money as a source of income. . . When interest
rates are low, this path is especially appealing because the 7% to
8% guaranteed Social Security income increase (calculated by
waiting) surpasses the nominal rates currently realized on
savings accounts. . . . What does any of this have to do with
annuities? Well, in simple terms, an annuity is something you
buy to generate a monthly income. By delaying Social
Security, you’re essentially “buying” a higher payout by the
mere act of waiting. Naturally, this road is right for some people
but not for others. Briarwoodretirement.com.15

WealthManagement.com: Who’s Got the Best Annuity Deal in
Town?: It may surprise you, but “buying” Social Security’s

12 July 14, 2015 Office Action, at 15-16.
13 July 14, 2015 Office Action, at 29.
14 July 14, 2015 Office Action, at 27.
15 January 28, 2016 Final Office Action, at 34-35.
Ser. No. 76717807
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annuity by delaying withdrawals and living on other assets
best enhances overall retirement income. By Mark Miller; June
7, 2012 . . . The CRR brief was written by Steven Sass, program
director of the center’s Financial Security Project. He concluded
that traditional retirement income strategies – preserving
principal and living on the interest, or investing in stocks and
bonds and drawing out a portion as income – both fell short
when compared with a Social Security annuity.
Wealthmanagement.com16

Lifelong Retirement Corp: Social Security Planning
Strategies: . . . The difference between the benefit amount you
will receive at full retirement age and age 70 is significant. It is
for this reason, combined with the fact that Social Security:
• is guaranteed
• receives special tax treatment
• includes COLAs (Cost of Living Adjustments)
that many choose to draw down on their retirement assets
rather than claiming their benefits at full retirement age. This
strategy, coined “buying a social security annuity” is
becoming a popular strategy given the uncertainty of the
markets and the increasingly difficult challenge of protecting
purchasing power in retirement. Lifelongretirementcorp.com17

The Examining Attorney also submitted evidence of third-party web pages
that refer descriptively to “annuity strategies” as a part of retirement
financial planning, in some cases presenting it as an alternative or
supplement to Social Security benefits. Examples include the following
(emphasis added):
Senior Benefit Center: Shrewd Ways to Maximize Your Social
Security Benefits: Annuity Strategies: . . . Two Annuity
Suggestions that you may want to look into . . . Senior-benefit-
center.com.18

aboutmoney: Annuity Strategies: Income Later Annuity
Strategies or Target Date Annuity Planning allows you to start

16 January 28, 2016 Final Office Action, at 37-38.
17 January 28, 2016 Final Office Action, at 41-42.
18 January 28, 2016 Final Office Action, at 50.
Ser. No. 76717807
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a guaranteed income stream at a future date.
Annuities.about.com.19

Kingsview Asset Management: Insurance & Annuity
Strategies: Risk tolerance and return expectations will vary
from investor to investor. To provide proper alternatives,
Kingsview offers a host of insurance and annuity products from
the industry’s leading carriers. These products may be chosen as
a standalone investment or incorporated as a crucial part of
your Kingsview developed financial plan. Kingsview.com.20

InvestmentNews: Special Report: Annuity Strategies: Feb 22,
2015, An in-depth look at the latest trends in the annuity world,
including which products are gaining traction in retirement
plans. Investmentnews.com.21

STAN The Annuity Man: Annuity Strategies: All annuity
strategies used and recommended only show the contractual
guarantees of the policy.
Stantheannuityman.com.22

Bankrate: Retirement Blog: Annuity strategy to keep income
flowing: October 8, 2015; Having enough guaranteed income in
retirement to pay basic bills – taxes, utilities, food, insurance,
transportation, and rent or a mortgage if you have one – can be
partially covered by Social Security. And if you have an old-
fashioned defined benefit pension, it may very likely cover the
rest of the essential nut. Research by TIAA-CREFF Institute
found that about half of Americans in their 50s don’t have a
defined benefit pension and will be dependent on a modest
amount of Social Security and an unpredictable paycheck
deducted from savings. This situation can leave retirees in
danger of running out of money even to pay for necessities. The
report, prepared by David Babbel, a professor of Finance at the
University of Pennsylvania Wharton School, found that the best
way around this risk is to buy a fixed-income annuity.
Bankrate.com.23

19 January 28, 2016 Final Office Action, at 52.
20 January 28, 2016 Final Office Action, at 56.
21 January 28, 2016 Final Office Action, at 57.
22 January 28, 2016 Final Office Action, at 59.
23 January 28, 2016 Final Office Action, at 62-63.
Ser. No. 76717807
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From this evidence, we find that Social Security is often presented as an
alternative and/or a supplement to an annuity as a strategy in retirement
financial planning. We further find that Applicant’s proposed mark, “SOCIAL
SECURITY/ANNUITY STRATEGIES,” when offered in connection with the
applied-for services, will be interpreted as providing alternatives to
consumers of strategies regarding Social Security and annuity options.
In this regard, we note that despite Applicant’s arguments on brief, we
must consider the mark in relation to the services, and not in a vacuum. See
In re Bright-Crest, Ltd., 204 USPQ at 593. There is nothing incongruous
about the combination of SOCIAL SECURITY/ANNUITY STRATEGIES in
relation to Applicant’s applied-for services. cf. In re Colonial Stores, Inc., 157
USPQ at 385.
Based on the plain meaning of the term as a whole as well as the third-
party evidence and Applicant’s own statements, we find that Applicant’s
composite term “SOCIAL SECURITY/ANNUITY STRATEGIES,” when
viewed in relation to Applicant’s services, immediately conveys that
Applicant’s financial planning and retirement financial planning services
may include discussions of both Social Security and annuity options, as well
as, specifically, Social Security as a type of annuity strategy or program.
While doubt is resolved for Applicant, we have no doubt that consumers
require no imagination, thought or perception to arrive at this conclusion. See
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd, 103 USPQ2d at 1755.
Ser. No. 76717807
10
Therefore, we find that the proposed mark is merely descriptive of the
identified services, and we affirm the refusal to register.
Decision: The Board affirms the refusal to register.