Joshua David Mellberg, LLC

Trademark Trial and Appeal Board

Mar 23, 2017

No. 76717806 (T.T.A.B. Mar. 23, 2017)

Mailed:
March 23, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Joshua David Mellberg, LLC
________

Serial No. 76717806
_______

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, in
standard character format, for services ultimately identified as “financial
planning and retirement financial planning services,” in International Class
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 76717806
2
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. 76717806, 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. 76717806
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 (CCPA 1968) (holding SUGAR & SPICE not merely descriptive of bakery
products). The Examining Attorney argues that the applied-for mark
SOCIAL SECURITY ANNUITY 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. 76717806
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 “represents the
combination of both social security benefits and annuity strategies.”3 In
particular, Applicant argues that it provides “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
“annuity,” in relevant part:
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.6

annuity: 1.1 A form of insurance or investment entitling the
investor to a series of annual sums.7

The Examining Attorney submitted two third-party web pages that refer
to the concept of Social Security as being an “annuity” program (emphasis
added):

2 6 TTABVUE 3-4.
3 4 TTABVUE 8.
4 4 TTABVUE 6.
5 11 TTABVUE 2.
6 Ahdictionary.com. Attached to July 14, 2015 Office Action at 9.
7 Oxforddictionaries.com/us. Attached to January 28, 2016 Office Action, at 6.
Ser. No. 76717806
5
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? . . . .
“Right now the government is offering the best deal in town on
an inflation-adjusted annuity,” says Chris Jones, chief
investment officer at Financial Engines, an advisory firm that
helps people manage their 401(k) and IRA assets. Wsj.com.8

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
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.9

The Examining Attorney submitted seven other third-party web pages that
refer to this concept specifically using the exact term “SOCIAL SECURITY
ANNUITY” (emphasis added):
GF The GailFosler Group LLC: Social Security Annuity: A
Great Investment Deal: Although Social Security taxes are
inadequate to pay for all promised benefits, substantial benefits
will still be possible no matter what type of reform is
undertaken. . . One answer lies partly in a set of little
understood provisions deeply imbedded in the current program,
which together offer one of the best investment options
anywhere. This great deal allows individuals to add to Social

8 July 14, 2015 Office Action, at 11-12.
9 July 14, 2015 Office Action, at 15-16.
Ser. No. 76717806
6
Security annuities for which they already qualify at age 62. As
classic employer-funded pension plans disappear, this option
gets more valuable by the day. . . . Many don’t realize that they
don’t need to start benefits at retirement. By living off other
assets for a while, even if only a month or so, they can convert
some of their riskier assets into a higher Social Security annuity
asset. Gailfosier.com.10

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.11

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.12

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.13

10 July 14, 2015 Office Action at 22-24.
11 July 14, 2015 Office Action at 27.
12 July 14, 2015 Office Action at 29.
13 January 28, 2016 Final Office Action at 31-32.
Ser. No. 76717806
7

WealthManagement.com: Who’s Got the Best Annuity Deal in
Town?: It may surprise you, but “buying” Social Security’s
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.14

Lifelong Retirement Corp: 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.com15

Pension Rights Center: Background: Social Security already
offers a great annuity option to retirees. . . . A worker can almost
double annual Social Security annuity benefits.
Pensionrights.org.16

From this evidence, it is apparent that Social Security has indeed been

14 January 28, 2016 Final Office Action at 34-35.
15 January 28, 2016 Final Office Action at 38-39.
16 January 28, 2016 Final Office Action at 43.
Ser. No. 76717806
8
interpreted as a type of “annuity” program to the extent that it constitutes, in
accordance with the American Heritage Dictionary definition of “annuity,”
fixed payments on a prior investment of funds. Furthermore, to the extent
that consumers would interpret the term “SOCIAL SECURITY ANNUITY”
as not a unitary mark, but as referring to financial planning and retirement
financial planning services that include both “Social Security” and “annuity”
discussions, the term is also merely descriptive. 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 591, 593 (TTAB 1979). There is nothing incongruous about the
combination of SOCIAL SECURITY SERVICES in relation to Applicant’s
applied-for services.
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,” 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 programs, as well as, specifically, Social Security
as a type of annuity 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. Therefore, we find that the mark is
Ser. No. 76717806
9
merely descriptive of the identified services, and we affirm the refusal to
register.
Decision: The Board affirms the refusal to register.