MBNA America Bank, N.A.

Trademark Trial and Appeal Board

Feb 28, 2001

No. 75372369 (T.T.A.B. Feb. 28, 2001)

2/28/01
Paper No. 13
HWR
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re MBNA America Bank, National Association
_______
Serial No. 75/372,369
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Michael A. Grow of Arent Fox Kintner Plotkin & Kahn, PLLC
for MBNA America Bank, National Association.
Raul F. Cordova, Trademark Examining Attorney, Law Office
114 (Margaret Lee, Managing Attorney).
_______
Before Cissel, Wendel and Bottorff, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
MBNA America Bank, National Association has filed an
application to register the mark DIRECT CONNECT for “non-
cellular and non-operator1 assisted conference call
services, electronic mail services, and facsimile receipt
1 Although as amended, the identification contained the term
“non-operated,” applicant has subsequently referred to the term
as “non-operator,” which we have adopted as being the correct
term.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/372,369
2
and transmittal services offered exclusively to Applicant’s
bank credit card customers.”2
Registration has been finally refused under Section
2(e)(1) of the Trademark Act on the ground that the mark,
as intended to be used in connection with applicant’s
services, is merely descriptive thereof. The refusal has
been appealed and both applicant and the Examining Attorney
have filed briefs. No oral hearing was requested.
The Examining Attorney maintains that the mark DIRECT
CONNECT is merely descriptive of applicant’s offering of
various telephone services to its credit card customers in
which their calls are placed directly through applicant.
He argues that the mark describes a principal feature of
applicant’s services, namely, that the services provide
such a direct telephone connection. To support his
arguments, the Examining Attorney has made of record a
dictionary definition from Newton’s Telecom Dictionary (14th
ed.) of “direct connect” as “[a] term describing a customer
hooking directly into a long-distance telephone company’s
switching office, bypassing the local phone company.” He
also relies upon three third-party registrations, two of
which were made of record by applicant in connection with a
2 Serial No. 75/372,369, filed October 14, 1997, based on an
allegation of a bona fide intention to use the mark in commerce.
Ser No. 75/372,369
3
Section 2(d) refusal that was subsequently withdrawn. The
third registration was the one cited as a bar under Section
2(d). The first two registrations show the disclaimer of
the term “DIRECT CONNECT” when used in the mark DIRECT
CONNECT AXSYS for “radiotelephone data communication
interfaces”3 and the mark NEXTEL DIRECT CONNECT for
“telecommunications services, namely, two-way radio
communications.”4 The cited registration for the mark
DIRECT CONNECT for “telecommunication services, namely,
operator assisted cellular telephone information and call
placement services” issued on the Supplemental Register.5
The Examining Attorney argues that these registrations
further demonstrate the descriptiveness of the terminology
“direct connect” when used in connection with the practice
of engaging in direct communications.
Applicant insists that the Examining Attorney is
incorrectly assuming that applicant is in the
telecommunications field and that the services being
offered are in the nature of telecommunications services.
Applicant contends that its customers would not have any
familiarity with the definition found in the “obscure,
3 Registration No. 2,027,513, issued December 31, 1996.
4 Registration No. 2,236,098, issued March 30, 1999.
5 Registration No. 2,007,278, issued October 8, 1996.
Ser No. 75/372,369
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highly specialized, technical dictionary” relied upon by
the Examining Attorney and would have no reason to
correlate such a definition with any of the particular
services intended to be offered by applicant. Applicant
further argues that the third party registrations are for
different services and thus are irrelevant to the present
issue of descriptiveness.
A term or phrase is merely descriptive within the
meaning of Section 2(e)(1) of the Trademark Act if it
immediately conveys information about a characteristic or
feature of the goods or services with which it is being
used or is intended to be used. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
Whether or not a particular term or phrase is merely
descriptive is determined not in the abstract, but rather
in relation to the goods or services for which registration
is sought, the context in which the designation is being
used, or is intended to be used, and the significance the
designation is likely to have to the average purchaser as
he or she encounters the goods or services bearing the
designation, because of the manner in which it is used.
See In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It
is not necessary that the term or phrase describe all the
characteristics or features of the goods or services in
Ser No. 75/372,369
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order to be merely descriptive; it is sufficient if the
term or phrase describes one significant attribute thereof.
See In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB
1991).
We find the evidence being relied upon by the
Examining Attorney fully adequate to establish that the
term “direct connect” has a recognized connotation in the
telecommunications field and that that connotation would be
applicable to the telephone services which applicant
intends to offer to its credit card customers under the
mark DIRECT CONNECT. We consider the definition found for
the term “direct connect” in a trade dictionary to be
completely reliable evidence of the connotation of the term
when used in the telecommunications field.6 The term is
used when there is a direct linkage between the customer
and the long-distance services, with no intermediate stop
at the local level. Applicant’s services, as identified,
cover this type of telecommunication service, a direct,
6 The fact that the dictionary is in its fourteenth edition
belies applicant’s argument that it is an obscure publication.
Further, we must assume that persons engaging telecommunication
services would have some familiarity with the terms used in
connection therewith, especially a term which so obviously refers
to a “direct connection.”
Ser No. 75/372,369
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non-operator assisted linkage to conference calls, e-mail
or facsimile services, all of which may be long distance.7
Furthermore, the third-party registrations being
relied upon by the Examining Attorney show that the term
“direct connect” has descriptive significance when used
with a variety of telecommunication services which entail a
direct connection, whether involving two-way radios,
cellular phones, or radiotelephone interfaces. Thus, we
are convinced that potential customers for applicant’s
various services, which clearly include telecommunications
services and which involve a non-operator-assisted linkage
between the customer and the proffered service, would
immediately grasp the informational significance of the
term DIRECT CONNECT. Its function as a descriptor of the
“direct connect” feature of applicant’s services would be
obvious.
Accordingly, we find that the term DIRECT CONNECT
would be merely descriptive, if it were used as intended by
applicant, of the non-cellular and non-operator assisted
conference call services, electronic mail services, and
facsimile receipt and transmittal services which are to be
7 We note that in its original recitation of services, applicant
even specifically included international and domestic long
distance calls.
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offered exclusively to Applicant’s bank credit card
customers.
Decision: The refusal to register under Section
2(e)(1) is affirmed.
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