MBNA American Bank, N. A.

Trademark Trial and Appeal Board

Jun 11, 2002

No. 74472908 (T.T.A.B. Jun. 11, 2002)

6/11/02
Hearing: Paper Nos. 39 & 32
October 9, 2001 DEB

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re MBNA American Bank, N.A.
________

Serial Nos. 74/417,538 and 74/472,908
_______

Michael R. Grow of Arent Fox Kintner Plotkin & Kahn, PLLC for
MBNA American Bank, N.A.

Jeffery C. Coward, Examining Attorney, Law Office 106 (Mary I.
Sparrow, Managing Attorney).
_______

Before Cissel, Quinn and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
On July 27, 1993, applicant filed an application to
register on the Principal Register the service mark MONTANA
SERIES for services, as amended, recited as “credit card
services featuring credit cards depicting scenes or subject
matter of, or relating to, the state of Montana,”1 in
International Class 36, based upon an allegation of
applicant’s bona fide intention to use the mark in interstate

1 The amendment to allege use for the MONTANA SERIES application
was filed on May 11, 1994, claiming use in commerce as of July 1993,
with specimens showing use of the mark on the front of an MBNA
MasterCard.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
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commerce.2 Then on December 9, 1993, applicant filed an
application to register on the Principal Register the service
mark PHILADELPHIA CARD for services, as amended, recited as
“credit card services featuring credit cards depicting scenes
or subject matter of, or relating to the city of Philadelphia”
(with the word CARD disclaimed apart from the mark as shown)
in International Class 36, based upon applicant’s allegation
of its bona fide intention to use the mark in interstate
commerce.3 This application continues as an intent-to-use
application.

2 Applicant’s earlier-filed application, DELAWARE SERIES, matured
into Reg. No. 1,743,542, issuing on December 29, 1992, (with
Sections 8 & 15 affidavits having been accepted and acknowledged
respectively), and applicant’s companion application, KENTUCKY
SERIES, matured into Reg. No. 1,928,952, issuing on October 24,
1995. Still pending, awaiting the outcome of the MONTANA SERIES
appeal, are applications for the following STATE NAMES immediately
preceding the word SERIES: ALABAMA, ARKANSAS, ARIZONA, COLORADO,
CONNECTICUT, FLORIDA, GEORGIA, HAWAII, IDAHO, ILLINOIS, INDIANA,
IOWA, KANSAS, LOUISIANA, MASSACHUSETTS, MICHIGAN, MISSISSIPPI,
MISSOURI, NEBRASKA, NEVADA, NEW HAMPSHIRE, NEW JERSEY, NEW MEXICO,
NEW YORK, NORTH DAKOTA, MAINE, MARYLAND, MINNESOTA, NORTH CAROLINA,
OHIO, OKLAHOMA, OREGON, PENNSYLVANIA, RHODE ISLAND, SOUTH CAROLINA,
SOUTH DAKOTA, TENNESSEE, TEXAS, UTAH, VERMONT, VIRGINIA, WEST
VIRGINIA, WASHINGTON and WISCONSIN, as well as one having a REGION
NAME preceding the word SERIES: NEW ENGLAND SERIES. All of these
applications involve service marks for credit card services.
3 Applicant’s companion application, THE NEW ENGLAND WATERS CARD,
matured into Reg. No. 1,939,038, issuing on November 28, 1995.
Still pending, awaiting the outcome of the PHILADELPHIA CARD appeal,
are applications for the following CITY NAMES immediately preceding
the word CARD: ATLANTIC CITY, BALTIMORE, BOISE, CINCINNATI,
CLEVELAND, COLUMBUS, DENVER, DES MOINES, DETROIT, INDIANAPOLIS,
KANSAS CITY, LAS VEGAS, LITTLE ROCK, LOUISVILLE, MEMPHIS,
MINNEAPOLIS, NEW ORLEANS, NEW YORK, OMAHA, PITTSBURGH, PORTLAND, ST.
LOUIS, SAN DIEGO, SAN FRANCISCO, SEATTLE, and THE WASHINGTON DC
CARD, as well as a card carrying one of Chicago’s nick-names (WINDY
CITY CARD) and geographical locations followed by the words
“HERITAGE CARD,” such as PORTSMOUTH HERITAGE CARD and CAPE COD
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The currently assigned Trademark Examining Attorney has
made final the Office’s refusal to registration in both
applications under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), on the basis that the marks MONTANA SERIES
and PHILADELPHIA CARD, when applied to the recited services of
applicant, are merely descriptive of them.
The prosecution of these two applications has been
protracted as each application has been handled by a series of
Trademark Examining Attorneys, the grounds for refusal have
been changed several times, and each application has been the
subject of an earlier remand from the Board for further
consideration by the Trademark Examining Attorney. Although
the record in each of these cases is voluminous, much of each
record is directed toward statutory grounds that have since
been withdrawn.4
Applicant has appealed. Both applicant and the Trademark
Examining Attorney have fully briefed these consolidated
cases, and at applicant’s request, an oral hearing was held
before the Board.
We affirm the refusals to register.

HERITAGE CARD. All of these applications involve service marks for
credit card services.
4 These withdrawn grounds included at various times potential
citations against the marks for likelihood of confusion, as well as
issues involving the geographically descriptive and geographically
misdescriptive provisions of the Lanham Act.
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I. Affinity Credit Cards
Applicant, MBNA America Bank (“MBNA”), is the world’s
largest independent credit card issuer, with special emphasis
on its Gold MasterCard product. It has also pioneered
“affinity” marketing –- usually a partnership between a
bankcard issuer and a non-profit, social or lifestyle
association.5 MBNA understands that people are proud of their
voluntary associations, whether it be professional or
educational organizations, special causes, sports
organizations, or in the instant case, regional affiliations.
In its successful fight for consumers’ wallets, applicant aims
for their hearts with credit cards that make these emotional
connections with consumers. Many of these affinity card
arrangements also provide financial rewards to the group or
association. For example, each time that the consumer uses
her MBNA AMERICA MADD MasterCard credit card, the bank will
automatically donate a portion of each retail transaction to
Mothers Against Drunk Driving (MADD) for its advocacy
programs. Given the attendant benefits for such

5 “MBNA brings Branch Here,” Atlanta Business Chronicle, December
2, 1991; “MBNA’s New Cards take cardholders down highways and
byways,” Credit Card News, December 15, 1992; “Affinity King MBNA
American Bank is taking cardholders on a figurative tour of the
Midwest with its latest affinity card entry,” Cardfax, December 7,
1992.
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organizations, applicant has the endorsement of more than five
thousand such entities.6
Going well beyond sports teams, universities, wine
connoisseurs, bird lovers, national associations, Star Trek
fans, or Harley Davidson motorcycle enthusiasts, applicant has
also initiated a line of affinity cards named after the fifty
states, large metropolitan areas,7 geographical regions of the
country, historic districts and even several prominent
watersheds within the United States. Although the Trademark
Examining Attorney has submitted evidence that, at least with
applicant’s earlier Delaware Series MasterCard program,
applicant promised to make financial contributions to its home
state tied to each transaction,8 there is no indication in this

6 Throughout these files, along with the literature in the record
detailing the operation of various affinity cards, the record shows
that applicant also promotes “co-branded” cards – resulting from a
partnership between a bankcard issuer and a commercial partner. The
cardholders using co-branded cards may get prizes, freebies or
discounts on co-branded products for earning points by charging
purchases on the card. Co-branding makes use of the brand strength
of both partners, and is based on the logic that if a customer is
loyal to one brand, he/she will want to purchase the other.
Additionally, each co-branded partner gets access to a database of
customers of a similar demographic profile.
7 “MNBA pushes city pride credit cards,” Bank Letter, April 12,
1993.
8 “Now, to honor Delaware and the people who live here, MBNA has
created an exclusive credit card program to benefit our home state –
and yours. And in recognition of Delawareans’ strong community
spirit, these cards offer you a unique opportunity to help your
neighbors at no additional cost. MBNA will make a contribution to
the Delaware Community Foundation every time you use your Delaware
Series MasterCard or Gold MasterCard to make a purchase…” MBNA flyer
attached to Office Action of November 22, 1994.
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record that entities in Montana or Philadelphia, for example,
will be similarly designated.

II. Summarizing the positions of applicant and the
Trademark Examining Attorney

The Trademark Examining Attorney contends that the marks
MONTANA SERIES and PHILADELPHIA CARD merely describe “the most
notable and visible feature of the applicant’s credit card
services, that is, the credit card itself.” (Trademark
Examining Attorney’s appeal brief, p. 5).9 He points to the
latest, detailed recitations of services, which specifically
indicate that the trade dress of each of the cards depicts a

9 The service marks at issue do appear in each case to describe
in some way the trade dress of the corresponding credit card. In
support of his position that this is critical, the Trademark
Examining Attorney points to the case where the Southern District of
New York found “GOLD CARD” to be generic for credit card services
based upon the fact that the card itself was gold in color. See
American Express Co. v. MasterCard International Inc., 685 F.Supp.
75, 7 USPQ2d 1829 (S.D.N.Y. 1988). Applicant distinguishes this
case by pointing out that the Court found that American Express,
MasterCard and many of their competitors “used the color gold to
indicate a premium level of financial credit that was available to a
select group of customers” (Applicant’s reply brief, p. 3), and
that, therefore, the term referred to much more than just the
background color of the credit card itself. In a later decision
giving preclusive effect to the Court’s earlier judgment, this Board
appeared to recognize the fact that “gold card” represented more
than simply the color of the card itself (e.g., premium level of
credit available to a selected customers). See MasterCard
International, Inc. v. American Express Co., 14 USPQ2d 1551 (TTAB
1990). Furthermore, we note from the current records, consistent
with applicant’s contentions, that the credit terms, payment
options, etc., for any individually-named card product or collection
of card products seem to be in no way tied to the differing themes
of the regional affinity cards issued by applicant. Accordingly, we
do not find American Express Co. v. MasterCard International, supra,
to be dispositive of the question before us.
Serial Nos. 74/417,538 and 74/472,908
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scene relating to the place named. The Trademark Examining
Attorney argues that in light of applicant’s adoption of these
particular regional designations and its subsequent marketing
programs, the regional labels aptly describe a significant
feature of the trade dress of the respective credit cards, and
that hence, they should be deemed descriptive of the
underlying credit card services.
In his briefs and at oral argument, the Trademark
Examining Attorney placed a great deal of emphasis on the
manner in which applicant’s regional affinity marketing
program is structured. The Trademark Examining Attorney
argued that applicant is unabashed in the way it entices
consumers to sign up for its cards by adopting trade dress on
the front of the credit card that is designed to appeal to an
individual, regional affiliation with which consumers might
want publicly to identify. The Trademark Examining Attorney
argued that regional ambiance –- i.e., the scenes depicted on
the promotional materials and then integrated into the trade
dress of the credit cards as issued -- is a primary reason for
the consumer’s selection of a particular card. Then, each
time the consumer uses the credit card for a financial
transaction, the use of the card again brings all of these
regional images to mind.
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Applicant appears to agree with the Trademark Examining
Attorney’s position on the following point: the combination
of the background designs and the corresponding service marks
making up the trade dress on the credit cards will often be
the motivating factor for the consumer in choosing a specific
credit card service. However, while the Trademark Examining
Attorney contends that we must consider applicant’s marketing
strategies as they relate to the ultimate consumer’s desire to
use a particular card, applicant argues that the reason why a
particular targeted consumer chooses the MONTANA SERIES credit
card services is totally irrelevant to our determination
herein of mere descriptiveness.
Moreover, applicant argues that the Trademark Examining
Attorney has confused its credit card services with the
“advertising materials, credit cards, and/or other materials
on which Applicant’s mark may be displayed.” (applicant’s
reply brief, p. 1). Applicant argues that there is no support
in the record or in trademark law for the contention of the
Trademark Examining Attorney that the details of its affinity
marketing program, combined with the display of scenes from
Montana on the front of the credit card itself, render the
mark MONTANA SERIES merely descriptive for the associated
credit card services. In this vein, applicant argues
strenuously that even if one decides that these marks may be
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merely descriptive of the designs on the cards, these marks
are not merely descriptive of the underlying credit card
services.
Finally, applicant argues that the record is devoid of
any direct evidence that consumers view MONTANA SERIES or
PHILADELPHIA CARD as being merely descriptive of credit card
services. Rather, applicant argues that in applying the
precedents of this Board and our principal reviewing court, we
cannot conclude that these marks will immediately convey to
consumers pertinent information regarding any significant
characteristic or feature of applicant’s credit card services.
Accordingly, as we turn to discuss the test for
descriptiveness, we note our agreement with applicant and with
the Trademark Examining Attorney on this critical question:
how do (or how will) prospective customers perceive these
asserted marks?

III. The Continuum of Distinctiveness
The test for determining whether a mark is merely
descriptive is whether the mark immediately conveys
information concerning a quality, characteristic, function,
ingredient, attribute or feature of the product or service in
connection with which it is used or is intended to be used.
See In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215
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(CCPA 1978); and In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979). Accordingly, this case reflects sharp disagreement
between applicant and the Office about where on the spectrum
of distinctiveness these marks should be placed.10
Applicant has taken the position throughout the
prosecution of these applications that members of the public
are likely to associate immediately a unique source with the
specific geographical themes that applicant has chosen. 11 In
fact, applicant goes so far as to contend that these terms,
while admittedly containing geographical terms, are “wholly
arbitrary” and, hence, inherently distinctive as applied to
its credit card services – analogizing repeatedly to the mark
APPLE for computers. Without question, APPLE for computers is
an arbitrary designation. However, as noted below, we find
applicant’s analogy to APPLE computers to be unpersuasive, and
of little assistance in reaching our determination herein.

10 As has often been noted by our principal reviewing court,
placement of a term on the fanciful/arbitrary-suggestive-
descriptive-generic continuum is a question of fact. In re Merrill
Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1570, 4 USPQ2d
1141, 1143 (Fed. Cir. 1987).
11 At first blush, one might well conclude that these place names,
appearing as they do with non-proprietary images of well-known
landmarks on the trade dress of credit cards, would not be seen as
inherently distinctive service marks. One might analogize to the
ornamentation of T-shirts, where pictures, insignia, slogans or even
place names may be emblazoned across the front of the shirt. See In
re Astro-Gods Inc., 223 USPQ 621 (TTAB 1984). Similarly, in the
context of these credit cards, some may question whether these
regional designations are actually being used as service marks.
However, because that issue is not before us, we decline any further
pursuit of this question.
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IV. Determining what is “merely descriptive”
By contrast with the adoption and use of the term APPLE
as applied to computers, the record in the instant case shows
that the affinity labels applicant has adopted herein are
clearly not arbitrary. Each of the marks sought to be
registered identifies the region where the majority of
prospective users will likely reside, and each affinity mark
describes rather precisely the respective trade dress of that
named card or series of cards.
If a given source identifier is inherently distinctive
(e.g., APPLE for computers), the basic objective underlying
trademark law is the immediate protection of that merchant’s
or manufacturer’s trade identity and the protection of the
public from confusion created by those who would encroach upon
a unique identity that the public is coming to associate with
another. In registering such a term, the Office creates no
disadvantage for competitors, as others clearly do not need to
use an inherently distinctive term adopted by a competitor.
An arbitrary designation is valuable because as an
informational device, it boldly announces where the service
originates (or answers the buyer’s question “who are you?”).
However, immediately upon adoption, it is an empty vessel in
terms of its ability to convey information about the services.
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On the other end of the spectrum of distinctiveness, a
generic designation answers the question “what are you?” and
should remain freely available to all competitors in any given
field to refer to their products or services. In re Boston
Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed Cir. 1999)
[THE BEST BEER IN AMERICA for beer and ale]. Continuing our
analogy, a generic term is a vessel chock full of information
about a characteristic or feature of the services.
In between these contrasting results, the nuances of
merely descriptive matter require a balancing of informational
advantage and competitive disadvantage that comports with how
the public perceives and uses these designations over time,
and in a manner that is totally consistent with accepted
business practices in a particular industry or market sector.
Lest it be forgotten, descriptive terms are regarded as
words in the “public domain” in that competitors should be
free to use these terms to describe their own brands of the
same products or services. See Minnesota Mining and
Manufacturing Co. v. Johnson and Johnson, 454 F.2d 1179, 172
USPQ 491 (CCPA 1972). In such cases, accordingly, one
enterprise cannot, by mere adoption, obtain an exclusive right
to prevent others from using the same descriptive term. Such
exclusive appropriation by a single party unfairly inhibits
competition by others in the involved industry.
Serial Nos. 74/417,538 and 74/472,908
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In the instant case, each regional designation is packed
with informational content prior to its adoption as a source-
indicator. Unlike the word APPLE arbitrarily applied to
computers, MONTANA SERIES or PHILADELPHIA CARD is not an empty
vessel upon adoption for affinity credit card services – it
begins as a partially full vessel. Granted, before applicant
uses these designations as service marks in connection with
credit card services, these regional labels belong to an
amorphous community of interest, not being tied to any
particular source. However, upon adopting MONTANA SERIES (or
PHILADELPHIA CARD), applicant is attempting to tap into the
preexisting value of regional designations, transforming a
congenial public symbol to its own informational advantage.
At the precise moment that an applicant adopts this type of
term for its credit card services, however, a regional
designation cannot logically be associated with one
entrepreneur. 12 Rather, black letter trademark law stands for
the proposition that rights in such terms should only be
recognized with respect to a user who has created acquired
distinctiveness through consumer recognition of the terms.13

12 Provided this is correct, it is hard to understand applicant’s
contention that members of the public will associate immediately a
unique source (namely MBNA) with the specific geographical themes
that applicant has chosen.
13 While we find in this decision that MONTANA SERIES, for
example, readily informs a prospective purchaser as to a significant
feature of the corresponding affinity credit card service, we also
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In the present case, applicant has not pursued registration
under Section 2(f) of the Act, but rather claims that the
marks are inherently distinctive.
We focus, as we must in making a determination under
Section 2(e)(1), on applicant’s recitals of services in these
two applications. Each recital herein makes it clear that
applicant’s services feature credit cards “depicting scenes of
subject matter of, or relating to, the state of Montana (or
city of Philadelphia).” Thus, MONTANA (or PHILADELPHIA)
immediately conveys information about the community of
intended users to whom these particular services are
directed.14 All of its regional designations, such as MONTANA
SERIES or PHILADELPHIA CARD, are displayed prominently on
applicant’s promotional materials. Accordingly, we find that
even if the credit card itself had only the name MONTANA
SERIES (i.e., absent the graphic trade dress), this term would
still be merely descriptive of these credit card services.
However, consistent with industry practices as it relates
to affinity and co-branded credit cards, the trade dress

have no doubt but that after a period of substantially exclusive and
continuous use by MBNA America, the prospective consumer who becomes
a long-term debtor/card holder will come to understand that this
designation does indeed identify a service provided by a single
source.
14 See In re Hunter Publishing, 204 USPQ 957 (TTAB 1979) (JOBBER
AND WAREHOUSE EXECUTIVE); and In re Camel Manufacturing Co., 222
USPQ 1031 (TTAB 1984) (MOUNTAIN CAMPER).

Serial Nos. 74/417,538 and 74/472,908
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stands as strong reinforcement of the respective regional
themes. That is, the trade dress of the actual credit card
contains scenes of Montana (or Philadelphia). Hence, inasmuch
as MONTANA SERIES identifies the community of intended users
of these particular services, as well as the ambiance of the
trade dress of the plastic credit card itself, we conclude
that MONTANA SERIES describes a significant feature or
characteristic of these affinity credit card services.
We find unpersuasive the distinction that applicant tries
to make between its marketing program, advertising materials,
and the trade dress of its credit card, on the one hand, and
the underlying credit card services offered under the
corresponding regional label, on the other hand.
After all, applicant’s services involved herein are
essentially “regional affinity” credit card services. The
appeal to regional pride and loyalties is a most significant
feature of the way in which applicant markets the relevant
credit card services. A potential purchaser living on a ranch
outside Missoula may desire a credit card issued by MBNA that
is emblazoned with the term MONTANA SERIES and accompanying
images of Montana precisely because of his affinity for the
state of Montana. On the other hand, unless the resident of
Philadelphia is into mountain climbing, skiing or fly-fishing,
she is more likely to choose the PHILADELPHIA CARD. In our
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hypothetical, irrespective of which card proves to be
commercially successful by producing the stronger affinity
(i.e., which one “motivates” her to become a card holder),15
each designation immediately and forthwith conveys information
as to a significant feature or characteristic of that
particular credit card service.
As the Trademark Examining Attorney points out,
applicant’s entire marketing program is based upon the fact
that applicant is taking advantage of the value of regional
affinities, and that this association or alliance is a primary
reason for the consumer’s selection of a particular card.
Then, what could be a more apt way to inform a consumer about
the regional association than the exact geographical
designation? And what better way to reinforce this
association than having the trade dress on the credit card
itself bearing public icons of the place named?
These regional designations are used, or are intended to
be used, in solicitations and advertisements to prospective
credit card customers. After the card is issued, the credit
card is the most prominent and enduring physical embodiment of
applicant’s services. The regional designation is used fairly
prominently on the trade dress of the card as issued to the
card holder/debtor. For example, the credit card specimens

15 See “purchaser motivation” discussion infra at pp. 18 to 21.
Serial Nos. 74/417,538 and 74/472,908
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filed with the amendment to allege use in the MONTANA SERIES
application depict a stereotypical Montana scene having
grasslands in the foreground, a fence stretching across the
middle of the picture, with an imposing Grand Teton-like
mountain peak in the background that fades into the big sky of
the American West:

Moreover, it appears from the record, that the regional
designation would be used fairly prominently in some form on a
monthly billing statement. The involved terms are used in a
manner that is descriptive of a desirable and significant
feature of the credit card. Hence, it is not a leap to find
that these respective terms also describe a significant
feature of the underlying credit card services (i.e., the
cachet associated with a particular type of card by which the
user gets entree to a variety of services). To the extent
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that the phrase “MONTANA SERIES” plainly describes a group of
credit cards bearing images from the state of Montana, this
term also merely describes a significant feature of
applicant's associated services.
In order for us to find that these service marks do
indeed immediately convey information concerning a significant
feature or characteristic of applicant’s regional affinity
credit card services, it is certainly not necessary that it
describe all of its features or characteristics.16 In a recent
Board decision, the term EGYPT was found to be merely
descriptive as applied to amusement park services based upon
public perceptions of the service mark, even though some
aspects of the services (e.g., the foods and the souvenirs)
had nothing to do with the country of Egypt. See In re Busch
Entertainment Corp., 60 USPQ2d 1130 (TTAB 2001).

V. Clarifying “purchaser motivation”
In its brief and again at the oral hearing, applicant
criticized the Trademark Examining Attorney for basing his
argument on the fact that a customer wanting to identify with
a regional designation may seek out a particular card.

16 In fact, as noted earlier (footnote 9) and again in the
dissent, the credit terms, payment options, etc., for any
individually-named card product or collection of card products seem
to be in no way tied to the differing themes of the regional
affinity cards issued by applicant.
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Applicant contends that this line of argument is inappropriate
because it relies upon a discredited theory of “purchaser
motivation.” However, we consider applicant’s allegation of
the Office’s unwarranted reliance on “purchaser motivation” to
be a straw man that applicant itself has erected. The
Trademark Examining Attorney’s discussion of applicant’s
regional affinity-marketing programs should not be confused
with prohibited “purchaser motivation” in finding a term to be
generic (e.g., failing to protect the valuable property rights
of the owner of the MONOPOLY trademark because large groups of
consumers merely wanted to play the familiar real estate board
game).
Refusing registration merely because an aspect of the
goods or services is “an important ingredient in the
commercial success of the product” would be at odds with legal
precedent,17 including that of our primary reviewing court.
See In re Penthouse International Ltd., 565 F.2d 679, 682-83,
195 USPQ 698, 700-01 (CCPA 1977). In an oft-quoted concurring
decision, the late Judge Nies warned that we must avoid “ … an
esoteric and extraneous inquiry focusing on what motivates the
purchasing public to buy particular goods… .” See In re DC

17 See Ives Laboratories v. Darby Drug Co., 601 F.2d 631, 643, 202
USPQ 548, 557 (2nd Cir. 1979) (quoting Pagliero v. Wallace China Co.,
198 F.2d 339, 343, 95 USPQ 45, 48 (9th Cir. 1962)); Truck Equipment
Service Co. v. Fruehauf Corp., 536 F.2d 1210, 1217-18, 191 USPQ 79,
85-86 (8th Cir. 1976), cert. denied, 429 U.S. 861.
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Comics, Inc., 689 F.2d 1042, 215 USPQ 394, 404 (CCPA 1982), J.
Nies, concurring [Drawings of Superman, Batman, and Joker as
trademarks for toy dolls].18
In discussing purchaser motivation during oral arguments,
applicant cited to the amendment to the Lanham Act in the wake
of the Ninth Circuit’s often derided Anti-Monopoly decision.19

18 In re DC Comics, Inc., J. Nies, concurring, supra, at 404-405:
“ … The reason the public is motivated to buy the product,
whether because of quality, particular features, source,
pleasing design, association with other goods, price,
durability, taste, or prestige of ownership, is of concern to
market researchers but is legally immaterial to the issue of
whether a particular designation is generic. Thus, the board's
reliance on its conclusion that purchasers want appellant's
dolls ‘and would simply not be satisfied’ with any others is
misplaced. This rationale ignores the reality that the primary
objective of purchasers is to obtain particular goods, not to
seek out particular sources or producers, as such. Motivation
does not change a descriptive term which has acquired
distinctiveness or any arbitrary word, name, symbol or device
into a generic designation. The correct inquiry is whether the
public no longer associates what was a trademark with that
single source.

Similarly, that purchasers call for a particular product by the
name given it by its producer or source does not negate its
function as a mark. Such a given name is a proper name, like
the name of an individual, not a generic name, so long as the
public uses it to identify a product of a single source. It is
the normal way the public uses a mark which is applied by a
manufacturer or a merchant to a particular product, and, as
indicated, trademark concepts do not require the condemnation
of normal commercial language. Trademark law merely condemns
the use of that language in a way which deprives purchasers of
their expectations and deprives businesses of the goodwill
which they have built up by providing satisfactory goods and
services. For the same reason, that a trademark is well known
does not make it a "common" descriptive name. "Common," like
"generic," states a conclusion that the claimed mark is, or has
become, part of the vernacular, that it is indefinite, and does
not function as a proper name of a particular producer's goods
…”
19 See Anti-Monopoly Inc. v. General Mills Fun Group Inc., 684
F.2d 1326, 216 USPQ 588 (9th Cir. 1982), cert. denied, 103 S.Ct. 1234
Serial Nos. 74/417,538 and 74/472,908
- 21 -
However, on this entire record, we do not believe that the
Office has premised its refusal to register on the theory of
purchaser motivation.20 Hence, we find ourselves in agreement
with applicant that purchaser motivation, as that concept was
employed in Anti-Monopoly and Section 14 of the Lanham Act, as
amended, 21 plays no part in the test herein for mere
descriptiveness.
Decision: Having found that these respective terms do
indeed describe significant characteristics or features of the
recited credit card services, the refusals to register are
affirmed.
- o O o -

(1983) [MONOPOLY for popular real estate board game was held generic
as no special test was applicable to “unique” goods situations, and
consumer motivation of product over source (as measured by surveys)
was critical, rather than overall consumer understanding].
20 However, even if that were the gravamen of the Trademark
Examining Attorney’s argument, it would be misdirected in the
instant case, as Section 14 of the Trademark Act applies only to
registered marks, and the focus there is on matter that is allegedly
generic (not merely descriptive).
21 See Section 14(3) of The Trademark Act of 1946 as Amended, 15
U.S.C. §1064(3), Nov. 8, 1984, 98 Stat. 3335]:
“ … A registered mark shall not be deemed to be the generic
name of goods or services solely because such mark is also used
as a name of or to identify a unique product or service. The
primary significance of the registered mark to the relevant
public rather than purchaser motivation shall be the test for
determining whether the registered mark has become the generic
name of goods or services on or in connection with which it has
been used.”
Serial Nos. 74/417,538 and 74/472,908
- 22 -
Cissel, Administrative Trademark Judge:
I respectfully dissent.
The majority states that “[t]he involved terms are used
in a manner that is descriptive of a desirable and significant
feature of the credit card,” and that “[h]ence, it is not a
leap to find that these respective terms also describe a
significant feature of the underlying credit card services
(i.e., the cachet associated with a particular type of card by
which the user gets entrée to a variety of services.)”
Although I would not characterize the majority’s finding
as a “leap” (and I am not sure what “cachet” has to do with
any of this), from my perspective, getting from the conclusion
that these terms are merely descriptive of the scenes depicted
on the credit cards to the holding that the terms are merely
descriptive of the financial services rendered by means of the
cards requires a step which is neither logical nor justified
under the Lanham Act or the case law interpreting it. In the
same sense, I cannot agree with the majority that the terms
“MONTANA SERIES” and “PHILADELPHIA CARD,” by themselves,
notwithstanding the fact that they name the places pictured on
the cards, describe applicant’s financial services just
because they name places for which prospective customers of
applicant’s services have affinity.
Serial Nos. 74/417,538 and 74/472,908
- 23 -
As noted by the majority (and as applicant concedes), the
service marks in issue in each case do appear to describe the
trade dress of the credit cards. In support of his argument
that this is a critical fact, the Examining Attorney points to
the case where “GOLD CARD” was held to be generic for credit
card services based upon the fact that the card itself was
gold in color. See American Express Co. v. MasterCard
International Inc., 685 F.Supp. 75, 70 USPQ2d 1829 (S.D.N.Y.
1988). Applicant distinguishes this case by pointing out that
the court found that American Express, MasterCard and many of
their competitors “used the color gold to indicate a premium
level of financial credit that was available to a select group
of customers,” (applicant’s reply brief, p. 3), and that
because of this fact, the term indicated much more than just
the color of the credit card itself. In a later decision
giving preclusive effect to the court’s earlier judgment, the
Trademark Trial and Appeal Board recognized the fact that the
term “gold card” identified more than simply the color of the
card itself; it signified the premium level of credit
available to a selected group of customers. See MasterCard
International, Inc. v. American Express Co., 14 USPQ2d 1551
(TTAB 1990).
In this connection, we note from the records in the
instant appeals that, consistent with applicant’s contentions,
Serial Nos. 74/417,538 and 74/472,908
- 24 -
the credit terms, payment options, and so forth for any of
applicant’s individually-named credit card services do not
appear to be in any way tied to the differing themes presented
on applicant’s affinity cards, so the decision on the
registrability of the mark “GOLD CARD” is not analogous.
In conclusion, I note that to the extent that we were to
have any doubt as to whether applicant’s marks are merely
descriptive of the services specified in these applications,
such doubt would necessarily be resolved in favor of the
applicant. In re Bliss & Laughlin Industries, Inc., 198 USPQ
128 (TTAB 1978). Upon publication of applicant’s marks, any
entity that believes it would be damaged by the registration
of these marks would have the opportunity to oppose
registration. See In re Merrill Lynch, Pierce, Fenner and
Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987); In
re Rank Organization Ltd., 222 USPQ 324, 326 (TTAB 1984); and
In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972).
In summary, contrary to my colleagues, I cannot conclude
that because the marks here sought to be registered describe
features or characteristics of the particular cards on which
they are used (or are intended to be used), these marks are
also merely descriptive of the services set forth in the
applications. In a similar sense, I cannot conclude that
because “[e]ach of the marks sought to be registered
Serial Nos. 74/417,538 and 74/472,908
- 25 -
identifies the region where the majority of prospective users
will likely reside,” it “immediately conveys information about
the community of intended users to whom these particular
services are directed.” I find no basis in these records for
speculation regarding the likely residency of prospective
users of cards bearing either of these two designations.
Moreover, when we determine the registrability of these marks
in view of the established legal authority regarding Section
2(e)(1) of the Lanham Act, making the connection between
naming a place and picturing it on a credit card, on the one
hand, and concluding that the name is merely descriptive of
the financial services with which the card is used, on the
other hand, requires far too complex a thought process to be
characterized as “immediate and forthwith.”
In short, these marks may describe the cards, but they do
not describe the services. Neither “MONTANA SERIES” nor
“PHILADELPHIA CARD” immediately and forthwith conveys
information about a significant characteristic or feature of
credit card services. For this reason, I would reverse the
refusal to register under Section 2(e)(1) of the Lanham Act.