THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF
THE TTAB JULY 28, 97
Oral Hearing: Paper No. 27
December 4, 1996 GDH/gdh
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Milliman & Robertson, Inc.
________
Serial No. 74/324,490
_______
Robert S. Lipton and Alfred Stapler of Lipton & Stapler for
Milliman & Robertson, Inc.
Linda E. Blohm, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______
Before Rice, Simms and Hohein, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
Milliman & Robertson, Inc. has filed an application to
register the phrase "HEALTH INSURANCE TREND MODEL" for the
following goods and services:1
1 Ser. No. 74/324,490, filed on October 25, 1992, which alleges dates
of first use of August 21, 1987 for the goods and July 5, 1987 for
the services. Applicant also claims ownership of Reg. No. 1,610,876,
issued on the Supplemental Register on August 21, 1990, for the mark
"HEALTH INSURANCE TREND MODEL" (the words "HEALTH INSURANCE" are
disclaimed) for "business services, namely, the monitoring and
analysis of trends"; combined affidavit §§8 and 15.
Ser. No. 74/324,490
2
"Periodical publications, consisting of
reports, graphs, charts and data pertaining
to health insurance trends," in International
Class 16;
"Consulting services in the field of
health insurance trends and health care cost
containment and review," in International
Class 35; and
"Educational services, namely,
conducting training classes in the field of
health care costs containment and review," in
International Class 41.
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis
that, when used in connection with applicant's goods and
services, the phrase "HEALTH INSURANCE TREND MODEL" is merely
descriptive of them.2
2 Although applicant, in response to the initial refusal to register,
stated that "the mark has acquired secondary meaning as a result of
its use for more than five (5) years" and accordingly requested
"registration under §2(f) of the Trademark Act, 15 U.S.C. 1052(f),"
the accompanying declaration from its Chief Executive Officer states
only that "the mark ... has been in continuous use as set forth in
the ... application". Applicant's claim of acquired distinctiveness,
however, was considered "insufficient because the declaration does
not [also] allege that applicant's use has been 'substantially
exclusive' use in commerce". In addition, it was pointed out that
"even if the declaration were adequately worded, the mere fact of
five years' use of the mark would be insufficient to establish that
the mark has acquired distinctiveness" because, according to the
Examining Attorney, "[a]pplicant's mark is very highly descriptive of
the goods and services." Applicant, it appears, declined to submit
any additional evidence of acquired distinctivenes in light of the
Examining Attorney's further indication that "no amount of Section
2(f) evidence would be sufficient to support a finding that HEALTH
INSURANCE TREND MODEL is a source-identifying trademark or service
mark for goods and services which are, or utilized, a health
insurance trend model."
Ser. No. 74/324,490
3
Applicant has appealed. Briefs have been filed and an
oral hearing was held.3 We affirm the refusal to register.
It is well settled that a phrase or term is considered
to be merely descriptive of goods or services, within the meaning
of Section 2(e)(1) of the Trademark Act, if it immediately
describes an ingredient, quality, characteristic or feature
thereof or if it directly conveys information regarding the
nature, function, purpose or use of the goods or services. See
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). It is not necessary that a phrase or term describe
all of the properties or functions of the goods or services in
order for it to be considered to be merely descriptive thereof;
rather, it is sufficient if the phrase or term describes a
significant attribute or idea about them. Moreover, whether a
phrase or 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 phrase or term would have to the average
purchaser of the goods or services because of the manner of its
use. See In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979). Consequently, "[w]hether consumers could guess what the
product [or service] is from consideration of the mark alone is
3 Counsel for applicant, at the oral hearing, indicated that
applicant was no longer pursuing its claim of acquired
distinctiveness. Accordingly, and in light of the defect previously
noted in the supporting declaration, the claim of acquired
distinctiveness will not be given further consideration.
Ser. No. 74/324,490
4
not the test." In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
Applicant, while conceding that its goods and services
have "some commonality in that they all relate to health care,"
argues that the Examining Attorney has failed to appreciate the
specific differences in each of its various "activities" and how
those differences preclude the phrase "HEALTH INSURANCE TREND
MODEL" from being merely descriptive thereof. In particular,
with respect to its goods, applicant contends that while the
terminology "TREND MODEL" in the phrase it seeks to register
"conveys the meaning of a theoretical, or hypothetical[,]
construct," such phrase as a whole, when applied to periodical
publications which consist of reports, graphs, charts and data
pertaining to health insurance trends, "does not provide the kind
of immediate understanding of the goods which would cause the
mark to be considered as being merely descriptive." Such an
understanding, applicant insists, would instead "come, if at all,
only as the result of imagination exercised by the customer."
With respect to its consulting services in the field of
health insurance trends and health care cost containment and
review, applicant "submits that all the arguments advanced above
in relation to the goods ... also apply, if anything with greater
force, to these services". In particular, applicant urges that
"the mark itself does not convey the meaning that it applies to
services at all, and much less to consulting services
specifically"; that "[t]he mark itself also does not convey the
meaning that it applies to the 'trends' referenced in the
Ser. No. 74/324,490
5
definition of the ... services, as distinguished from the
(theoretical or hypothetical) 'trend model' terminology which
forms part of the mark"; and that "the mark conveys no meaning
that the services involve 'cost containment and review'."
Finally, as to its educational services of conducting
training classes in the field of health care costs containment
and review, applicant asserts that "there is such a disconnection
between the mark itself and the identified services that the mark
could not possibly be regarded as merely descriptive of those
services." The phrase "HEALTH INSURANCE TREND MODEL,"
particularly as applied to educational training classes
pertaining to containment and review of health care costs, is at
most suggestive of such services, according to applicant, and any
doubt with respect thereto should be resolved in its favor.
The Examining Attorney, on the other hand, maintains
that such phrase is merely descriptive of "the subject matter of
the goods, and the function of the services," in connection with
which it is used by applicant. The failure of the identification
of the goods and services to include the word "model" therein,
the Examining Attorney notes, "serves only to prevent the
proposed mark from being subject to a genericness refusal," but
it does not preclude a finding of mere descriptiveness.
In support of her contention that the phrase "HEALTH
INSURANCE TREND MODEL" is merely descriptive of the goods and
services as identified in the application, the Examining Attorney
relies in her brief upon dictionary definitions of the words
"trend" and "model". Specifically, Webster's New Riverside
Ser. No. 74/324,490
6
University Dictionary (1988) lists "trend" as meaning "1. A
general inclination or tendency: DRIFT
2. A direction of movement: COURSE." The same dictionary also
sets forth "model" as connoting, inter alia, "2. A preliminary
pattern serving as the plan from which an item not yet
constructed will be produced. 3. A tentative description of a
theory or system that accounts for all of its known properties."
Webster's New World College Dictionary (3rd ed. 1997), we
judicially notice,4 similarly defines "trend" as signifying "a
general or prevailing tendency or course, as of events, a
discussion, etc.; drift" and lists "model" as connoting, among
other things, "a generalized, hypothetical description, often
based on an analogy, used in analyzing or explaining something".
In addition, the Examining Attorney relies upon the
manner of use of the phrase "HEALTH INSURANCE TREND MODEL" as
shown by the specimens of record. The specimens for the goods
appear to include the cover and title page of a February 1989
publication by applicant which is entitled "Health Insurance
Trend Modelï›› " and bear the subtitle "Trend Analysis and
Forecasts". The publication's table of contents lists, among
other topics, "Health Insurance Trend Highlights," "Trend Model
Graphs," "Trend Model Data Summary" and "Regional Trends," and
4 The Board may properly take judicial notice of dictionary
definitions. See, e.g., Hancock v. American Steel & Wire Co. of New
Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953) and University of
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ
594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Ser. No. 74/324,490
7
also sets forth an "Appendix B - Uses and Implications of the
Trend Model." Such appendix, in particular, mentions the
following (emphasis added):
The "Health Insurance Trend Modelï›› " is a
health cost management tool based on
historical relationships between the national
economy and national health care trends. It
can be used, along with other available
information, in anticipating future trends.
Special or unusual circumstances that may
change in the future must be considered
separately from the Trend Model since these
would generally not be anticipated by the
model. ....
The Trend Model is intended to provide
general indications of the direction and
relative change of trends in the near future.
The Model is not intended, and cannot be
expected, to provide a determination of exact
trends. Furthermore, the more distant the
projection period extends into the future,
the more uncertain are the results.
The actual trends will vary according to
geographic location, type and mix of
business, underwriting, demographics,
reimbursement mechanisms, health care cost
controls and movement away from historical
relationships, etc. ....
Because of these considerations, actual
health insurance trends should generally be
expected to average 1 to 2% higher than the
Trend Model, independent of deductible
leveraging. ....
....
Limited Warranty. M&R warrants that it has
exercised reasonable care in compiling data
and developing the trends and forecasts
incorporated in the Health Trend Modelï››
While M&R believes that the Health Insurance
Trend Modelï›› is accurate with indications of
health insurance trends, under the terms
Ser. No. 74/324,490
8
defined in the User's Guide of the Health
Insurance Trend Model,ï›› M&R does not make
any warranty to that effect. ....
The several different specimens submitted with respect
to applicant's consulting services in the field of health
insurance trends and health care cost containment and review
appear to include the same ones as those furnished as specimens
in connection with its educational services of conducting
training classes in the field of health care costs containment
and review.5 These dual-purpose specimens, as stated by
applicant in its August 11, 1993 response, consist of "a one page
informational sheet entitled 'Health Insurance Trend Model'" and
are subtitled "Trend Analysis and Forecast" and "History and
User's Guide".6 Such specimens refer to applicant's "Trend Model
5 The other specimens submitted with respect to applicant's
consulting services consist of copies of the October 1988 and July
1992 issues of applicant's "Health Cost Index Report," which states
on the front page of each that such publication "is a quarterly
newsletter monitoring health insurance cost trends". The October
1988 edition, which appears to be the premier issue, contains the
following explanation (emphasis added):
The Health Insurance Trend Modelï›› is a health cost
management tool based on historical relationships between
the national economy and national health care trends. It
can be used, along with all other available information,
in anticipating future trends. The model is intended to
provide general indications of the direction and relative
change of trends in the near future and should be viewed
as the underlying force behind a group's trends.
Such issue also states that "The Health Insurance Trend Modelï›› uses
two scenarios to project health insurance trends forward" and the
July 1992 issue likewise indicates that such model "uses two
scenarios in forecasting health insurance trends" (emphasis added).
In addition, both the October 1988 and July 1992 issues contain
discussions of "REGIONAL HEALTH INSURANCE TRENDS".
6 Applicant furnished such specimens in response to the contention
that the originally filed specimens referred only to a periodical
publication produced by applicant. We observe, however, that under
Ser. No. 74/324,490
9
package"7 as including "[s]ubstantial training, consulting, and
support, including an annual on site visit," and describe what
applicant provides as follows (emphasis added):
the heading "Health Services," the original specimens state that
"[t]he ability to anticipate trend changes is an important tool in
managing financial resources and that "[t]he M&R consultant uses the
following tools to anticipate trends:"
ECOTRAC
A package of various economic indicators which portrays
economic data in graphical form. .... Since the cyclical
nature of health insurance trends mirrors trends in the
economy, ECOTRAC aids in analyzing recent trend patterns
and developing future trend projections. ....
HEALTH INSURANCE TREND MODEL
The Health Insurance Trend Model was developed for clients
who lack the historical data to define a trend model based
on their own experience. Combining ... the medical
components of the Consumer Price Index, and several
national utilization indices, the Model follows the
pattern of actual fee-for-service health insurance trends.
Trend projections using various economic scenarios are
developed by applying sophisticated modelling techniques,
to aid clients in determining the future direction of
their own trends.
TREND MODELLING
For clients who have maintained an historical data base, a
model based on their own trends can be derived. The
objective is to relate actual historical trends to
national economic variables in order to determine the
nature of any relationship between the economy and their
own trends. .... By identifying these leading
indicators, the model will allow projection of trends into
future periods.
(Emphasis added.)
7 It appears that such "package" is actually a computer program or
software package developed by applicant inasmuch as the specimens
state that "[i]f you are interested in leasing the Health Insurance
Trend Model, the completion of a confidentiality and licensing
agreement is required." It further appears, however, that applicant,
in connection therewith, provides separately available consulting and
educational services in addition to various periodical publications
devoted to use of its software.
Ser. No. 74/324,490
10
One of the key assumptions crucial to the
successful management of health care risks is
the selection of trend assumptions. Trends
are affected by a number of factors and
cannot be reliably predicted without a
sizeable [sic] historical data base.
Therefore, few insurers, benefit plan
sponsors, or other health care risk managers
have developed strong trend projection
capability.
The Health Insurance Trend Modelï›› (HITM) is
an important tool in health care financial
management because it allows a user to
anticipate the trends of net claims costs
without the benefit of its own extensive
historical data. .... [T]he Health
Insurance Trend Model reflects the
underlying pattern of revenue trends that
health care providers are generating from the
non-Medicare population. We refer to this as
the force of health insurance trends. ....
The HITM is capable of adjusting for the
leverage effect of deductibles, out-of-pocket
coinsurance limits, and other benefit
differences that effect trends.
Finally, the record also contains excerpts from two
searches of the "NEXIS" data base which, as illustrated by the
examples reproduced below, show that the term "trend model" is a
term commonly used in various scientific, business and financial
fields, including insurance (emphasis added):
This step-wise trend model of economic
growth is related to the breaking-trend work
of Perron ... and Rappaport and Reichlin ....
-- Southern Economic Journal, April 1994, at
977 (article headlined "Business cycles,
trends, and random walks in macroeconomic
time series");
[M]odels are listed in Table Two, and
are grouped into categories of simple time
Ser. No. 74/324,490
11
series models, simple smoothing models, and
linear trend models. -- Business Credit,
October 1993, at 14 (article headlined
"Issues in forecasting company liquidity");
[One way of] forecasting claim costs is
to develop separate trend factors for
frequency and severity using simple linear or
exponential time trend models. ....
....
The time trend models rely exclusively
on claim cost data and are very similar to
the prevailing actuarial methods. -- Journal
of Risk and Insurance, September 1993, at 429
article headlined "Fuzzy trends in property-
liability insurance claim costs");
[D]evoted readers ... pay him 2% a year
to move their money in and out of stock funds
according to his trend model. -- Forbes,
August 30, 1993, at 104;
Intermediate and long-term trend models
are still mildly positive, and prices failed
to "satisfy" their short-term cycle top ....
-- Investor's Business Daily, May 20, 1993,
at 23;
The problem is that the most commonly
used trend model uses data from the past to
predict the behavior of temperature in the
future .... -- Energy Daily, July 28, 1992
(article headlined "Mathematicians Question
Significance Of Global Warming Trend");
Joe Kalish, Ned Davis Research: We cut
the duration of our bonds by 5%, but the
duration of our bond portfolio is still 15%
above its benchmark's duration. We shortened
because a couple of our trend models flashed
sell signals. -- BondWeek, December 9, 1991,
at 15;
Ford uses a complex earnings trend model
that identifies companies whose earnings have
accelerated over the preceding four quarters
-- regardless of whether they are classic
Ser. No. 74/324,490
12
high-growth companies, or cyclicals .... --
Financial World, January 8, 1991, at 67;
[T]he trend model projects linear
growth. This means that the amount of
increase (or decrease) is constant each time
period. This is the most common pattern, but
you may see others. For example, the growth
for new products is often exponential. The
and trend model will produce conservative
forecasts that lag behind exponential growth.
-- Lotus, March 1987; and
[With] changing age structure in the
near-retirement population during the
seventies, both period and age effects were
combined into a trend model to which the
time-series and individual data were
separately fitted. .... -- Social Security
Bulletin, February 1887 (article headlined
"Recent trends in health near the age of
retirement: new findings from the health
interview survey).
It is our view that, when applied to applicant's goods
and services, the phrase "HEALTH INSURANCE TREND MODEL"
immediately describes, without conjecture or speculation, the
principal subject matter featured in connection therewith.
Applicant provides periodical publications, consisting of
reports, graphs, charts and data, which pertain to health
insurance trends; it renders consulting services in the field of
health insurance trends and health care cost containment and
review; and it offers educational services which involve the
conducting of training classes in the field of health care costs
containment and review. As the specimens of use make clear, all
of these goods and services have, as their focal point or chief
characteristic, a health insurance trend model developed by
applicant for use by its customers in forecasting or projecting
Ser. No. 74/324,490
13
health insurance trends as an aid in the review and containment
of health care costs.
To hospital administrators and insurance brokers, who
would no doubt be the principal purchasers and users of
applicant's goods and services and would be familiar with the
terms "trend," "model" and "trend model" as they pertain to
models for prognosticating future health care costs, including
trends pertaining to health insurance expenses, there is nothing
in the phrase "HEALTH INSURANCE TREND MODEL" which is redundant,
incongruous, peculiar, indefinite or susceptible to multiple
connotations, nor would any imagination, cogitation or gathering
of further information be necessary in order for such persons to
perceive precisely the merely descriptive significance of such
phrase as it relates to the principal subject matter of
applicant's goods and services. Plainly, as shown by the "NEXIS"
excerpts and the dictionary definitions, both actual and
prospective customers of applicant's goods and services would
readily understand that, when joined to form the phrase "HEALTH
INSURANCE TREND MODEL," the individual words or component terms
thereof have a meaning identical to the meaning which ordinary
usage would ascribe thereto in combination. See, e.g., In re
Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed. Cir.
1987). Any periodical publications relating to health insurance
trends, as well as any consulting services which are directed to
the field of health insurance trends and health care cost
containment and review, and any educational services which
consist of conducting training classes in the field of health
Ser. No. 74/324,490
14
care costs containment and review, which feature as the basic
subject matter thereof a trend model of health insurance costs is
aptly described by the phrase "HEALTH INSURANCE TREND MODEL".8
The fact that applicant may be the first to use such phrase in
connection with the particular goods and services set forth in
the application is, however, simply not dispositive where, as
here, the phrase unequivocally projects a merely descriptive
connotation. See In re MBAssociates, 180 USPQ 338, 339 (TTAB
1973). Clearly, when applicant's knowledgeable and sophisticated
customers, who are concerned with the review and containment of
health care costs, including health insurance, view the phrase
"HEALTH INSURANCE TREND MODEL" in the context of the respective
specimens for applicant's goods and services, they would readily
understand that, in each instance, the principal or featured
subject matter of its periodical publications, consulting
services and training courses is a health insurance trend model
for use in systematically analyzing and forecasting patterns,
tendencies or directions in health care insurance costs.
Accordingly, because in the case of each of applicant's
goods and services the phrase "HEALTH INSURANCE TREND MODEL"
conveys forthwith the subject matter to which the goods and
services chiefly pertain, namely, a trend model for health
insurance costs, such phrase is merely descriptive thereof within
the meaning of the statute. See, e.g., In re Engineering Systems
8 The same is likewise true, as evidenced by applicant's Supplemental
Register registration, of such phrase with respect to applicant's
"business services, namely, the monitoring and analysis of trends".
Ser. No. 74/324,490
15
Corp., 2 USPQ2d 1075, 1077 (TTAB 1986) [mark "DESIGN GRAPHIX" for
"computer programs" held "merely descriptive ... in that it
immediately informs prospective purchasers that applicant's
programs are graphics programs used for design purposes, that is,
that they may be used to generate a graphic representation of a
design"].
Decision: The refusal under Section 2(e)(1) is
affirmed.
J. E. Rice
R. L. Simms
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board
