MRI Leasing Corp.Download PDFTrademark Trial and Appeal BoardNov 28, 2005No. 76563024 (T.T.A.B. Nov. 28, 2005) Copy Citation Mailed: November 28, 2005 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re MRI Leasing Corp. ________ Serial No. 76563024 _______ Ezra Sutton of Ezra Sutton, P.A. for MRI Leasing Corp. Charles G. Joyner, Jr., Trademark Examining Attorney, Law Office 112 (Janice O’Lear, Managing Attorney). _______ Before Quinn, Walters and Chapman, Administrative Trademark Judges. Opinion by Chapman, Administrative Trademark Judge: MRI Leasing Corp. (a New York corporation) filed on November 14, 2003 an application to register on the Principal Register the mark GLOBAL BROKER SYSTEMS for services identified as “providing training in the field of operating a finance company” in International Class 41. The application is based on applicant’s claimed date of first use and first use in commerce of April 2003. The Examining Attorney refused registration on the ground that applicant’s mark is merely descriptive of THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE TTAB Ser. No. 76563024 2 applicant’s services under Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1). When the refusal was made final, applicant appealed to this Board. Both applicant and the Examining Attorney have filed briefs. Applicant did not request an oral hearing. The Examining Attorney argues that the words “global,” “broker” and “systems” have dictionary meanings relating in a descriptive manner to applicant’s services; that applicant’s website also shows that the mark is merely descriptive of its identified services; that Nexis database and third-party website evidence shows the widespread use of the words “global broker” in the financial marketplace; that several third-party registrations show the descriptive nature of the word “system(s)” in relation to education/training; and that the combination of the descriptive words does not create a unique commercial impression. The Examining Attorney concludes that the phrase GLOBAL BROKER SYSTEMS informs the purchasing public that applicant’s services involve training its clients in the process of brokering loans; and that the phrase is therefore merely descriptive of the function or purpose of applicant’s services. In support of the descriptiveness refusal, the Examining Attorney has made of record the following Ser. No. 76563024 3 definitions from The American Heritage Dictionary (Third Edition 1992): (1) global Of, relating to, or involving the entire earth; (2) broker One that acts as an agent for others, as in negotiating contracts, purchases, or sales in return for a fee or commission; and (3) systems An organized set of interrelated ideas or principles. The Examining Attorney also submitted (i) copies of numerous excerpted stories retrieved from the Nexis database; and (ii) certain pages printed from several websites (including applicant’s) to show use of the words “global broker” in the financial world, and how applicant itself promotes its services. In addition, the Examining Attorney submitted several third-party registrations in which the word “system(s)” is disclaimed to establish that the term is merely descriptive in relation to education or training. Examples of the excerpted stories retrieved from the Nexis database and the third-party websites include the following (emphasis added): Headline: Capital Secure Products;… …Canadian global broker TD Waterhouse has chosen this product design as the vehicle for its first foray into Ser. No. 76563024 4 structured products. … “Money Management,” February 1, 2003; Headline: Rivals Predict Opportunities As CB Acquires Insignia … Meanwhile, at least one global broker is looking to expand regionally to fill a possible void that might be created by the combination. … “Westchester County Business Journal,” March 3, 2003; Headline: Real Estate Giant Grows; CB Richard Ellis To Acquire Big Competitor …Stephen Siegel, Insignia’s commercial brokerage chairman in the Untied States, will become the top global broker in the new CB Richard Ellis. … “The San Francisco Chronicle,” February 19, 2003; Headline: Bon Chien … JFC Group, a European provider of global broker estimates and other financial data, did the heavy lifting for us – and so far, it looks like the approach works as well overseas as it does at home. “Barron’s,” February 9, 2004; Headline: Pacific Rim: Refco In Korea … “Refco has been evaluating its presence in the Korean futures market as it wanted to participate in the big domestic market given that Refco [is] a global broker and [the option on] the Korean domestic index futures contract is now the biggest in the world,” says Robert Tan, managing director of Refco Singapore. “Futures,” February 2004; Headline: Enron Raised Funds in Private Offering … By 1999, Enron President Jeffrey K. Skilling was refocusing the company as a global broker of energy, a trader of financial contracts rather than an Ser. No. 76563024 5 operator of energy facilities. … “The Washington Post,” January 22, 2002; Refco Forms Joint Venture With EasyScreen …Refco, a leading global broker in exchange traded derivatives, announced today the formation of a joint venture…. www.refcoeasysolutions.refco.com; Merrill Lynch Taps SWIFT for ETC [electronic trade confirmation] …We were one of the first global broker-dealers to go live using SWIFT…. www.swift.com; and Northern California Chapter Events …To wrap up 2004, I am pleased to announce that Dan Walter from Citigroup/SmithBarney will join us to discuss global broker issues surrounding equity compensation. … www.globalequity.org. Applicant’s website (as well as its specimen brochure) includes the following statement: Global, a nationally recognized finance company, has developed a program to train you in our proven methods for making money through the easily learned process of brokering loans. Also on applicant’s specimen brochure is the following statement: Global gives you the benefit of its financial expertise, teaching you everything you need to know about how to run your own business, get clients and access money for them. Ser. No. 76563024 6 Applicant urges reversal of the refusal arguing that the Examining Attorney has not submitted any evidence of the three words used together; that the Examining Attorney has improperly dissected the mark into its three separate words in order to determine that the phrase is merely descriptive; that there is no evidence that consumers would perceive the mark as a whole as relating to applicant’s training services in the field of operating a finance company; that applicant’s mark does not include the words “training” or “loan” and thus it does not merely describe applicant’s training services; that the three-word mark could have several meanings and requires imagination and thought in order for purchasers to relate the phrase to applicant’s services; that applicant’s combination of these three words creates a unique commercial impression which functions as a source-indicator; and that doubt is resolved in applicant’s favor. The test for determining whether a term or phrase is merely descriptive is whether the term or phrase immediately conveys information concerning a significant quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001); In re Abcor Development Ser. No. 76563024 7 Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); In re Eden Foods Inc. 24 USPQ2d 1757 (TTAB 1992); and In re Bright- Crest, Ltd., 204 USPQ 591 (TTAB 1979). Further, it is well-established that the determination of mere descriptiveness must be made not in the abstract or on the basis of guesswork, but in relation to the goods or services for which registration is sought, the context in which the term or phrase is being used on or in connection with those goods or services, and the impact that it is likely to make on the average purchaser of such goods or services. See In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); and In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991). Consequently, “[w]hether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). Rather, the question is whether someone who knows what the goods or services are will understand the term or phrase to convey information about them. See In re Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB 1990). Finally, it should be noted that a term or phrase may be “descriptive though it merely describes one of the qualities or properties of the goods [or services].” In re Ser. No. 76563024 8 Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987). We find that the phrase “GLOBAL BROKER SYSTEMS” is merely descriptive of the function or purpose of applicant’s services of providing training in the field of operating a finance company. The words forming applicant’s mark are English words with dictionary definitions, which would be generally understood by the relevant purchasers of applicant’s services. Together, the three words forming the mark do not have any connotation different from the meanings of the individual words. It is clear on this record that “global broker” has a meaning in the financial marketplace; and that these words immediately convey information about the function or purpose of applicant’s services. We are of the opinion, based on this record, that consumers will understand the phrase “GLOBAL BROKER SYSTEMS” to either indicate that a type of finance company in connection with which applicant provides its training is a global brokerage, or refer to the global or worldwide nature of applicant’s services involving training to be able to own and run a finance company. When we consider the mark GLOBAL BROKER SYSTEMS as a whole, and in the context of applicant’s services, and particularly in light of applicant’s own statements on its Ser. No. 76563024 9 website and in its specimen brochure, we find that the phrase immediately informs consumers that applicant’s services involve providing training for the operation of one’s own finance company. Moreover, the combination of these English words does not create an incongruous or unique mark, but instead, when used in connection with applicant’s identified services, “GLOBAL BROKER SYSTEMS” immediately describes, without need of conjecture or speculation, an essential function or purpose of applicant’s services. No exercise of imagination or mental processing or gathering of further information is required in order for purchasers or prospective customers for applicant’s services to readily perceive the merely descriptive significance of the phrase GLOBAL BROKER SYSTEMS as it pertains to the identified services in connection with which applicant uses the mark. See In re Gyulay, supra; In re Omaha National Corporation, 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Quik- Print Copy Shop, Inc., 616 F.2d 523, 205 USPQ 505 (CCPA 1980); In re Polo International Inc., 51 USPQ2d 1061 (TTAB 1999); In re Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998); In re Intelligent Instrumentation Inc., 40 USPQ2d 1792 (TTAB 1996); and In re Time Solutions, Inc., 33 USPQ2d 1156 (TTAB 1994). Ser. No. 76563024 10 While evidence of descriptive use of the multiple words together is generally persuasive that such a multiple word mark is merely descriptive, there is no requirement that an Examining Attorney must obtain evidence of all the words used together in order to make a prima facie showing that a multiple word mark is merely descriptive.1 See In re Nett Designs Inc., supra (Court affirmed Board holding THE ULTIMATE BIKE RACK merely descriptive and subject to disclaimer for carrying racks for mounting on bicycles and accessories for bicycle racks, namely attachments for expanding the carrying capacity of a carrying rack). See also, In re Shiva Corp., 48 USPQ2d 1957 (TTAB 1998). Finally, even if applicant was the first (and/or only) entity to use the phrase “global broker systems” in relation to providing training for operating one’s own finance company, such is not dispositive where, as here, the phrase unquestionably projects a merely descriptive connotation. See In re Tekdyne Inc., 33 USPQ2d 1949, 1953 (TTAB 1994). See also, 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §11:18 (4th ed. 2005). 1 The issue here is not whether the phrase is generic for applicant’s identified services, but rather is whether the phrase is merely descriptive in the context of applicant’s services. Ser. No. 76563024 11 Decision: The refusal to register on the ground that the proposed mark is merely descriptive under Section 2(e)(1) of the Trademark Act is affirmed. Copy with citationCopy as parenthetical citation