MRI Leasing Corp.

Trademark Trial and Appeal Board

Nov 28, 2005

No. 76563024 (T.T.A.B. Nov. 28, 2005)

Mailed: November 28, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re MRI Leasing Corp.
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Serial No. 76563024
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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
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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
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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
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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
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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
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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
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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
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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
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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
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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.