National Penn Bank

Trademark Trial and Appeal Board

Nov 2, 2000

No. 75486503 (T.T.A.B. Nov. 2, 2000)

Paper No. 12
ejs
11/2/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re National Penn Bank
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Serial No. 75/486,503
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John F. A. Earley, John F. A. Earley III and Joseph M.
Konieczny of Harding, Earley, Follmer & Frailey for
National Penn Bank
Craig D. Taylor, Managing Attorney, Law Office 111
_______
Before Seeherman, Hanak and Hohein, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
National Penn Bank has appealed from the final refusal
of the Trademark Examining Attorney1 to register DEBT
RESOLUTION as a mark for
banking services, namely, negotiating
payoffs of current debt obligations of
debtors for less than the outstanding
balance and lending money to debtors to
permit debtors to satisfy the current

1 It is noted that this application was examined by the Managing
Attorney for Law Office 111. However, because he was acting in
his capacity as an Examiner of Trademarks, we have referred to
him as a Trademark Examining Attorney in this opinion.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/486,503
2
debt obligations by paying the
negotiated payoff, and other
consumer/debtor financial counseling
services.2
Registration was finally refused pursuant to Section
2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1), on the
ground that applicant's mark is merely descriptive of its
identified services.
Both applicant and the Examining Attorney have filed
briefs; an oral hearing was not requested.
Before turning to the substantive issue, we must
address a procedural point. Applicant has asserted that
the final refusal which issued on May 17, 1999 was
premature and improper because the Examining Attorney, for
the first time in that action, submitted evidence with
respect to the descriptiveness of applicant's mark.
Applicant's position is incorrect. Trademark Rule 2.64(a)
provides that on the first (or any subsequent)
reexamination or reconsideration the refusal of the
registration may be stated to be final. In the first

2 Application Serial No. 75/486, filed May 18, 1998, asserting a
bona fide intention to use the mark in commerce. It is noted
that although the application and drawing identified the mark as
DEBT RESOLUTION, it was erroneously entered into the Office's
computerized records as DEBT RESOLUTIONS (with the word
"resolution" in the plural form). Subsequent papers filed by
both applicant and the Examining Attorney have used this
erroneous term in their headings. This will clarify that the
mark is, in fact, DEBT RESOLUTION, and Office records will be
corrected to reflect this.
Ser. No. 75/486,503
3
Office action the Examining Attorney refused registration
on the ground that applicant's mark was merely descriptive
of its identified services; applicant responded to that
refusal; and in the second Office action the Examining
Attorney made final the refusal on this same ground.
Therefore, the final refusal was not premature. See TBMP
§ 1201.02. Moreover, applicant has pointed out that in
response to its request for reconsideration the Examining
Attorney, in maintaining the final refusal, made of record
additional evidence "to which applicant was once again not
given an opportunity to respond." Brief, p. 3. To the
extent that applicant is suggesting that it was improper
for the Examining Attorney to submit evidence in responding
to a request for reconsideration, applicant is referred to
TBMP § 1207.04: "When a timely request for reconsideration
of an appealed action is filed (with or without new
evidence), the Examining Attorney may submit, with his or
her response to the request, new evidence directed to the
issue(s) for which reconsideration is sought."
This brings us to the ground for refusal. A term is
merely descriptive, and therefore prohibited from
registration by Section 2(e)(1) of the Act, if it
immediately conveys information concerning a quality,

Ser. No. 75/486,503
4
characteristic, function, feature, composition, purpose,
attribute, etc. of a product or service. In re Engineering
Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re Venture
Lending Associates, 226 USPQ 285 (TTAB 1985). It is
sufficient if it describes a single, significant quality,
feature, function, etc. Moreover, the question is not
decided in a vacuum but in relation to the goods on which,
or the services in connection with which, it is used. Id.
We affirm the refusal of registration.
The dictionary definitions submitted by the Examining
Attorney show that "debt" is "something owed, such as
money, goods or services"; "an obligation or liability to
pay or render something to someone else."3 The Examining
Attorney has also asserted that "resolution" means "a
resolving of something," although our review of the
dictionary definitions submitted reveals that the
definition is actually "a resolving to do something."
However, we take judicial notice of the following
dictionary definitions of "resolution":4 "the act of

3 The American Heritage Dictionary of the English Language, 3d
ed. © 1992.
4 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Ser. No. 75/486,503
5
solving";5 "a solution, accommodation, or setting of a
problem, controversy, etc."6
When the two words, "debt" and "resolution" are joined
in the phrase DEBT RESOLUTION, the clear meaning of these
words, as used in connection with the services of
negotiating payoffs of debt obligations of debtors and
lending money to debtors to satisfy their debt obligations,
is that the services provide consumers with a solution to
their payment obligations. As such, it immediately conveys
information about the purpose of applicant's services.
Consequently, the term DEBT RESOLUTION must be considered
merely descriptive of the identified services.
In reaching this conclusion we have given little
weight to the NEXIS evidence submitted by the Examining
Attorney. Many of the excerpts appear to be wire service
reports, and in particular reports by foreign wire
services, and therefore we have no information as to
whether there has been any public exposure to them in the
United States. Of the articles which did appear in print,
most are from foreign periodicals, e.g., "Asia Pulse," "The
Jakarta Post," and again there is no indication of any

5 Webster's Third New International Dictionary, unabridged ©
1993.
6 The Random House Dictionary of the English Language, 2d ed.
unabridged © 1987.
Ser. No. 75/486,503
6
exposure to them by consumers in the United States. It
must be remembered that applicant's identified services
would be offered to members of the general public who have
debt problems, not to sophisticated investors who might
read financial news reports in foreign publications. Of
the few articles which can be deemed to have circulation in
the United States, we agree with applicant that they do not
use the term "debt resolution" in connection with the debt
negotiating and lending and financial counseling services
identified in applicant's application.7
Although the Examining Attorney did not submit any
articles which show the phrase "debt resolution" used in
connection with debt negotiation and lending services of
the type identified in applicant's identification, this may
be explained by the fact that "applicant believes that its
services are novel to the financial world and thus could
not have been commonly described using applicant's mark
DEBT RESOLUTIONS." Brief, p. 9.
Applicant also argues that DEBT RESOLUTION does not
describe its services with particularity in that one would

7 For example, the May 3, 1999 "Business World" article, about
Asia recovery, discusses "strengthening of corporate governance
systems and reducing barriers to competition, strengthening
bankruptcy laws and debt resolution practices,…."; the April 26,
1999 "BusinessWorld" article states that the SEC and USAID
"signed recently a pact to jointly improve the country's debt
resolution systems and practices."
Ser. No. 75/486,503
7
not understand from the mark "(1) that applicant negotiates
a payoff or reduced amount of a current debt between the
creditor and debtor; (2) that applicant lends money to the
debtor; (3) that applicant provides consumer/debtor
financial counseling; or (4) that applicant is merely
brokering these services between debtors and creditors and
is not, in fact, either the creditor or debtor." Brief, p.
5.8 However, in order for a mark to be found merely
descriptive it does not have to describe every
characteristic, feature, etc. of a product or service. In
re Venture Lending Associates, supra. Here, the mark
immediately and directly conveys information about a
significant aspect of applicant's services, namely, the
purpose of the services, and therefore it is merely
descriptive of them.
Decision: The refusal of registration is affirmed.
E. J. Seeherman
E. W. Hanak
G. D. Hohein
Administrative Trademark Judges
Trademark Trial and Appeal Board

8 With respect to applicant's fourth point, it would appear that
applicant's services, as identified, would include the lending of
money to debtors to permit them to satisfy the current debt
obligations, and therefore applicant would be, in this respect, a
creditor.