Southwest Student Services Corp.

Trademark Trial and Appeal Board

Aug 20, 1999

No. 74582574 (T.T.A.B. Aug. 20, 1999)

Oral Hearing Paper No. 20
December 9, 1998 GDH/gdh
THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB AUG. 20 ,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Southwest Student Services Corporation
________
Serial No. 74/582,,574
_______
Thomas E. Spath of Abelman, Frayne & Schwab for Southwest Student
Services Corporation.
Angela Lykos, Trademark Examining Attorney, Law Office 102
(Thomas V. Shaw, Managing Attorney).
_______
Before Hohein, Hairston and Wendel, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Southwest Student Services Corporation has filed an
application to register the term "COLLEGECARD" for "financial
services, namely providing to students enrolled at participating
institutions of post-secondary education a low-cost line of
credit accessed by a transaction card for payment of education-
related expenses to the institution and to participating
merchants affiliated with the institution".1

1 Ser. No. 74/582,574, filed on October 5, 1994, which alleges dates of
first use of September 30, 1987.
Ser. No. 74/582,574
2
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 the term "COLLEGECARD" is a generic term for applicant's
services and thus is unregistrable.2
Applicant has appealed. Briefs have been filed and an
oral hearing was held. We affirm the refusal to register.
It is well established that, in the case of a generic
designation, the burden is on the Patent and Trademark Office to
show the genericness of the designation by "clear evidence"
thereof. See, e.g., In re Merrill Lynch, Pierce, Fenner & Smith,
Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). See
also In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111
(Fed. Cir. 1987). As to the standard for evaluating genericness,
the Board in In re Leatherman Tool Group Inc., 32 USPQ2d 1443,
1449 (TTAB 1994), stated that:
The test for determining whether a
designation is generic, as applied to the
goods [or services] set forth in an
application or registration, turns upon how
the term is perceived by the relevant public.
See Magic Wand Inc. v. RDB Inc., 940 F.2d
638, 19 USPQ2d 1551, 1552-53 (Fed. Cir. 1991)
and cases cited therein at 1553. Such
perception is the primary consideration in a

2 As noted, for instance, in H. Marvin Ginn Corp. v. International
Ass’n of Fire Chiefs, Inc., 728 F.2d 987, 228 USPQ 528, 530 (Fed. Cir.
1986), a generic designation is "the ultimate in descriptiveness" and
is incapable of registration on either the Principal Register or the
Supplemental Register. While applicant, in response to the refusal to
register, amended its application, pursuant to Section 2(f) of the
Trademark Act, 15 U.S.C. §1052(f), to include a claim that the term
"COLLEGE CARD" has acquired distinctiveness and furnished evidence in
support thereof, the Examining Attorney has indicated with respect
thereto that: "The applicant has submitted sufficient evidence to
support a claim of acquired distinctiveness; however, because the mark
is generic, this evidence will not alter the determination that the
mark is unregistrable."
Ser. No. 74/582,574
3
determination of genericness. See Loglan
Institute Inc. v. Logical Language Group
Inc., 962 F.2d 1038, 22 USPQ2d 1531, 1532
(Fed. Cir. 1992). As Section 14(3) of the
Trademark Act, 15 U.S.C. §1064(3), makes
clear, "[a] ... mark shall not be deemed to
be the generic name of goods [or services]
solely because such mark is also used as a
name to identify a unique product [or
service]"; instead, "[t]he primary
significance of the ... mark to the relevant
public rather than purchaser motivation shall
be the test for determining whether the ...
mark [is or] has become the generic name of
the goods [or service] on or in connection
with which it has been used." Consequently,
if the designation sought to be registered is
understood by the relevant public primarily
to refer to the class or genus of goods [or
services] at issue, the term is generic. See
H. Marvin Ginn Corp. v. International
Association of Fire Chiefs, Inc., [728 F.2d
987, 228 USPQ 528, 530 (Fed. Cir. 1986)] ....
Evidence of the relevant public's
understanding of a term may be obtained from
any competent source, including newspapers,
magazines, dictionaries, catalogs and other
publications. See In re Northland Aluminum
Products, Inc., 777 F.2d 1566, 227 USPQ 961,
963 (Fed. Cir. 1985).
In the present case, applicant asserts by way of
background information that its financial services, as identified
in the application, "are very specific and specialized" in that:
the financial services rendered under the
COLLEGECARD mark are available only to
students at educational institutions which
institutions themselves have investigated the
nature, quality and source of the services
and have determined, in effect, on behalf of
their students, that participation would be
beneficial to both the institution and to the
students (and in most cases the students'
families.) It is also to be noted that the
participating educational institution selects
those goods and services, which in its
judgment, are "education-related."
Applicant's services are not of the same type
as those provided by American Express, AT&T,
Mastercard or Visa, i.e., applicant is not
offering a general-purpose credit card. The
Ser. No. 74/582,574
4
description of services distinguishes
applicant’s services from those providing
ordinary consumer credit services.
Applicant further contends, in view thereof, that for the purpose
of determining the issue of genericness, "the relevant segment of
the public constitutes potential and existing students, parents
of potential and existing students, and educational financial
administrators, business managers, student loan officers and the
like."
Applicant essentially argues that, as to the excerpts,
which form the evidentiary basis for the refusal to register,
made of record by the Examining Attorney from her searches of the
"NEXIS" database, "the great majority of articles relied upon by
the Examining Attorney are from credit card and banking industry
trade publications" and therefore are at most directed to only a
very small part of the relevant purchasing public. Applicant
insists that, "when the scope and the results of these searches
are fairly analyzed, it can only be concluded that sufficient
probative evidence of widespread generic usage is lacking and
that the Examining Attorney has not met the burden of proving
that the mark is generic." Specifically, applicant maintains
that:3

3 Although applicant, notably without citation to authority, "ask[s]
the Board to take notice of the fact that [excerpts from] the
Southwest Newswire and the PR Newswire are not sources of information
that are likely to be read by applicant’s customers," applicant is
correct that, contrary to the position of the Examining Attorney,
stories obtained from proprietary news services are of little, if any,
probative value with respect to genericness and other descriptiveness
issues. This is because, unlike newspaper, magazine and journal
articles, wire-service stories are not presumed to have circulated
among the general public so as to have had any influence on
purchasers’ attitudes towards the particular term or designation in
Ser. No. 74/582,574
5
In the present case, the record includes
only a very few instances of the use of the
term "COLLEGE CARD" in the popular press
(newspapers, magazines, etc. of general
circulation). These few stories are spread
over a number of years and the references are
to a variety of general credit card programs
--none of which has any resemblance or
relation to the specialized financial
services provided by applicant under the
COLLEGECARD mark.
To the extent that the Examining
Attorney relies upon use of the term "college
card" in the trade press (e.g., The American
Banker), we submit that the trade press
readership constitutes but a very small part
of the relevant universe of prospective
customers and users of applicant’s
specialized services. This evidence should
be ... given very little weight in the
analysis ....
Applicant consequently concludes that "the evidence of record is
de mininus and simply does not support a finding that the term
’college card’ is understood to be generic for applicant’s
services by the universe of consumers to whom applicant provides
its services."4

question. See, e.g., In re Appetito Provisions Co. Inc., 3 USPQ2d
1553, 1555 (TTAB 1987) at n. 6 and In re Men’s Int’l Professional
Tennis Council, 1 USPQ2d 1917, 1918 (TTAB 1987) at n. 5. By the same
token, we concur with applicant that "very little weight" should be
given to the excerpt of record "from the Congressional Record of
testimony ... provided to a specialized committee by a credit card
industry spokesperson." Accordingly, no further consideration will be
given to such excerpts.
4
Applicant also claims that, prior to its own adoption and use of the
term "COLLEGECARD" as a mark, it "acquired by assignment the rights to
a prior U.S. registration for the identical mark" and which was
registered on the Principal Register "without a §2(f) claim." While
noting, in particular, that "[i]n 1988, the Office issued Reg. No.
1,491,499" for the mark "COLLEGECARD" for services identified as
"financial services, namely providing a line of credit to students
attending any of various types of institutions of higher learning for
the purchase of computers and related equipment," applicant also
states that it "inadvertently allowed the '499 registration to lapse,
thereby necessitating the filing of the present application."
Although admittedly "not ... controlling on the issue raised by this
Ser. No. 74/582,574
6
The Examining Attorney, on the other hand, contends
that "the relevant public perceives COLLEGECARD as a term for a
credit card designed specifically for college students to finance
education-related expenses." In particular, the Examining
Attorney maintains that as shown by the "NEXIS" excerpts of
record, of which we find the following to be the most pertinent,
"the term ’college card’ has evolved into a generic designation
recognized by the relevant public as identifying a type of credit
card directed toward college students" (emphasis added):5
"Credit cards have gotten mighty
specialized these days. Airline cards let
you earn frequent flier miles; college cards
build up tuition credits; environmental cards
help you save the Earth." -- Charleston
Gazette, September 13, 1995;
"AT&T’s coupons are being offered to new
and existing cardholders. Its college card
differs from the standard Universal card in
several ways. It comes with credit education
material and a purchase protection program
...." -- American Banker, September 5, 1995

appeal," applicant urges that, "[a]t the very least, the existence of
the prior registration raises serious doubts about the basis for the
present genericness refusal." However, aside from the fact that an
expired registration merely constitutes evidence that the registration
issued, see, e.g., Sunnen Products Co. v. Sunex Int’l Inc., 1 USPQ2d
1744, 1747 (TTAB 1987), and that whatever benefits, including the
evidentiary presumptions afforded by Section 7(b) of the Trademark
Act, 15 U.S.C. §1057(b), are lost when the registration expires or is
canceled, see, e.g., Anderson, Clayton & Co. v. Krier, 478 F.2d 1246,
178 USPQ 46, 47 (CCPA 1973), the issue to be determined is not whether
the term sought to be registered was generic in 1988, when the
registration which applicant subsequently obtained was issued, but
whether such term is presently generic. Applicant's expired
registration is therefore of no probative value.
5 While applicant seems to hint that it is significant that none of the
"NEXIS" excerpts use the single-term expression "COLLEGECARD," we find
that the usages in such excerpts of the two-word designation "college
card" to be relevant inasmuch as applicant, as demonstrated by the
specimens of use submitted with the application, invariably uses the
term "COLLEGECARD" as "CollegeCard," a format which clearly engenders
the same commercial impression as the two words "college card".
Ser. No. 74/582,574
7
(article headlined: "Marketing: AT&T and
American Express Pile Extras on College
Cards");
"Two years ago, Mr. Guitart applied for
and received a Visa card offered by a large
credit-card bank that had set up a table in
Georgetown’s student center. Like most
college cards, Mr. Guitart’s Visa did not
require a parent’s signature or even that he
have a job.
....
She said 60 percent of college students
end up getting a credit card before they
graduate, and many easily accumulate five or
six cards. In general college cards carry
interest rates toward the higher end of the
spectrum, she added." -- Washington Times,
June 3, 1994;
"The college card market has been
dominated by Citibank, Chase Manhattan,
Discover and American Express ...." -- Credit
Card News, May 1, 1994;
"For years, credit card issuers quietly
have cultivated the college card market with
little scrutiny from lawmakers. Citicorp,
Discover, American Express, Chase and other
issuers now have an estimated 3.5 million
college-student cardholders." -- Credit Card
News, March 15, 1994 (article headlined:
"U.S. Rep. Kennedy Crashes the College Credit
Card Party");
"AT&T Universal Card Services is making
its credit card available to college students
at 550 colleges and universities nationwide,
it says. The card is being offered with no
annual fee for life and a discount on long-
distance telephone calls. .... To ensure
that balances are paid off promptly, the
monthly minimum payments would be higher for
student cardholders than regular card
holders, AT&T says. The college card
contains features normally associated with
gold bank cards ...." -- Buffalo News, August
25, 1993;
"Some programs are branching off campus.
Florida State University’s FSUcard, ...
carried by 38,000 students, is accepted by
Ser. No. 74/582,574
8
300 merchants in the Tallahassee area and in
Honor and Plus automated teller machines.
Prepaid college cards may be functional
enough, and scarce enough, to make collecting
worthwhile." -- American Banker, May 26,
1993;
As to applicant’s contention that its financial
services are distinguishable from the types of "college card" or
general purpose credit card services for college students
mentioned in the "NEXIS" excerpts since applicant’s services are
specifically limited to providing college students with a low-
cost line of credit, accessed through a transaction card, for
payment solely of education-related expenses, the Examining
Attorney asserts that:
The applicant’s argument is
unconvincing. "Education-related" expenses
cover a wide array of expenditures. The
applicant’s specimens explain that the
applicant’s credit card can be used to
purchase:
-Tuition, fees, room and board
-Books and Supplies
-Meals, bookstore items, parking
-Library charges, student health
insurance and more
The applicant’s specimens have broadly
defined an "education-related" expense as any
type of necessary expenditure incurred while
attending college. Thus, the applicant’s
credit card can be used to finance the
purchase [of] a variety of goods and services
while the user attends college. While the
card is only available to be used at pre-
approved merchant locations or at the
institution itself, many of these pre-
approved merchants provide goods or services
that the non-preapproved merchants would
provide such as groceries or school supplies.
Moreover, a student can charge tuition on a
college card issued by Visa just as easily as
he or she can charge tuition on the
applicant’s credit card or college card. The
Ser. No. 74/582,574
9
applicant’s credit card therefore performs
the same function as credit cards issued by
companies such as AT&T or Visa.
Upon careful consideration of the entire record, we
agree with the Examining Attorney that the term "COLLEGECARD,"
being the phonetic equivalent of the words "college card," is a
generic term for any kind of credit card services aimed at
college students for financing their educational-related living
expenses. The relevant public for applicant’s services, we find,
would be composed not only of potential and existing students,
their parents, and educational financial administrators, business
managers, student loan officers and the like individuals at
institutions of post-secondary education, as contended by
applicant, but would also include "participating merchants
affiliated with the institution[s]," as stated in the recitation
of applicant’s services.
The "NEXIS" excerpts noted above, including those which
appeared in trade publications which would be read by persons
interested in credit card financing, clearly demonstrate that the
designation "college card," and hence the term "COLLEGE CARD,"
primarily signifies, to members of the relevant public, any type
of credit card arrangements which are directed to the payment of
the kinds of educational-related financial expenses incurred by
college students. Whether such a niche market is served by those
who, like applicant, provide a specialized line of credit or by
issuers of general purpose credit cards which may tailor their
offerings to college students’ needs, it is plain that credit
card services related to the educational expenses of students at
Ser. No. 74/582,574
10
institutions of higher learning are aptly and commonly known as
college card services to those in the trade and to actual or
prospective users thereof.
While we recognize that, unlike a general purpose
credit card, applicant’s financial services are specialized in
that they are provided only through participating institutions of
post-secondary education, applicant’s advertising literature,
including its specimens of use, unmistakably show that its
"COLLEGECARD" services in essence are a type of college student
credit card or "college card". For example, as the following
from one of its brochures explains:
CollegeCard is an open-ended revolving
line of credit that provides repayment terms
like a student loan and the convenience of a
credit card. Students present it when they
pay for their educational expenses (such as
tuition, fees, room and board, books and
supplies). But while it works like a credit
card, CollegeCard offers some big pluses for
your institution that most credit cards don’t
give.
....
All credit cards charge a merchant of
discount fee. But with CollegeCard, we’ll
work with you to establish a rate equal to or
lower than the rates you’ve been paying for
most credit cards. ....
....
Unlike most credit cards, we don’t
deduct the discount fees when we make
deposits to your account. ....
Similarly, another brochure, submitted as applicant’s
specimens of use, states among other things that:
CollegeCard has been endorsed for use on
campus by your college. You can use it at
Ser. No. 74/582,574
11
approved locations just as you would any
other bank credit card. ....
....
With their long-term commitment to
providing federally guaranteed student loans,
.... Southwest Student Services Corporation
and its affiliate are able to provide
CollegeCard at terms more competitive than
traditional credit cards.
....
The interest rate on CollegeCard is
substantially less than other bank credit
cards. It’s interest rate is variable, as
are those on many student loans and
commercial credit cards. ....
....
With CollegeCard, students get the low
interest rates and friendly repayment terms
of a student loan with all the convenience of
a bank credit card.
As is apparent from the above, in reaching our
conclusion that the term "COLLEGECARD" is generic, we have not
ignored or disregarded the brochures and other evidence furnished
by applicant in support of its de facto claim of acquired
distinctiveness. Such evidence, as described by applicant in its
request for reconsideration of the final refusal, is not,
however, persuasive of a different result. Specifically, we
observe that despite applicant’s not insubstantial advertising
expenditures of just over $2,000,000 during the years from 1992
through 1996, it nevertheless received only 3,375 applications
from prospective cardholders (with no indication of the number
which have actually been approved) and its current receivables
(as of September 25, 1996) stood at an amount in excess of just
$1,200,000. Thus, while applicant appears to have enjoyed at
Ser. No. 74/582,574
12
least some degree of success for its "COLLEGECARD" services, the
"NEXIS" excerpts noted above are clear and unambiguous as to the
meaning of such term in connection with credit card services
which are provided specifically to college students to pay for
their education-related expenses. The latter is simply more
convincing proof of the relevant public’s perception of the term
"COLLEGECARD" than the evidence furnished by applicant. See,
e.g., In re Pennzoil Products Co., 20 USPQ2d 1753, 1758-59 (TTAB
1991).
This case, therefore, is unlike the situation in
Merrill Lynch, supra at 1143-44, which presented a mixture of
uses which our principal reviewing court found to be so
indeterminate as to be insufficient proof of genericness. The
record herein, instead, satisfactorily establishes that, to the
relevant public, the term "COLLEGECARD" primarily means or
signifies a category or type of credit card services which are
directed to college students to finance their educational-related
living expenses and thus it is generic for applicant’s services.
Decision: The refusal under Section 2(e)(1) is
affirmed.
G. D. Hohein
P. T. Hairston
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board