The Security First Title Affiliates, Inc.

Trademark Trial and Appeal Board

Mar 12, 2001

No. 75391512 (T.T.A.B. Mar. 12, 2001)

3/12/01
Paper No. 11
JQ
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re The Security First Title Affiliates, Inc.
________
Serial No. 75/391,512
_______
Kit M. Stetina and Daren S. Rimer of Stetina Brunda Garred
& Brucker for applicant.
Florentina Blandu, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______
Before Simms, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by The Security First
Title Affiliates, Inc. to register the mark TITLE AMERICA
for “title insurance underwriting services.”1
The Trademark Examining Attorney has refused
registration under Section 2(e)(2) of the Trademark Act on
the ground that the mark, if used in connection with
1 Application Serial No. 75/391,512, filed November 10, 1997,
based on an allegation of a bona fide intention to use the mark
in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/391,512
2
applicant’s services, would be primarily geographically
descriptive of them.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs. An oral
hearing was not requested.
Applicant states that “[w]hile [applicant] does not
dispute that the term ‘AMERICA’ signifies the geographic
region in which [applicant] conducts its business,
[applicant] contends that this fact is immaterial.”
(brief, p. 4) Applicant goes on to argue that the primary
significance of the term “America” is not geographic and
that “although America is not a remote place or location,
this does not necessarily mean that consumers will assume
that a [services]/place association exists.” Id.
Applicant maintains that the term “America” functions
“similar to a laudatory term (such as majestic, best, etc.)
to indicate a certain grandness of [applicant’s] services.”
Id. Applicant has relied upon a trademark search report,
and copies of several third-party registrations retrieved
from the Office’s database.2
2 Applicant submitted two search reports, one for “America” type
marks and a second one for “National” type marks. The “National”
search report is irrelevant to the issue before us. With respect
to the “America” search report, although such submission is not
the proper way to introduce third-party registrations, the
Examining Attorney has not objected thereto, but rather has
considered the evidence as if properly of record. The copies of
Ser No. 75/391,512
3
The Examining Attorney asserts that applicant offers
title services which emanate in America and that,
therefore, the mark TITLE AMERICA is primarily
geographically descriptive. In response to applicant’s
contention that the term “America” is laudatory and not
primarily geographic, the Examining Attorney points out
that the argument is not supported by any evidence of
record. In support of the refusal, the Examining Attorney
submitted third-party registrations showing disclaimers of
the terms “Title” and “America.” The Examining Attorney’s
brief includes a request that the Board take judicial
notice of the dictionary definitions of the terms “title”
and “America,” a request which we hereby grant. See:
University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
In order for registration to be properly refused under
Section 2(e)(2), it is necessary to show that (i) the mark
sought to be registered is the name of a place known
generally to the public, and that (ii) the public would
make a goods(services)/place association, that is, believe
certain of the third-party registrations were not submitted until
applicant’s appeal brief. Although this submission is untimely
under Trademark Rule 2.142(d), again the Examining Attorney
treated the evidence as if properly introduced. Accordingly, we
have considered all of applicant’s evidence bearing on the state
of the register with respect to “America” type marks.
Ser No. 75/391,512
4
that the goods/services for which the mark is sought to be
registered originate in that place. In re California Pizza
Kitchen, Inc., 10 USPQ2d 1704 (TTAB 1988), citing In re
Societe Generale des Eaux Minerals de Vittel S.A., 824 F.2d
957, 3 USPQ2d 1450 (Fed. Cir. 1987). Where there is no
genuine issue that the geographical significance of a term
is its primary significance and where the geographical
place is neither obscure nor remote, a public association
of the goods or services with the place may ordinarily be
presumed from the fact that the applicant's own goods or
services come from the geographical place named in the
mark. In re Handler Fenton Westerns, Inc., 214 USPQ 848
(TTAB 1982).
It hardly needs to be said that "America" is
universally known as a geographic name for the United
States of America. In The American Heritage Dictionary of
the English Language (3d ed. 1992), the term is defined as
“the United States.” We find, therefore, that the
geographic significance of "America" is its primary
significance and that America is neither obscure nor
remote. In making this finding, we recognize that the term
“America” may also suggest, as applicant argues, that the
involved services are of a high quality or are to be
desired. We reiterate, however, that the primary
Ser No. 75/391,512
5
significance of the term is geographic. Applicant has
failed to introduce any evidence to convince us to the
contrary. In re Monograms America Inc., 51 USPQ2d 1317,
1320 (TTAB 1999)[MONOGRAMS AMERICA is primarily
geographically descriptive as used in connection with
consultation services for owners of monogramming shops].
Having found that the term “America” is a primarily
geographic term, the question becomes whether the composite
mark TITLE AMERICA is primarily geographically descriptive
as contemplated by the statute.
The mere addition of the generic term “title” (which
names the type of insurance underwriting services rendered
by applicant) to “America” does not detract from the
primary geographic significance of “America.” That is to
say, such addition of generic matter does not detract from
the primary geographic significance of TITLE AMERICA when
the mark is considered as a whole. In re Monograms America
Inc., supra, and In re Chalk’s International Airlines Inc.,
21 USPQ2d 1637, 1639 (TTAB 1991) [PARADISE ISLAND AIRLINES
for air transportation services is primarily geographically
descriptive]. Moreover, as the Board has stated in the
past, the determination of registrability under Section
2(e)(2) should not depend on whether the mark is unitary or
composite. In re Cambridge Digital Systems, 1 USPQ2d 1659,
Ser No. 75/391,512
6
1662 (TTAB 1986) [the addition of the descriptive word
DIGITAL does not detract from the primary geographic
significance of CAMBRIDGE DIGITAL].
We now turn to the second part of the test as set
forth above, namely, whether the public would make a
services/place association. In the present case, applicant
is incorporated and located in the United States
(specifically, in the state of Florida). Having found that
the geographic significance of TITLE AMERICA is its primary
significance and that America is neither obscure or remote,
we presume, from the fact that applicant's own services
originate from that place, a public association of the
services with the place named in the mark. See: In re
BankAmerica Corporation, 231 USPQ 873, 875 (TTAB 1986) and
cases cited thereat [BANK OF AMERICA primarily signifies an
American bank and, with respect to computerized financial
data processing services which emanate from this country, a
public association of those services with the place named
in the mark (i.e., America) may be presumed]. See also,
e.g.: In re U.S. Cargo Inc., 49 USPQ2d 1702 (TTAB 1998);
In re Biesseci S.p.A., 12 USPQ2d 1149 (TTAB 1989); and In
re Jim Crockett Promotions, 5 USPQ2d 1455 (TTAB 1987).
The third-party registrations of “AMERICA” or
“AMERICAN” type marks submitted by applicant do not compel
Ser No. 75/391,512
7
a different result here. These registrations, coupled with
the ones submitted by the Examining Attorney, indicate that
the register is mixed.3 While uniform treatment under the
Trademark Act is an administrative goal, our task in this
appeal is to determine, based on the record before us,
whether applicant’s mark is primarily geographically
descriptive. As often noted by the Board, each case must
be decided on its own merits. We are not privy to the
records in the files of the cited registrations and,
moreover, the determination of registrability of particular
marks by the Trademark Examining Groups cannot control the
result in another case involving a different mark for
different goods and/or services. In re Nett Designs Inc.,
___F.3d___, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)[“Even if
some prior registrations had some characteristics similar
to [applicant’s application], the PTO’s allowance of such
prior registrations does not bind the Board or this
court.”].
We conclude that consumers are likely to believe
3 We also note that the prosecution history (applicant’s response
filed January 11, 1999) includes a reference to a then co-pending
application owned by applicant. The application matured into
Registration No. 2,359,065, issued on June 20, 2000, of the mark
TITLE PARTNERS OF AMERICA for “real property title insurance
underwriting services.” Applicant’s registration includes a
disclaimer of the terms “Title” and “America” apart from the
mark.
Ser No. 75/391,512
8
that TITLE AMERICA is primarily geographically descriptive
of title insurance underwriting services that emanate from
America.
Decision: The refusal to register is affirmed.
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