Universal Services of America, Inc.

Trademark Trial and Appeal Board

May 20, 1998

No. 74581388 (T.T.A.B. May. 20, 1998)

Paper No. 9
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MAY 20, 1998
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Universal Services of America, Inc.
________
Serial No. 74/581,388
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Edward A. Pennington of Morgan & Finnegan for Universal Services
of America, Inc.
Russ Herman, Trademark Examining Attorney, Law Office 102 (Myra
Kurzbard, Managing Attorney)
_______
Before Cissel, Seeherman and Hohein, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On October 3, 1994, applicant filed an application to
register the mark shown below
on the Principal Register for what were subsequently identified
by amendment as “insurance underwriting services and insurance
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brokerage services; financial management and financial planning
services including tax return preparation and accounting
services,” in Class 36. The application was based on
applicant’s claim of use of the mark in connection with these
services since October 8, 1992.
The Examining Attorney refused registration under Section
2(d) of the Lanham Act on the ground that applicant’s mark, as
used in connection with the services set forth in the
application, so resembles the mark “USA,” which is registered1 on
the Principal Register under the provisions of Section 2(f) for
“administration in the field of life insurance,” that confusion
is likely. The Examining Attorney also required applicant to
disclaim the assertedly geographically descriptive term “USA”
apart from the mark as shown.
Applicant submitted arguments in response to both the
refusal and the requirement. Applicant argued that the letters
do not have to be disclaimed because they are an acronym for
applicant’s trade name. Further, applicant argued that confusion
is not likely because the services of applicant are different
from those set forth in the registration, and the channels of
trade through which the services move and customers to whom
applicant’s services are rendered are different as well.

1 Reg. No. 1,691,934, issued to Universal Systems of America, Inc. on
June 9, 1992; combined affidavit under Sections 8 and 15. The
registration is based on a claim of use since October 10, 1983.
Ser No. 581,388
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The Examining Attorney was not persuaded on either issue,
and made both the refusal and the requirement final with his
second Office Action. Applicant timely filed a notice of appeal.
Ser No. 581,388
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Both applicant and the Examining Attorney filed briefs. The
Applicant did not request an oral hearing.
We note for the record that we have not considered the
third-party registration information that the Examining Attorney
submitted with his brief on appeal. These materials were not
timely submitted. See Trademark Rule 2.142(d).
After careful consideration of the record and the arguments,
we reverse the refusal to register, but we affirm the requirement
for a disclaimer of the geographically descriptive letters “USA.”
Turning first to the latter, we begin with the fact that
Section 6 of the Act requires an applicant to disclaim an
unregistrable component of a mark which is otherwise registrable.
Section 2(e)(2) of the Act precludes registration of terms which
are primarily geographically descriptive. The issue, then, in
the case at hand, is whether “USA” is geographically descriptive
as applied to the services specified in the application. Because
it is, it must be disclaimed.
Applicant does not appear to dispute the well-settled test
for geographic descriptiveness under the Lanham Act. That test
provides that if the primary significance of the matter sought to
be registered is geographical, i.e., if the term is the name of a
place known generally to the public, and the public would make a
services/place association, that is, believe that services of the
kind set forth in the application originate in the named place,
and the services of the applicant do in fact come from that
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place, then the term is unregistrable under Section 2(e)(2) of
the Act. Further, applicant does not appear to contest the fact
that “USA” is a recognized acronym for “United States of
America,” nor does applicant dispute that “USA” is a place name
known generally to the public, that insurance underwriting and
brokerage services, financial management, financial planning and
accounting services all are rendered in the USA, or that
applicant is located in the United States and renders its
services in the United States.
Applicant’s argument appears to be that because the letters
“USA” are also the initials of applicant’s trade name, the
primary significance of them to the relevant purchasing public is
not the place name, but instead, that such people perceive the
letters as applicant’s service mark.
We see no basis for reaching this conclusion, however.
“USA” is the well known acronym for the United States of America.
We have no basis upon which to conclude that an appreciable
number of people would recognize these letters as the initials
for applicant’s trade name. Applicant’s argument is essentially
that the geographic significance of “USA” has been replaced by
source-indicating significance in the minds of applicant’s
customers. This amounts to a claim of distinctiveness under
Section 2(f) of the Act, but applicant has neither amended the
application to seek registration under Section 2(f), nor
supported its argument with evidence. In the absence of such a
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claim and evidence in support of it, we conclude that most
consumers would recognize the letters as the abbreviation for the
name of the country, rather than as the initials of Universal
Services of America.
Not only is “USA” well known as an abbreviation for the name
of this country, it is also well known that businesses in this
country render insurance, financial and accounting services. In
accordance with In re Handler Fenton Westerns, Inc., 214 USPQ
848, (TTAB 1982), because the geographic significance of “USA”
is its primary significance, and because the United States is
neither obscure nor remote, it can be presumed that applicant’s
services come from this country, where applicant is located and
does, in fact, render its services. Accordingly, we hold the
letters “USA” to be primarily merely geographically descriptive
within the meaning of Section 2(e)(2) of the Lanham Act, and as
such, they must be disclaimed in accordance with Section 6 of the
Act.
Although the requirement for a disclaimer of the letters
“USA” is therefore affirmed, the refusal to register under
Section 2(d) is not. Among the principles that have guided us to
this conclusion is that in order for us to find that confusion is
likely, not only must the marks be similar, but the goods or
services with which they are used must be related in some way
such that the use of similar marks in connection with them makes
confusion likely. In re Hal Leonard Publishing Corp., 15 USPQ2d
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1574 (TTAB 1990). In this regard, the burden is on the Examining
Attorney to support his factual contentions, such as that the
services are related to each other, with evidence. See: In re
Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir.
1987).
In the case at hand, although the similarities between
applicant’s mark and the mark in the cited registration are
obvious, the Examining Attorney has not supported his refusal to
register with any evidence that the services set forth in the
application are related to those specified in the cited
registration. Apparently he realized this by the time he
attached the third-party registration evidence discussed above to
his brief on appeal, but that evidence, as we also noted above,
was untimely submitted and therefore has not been considered.
Without it, we are simply without any basis for adopting the
conclusion urged by the Examining Attorney with regard to the
relationship between applicant’s services of underwriting and
brokering insurance and the service rendered by the registrant
under the registered mark, namely administration in the field of
life insurance. We cannot speculate based only upon the ways the
services are identified in the application and the cited
registration, respectively, that such services would be rendered
by the same entity to the same group of customers.
Applicant, furthermore, makes a persuasive argument that
these services are quite different. According to applicant,
Ser No. 581,388
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insurance administration services entail providing third-party
administrative services to insurance companies, and these
services therefore involve a different clientele and different
trade channels than applicant’s services involve. Basically,
applicant’s argument is that registrant provides sophisticated
purchasers, namely insurance companies, with policy level
support, but that registrant does not sell or underwrite
insurance, which is what applicant does for ordinary consumers.
In the absence of any evidence to the contrary, this makes
sense to us. The burden was on the Examining Attorney to support
the refusal with evidence establishing that these services are
commercially related in such a way that the use of these similar
marks in connection with them is likely to cause confusion.
Because no such evidence is of record, the refusal must be
reversed.
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Decision: The refusal to register is reversed, but the
requirement for a disclaimer of the geographically
descriptive letters “USA” is affirmed. In view of Trademark
Rule 2.142(g), however, if applicant submits the required
disclaimer within thirty days of this ruling, the application
will be passed to publication.
R. F. Cissel
E. J. Seeherman
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board
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