US Airways, Inc.

Trademark Trial and Appeal Board

Jun 19, 2001

No. 75536451 (T.T.A.B. Jun. 19, 2001)

6/19/01 Paper No. 10
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re US Airways, Inc.
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Serial No. 75/536,451
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Bruce J. Goldner and Ronald J. Turiello, Jr. of Skadden,
Arps, Slate, Meagher & Flom for US Airways, Inc.
Gretta Yao, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
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Before Hohein, Walters and Rogers, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
US Airways, Inc. has filed a trademark application to
register the mark PREFERRED for “transportation services,
namely, airline passenger services in the nature of a
frequent flier program having an elite tier offering a bonus
program for frequent air travelers, namely, priority
boarding, check-in, seating and reservation services; ticket
upgrades; augmented frequent flier mileage.”1

1 Serial No. 75/536,451, in International Class 39, filed August 14,
1998, based on use of the mark in commerce, alleging first use and use
in commerce as of February 28, 1997.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/536,451
2
The Trademark Examining Attorney has finally refused
registration, under 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 services.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
The Examining Attorney contends that the term PREFERRED
“conveys a sense of quality or excellence in the service
customers receive when they achieve this level in
applicant’s frequent flier program”; that PREFERRED “is a
frequently used term in the airline industry to describe a
higher level and more desirable quality of service within
their frequent flier programs”; and that PREFERRED is
laudatory in this context and, thus, merely descriptive in
connection with the identified services. In support of this
position, the Examining Attorney submitted excerpts of
articles from the LEXIS/NEXIS database wherein the term
“preferred” is used by several different airlines to
identify a certain category of frequent fliers and,
generally, in reference to airline frequent flier programs.
The following are several examples:
A spokesman for United later explained that the
X’s represented seats set aside for full-fare or
preferred frequent fliers, and so, did not
necessarily mean that those seats were sold. The
New York Times, February 7, 1999.
Serial No. 75/536,451
3
Frequent fliers on Delta, both she and John have
earned preferred status. Pittsburgh Post-Gazette,
January 24, 1999.
In Northwest’s case, [a free ticket is] a matter
of flying 25,000 miles in one calendar year – not
an easy thing to do, if you don’t fly for
business. Other programs have similar achievement
levels. Good things occur as an elite flyer, such
as upgrade coupons coming your way and mileage
bonuses. But only the very, very frequent fliers
get to appreciate all those preferred-status
perks. Capital Times (Madison, WI), September 15,
1996.
Forty percent of those surveyed said they are
enrolled in five or six frequent-flier programs;
half of all the respondents are preferred members
in only one program. The Orange County Register,
December 5, 1994.
The Examining Attorney also submitted copies of eight
third-party registrations of marks including the term
PREFERRED, with a disclaimer thereof, for various services.
Among these registrations is a registration (No. 2,282,991)
owned by this applicant of the mark DIVIDEND MILES PREFERRED
PLUS, with a disclaimer of PREFERRED PLUS, for the same
services as in this case.
Applicant contends that its mark is suggestive of its
services. Applicant describes its services as follows:
Since at least February 28, 1997, applicant has
used its PREFFERED mark to refer to the elite
level of its frequent flier program. Once a
member achieves this elite level, that member may
enjoy priority boarding, check-in, seating and
reservations services, as well as ticket upgrades
and augmented frequent flier mileage. (Brief,
p. 2.)
Applicant’s mark merely suggests a specific class
of service in which travelers may receive certain
Serial No. 75/536,451
4
unspecified, preferential treatment, and, as such,
the mark is suggestive, not merely laudatory or
descriptive. (Brief, p. 7.)
In support of its position, applicant states that it
owns several registrations for marks incorporating the term
PREFERRED with no disclaimer thereof. Applicant also
submitted, during prosecution of the application, a list of
14 third-party registrations, with copies thereof from the
Trademark Scan database, of marks containing the term
PREFERRED for various services. Neither of these methods is
an acceptable means of submitting evidence, whether of
applicant’s own prior registrations or of third-party
registrations. But because the Examining Attorney did not
object to this evidence, we have considered it to be of
record. However, this evidence is of limited value because
we cannot conclusively determine whether the registrations
contain disclaimers of the term PREFERRED or whether the
marks are registered under Section 2(f) of the Trademark
Act, on the Supplemental Register or with disclaimers.
The test for determining whether a mark is merely
descriptive is whether the involved term immediately conveys
information concerning a quality, characteristic, function,
ingredient, attribute or feature of the product or service
in connection with which it is used, or intended to be used.
In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986);
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is
Serial No. 75/536,451
5
not necessary, in order to find a mark merely descriptive,
that the mark describe each feature of the goods or
services, only that it describe a single, significant
quality, feature, etc. In re Venture Lending Associates,
226 USPQ 285 (TTAB 1985). 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 mark is used, and the
impact that it is likely to make on the average purchaser of
such goods or services. In re Recovery, 196 USPQ 830 (TTAB
1977).
In this case, we find that applicant’s own description
of its services and the use of the term “preferred” in the
LEXIS/NEXIS excerpts clearly support the conclusion that
applicant’s asserted mark, PREFERRED, is laudatory in
connection with an elite frequent flier status and, thus,
the term is merely descriptive in connection with
applicant’s identified services.
The evidence regarding the term PREFERRED in third-
party registrations is conflicting and inconclusive. It
appears that even applicant’s own registrations are
inconsistent with respect to disclaimers of the term
PREFERRED. Such inconsistency in third-party registrations
Serial No. 75/536,451
6
is immaterial, as we are bound to decide this case based
upon the facts before us in this record.
In conclusion, it is our view that, when applied to
applicant’s services, the term PREFERRED immediately
describes, without need of conjecture or speculation, a
significant feature or function of applicant’s services, as
discussed above. Nothing requires the exercise of
imagination, cogitation, mental processing or gathering of
further information in order for purchasers of, and
prospective customers for, applicant’s services to readily
perceive the merely descriptive significance of the term
PREFERRED as it pertains to these services.
Decision: The refusal under Section 2(e)(1) of the Act
is affirmed.