US-BANCORP, Inc.

Trademark Trial and Appeal Board

Jan 30, 2003

No. 76150864 (T.T.A.B. Jan. 30, 2003)

Mailed: January 30, 2003
Paper No. 9
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re USBANCORP, Inc.
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Serial No. 76/150,864
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David V. Radack of Eckert Seamans Cherin & Mellott LLC for
USBANCORP, Inc.
Michael P. Keating, Trademark Examining Attorney, Law
Office 107 (Thomas S. Lamone, Managing Attorney).
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Before Cissel, Hairston and Holtzman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
USBANCORP, Inc., a Pennsylvania corporation located in
Johnstown, Pennsylvania, has filed an application to
register the mark AMERICA’S FINANCIAL MART for the
following services:
business consultation services; accounting services;
income tax preparation services; asset and liability
management services in class 35;
banking services; corporate, institutional and
personal trust services; financial planning and
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76/150,864
2
portfolio management; financial guarantee and
surety services; brokerage in the fields of
stocks, bonds, commodities, insurance, annuities
and mutual funds; mortgage banking, lending and
brokerage services; travel agency services,
namely issuing travelers checks; business
brokers; estate administration services; title
insurance services; maintaining mortgage
escrow accounts; loan processing services;
insurance underwriting in the field of life,
health, accident, medical and property;
credit life reinsurance services; and debt
recovery and collection agency services in
class 36;
travel agency services, namely making
reservations and booking for transportation
in class 39; and
hosting the websites of others on a computer
server for a global computer network; printing
services; concierge services for others
comprising making requested personal arrangements
and reservations and providing customer-specific
information to meet individual needs rendered
together in a bank; travel agency services,
namely making reservation and booking for
temporary lodging in class 42.1
The Trademark Examining Attorney has finally refused
registration under Section 2(e)(2) of the Trademark Act,
§15 U.S.C. 2(e)(2), on the ground that, if used in
connection with the identified services, the mark would be
primarily geographically descriptive of them.
1 Serial No. 76/150,864, filed on October 20, 2000, which alleges
a bona fide intention to use the mark in commerce.
Ser No. 76/150,864
3
Applicant has appealed. Briefs have been filed, but
no oral hearing was requested. We affirm the refusal to
register.
Applicant argues that the wording AMERICA’S FINANCIAL
MART “functions primarily as a slogan and not as the name
of [applicant’s] organization,” and therefore is not
primarily geographically descriptive. (emphasis in
original). Also, applicant maintains that because it
intends to use the mark in connection with some services,
that are “somewhat outside the realm of financial
services,” the mark, at least for these services, is not
primarily geographically descriptive. (Applicant’s brief,
p. 3).
In order for registration to be properly refused under
Section 2(e)(2), it is necessary to establish that (i) the
primary significance of the mark sought to be registered is
the name of a place generally known to the public and (ii)
the public would make a goods/place association, that is,
believe that the goods for which the mark is sought to be
registered originate in that place. See, e.g., University
Book Store v. University of Wisconsin Board of Regents, 33
USPQ2d 1385, 1402 (TTAB 1994); and In re California Pizza
Kitchen Inc., 10 USPQ2d 1704, 1705 (TTAB 1988), citing In
re Societe Generale Des Eaux Minerales de Vittel S.A., 824
Ser No. 76/150,864
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F.2d 957, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987). Provided
that these conditions are met, and the goods come from the
place named by or in the mark, the mark is primarily
geographically descriptive.
Further, where there is no genuine issue that the
geographical significance of a term is its primary
significance, and where the geographical place named by the
term is neither obscure nor remote, a public association of
the goods with the place may ordinarily be presumed from
the fact that the applicant’s goods come from the
geographical place named in the mark. See, e.g., In re
California Pizza Kitchen Inc., supra; and In re Handler
Fenton Westerns, Inc., 214 USPQ 848, 850 (TTAB 1982). In
addition, the presence of a generic or highly descriptive
term in a mark that also contains a primarily
geographically descriptive term does not serve to detract
from the primary geographical significance of the mark as a
whole. See, e.g., In re Cambridge Digital Systems, 1
USPQ2d 1659, 1662 (TTAB 1986); and In re BankAmerica Corp.,
231 USPQ 873, 875 (TTAB 1986).
Ser No. 76/150,864
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As shown by the dictionary definitions accompanying
the Examining Attorney’s brief,2 the word “America” is
defined in Webster’s Third New International Dictionary
(1993) as “1. of or from No. America or So. America: of the
kind or style prevalent in North America or So. America …
2. of or from the U.S. [United States]: of the kind or
style prevalent in the U.S. [United States]” and is listed
in Random House Webster’s Unabridged Dictionary (1998) as
“1. See “United States.” Moreover, it is clear that the
area described by such word is neither remote nor obscure.
In fact, every member of the general public would certainly
know the meaning of the word. Consequently, and in view of
the fact that applicant is based and incorporated in the
State of Pennsylvania, there is simply no doubt that the
term “AMERICA’S” particularly signifies origin in the
United States of America.
2 In his brief, the Examining Attorney requests that the Board
take judicial notice of the accompanying definitions of the term
“America.” It is well settled that judicial notice may properly
be taken of dictionary definitions. See, e.g., University of
Notre Dame du Lac v. J. C. Gourmet Foods Imports Co., Inc., 213
USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983). In view thereof, the Examining Attorney’s
request is approved and we have considered the dictionary
definitions submitted with his brief.
Ser No. 76/150,864
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Turning then to the term “financial mart,” the
Examining Attorney has submitted two stories from the NEXIS
database wherein “financial mart” is used to refer to a
supermarket branch of a bank or savings and loan.
Applicant has not disputed this, and in fact, has entered a
disclaimer of the term. Thus, “FINANCIAL MART” clearly
constitutes a highly descriptive or generic term for, at
the very least, the banking and related financial services
in applicant’s application.
The primary significance of the mark AMERICA’S
FINANCIAL MART, when considered as a whole, is therefore
geographical in connection with banking and related
financial services. We note that the Examining Attorney
has made of record four third-party registrations of marks
consisting of “AMERICA’S” and highly descriptive or generic
terms.3 Each of these registrations issued on the
Supplemental Register with a disclaimer of the highly
descriptive or generic terms. These registrations suggest
that the Office has considered marks of this type to be
primarily geographically descriptive.
3 The marks are AMERICA’S LABOR INSURANCE COMPANY (LABOR
INSURANCE COMPANY is disclaimed); AMERICA’S PET FOOD STORE ON THE
WEB (PET FOOD STORE ON THE WEB is disclaimed); AMERICA’S BENEFITS
SPECIALISTS (BENEFIT SPECIALISTS is disclaimed); and AMERICA’S
PUB (PUB is disclaimed).
Ser No. 76/150,864
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Moreover, even if “FINANCIAL MART” is arbitrary as
used in connection with the other services listed in
applicant’s application, the term does not detract from the
primary geographic significance of the mark as whole. See
e.g., In re Wada [NEW YORK WAYS GALLERY is primarily
geographically deceptively misdescriptive of hand bags,
luggage and related goods even if the words “WAYS GALLERY”
are arbitrary].
Additionally, although this is an intent-to-use
application, there appears to be no question that the
services listed in the application will come from the
United States of America. Thus, a public association of
the services with this country is presumed. Applicant has
offered no explanation as to why its various services would
not be associated by the purchasing public with the United
States of America if sold under the mark AMERICA’S
FINANCIAL MART.
Finally, with respect to applicant’s contention that
the mark AMERICA’S FINANCIAL MART would be viewed by
consumers simply as a slogan and not as connoting
geographic origin, we recognize that there have been
instances in which “AMERICA” or “AMERICAN” has been found
to have a non-geographic connotation. However, the
applicant’s mark does not fit into any of these exceptions.
Ser No. 76/150,864
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This most often occurs in the case of marks where “AMERICA”
or “AMERICAN” is used in a nebulous or suggestive manner.
See, e.g., In re Jim Crockett Promotions Inc., 5 USPQ2d
1455 (TTAB 1987) [THE GREAT AMERICAN BASH held not
primarily geographically descriptive of wrestling
exhibitions].
Decision: The refusal to register under Section
2(e)(2) is affirmed.