U.S. Education Finance Corp.

Trademark Trial and Appeal Board

Sep 4, 2003

No. 76040862 (T.T.A.B. Sep. 4, 2003)

Mailed: 04 SEP 2003
Paper No. 18
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re U.S. Education Finance Management Corporation
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Serial No. 76/040,862
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Richard A. Flynt of Roylance, Abrams, Berdo & Goodman,
L.L.P. for U.S. Education Finance Management Corporation.
Paul F. Gast, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______
Before Cissel, Chapman and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On May 4, 2000, U.S. Education Finance Management
Corporation (applicant), a corporation organized under the
laws of Florida and located in Miami, Florida, filed an
intent-to-use application to register the mark “U.S.
PRESTAMOS DE EDUCACION” (in typed form) on the Principal
Register for services eventually identified as “education
loan services; brokering education loans” in International
Class 36. The application has been amended to indicate
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76/040,862
2
that the term “prestamos de education” is translated from
Spanish as “education loans.”
The examining attorney1 refused to register applicant’s
mark on the ground that the mark is primarily
geographically descriptive of applicant’s services under
Section 2(e)(2) of the Trademark Act. 15 U.S.C.
§ 1052(2)(e)(2). After the examining attorney made the
refusal final, applicant filed an appeal.
The examining attorney’s position is that “the public
certainly would understand the designation ‘U.S.’ as the
dominant portion” of the mark and that the other wording
“prestamos de educacion” is generic for applicant’s
services. Examining Attorney’s Brief at 4. The examining
attorney determined that: the primary significance of the
mark is geographical; customers would make a goods/place
association; and the mark would identify the geographic
origin of the services. Therefore, the examining attorney
refused to register the mark under Section 2(e)(2) of the
Trademark Act.
Applicant, on the other hand, argues that its mark is
composed “of the English term ‘U.S.’ and the Spanish phrase
‘PRESTAMOS DE EDUCACION,’ which translates to ‘EDUCATION
1 The current examining attorney was not the original examining
attorney in this case.
Ser No. 76/040,862
3
LOANS.’” Applicant’s brief at 2. “The incongruity
presented by the juxtaposition of the English term “U.S.”
with the Spanish phrase ‘PRESTAMOS DE EDUCACION’ certainly
would cause the average consumer of Applicant’s services to
pause and reflect upon the meaning of Applicant’s mark
since the first term encountered is the English term
‘U.S.,’ which is immediately followed by a Spanish phrase.
Thus, the consumer would have to ‘pause,’ in order to
‘shift gears’ mentally from thinking in English to thinking
in Spanish.” Reply Brief at 4.
The Board has set out the following test to use in
determining whether a mark is primarily geographically
descriptive:
[T]he Trademark Examining attorney would need to
submit evidence to establish a public association of
the goods with that place if, for example, a genuine
issue is raised that (1) the place named in the mark
may be so obscure or remote that purchasers would fail
to recognize the term as indicating the geographical
source of the goods to which the mark is applied or
(2) an admitted well-recognized term may have other
meanings, such that the term’s geographical
significance may not be the primary significance to
prospective purchasers. Where, on the other hand,
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 with the
place may ordinarily be presumed from the fact that
the applicant’s own goods come from the geographical
place named in the mark.

Ser No. 76/040,862
4
In re Handler Fenton Westerns, Inc., 214 USPQ 848,
849-50 (TTAB 1982).
We start by taking judicial notice2 of the fact that
“U.S.” is an abbreviation of the of “United States.” See
Webster’s II New Riverside University Dictionary (1984), p.
1353. Because applicant’s address is in Florida, applicant
is located in the United States and we can presume the
services would originate in the United States. In re
Compagnie Generale Maritime, 993 F.2d 841, 26 USPQ2d 1652,
1655 (Fed. Cir. 1993) (“Certainly, all of the goods and
services would either originate in France or should be
considered as if they did because they are sold by a French
company”). Furthermore, the United States is not a remote
or obscure geographic location, nor does applicant argue
that it is. In re U.S. Cargo Inc., 49 USPQ2d 1702, 1703
(TTAB 1998) (“[W]e may take judicial notice of the fact
that "U.S." means the United States, and that the United
States is a geographic area with defined boundaries.
Indeed, we believe the exclusive significance of "U.S." to
most purchasers would be the geographic area”)(footnote
omitted).
2 University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Ser No. 76/040,862
5
As in U.S. Cargo, here the significance of the term
“U.S.” in the United States to most purchasers would be a
reference to the United States of America. In addition,
the term “education loans” and its Spanish translation,
“prestamos de educacion,” are generic for education loan
services and brokering education loan services.
Combining the geographical term “U.S.” with the
generic term “prestamos de educacion” does not convert the
mark into a non-geographically descriptive term. In re
Monograms America Inc., 51 USPQ2d 1317, 1319 (TTAB 1999)
(MONOGRAMS AMERICA for consultation services for owners of
monogramming shops held primarily geographically
descriptive as it simply signifies United States origin
and/or geographical scope. “Moreover, the addition of
highly descriptive matter to a geographic term does not
detract from the mark’s primary significance as being
geographically descriptive”). See also, U.S. Cargo, 49
USPQ2d at 1704 (U.S. CARGO held primarily geographically
descriptive for towable trailers for carrying cargo and
vehicles for commercial purposes); In re Chalk's
International Airlines Inc., 21 USPQ2d 1637, 1639 (TTAB
1991) (PARADISE ISLAND AIRLINES held primarily
geographically descriptive of transporting passengers and
goods by air); and In re Cambridge Digital Systems, 1
Ser No. 76/040,862
6
USPQ2d 1659, 1662 (TTAB 1986) (CAMBRIDGE DIGITAL held
primarily geographically descriptive of computer systems).
Similarly here, the addition of the generic wording
“prestamos de educacion” or “education loans” does not
change the primarily geographic impression of applicant’s
mark.
Applicant’s main argument, however, is that its mark
is a combination of the “English term ‘U.S.’ and the
Spanish phrase ‘PRESTAMOS DE EDUCACION.’ … Numerous cases
have held that when words in English and other languages
are combined, the resulting mark is registrable and non-
descriptive.” Applicant’s Brief at 2. Applicant cites
several cases to support its argument. See In re Universal
Packaging, 222 USPQ 344 (TTAB 1984) (LE CASE not
descriptive for jewelry boxes); In re Johanna Farms, 8
USPQ2d 1408 (TTAB 1986) (LA YOGURT not descriptive for
yogurt); In re Sweet Victory, Inc., 228 USPQ 959 (TTAB
1988)(GLACE LITE not descriptive for frozen desserts).
Indeed, one court has held that “the doctrine [of foreign
equivalents] does not apply when a mark is a combination of
foreign and english words.” French Transit Ltd. v. Modern
Coupon Systems Inc., 818 F. Supp. 635, 29 USPQ2d 1626, 1626
(S.D.N.Y. 1993).
Ser No. 76/040,862
7
We are not persuaded by applicant’s argument. First,
we start by observing that the mere allegation that a mark
contains an English word and a foreign word does not
automatically lead to a conclusion that the mark as a whole
is not merely descriptive or primarily geographically
descriptive. Second, we note that the “English word” in
applicant’s mark, “U.S.,” is an abbreviation, not a word.
Abbreviations of a geographic place are much less likely to
appear incongruous when used with foreign words. For
example, the abbreviation “US$” would likely have the same
meaning in English and Spanish. It would appear no more
incongruous in a Spanish publication in the United States
than in an English language publication. Third, we take
judicial notice of two dictionary definitions that
demonstrate that the full abbreviation “USA” means the same
in Spanish as it does in English. Collins Spanish
Dictionary, 6th Ed.; Oxford Spanish Dictionary (1997).3
Because applicant’s mark incorporates an even shorter
abbreviation, it is just as likely to be recognized in both
English and Spanish as standing for the United States.
Inasmuch as we are only dealing with the perception of the
3 We are aware that the traditional Spanish abbreviations for
“Estados Unidos de America – U.S.A.” are “E.U.A. or EE.UU. or
E.U.” Cassell’s Spanish Dictionary (1959), p. 1456.
Ser No. 76/040,862
8
mark in the U.S., there is no reason to believe that
English or Spanish speaking people in the U.S. would have
any reason to pause over the use of the abbreviation “U.S.”
Therefore, the argument that prospective purchasers would
find the mark incongruous is not viable. If the mark “U.S.
PRESTAMOS DE EDUCACION” were used in association
with education loan services and brokering education loan
services from an entity located in the United States, the
mark would be primarily geographically descriptive of those
services.
Decision: The refusal to register applicant’s mark
under Section 2(e)(2) of the Trademark Act on the ground
that the mark is primarily geographically descriptive is
affirmed.