AUSA Financial Markets, Inc.

Trademark Trial and Appeal Board

Aug 6, 1999

No. 75019131 (T.T.A.B. Aug. 6, 1999)

Paper No. 11
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THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB AUG. 6. 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re AUSA Financial Markets, Inc.
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Serial No. 75/019,131
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James C. Nemmers for AUSA Financial Markets, Inc.
Alice Benmaman, Trademark Examining Attorney, Law Office
103 (Michael Szoke, Managing Attorney).
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Before Cissel, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant AUSA Financial Markets, Inc. has applied to
register the mark PREMIER FINANCIAL SERIES on the Principal
Register for "providing administrative, advertising and
marketing services for annuity contracts underwritten by
affiliated life insurance companies."1

1 Application Serial No. 75/019,131, filed November 13, 1995. In
the application, applicant alleges April 1995 as the date of
first use of the mark anywhere and first use in interstate
Ser. No. 75/019,131
2
The Trademark Examining Attorney has issued a final
refusal of registration on the ground that applicant has
failed to submit acceptable specimens showing use of the
mark in connection with the sale or advertising of the
services recited in the application, as required by
Trademark Rule 2.58(a). Specifically, the Trademark
Examining Attorney contends that applicant’s specimens do
not show use of the mark in connection with the recited
"administrative, advertising and marketing services"
assertedly offered by applicant to the affiliated life
insurance companies, but rather show use of the mark only
in connection with the sale and advertising of insurance
services to the ultimate consumer.
Applicant has appealed the final refusal of
registration.2 Applicant and the Trademark Examining
Attorney have filed briefs, but applicant has not requested
an oral hearing.
By way of background, it appears from the record that
applicant is a wholly owned subsidiary of AEGON USA, Inc.,

commerce. Applicant has disclaimed the exclusive right to use
FINANCIAL SERIES apart from the mark as shown.
2 After the Trademark Examining Attorney made final her refusal
to register based on the insufficiency of the original specimens,
applicant submitted substitute specimens (with supporting
declaration) along with a request for reconsideration of the
refusal in light thereof. The Trademark Examining Attorney
rejected the substitute specimens as unacceptable and denied
applicant’s request for reconsideration. This appeal followed.
Ser. No. 75/019,131
3
and that four annuity underwriting companies, i.e., Bankers
United Life Assurance Company, Life Investors Insurance
Company of America, Monumental Life Insurance Company and
PFL Life Insurance Company (the "affiliated companies"),
also are wholly owned subsidiaries of AEGON USA, Inc.
Together, AEGON USA, Inc., applicant, and the other four
subsidiaries comprise the "AEGON Insurance Group."
Applicant asserts in its brief that it is not a sales
entity and does not directly market annuity products to the
ultimate consumer, that it is "the administrative and
marketing affiliate of the Group," and that it provides the
support services recited in the application to the other
four affiliated companies. Those services are said to
include the creation of the annuity products, rate factors
and payout options for the annuities, preparation of
marketing materials, and the administration of any annuity
contract after sale by an affiliated company.
The original specimens submitted with the application
consist of a one-page brochure with the heading "Tax-
Deferred Advantage." The mark sought to be registered,
i.e., PREMIER FINANCIAL SERIES, is displayed in the manner
of a service mark at the top right corner of the brochure.
The brochure includes the following text (emphasis in
original):
Ser. No. 75/019,131
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Now, more than ever, the tax treatment of deferred
annuities is of tremendous importance to you and your
retirement planning. With a tax-deferred annuity,
your money earns interest that is not subject to
income tax until you receive it. . .usually at
retirement when you are in a lower tax bracket.
In later years, your annuity can provide tax-
deferred payments for your retirement. With a Company
guaranteed payment option, only a portion of each
payment is taxable. Plus, you decide when it is the
best time for you to begin receiving these scheduled
payments.
If you decide to cash out your tax-deferred annuity
and pay the taxes due. . .you would still be money
ahead. Compared to a similar product subject to
current taxes, the tax advantage would allow you to
accumulate more dollars.
The brochure also states: "For the most current rates and
product information, please contact your agent."
The substitute specimens submitted by applicant
consist of another brochure, entitled "Saver’s Edge II."
As with the original specimens, the mark sought to be
registered appears at the top right corner of the front of
the brochure. "Saver’s Edge II" is identified, in the text
of this brochure, as "a custom designed single premium
modified endowment life insurance policy" which "gives you
long term ’living’ benefits and significant ’estate’
benefits for your surviving spouse and heirs." On its back
panel, under the heading "Important Consumer Information,"
the brochure states: "We suggest you consult your own
Ser. No. 75/019,131
5
attorney, accountant, or tax advisor on specific points of
interest to you."
We have carefully considered applicant’s original and
substitute specimens, as well as applicant’s arguments on
appeal, and find that the Trademark Examining Attorney’s
refusal to register is proper.
A mark is deemed to be used in commerce "on services
when it is used or displayed in the sale or advertising of
services and the services are rendered in commerce . . ."
Trademark Act Section 45, 15 U.S.C. §1127. In this case,
neither of the specimen brochures submitted by applicant
demonstrate that the mark PREMIER FINANCIAL SERIES is used
or displayed in the sale or advertising of "sales,
marketing, administration and other related services to
affiliated life insurance companies," as required by
Trademark Act Section 45. Rather, the specimen brochures
show use of the mark only in connection with the sale and
advertising, to the ultimate consumer, of the insurance
services offered by applicant and/or its affiliated
companies.
Accordingly, the brochures are not acceptable
specimens of use of the mark as a service mark in
connection with the recited services. See In re Restonic
Ser. No. 75/019,131
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Corp., 189 USPQ 248 (TTAB 1976).
Decision: The refusal to register is affirmed.
R. F. Cissel
P. T. Hairston
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board