Bank Of America Corporation

Trademark Trial and Appeal Board

Aug 25, 2014

No. 85743332 (T.T.A.B. Aug. 25, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 25, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
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In re Bank of America Corporation
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Serial No. 85743332
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Randel S. Springer and Melissa G. Ferrario of Womble Carlyle Sandridge & Rice,
PLLC, for Bank of America Corporation
Edward Nelson, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
_____

Before Kuhlke, Lykos, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Bank of America Corporation (“Applicant”) seeks registration on the Principal
Register of the mark BALANCE REWARDS (in standard characters) for “Banking
and related financial services” in International Class 36.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark as merely descriptive under Section 2(e)(1) of the Trademark Act, 15 U.S.C.

1 Application Serial No. 85743332 was filed on October 2, 2012, based on Applicant’s claim
of first use anywhere and use in commerce since at least as early as June 19, 2006.
Applicant also claims ownership, and made of record a copy, of Registration No. 3185108 on
the Supplemental Register for the same mark and services. Exhibit A(1) to Request for
Reconsideration, 4 TTABVUE at 15.
Serial No. 85743332
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§ 1052(e)(1), and without a sufficient showing of acquired distinctiveness under
Trademark Act Section 2(f), 15 U.S.C. § 1052(f).
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
Applicant has conceded for procedural purposes that its mark BALANCE
REWARDS is merely descriptive by filing its application under Section 2(f),
claiming acquired distinctiveness based on use in commerce for more than five
years.2 See Cold War Museum Inc. v. Cold War Air Museum Inc., 586 F.3d 1352, 92
USPQ2d 1626, 1629 (Fed. Cir. 2009). Therefore, the only issue before us is
Applicant’s assertion of acquired distinctiveness.
Section 2(e)(1) provides that a mark is unregistrable on the Principal Register if,
“when used on or in connection with the goods of the applicant [it] is merely
descriptive or deceptively misdescriptive of them . . . .” Pursuant to Section 2(f),
matter which is merely descriptive may nonetheless be registered on the Principal
Register if it “has become distinctive of the applicant’s goods [or services] in
commerce.” Thus, a mark may be registered on the Principal Register if the
applicant proves that the merely descriptive matter has acquired distinctiveness in
association with the applicant’s services. “To establish secondary meaning, or
acquired distinctiveness, an applicant must show that in the minds of the public,
the primary significance of a product feature or term is to identify the source of the

2 Applicant acknowledges this concession in its briefs. Appeal Brief at 6, 7 TTABVUE at 10;
Reply Brief at 1, 10 TTABVUE at 4.
Serial No. 85743332
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product rather than the product itself.” Coach Servs. Inc. v. Triumph Learning LLC,
668 F.3d 1356, 101 USPQ2d 1713, 1729 (Fed. Cir. 2012) (citation omitted).
It is Applicant’s burden to prove acquired distinctiveness. Yamaha Int’l Corp. v.
Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988); In re
Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954) (stating
that “[t]here is no doubt that Congress intended that the burden of proof [under
Section 2(f)] should rest upon the applicant for registration”). Applicant must prove
acquired distinctiveness by a preponderance of the evidence. See In re Noon Hour
Food Prods. Inc., 88 USPQ2d 1172, 1181 (TTAB 2008). The amount and character of
evidence required to establish acquired distinctiveness depends on the facts of each
case and the nature of the alleged mark, Roux Labs., Inc. v. Clairol Inc., 427 F.2d
823, 166 USPQ 34, 39 (CCPA 1970), and an applicant’s burden becomes heavier as
the mark’s descriptiveness increases. In re Steelbuilding.com, 415 F.3d 1293, 75
USPQ2d 1420, 1424 (Fed. Cir. 2005). More evidence is required where a mark is so
highly descriptive that purchasers seeing the matter in relation to the goods or
services would be less likely to believe that it indicates source in any one party. See
In re Bongrain Int’l (American) Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir.
1990); Yamaha Int’l Corp., 6 USPQ2d at 1008. As the Board has explained:
[T]he greater the degree of descriptiveness, the greater
the evidentiary burden on the user to establish acquired
distinctiveness. The sufficiency of the evidence offered to
prove acquired distinctiveness should be evaluated in
light of the nature of the designation. Highly descriptive
terms, for example, are less likely to be perceived as
trademarks and more likely to be useful to competing
sellers than are less descriptive terms. More substantial
Serial No. 85743332
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evidence of acquired distinctiveness thus will ordinarily
be required to establish that such terms truly function as
source-indicators.
In re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1085 (TTAB 2010) (citations omitted).
In determining whether the applied-for mark has acquired distinctiveness, the
following factors are generally considered: (1) length and exclusivity of use of the
mark in the United States by an applicant; (2) the type, expense and amount of
advertising of the mark in the United States; and (3) an applicant’s efforts in the
United States to associate the mark with the source of the goods, such as
unsolicited media coverage and consumer studies. See In re Steelbuilding.com, 75
USPQ2d at 1424. Evidence of acquired distinctiveness can include the length of use
of the mark, advertising expenditures, sales, survey evidence, and affidavits
asserting source-indicating recognition.
Trademark Rule 2.41(b), 37 C.F.R. § 2.41(b), provides that a statement of
substantially exclusive and continuous use in commerce for the five years before the
date on which the claim of distinctiveness is made “may, in appropriate cases, be
accepted as prima facie evidence of distinctiveness.” However, the rule also states
that “further evidence may be required.” Id. A claim that applicant has been using
the subject matter for a long period of substantially exclusive use may not be
sufficient to demonstrate that the mark has acquired distinctiveness. See, e.g., In re
Gibson Guitar Corp., 61 USPQ2d 1948, 1952-53 (TTAB 2001) (finding no secondary
meaning despite 66 years of use).
Applicant argues that its mark is not highly descriptive, and therefore its
statement of five years’ use (since at least as early as June 19, 2006) is sufficient for
Serial No. 85743332
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registration under Section 2(f). Applicant contends that it is the Examining
Attorney’s burden to establish that the term BALANCE REWARDS is highly
descriptive of banking and related financial services, and the Examining Attorney
has not satisfied that burden.
In the alternative, Applicant argues that it has established acquired
distinctiveness through the declaration of Don Schonder, a Senior Vice President
and Consumer Deposit Product Manager at Applicant Bank of America
Corporation.3 The Schonder Declaration states in part that Applicant:
• Serves more than 500,000 BALANCE REWARDS Money Market savings
accounts with total balances exceeding $8 billion across 32 states;
• Has promoted the mark through point of sale materials directly
distributed to customers at Applicant’s 5,000+ banking centers in
32 states (such items are attached to the declaration);
• Provides customer access to BALANCE REWARDS Money Market
savings accounts through its website bankofamerica.com, which had over
140 million visits and 40 million unique visitors during October 2013; and
that
• “Applicant’s BALANCE REWARDS mark has achieved recognition
through a combination of providing superior services, widespread sales,
and continued exposure.”
Evidence made of record by the Examining Attorney, in turn, includes:
• Dictionary definitions of “balance,” including: “Difference between debits
and credits in an account.”4
• Dictionary definitions of “reward” as both a noun (e.g., “Something given
or received in recompense for worthy behavior or in retribution for evil

3 Exhibit A to Request for Reconsideration, 4 TTABVUE at 8-15.
4 February 1, 2013 Office Action, at 4 (from moneyglossary.com). See also id. at 5-6 (similar
definition of “balance” from ventureline.com accounting glossary).
Serial No. 85743332
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acts.”) and a verb (“1. To give a reward to or for. 2. To satisfy or gratify;
recompense.”);5 and
• Third-party registrations for banking services in which the term
“rewards” is disclaimed.6
We first address whether the mark BALANCE REWARDS is highly descriptive
of banking and related financial services. To support its argument that the burden
is on the Examining Attorney to establish that its mark is highly descriptive,
Applicant relies on an unpublished decision, In re Caddy Girls USA, Inc.,
Serial No. 75619824, 2001 WL 1578169, at *4 (TTAB Dec. 7, 2001) (“The burden is
on the Examining Attorney to establish that the term is highly descriptive of the
services . . . .”). Reminding Applicant that decisions not designated as precedent of
the Board are not binding on the Board, TBMP §§ 101.03, 1203.02(f) (2014), we view
the better articulation to be that we must determine the degree of descriptiveness of
a mark based on the evidentiary record as a whole. See, e.g., In re Crystal Geyser
Water Co., 85 USPQ2d 1374, 1378 (TTAB 2007) (“We are persuaded by the evidence
of record that the phrase ALPINE SPRING WATER is highly descriptive of
applicant’s goods.”); In re A La Vieille Russie Inc., 60 USPQ2d 1895, 1900 (TTAB
2001) (“Even if RUSSIANART were not deemed to be generic for applicant’s
services, we find that the evidence of record, discussed above, establishes that the
term is very highly descriptive of those services.”). Cf. In re Men’s Int’l Prof’l Tennis

5 Id. at 2-3 (from education.yahoo.com).
6 May 24, 2013 Final Office Action, at 7-8 (Registration No. 3698919, REDNECK
REWARDS), 11-13 (Registration No. 3314874, SUNTRUST REWARDS), 14-16
(Registration No. 4172246, ECLICK REWARDS), 20-22 (Registration No. 4265329, BMO
HARRIS REWARDS).
Serial No. 85

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Serial No. 85743332
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Second, Applicant’s specimens demonstrate that its services feature potential
“rewards” – that is, “recompense” – in the form of monthly maintenance fee waivers
(described above) and annual cash bonuses, as explained on the second page of
Applicant’s specimen, which states in part:
On each anniversary date we determine the average
monthly balance in your Balance Rewards account for the
last 12 monthly statement cycles. We calculate the bonus
amount by multiplying the applicable bonus factor by
your lowest average monthly balance (rounded to the
nearest $1000) for that period.
Although Applicant correctly argues that there is no record evidence showing
any other entity using the phrase “balance rewards” in connection with banking or
related financial services,7 we find that this does not negate the highly descriptive
nature of the phrase or suffice to establish acquired distinctiveness in this case. The
fact that an applicant may be the first and only user of a descriptive designation
does not justify registration if the only significance conveyed by the term is merely
descriptive. See J. Kohnstam, Ltd. v. Louis Marx & Co., 280 F.2d 437, 126 USPQ
362, 364 (CCPA 1960); In re Nat’l Shooting Sports Found., Inc., 219 USPQ 1018,
1020 (TTAB 1983).
Applicant’s specimens and the evidence submitted by the Examining Attorney
establish that a consumer of Applicant’s services may receive financial “rewards”
linked to his or her account “balance.” Based on the record evidence, and
considering the proposed mark as a whole, we find BALANCE REWARDS to be
highly descriptive of Applicant’s banking and related financial services. See, e.g., In

7 See Appeal Brief at 6, 7 TTABVUE at 10.
Serial No. 85743332
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re Half Price Books, Records, Magazines, Inc., 225 USPQ 219, 221 (TTAB 1984)
(finding HALF PRICE BOOKS, RECORDS, MAGAZINES and design highly
descriptive of retail book and record store services).
Because Applicant’s mark is highly descriptive, Applicant’s burden of proving
acquired distinctiveness likewise is very high, and its statement of substantially
exclusive and continuous use since June 2006 is insufficient to establish that its
proposed mark has acquired distinctiveness. See, e.g., In re Packaging Specialists,
Inc., 221 USPQ 917, 920 (TTAB 1984) (deeming use of mark for sixteen years
“a substantial period but not necessarily conclusive or persuasive on the Section 2(f)
showing”). The case on which Applicant relies, In re Synergistics Research Corp.,
218 USPQ 165 (TTAB 1983), concerning the character of a different mark for
different goods, does not compel a different result; it is well-established that each
case must stand on its own merits. In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001). We therefore consider Applicant’s alternative
argument and the evidence submitted with its Request for Reconsideration by way
of the Schonder Declaration.8
The numbers in the Schonder Declaration are impressive, particularly that
Applicant serves more than 500,000 BALANCE REWARDS Money Market savings

8 The Examining Attorney stated in denying Applicant’s Request for Reconsideration that
the request did not “provide any new or compelling evidence with regard to the outstanding
issue(s) in the final Office action.” While it is not clear from this phrasing whether the
Examining Attorney considered the evidence attached to Applicant’s Request for
Reconsideration, the Board has reviewed and considered all evidence of record, including
the Schonder Declaration and its exhibits, in reaching our decision regarding the
correctness of the substantive refusal of registration. If Applicant believed there was a
procedural error in examination, its recourse was to file a petition to the Commissioner
under Trademark Rule 2.146, 37 C.F.R. § 2.146.
Serial No. 85743332
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accounts with total balances exceeding $8 billion, and this evidence provides
support for Applicant’s claim of acquired distinctiveness. However, Applicant offers
no industry context for the number and dollar volume of accounts in service,
diminishing the probative value of these raw numbers. Cf. Target Brands Inc. v.
Hughes, 85 USPQ2d 1676, 1681 (TTAB 2007) (stating that it is difficult to
accurately gauge the level of success in the relevant industry based on sales figures
alone, in the absence of additional information such as market share). Nor does
Applicant provide dollar amounts for advertising and promotion of the BALANCE
REWARDS mark.
Most important, Applicant offers no direct evidence of consumer perception or
recognition of BALANCE REWARDS, or that customers seeing the mark in relation
to Applicant’s services believe that it indicates source in any one party. The
evidence provided does not necessarily demonstrate consumer recognition of the
proposed mark as a source indicator. See In re Boston Beer Co. L.P., 198 F.3d 1370,
53 USPQ2d 1056, 1058 (Fed. Cir. 1999); In re Pennzoil Prods. Co., 20 USPQ2d 1753,
1760-61 (TTAB 1991). Mr. Schonder’s statement that Applicant’s proposed mark
has “achieved recognition” is merely a conclusory opinion about source recognition
among relevant consumers, without any probative and corroborating evidence from
consumers themselves. We find in the overall context of the evidence in this case
that Mr. Schonder’s statement regarding recognition of BALANCE REWARDS is
entitled to very little probative weight on the question of acquired distinctiveness.
Serial No. 85743332
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In sum, we find that Applicant has failed to establish that the designation
BALANCE REWARDS has acquired distinctiveness as a source-indicator for its
services, rather than merely as highly descriptive wording which identifies a
significant feature of its services, that is, monetary rewards based on a customer’s
bank account balance. Given that the mark is highly descriptive, more evidence,
especially in the form of direct evidence from the relevant purchasing public, would
be necessary to show that BALANCE REWARDS has become distinctive for
Applicant’s banking and related financial services. See, e.g., In re Country Music
Ass’n Inc., 100 USPQ2d 1824, 1834-35 (TTAB 2011) (finding “Teflon” consumer
survey showing 85% of respondents categorized COUNTRY MUSIC ASSOCIATION
as a brand name to be probative evidence of acquired distinctiveness).
Decision: The refusal to register Applicant’s mark BALANCE REWARDS is
affirmed.