BrandLoyal, Inc.

Trademark Trial and Appeal Board

Sep 16, 2013

No. 85546310 (T.T.A.B. Sep. 16, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
September 16, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re BrandLoyal, Inc.
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Serial No. 85546310
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Matthew H. Swyers, Esq. for BrandLoyal, Inc.

Daniel F. Capshaw, Trademark Examining Attorney, Law Office 110
(Chris A. F. Pedersen, Managing Attorney).
_____

Before Bucher, Wolfson, and Adlin, Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
BrandLoyal, Inc. (“applicant”) seeks registration on the Principal Register of
the mark BrandLoyal (in standard characters) for “computer services, namely,
creating an on-line community for registered users to create and receive information
about specific companies and those companies’ products and services, validated by
the users’ inputted preferences and social network,” in International Class 42.1
The Trademark Examining Attorney has refused registration of applicant’s
mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), having

1 Filed on February 17, 2012, based on an allegation of first use on February 7, 2011, and
first use in commerce on June 17, 2011.
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determined that the applied-for mark is merely descriptive of the “purpose, subject
and intended user” of applicant’s services. Examining Attorney’s Appeal Brief, p. 4.
After the examining attorney made the refusal final, applicant appealed to this
Board. We affirm the refusal to register.
Applicable Law
Trademark Act § 2(e)(1) prohibits registration of a mark which is merely
descriptive of an applicant’s goods or services. A term is deemed to be merely
descriptive of goods or services, within the meaning of Section 2(e)(1), if it forthwith
conveys an immediate idea of an ingredient, quality, characteristic, feature,
function, purpose or use of the goods or services. See In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987); In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828 (TTAB 2007); and In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217-18 (CCPA 1978). It is not necessary that a term describe all of the
properties or functions of the goods or services in order for it to be considered to be
merely descriptive thereof; rather, it is sufficient if the term describes a significant
attribute or feature of the goods or services.
Discussion
Applicant’s mark BrandLoyal, consisting of the two English words “brand”
and “loyal,” will be readily perceived as the two-word phrase: “brand loyal.” Both
words have specific meanings: “brand” describes “a category of products that are all
made by a particular company and all have a particular name,”2 while “loyal”

2 From the MERRIAM-WEBSTER on-line dictionary at www.merriam-webster.com. The
Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C.
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means: “having or showing complete and constant support for someone or
something.”3 In the first Office action, the examining attorney submitted a number
of excerpts from online dictionaries defining the phrase “brand loyalty” as “the
tendency of customers to keep buying the same brand of a particular product
instead of trying other brands.”4 In the final Office action, additional material was
submitted to further explain the meaning of “brand loyal.”5 For example, the article
“System Beaters, Brand Loyals, and Deal Shoppers: New Insights Into the Role of
Brand and Price,” printed May 1995 in the Journal of Advertising Research,
identifies:
four different shopper segments: brand loyals who act
on brand preferences regardless of price considerations[,]
system beaters who also have brand preferences but are
committed to buying at lower than regular prices[,] deal
shoppers who focus solely on price[,] and the uninvolved
who have no strong [preference for either brand or price].
It was also found that some categories have a higher
proportion of certain shopper segments, with those
possessing the highest equity categories having more
brand loyals.6
(emphasis supplied).

Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983), including online dictionaries that exist in printed format or regular fixed
editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
3 Id.
4 From the MACMILLAN DICTIONARY at www.macmillandictionary.com; accessed May 30,
2012.
5 The minor distinctions between “brand loyal” and “brand loyalty” are without a
substantive difference.
6 From a Nexis search conducted 2/14/13; attached to the Final Office action.
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At www.managementstudyguide.com, users are introduced to the study of
“brand management” in an excerpt entitled “Brand Loyalty.” It describes the
“brand-loyal” customer:
Brand loyal consumers are the foundation of an
organization. Greater loyalty levels lead to less
marketing expenditure because the brand loyal customers
promote the brand positively. Also, it acts as a means of
launching and introducing more products that are
targeted at [the] same customers at less expenditure. It
also restrains new competitors in the market. Brand
loyalty is a key component of brand equity.7
To promote brand loyalty among consumers, many companies such as
airlines, hotels, supermarkets and banks have established brand loyalty programs
that reward their most frequent customers. The programs, “designed to enhance
brand loyalty by cultivating an ongoing relationship between a marketer and his
customer,”8 benefit the company as well. As stated in an article printed December
17, 2011 entitled “Brand Loyalty Programs: Are they effective?”:
Loyalty programs can also provide insight to your
customers[’] spending behavior. Once you know who your
best customers are, you can track their purchases and
offer products … they are more likely to purchase based
on past behaviors.9
The effectiveness of loyalty programs is debated in several of the on-line
articles provided by the examining attorney. For example, the article “Can Brand
Loyalty Be Bought?” posted at the website www.brandchannel.com, suggests that

7 At www.mangementstudyguide.com; accessed 2/14/13; attached to Final Office action.
8 From the “Business Glossary/Dictionary of Marketing Terms” at www.allbusiness.com;
accessed 2/14/13; attached to Final Office action.
9 From the website New Media and Marketing.com at http://newmediaandmarketing.com;
accessed 2/14/13; attached to Final Office action.
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loyalty programs are paying off in the hotel industry but represent a “challenge” in
the retail market. The article “Brand Loyalty Program: How’s that Workin’ for
Ya?” cautions marketing departments that these programs need to be “tailored to
individual needs or interests” to avoid customer defections.10 Significantly, this
article notes an over-use of email as a means of reaching consumers, suggesting
social media as an alternative: “your customer’s voice is easier to hear now, thanks
to social media.” Companies seeking to establish brand loyalty programs are also
encouraged to set up websites and “use mass channels to deliver your brand proof”11
that “engage in a different type of dialogue, characterized by a new way of listening
and talking, in neutral forums governed by different rules.”12
These articles show that the term “brand loyal” refers to a specific type of
consumer; that businesses strive to identify and develop brand-loyal customers; and
that one way in which a business may do this is through a brand loyalty program,
including using social media and other “neutral forums” such as company websites,
to reach prospective customers and develop brand loyalty.
In order to decide whether applicant’s mark merely describes the services in
association which it is used, we must understand the nature of applicant’s computer
services. Indeed, whether a term is merely descriptive is not determined in the

10 At www.commpro.biz; posted May 8 2012; accessed 2/14/13; attached to Final Office
action.
11 “Loyalty Program Membership vs. Mass Loyalty-Building Initiatives,” posted at
www.customerthink.com on March 12, 2012; accessed 2/14/13; attached to Final Office
action.
12 “Only One Quarter of American Consumers are Brand Loyal,” posted at
www.business2community.com on March 27, 2012; accessed 2/14/13; attached to Final
Office action.
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abstract, but in relation to the services for which registration is sought, the context
in which it is being used on or in connection with the services, and the possible
significance that the term would have to the average purchaser of the services
because of the manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979). The question is not whether someone presented with only the mark
BrandLoyal could guess what applicant’s computer services are. Rather, the
question is whether someone who knows what applicant’s services are will
understand that the term BrandLoyal directly conveys information about them.
In re Tower Tech Inc., 64 USPQ2d 1314, 1317 (TTAB 2002); In re Patent and
Trademark Services, Inc., 49 USPQ2d 1537, 1539 (TTAB 1998).
The recitation describes the services as: “creating an on-line community for
registered users to create and receive information about specific companies and
those companies’ products and services, validated by the users’ inputted preferences
and social network.” In its brief, applicant describes its services essentially as
providing a “social networking community,” a chance for users to “participate in
discussions, get feedback from their peers, form virtual communities, and engage in
social networking services.” Applicant’s Brief, p. 7. Applicant argues that the mark
“does not immediately conjure up the thought of a social networking community.”
Id. However, as is apparent from the substitute specimen submitted with the
application,13 the registered user’s “social networking community” is in fact the

13 Applicant’s substitute specimen is a screen shot from its website wherein the company
“Terminix” is shown to be signing up to offer an incentive program entitled the “Earn Green
Referral Program.” Through this program, Terminix apparently will offer a “redemption” to
anyone who refers his or her friends to the program.
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community of brand-loyal customers of which the user is a part. See In re Chamber
of Commerce of the United States of America, 675 F.3d 1297, 102 USPQ2d 1217,
1220 (Fed. Cir. 2012) (reference to applicant’s own on-line directory supported
finding of descriptiveness). The customer appears to join the community when he or
she signs up for a particular company’s incentive program, thereby “validating” the
companies’ products and services by showing “preference” for them, and perhaps
naming several “friends” in the process, potentially adding to the virtual
community. Applicant’s services enable brand-loyal consumers to enter into
discussions with like-minded consumers, receive feedback about products for which
they are brand loyal, and participate in incentives and promotions run by these
companies as part of the virtual on-line community demonstrating a preference for
the specific brand. In other words, the communities are “mass channels” which
deliver “brand proof,” and brand-loyal customers “engage in a different type of
dialogue, characterized by a new way of listening and talking, in neutral forums
governed by different rules.” In this way, the mark BrandLoyal merely describes a
service that brings together individuals looking to purchase goods and services from
companies to which they are brand loyal with companies looking to identify their
brand-loyal consumers. The home page from applicant’s website underscores this
particular function of its website, describing it as “a platform that facilitates
authentic real-time communications between companies, customers and friends,
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rewarding customer and brand loyalty.”14 In short, applicant’s services are
designed to create an on-line community of brand-loyal consumers.
Applicant argues that the Board has registered other marks containing the
terms “brand” and “loyal” in connection with similar services without requiring
disclaimers of either term or treating the mark as merely descriptive. For example,
applicant has submitted a copy of Reg. No. 2693718 for the mark LOYALTY
BUILDERS for “consulting services in the field of customer service, loyalty, and
satisfaction”15 and ADVANCING LOYALTY for, inter alia, “implementing and
managing customer incentive and rewards programs,” “promoting the goods and
services of others through incentive programs” and “designing customer incentive
and rewards programs.”16 In addition, applicant submitted several registrations for
combination marks where one of the terms in the mark is the word “brand” for
various computer-related services, none of which directly involve loyalty
programs.17 In response, the examining attorney submitted copies of two
registrations for marks containing the words “loyalty(ies)” and “brand” (BRAND

14 At www.brandloyal.com; accessed 12/6/12; attached to 12/7/12 Office action.
15 Registered March 4, 2003; renewed.
16 Reg. No. 3311812, registered October 16, 2007.
17 For example, Reg. No. 3823896 (registered July 27, 2010) for the mark QUICKBRAND
covers, inter alia, design of “custom web-based computer applications featuring promotional
products and marketing materials”; Reg. No. 4150347 (registered May 29, 2012) covers
“application service provider featuring software for use in designing, specifying and
ordering customized promotional logo merchandise through a database of supplier listing”;
and Reg. No. 2320982 (registered February 22, 2000; renewed) for the mark
BRANDTRUST covers, inter alia, “the creating of advertising for others, market studies,
analysis and market research, consultation, namely product and corporate identity
development.”
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LOYALTY SCORE18 and BRANDLOYALTIES19) that were registered on the
Supplemental Register in recognition of their descriptive nature with respect to the
listed services. While we may infer a particular meaning of a term from third-party
registrations, using them in the manner of dictionary definitions to show that a
term has some significance in a particular field, we are not persuaded that the
treatment of marks containing “brand” or “loyalty(ies)” evidenced by the
registrations made of record by applicant, particularly given the two opposing
registrations submitted by the examining attorney, shows that the Office treats the
phrase “brand loyal” as suggestive in all contexts. The examining attorney’s
registrations make clear that this is not the case. Given the conflicting results, the
overall probative value of the third-party registrations is, at best, neutral. See, e.g.,
In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) (prior
third-party registrations for ULTIMATE marks failed to rebut finding that THE
ULTIMATE BIKE RACK, for bicycle carrying racks, is laudatory descriptive
phrase). Here, specific definitions for the compound term “brand loyal,” as well as
numerous articles showing its relevant meaning and usage exist. Whether an
equivalent showing was made in any of the third-party registrations is not of record
and we have no way of knowing the context or public perception of the marks of

18 Registered October 30, 2012 for “advertising and business services, namely, conducting
business surveys as a means of identifying brand loyalty, using research tools and
indicators to identify customer satisfaction levels, for businesses or organizations;
conducting business research and surveys.”
19 Registered January 8, 2013 for “market analysis and research services.”
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these prior registrations. The Board “must assess each mark on the record of public
perception submitted with the application.” Nett, 57 USPQ2d at 1566.
Conclusion
The evidence of record shows that the phrase “brand loyal” identifies a
desirable characteristic of consumers across a broad spectrum of industries. The
purpose of applicant’s services is to create and develop on-line communities of such
“brand-loyal” customers. We find therefore, that the mark BrandLoyal is merely
descriptive of the nature and purpose of applicant’s computer services.

Decision: The refusal to register applicant’s mark BrandLoyal under
Trademark Act § 2(e)(1) is affirmed.