Dorn Technology Group, Inc.

Trademark Trial and Appeal Board

Aug 26, 1999

No. 75212508 (T.T.A.B. Aug. 26, 1999)

Paper No. 9
EWH/MM
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 26, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Dorn Technology Group, Inc.
________
Serial No. 75/212,508
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Thomas E. Anderson of Gifford, Krass, Groh, Sprinkle,
Patmore, Anderson & Citkowski, P.C. for Dorn Technology
Group, Inc.
Laverne Thompson, Trademark Examining Attorney, Law Office
113 (Meryl Hershkowitz, Managing Attorney)
_______
Before Hanak, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
Dorn Technology Group, Inc. (applicant) seeks
registration of UNIVERSAL RISK SYSTEMS in typed drawing
form for “insurance risk management services.” The intent-
to-use application was filed on December 13, 1996.
The Examining Attorney has refused registration
pursuant to Section 2(e)(1) of the Lanham Trademark Act on
Ser No. 75/212,508
2
the basis that applicant’s proposed mark is merely
descriptive of applicant’s services.
When the refusal was made final, applicant appealed to
this Board. Applicant and the Examining Attorney filed
briefs. Applicant did not request a hearing.
As has been stated repeatedly, “a term is merely
descriptive if it forthwith conveys an immediate idea of
the ingredients, qualities or characteristics of the goods
[or services].” In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978); Abercrombie & Fitch Co.
v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759, 765 (2nd
Cir. 1976). Moreover, the descriptiveness of a term must
be determined as applied “to the goods or services
involved,” that is, the goods or services set forth in the
application. Abcor, 200 USPQ at 218.
In support of her refusal, the Examining Attorney has
made of record numerous articles demonstrating that in the
insurance industry, the terms “universal” and “risk
management system(s)” are widely used terms. For example,
an article from the February 3, 1997, North American
edition of The Economist describes a risk management system
in the following manner: “Finally, Sterling Administrative
Services, a third-party administrator owned by Reliance
Insurance Co., has upgraded its online risk management
Ser No. 75/212,508
3
system. Risk managers can now view daily updates on total
claims experienced to date, frequency of injuries and other
information.” The Examining Attorney’s evidence also
demonstrates that on occasion, the term “risk management
system” is shortened to simply “risk system.” In addition,
the Examining Attorney has demonstrated that the terms
“universal” and “universal risk” are used to refer to
insurance programs which provide protection against a
number of risks such as disability, death and loss of
income. See the April 22, 1995, edition of the Star
Tribune.
In response, applicant makes essentially two
arguments. First, applicant states that its “mark must be
viewed as a whole and that it is not so ‘highly
descriptive’ as to be unregistrable.” (Applicant’s brief
page 2). Obviously, in determining whether applicant’s
mark is merely descriptive, we must consider the mark in
its entirety. However, the issue before us is whether
applicant’s mark is merely descriptive. The issue is not
whether applicant’s mark is “highly descriptive.”
Second, applicant makes the following argument at page
2 of its brief: “Quite simply stated, the elimination of
the word ‘management’ [from applicant’s mark] results in a
mark which does not describe the services when taken as a
Ser No. 75/212,508
4
whole. ‘Risk systems’ without the term ‘management’ does
not provide sufficient information to immediately convey a
quality or attribute of the goods [sic services]. The
elimination of the word ‘management’ provides such little
information that one cannot immediately discern any quality
or feature of the services. It is, respectfully, submitted
that the Examiner is reading the term ‘management’ into the
mark.” See also page 1 of applicant’s reply brief where
applicant again emphasizes that its “mark does not include
‘management.’”
There are two problems with applicant’s second
argument. First, as previously noted, the Examining
Attorney has made of record articles wherein on occasion
the term “risk management system” is shortened to simply
“risk system.” Thus, the term “risk system” is, by itself,
a recognized term even when it does not include the word
“management.”
Second, as noted in Abcor, the descriptiveness of a
term must be determined as applied “to the goods or
services involved.” 200 USPQ at 218. Applicant’s chosen
description of its services is “insurance risk management
services.” (emphasis added). Thus, upon seeing
applicant’s proposed mark UNIVERSAL RISK SYSTEMS used in
connection with “insurance risk management services,”
Ser No. 75/212,508
5
consumers would mentally “read into” applicant’s mark the
word “management” and thus would understand applicant’s
mark as the descriptive term “universal risk management
systems.”
Finally, we note that in a companion application
seeking to register HOSTED UNIVERSAL RISK SYSTEMS for
identical services (S.N. 75/212,509), applicant disclaimed
the exclusive right to use “universal risk systems.” This
is additional evidence that this latter phrase is
descriptive of applicant’s services. 2 J. McCarthy,
McCarthy On Trademarks and Unfair Competition Section 19:65
at page 19-115 (4th ed. 1999).
Decision: The refusal to register is affirmed.
E. W. Hanak
P. T. Hairston
C. M. Bottorff
Administrative Trademark
Judges, Trademark Trial
and Appeal Board