Joshua David Mellberg, LLC

Trademark Trial and Appeal BoardApr 6, 2017

No. 76717808 (T.T.A.B. Apr. 6, 2017)

Mailed: April 6, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Joshua David Mellberg, LLC ________ Serial No. 76717808 _______ David G. Bray of Dickinson Wright PLLC, for Joshua David Mellberg, LLC. Thomas Young, Trademark Examining Attorney, Law Office 120 David Miller, Managing Attorney. _______ Before Quinn, Ritchie, and Kuczma, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: Joshua David Mellberg, LLC (“Applicant”) filed an application to register on the Principal Register the mark SOCIAL SECURITY ANNUITY STRATEGIES, in standard character format, for services ultimately identified as “financial planning and retirement financial planning services,” THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser. No. 76717808 2 in International Class 36.1 The application disclaims the exclusive right to use the term “SOCIAL SECURITY” apart from the mark as shown. The Trademark Examining Attorney refused registration on the ground that the applied-for mark is merely descriptive of the services pursuant to Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). When the refusal was made final, Applicant filed this appeal, which is fully briefed. For the reasons discussed below, we affirm the refusal to register. Mere Descriptiveness 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 Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987)); see also In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with those goods or services, and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use. That a term may have other meanings in 1 Serial No. 76717808, filed on April 2, 2015, under Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), based on Applicant’s assertion of a bona fide intent to use the mark in commerce. Ser. No. 76717808 3 different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Moreover, it is settled that “[t]he question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). See also In re Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American Greetings Corporation, 226 USPQ 365 (TTAB 1985). On the other hand, if a mark requires imagination, thought and perception to ascertain the nature of the goods or services, then the mark is suggestive. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd, 695 F.3d 1247, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (citing In re Abcor Dev. Corp. 200 USPQ 215). A composite of descriptive terms is registrable only if it has a separate, non-descriptive meaning. In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382, 385 (CCPA 1968) (holding SUGAR & SPICE not merely descriptive of bakery products). The Examining Attorney argues that the applied-for mark SOCIAL SECURITY ANNUITY STRATEGIES is descriptive because it: merely describes a characteristic or feature of applicant’s services namely, that applicant’s financial planning and retirement financial planning services feature information and advice on Social Security benefits and annuities, including how Ser. No. 76717808 4 to optimize the value of one’s fixed payments received from Social Security.2 Applicant argues, by contrast, that it would take a “mental leap” for consumers to determine that SOCIAL SECURITY ANNUITY STRATEGIES “represents the combination of both social security benefits and annuity strategies.”3 In particular, Applicant argues that it provides advice on “insurance and investments intended to coordinate with guaranteed Social Security Benefits that retirement income needs are met.”4 Applicant further elaborates that it “provides a service intended to seamlessly combine social security benefits and annuity strategies, two concepts that are not naturally associated together.”5 The Examining Attorney submitted the following definitions of “social security,” “annuity,” and “strategy” in relevant part: social security: 1. Any government system that provides monetary assistance to people with an inadequate or no income.6 annuity: 2. A contract or agreement by which one receives fixed payments on an investment for a lifetime or for a specified number of years.7 1.1. A form of insurance or investment entitling the investor to a series of annual sums.8 strategy: A plan of action or policy designed to achieve a major or overall aim: time to develop a coherent economic strategy. 9 2 6 TTABVUE 3-4. 3 4 TTABVUE 8. 4 4 TTABVUE 6. 5 11 TTABVUE 2. 6 Oxforddictionaries.com/us. Attached to January 28, 2016 Final Office Action, at 3. 7 Ahdictionary.com. Attached to July 14, 2015 Office Action, at 9. 8 Oxforddictionaries.com/us. Attached to January 28, 2016 Final Office Action, at 6. 9 Oxforddictionaries.com/us. Attached to January 28, 2016 Final Office Action, at 9. Ser. No. 76717808 5 The Examining Attorney submitted a number of third-party web pages that refer to the concept of Social Security as being an “annuity” program or that refer specifically to Social Security as a type of annuity, in some cases noting that this is a “strategy” that may be used for retirement financial planning. Some examples include the following (emphasis added): The Wall Street Journal: An Annuity Plan Called Social Security: Deferring Benefits Can Yield a Significant Advantage: By Carolyn T. Geer; September 29, 2013; Know how to get a great deal on an annuity today? Tap your 401(k) or IRA for living expenses in your first few years of retirement so you can postpone taking Social Security. . . .But for every year you defer past that, up to age 70, your Social Security benefits will rise by 6% to 8%. Those are real, inflation-adjusted rates of return, guaranteed by the U.S. government. Where else can you get a return like that these day with real interest rates close to zero? Wsj.com.10 Center for Retirement Research at Boston College: Should you Buy an Annuity from Social Security?: By Steven A. Sass; May 2012; Households now retiring need to transform their 401(k) and IRA savings into retirement income. One way is to delay claiming Social Security to increase their monthly benefit, using savings to pay current expenses while they wait. In effect, they are buying an annuity from Social Security. The savings used is the “price” and the increase in their monthly benefit the Annity income it “buys.” [sic] Buying an annuity from Social Security is generally the best deal in town, especially in today’s low interest-rate environment. http://crr.bc.edu.11 Social Security Choices: How Valuable is Your Social Security?: If you are a married couple and you both have earned Social Security benefits, look at Your Social Security Statements you receive each year. Many retirement advisors recommend that you should spend no more than 4% of your retirement savings 10 July 14, 2015 Office Action, at 11. 11 July 14, 2015 Office Action, at 15-16. Ser. No. 76717808 6 each year to protect yourself against future inflation. If we use this as a guideline, then a Social Security annuity that pays you and your spouse $3500 a month or $42,000 a year will actually pay you more than you should be spending out of savings of more than $1 million. Socialsecuritychoices.com.12 RAND Labor and Population: Project: Valuing the Social Security Annuity: Background: Currently, few Americans opt to annuitize their Social Security payments. A better understanding of individuals’ preference for annuitization will inform the debate on Social Security reform. Overview: The Financial Literacy Center is evaluating to what extent individuals value having Social Security payouts in the form of annuities versus lump-sum amounts. Rand.org.13 The Briarwood Community: Create Your Own Social Security “Annuity”: Posted August 9, 2012; Many retirees hope to use their hard-earned money as a source of income. . . When interest rates are low, this path is especially appealing because the 7% to 8% guaranteed Social Security income increase (calculated by waiting) surpasses the nominal rates currently realized on savings accounts. . . . What does any of this have to do with annuities? Well, in simple terms, an annuity is something you buy to generate a monthly income. By delaying Social Security, you’re essentially “buying” a higher payout by the mere act of waiting. Naturally, this road is right for some people but not for others. Briarwoodretirement.com.14 WealthManagement.com: Who’s Got the Best Annuity Deal in Town?: It may surprise you, but “buying” Social Security’s annuity by delaying withdrawals and living on other assets best enhances overall retirement income. By Mark Miller; June 7, 2012 . . . The CRR brief was written by Steven Sass, program director of the center’s Financial Security Project. He concluded that traditional retirement income strategies – preserving principal and living on the interest, or investing in stocks and bonds and drawing out a portion as income – both fell short when compared with a Social Security annuity. Wealthmanagement.com15 12 July 14, 2015 Office Action, at 29. 13 July 14, 2015 Office Action, at 27. 14 January 28, 2016 Final Office Action, at 34-35. 15 January 28, 2016 Final Office Action, at 37-38. Ser. No. 76717808 7 Lifelong Retirement Corp: Social Security Planning Strategies: . . . The difference between the benefit amount you will receive at full retirement age and age 70 is significant. It is for this reason, combined with the fact that Social Security: • is guaranteed • receives special tax treatment • includes COLAs (Cost of Living Adjustments) that many choose to draw down on their retirement assets rather than claiming their benefits at full retirement age. This strategy, coined “buying a social security annuity” is becoming a popular strategy given the uncertainty of the markets and the increasingly difficult challenge of protecting purchasing power in retirement. Lifelongretirementcorp.com16 The Examining Attorney also submitted evidence of third-party web pages that refer descriptively to “annuity strategies” as a part of retirement financial planning, in some cases presenting it as an alternative or supplement to Social Security benefits. Examples include the following (emphasis added): Senior Benefit Center: Shrewd Ways to Maximize Your Social Security Benefits: Annuity Strategies: . . . Two Annuity Suggestions that you may want to look into . . . Senior-benefit- center.com.17 aboutmoney: Annuity Strategies: Income Later Annuity Strategies or Target Date Annuity Planning allows you to start a guaranteed income stream at a future date. Annuities.about.com.18 Kingsview Asset Management: Insurance & Annuity Strategies: Risk tolerance and return expectations will vary from investor to investor. To provide proper alternatives, Kingsview offers a host of insurance and annuity products from the industry’s leading carriers. These products may be chosen as 16 January 28, 2016 Final Office Action, at 41-42. 17 January 28, 2016 Final Office Action, at 50. 18 January 28, 2016 Final Office Action, at 52. Ser. No. 76717808 8 a standalone investment or incorporated as a crucial part of your Kingsview developed financial plan. Kingsview.com.19 InvestmentNews: Special Report: Annuity Strategies: Feb 22, 2015, An in-depth look at the latest trends in the annuity world, including which products are gaining traction in retirement plans. Investmentnews.com.20 STAN The Annuity Man: Annuity Strategies: All annuity strategies used and recommended only show the contractual guarantees of the policy. Stantheannuityman.com.21 Bankrate: Retirement Blog: Annuity strategy to keep income flowing: October 8, 2015; Having enough guaranteed income in retirement to pay basic bills – taxes, utilities, food, insurance, transportation, and rent or a mortgage if you have one – can be partially covered by Social Security. And if you have an old- fashioned defined benefit pension, it may very likely cover the rest of the essential nut. Research by TIAA-CREFF Institute found that about half of Americans in their 50s don’t have a defined benefit pension and will be dependent on a modest amount of Social Security and an unpredictable paycheck deducted from savings. This situation can leave retirees in danger of running out of money even to pay for necessities. The report, prepared by David Babbel, a professor of Finance at the University of Pennsylvania Wharton School, found that the best way around this risk is to buy a fixed-income annuity. Bankrate.com.22 From this evidence, we find that Social Security is often presented as an alternative and/or a supplement to an annuity as a strategy in retirement financial planning. We further find that Applicant’s proposed mark, “SOCIAL SECURITY ANNUITY STRATEGIES,” when offered in connection with the 19 January 28, 2016 Final Office Action, at 56. 20 January 28, 2016 Final Office Action, at 57. 21 January 28, 2016 Final Office Action, at 59. 22 January 28, 2016 Final Office Action, at 62-63. Ser. No. 76717808 9 applied-for services, will be interpreted as providing alternatives to consumers of strategies regarding Social Security and annuity options. In this regard, we note that despite Applicant’s arguments on brief, we must consider the mark in relation to the services, and not in a vacuum. See In re Bright-Crest, Ltd., 204 USPQ at 593. There is nothing incongruous about the combination of SOCIAL SECURITY ANNUITY STRATEGIES in relation to Applicant’s applied-for services. cf. In re Colonial Stores, Inc., 157 USPQ at 385. Based on the plain meaning of the term as a whole as well as the third- party evidence and Applicant’s own statements, we find that Applicant’s composite term “SOCIAL SECURITY ANNUITY STRATEGIES,” when viewed in relation to Applicant’s services, immediately conveys that Applicant’s financial planning and retirement financial planning services may include discussions of both Social Security and annuity options, as well as, specifically, Social Security as a type of annuity strategy or program. While doubt is resolved for Applicant, we have no doubt that consumers require no imagination, thought or perception to arrive at this conclusion. See DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd, 103 USPQ2d at 1755. Therefore, we find that the proposed mark is merely descriptive of the identified services, and we affirm the refusal to register. Decision: The Board affirms the refusal to register.