Mortgage Bankers Association of America

Trademark Trial and Appeal Board

Aug 18, 1999

No. 75112344 (T.T.A.B. Aug. 18, 1999)

Oral Hearing: Paper No. 16
December 3, 1998 GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 17, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Mortgage Bankers Association of America
________
Serial No. 75/112,344
_______
Raymond N. Baker and Andrew J. Aldag of Shanley & Baker for
Mortgage Bankers Association of America.
Jodi D. Lauterbach, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney).
_______
Before Seeherman, Hanak and Hohein, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Mortgage Bankers Association of America has filed an
application to register the mark "MBA REAL ESTATE FINANCE PRESS"
and design, as reproduced below,
Ser. No. 75/112,344
2
for "printed matter, namely, educational brochures and reference
manuals relating to guidelines and steps for applying for,
obtaining and maintaining mortgages for prospective home
buyers".1
Registration has been finally refused under Section
6(a) of the Trademark Act, 15 U.S.C. §1056(a), on the basis of
applicant's refusal to comply with a requirement for a disclaimer
of the words "REAL ESTATE FINANCE PRESS," which the Examining
Attorney maintains are merely descriptive of applicant's goods
within the meaning of Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1). 2
Applicant has appealed. Briefs have been filed and an
oral hearing was held. We affirm the disclaimer requirement.
Applicant, while notably ignoring the fact that the
Examining Attorney, among other things, has made of record
numerous third-party registrations which show that the word
"PRESS" is invariably disclaimed when used as a component of
marks for various types of publications, 3 argues that the

1 Ser. No. 75/112,344, filed on May 31, 1996, which alleges dates of
first use of 1993.
2 Although the Examining Attorney also made final a requirement that
applicant indicate the subject matter of its printed publications,
such requirement has been withdrawn in view of applicant’s subsequent
amendment of the identification of its goods to read as set forth
above.
3 In her final refusal, the Examining Attorney indicated that:
The Office has been consistent with respect to the
requirement of the disclaimer of PRESS in relation to
International Class 16 printed matter. The register is
replete with such disclaimers. There are three-hundred and
ten registrations with the disclaimer of PRESS for
International Class 16 goods. The Examining Attorney
Ser. No. 75/112,344
3
Examining Attorney has failed to consider its mark in its
entirety. Specifically, applicant asserts that "[t]he Examining
Attorney has dissected the mark by separating the MBA logo from
the wording portions ’REAL ESTATE FINANCE’ and ’PRESS’ in order
to separately analyze each wording portion and make a conclusion
that each wording portion is descriptive." Applicant insists,
however, that "the ’REAL ESTATE FINANCE PRESS’ portion of the
mark is a unitary mark" and that, consequently, "no disclaimer of
a dissected part, whether descriptive or otherwise, should be
required." Furthermore, applicant urges that the phrase "REAL
ESTATE FINANCE PRESS," as used in its mark, "forms a unique
commercial impression regardless of whether ’REAL ESTATE’, ’REAL
ESTATE FINANCE’ or ’PRESS’ taken individually could be construed
as ’merely descriptive’."
The Examining Attorney, on the other hand, correctly
observes that "terms which describe the subject matter of
publications are merely descriptive under Section 2(e)(1)." See,
e.g., In re Gracious Lady Service, Inc., 175 USPQ 380, 382 (TTAB
1972) ["CREDIT CARD MARKETING" merely descriptive of periodic
pamphlet devoted to subjects of interest to those engaged in
credit card merchandising field]; In re Nippon Kokan Kabushiki
Kaisha, 171 USPQ 63, 64 (TTAB 1971) ["JAPAN STEEL NOTES" merely
descriptive of magazine containing articles relating to the
Japanese steel industry]; and In re Medical Digest, Inc., 148

encloses a sample of these third[-]party registrations as
evidence of the descriptiveness of the term.
Applicant, however, has offered nothing in response to such proof.
Ser. No. 75/112,344
4
USPQ 570 (TTAB 1965) ["OB/GYN DIGEST" merely descriptive of
periodical magazine in the field of obstetrics and gynecology].
In view thereof, the Examining Attorney maintains that the words
"REAL ESTATE FINANCE PRESS" are merely descriptive of applicant’s
publications since, as shown by the evidence of record, the
phrase "REAL ESTATE FINANCE is a unitary term commonly used in
the industry to describe a category of business/finance" and that
the word "PRESS is descriptive of the goods in that it is a
generic term used to identify ’printed matter as a whole.’"
Specifically, in support of her position, the Examining
Attorney relies upon, as mentioned earlier, various third-party
registrations, in which the term "PRESS" has been disclaimed when
it appears as part of marks for publications, as clear evidence
that "the Office has consistently held the term PRESS to be
descriptive ... for all types of publications." In addition, the
Examining Attorney has furnished numerous excerpts from her
searches of the "NEXIS" database which "attest to the fact that
the wording REAL ESTATE FINANCE is a term of art used in the
industry to refer to the area of business/finance that is the
subject matter of the Applicant’s ... [educational] brochures and
reference materials." A representative sample of such excerpts
is set forth below (emphasis added):
"Mr. Schrager’s financing for the
purchase of the Henry Hudson Hotel will be
provided by NorthStar Partners, the new real
estate finance group backed by UBS Securities
Inc. ...." -- Crain’s New York Business,
September 15, 1997;
"’It stabilizes neighborhoods because
there’s pride of [home] ownership,’ said Pam
Ser. No. 75/112,344
5
Rodrigues, a city of Fresno real estate
finance specialist." -- Fresno Bee, August
31, 1997;
"Expanding beyond construction loans -
its historical real estate finance tool - the
group is now offering bridge acquisition
loans and permanent loans." -- American
Banker, August 29, 1997;
"The new branch ... provides commercial
mortgages and other real estate finance
services." -- Miami Daily Business Review,
August 25, 1997;
"He has taught state-approved real
estate finance courses and published a
subscription newsletter for Puget Sound area
real estate investors." -- News Tribune,
March 9, 1997;
"In addition to national conferences,
MBA offers an array of educational programs.
From week-long Commercial Real Estate Finance
courses ... and the School of Mortgage
Banking to seminars and roundtable
discussions, MBA is nationally recognized as
providing professional education ...." --
National Real Estate Investor, November 1994;
and
"[T]he Greater Boston Real Estate Board
on April 23 will begin courses for its
certificate in real estate finance." --
Boston Globe, April 7, 1990.
The Examining Attorney has also made of record
definitions from both Webster’s II New Riverside University
Dictionary (1994), which defines "press" as a noun meaning, in
relevant part, "[p]rinted matter as a whole, esp. newspapers and
periodicals," and Webster’s Ninth New Collegiate Dictionary
(1990), which lists such term as a noun signifying, in pertinent
part, "newspapers, periodicals ...." In addition, the Examining
Attorney accurately observes that the specimens submitted with
the application, which consist of the title page and table of
Ser. No. 75/112,344
6
contents from its "FORECLOSURE Management" publication, contain a
reference on the title page to "The National Association for Real
Estate Finance". Such reference appears adjacent to applicant’s
mark and immediately below applicant’s name and address. The
Examining Attorney asserts that the reference "is further
evidence that ... Applicant is a member or sponsor of this
association" and that "it is logical to assume that these
publications relate to ’real estate finance.’"
With respect to applicant’s argument that she has
improperly "dissected the mark in requiring the disclaimer of the
wording REAL ESTATE FINANCE PRESS" apart from the MBA
abbreviation and book design" of the mark, the Examining Attorney
contends that:
[I]n order for a mark to be considered
unitary, the elements must be so merged
together that they cannot be divided to be
regarded as separable elements. TMEP Section
1213.06(a). Here, the descriptive wording,
i.e., REAL ESTATE FINANCE PRESS, is not
combined with the nondescriptive elements of
the mark, specifically, the letters MBA and
the stylized book design, in such a way that
the descriptive significance of the wording
... is lost and the combination functions as
a unit. In fact, ... the portion of the mark
REAL ESTATE FINANCE PRESS" is completely
segregated from the wording MBA and stylized
building design. The respective wording is
clearly set apart on separate pages of the
book design and it appears in different
stylized fonts.
It is well settled that a phrase or term is considered
to be merely descriptive of goods or services, within the meaning
of Section 2(e)(1) of the Trademark Act, if it forthwith conveys
information concerning the nature thereof, including any
significant ingredient, quality, characteristic, feature,
Ser. No. 75/112,344
7
function, purpose or use of the goods or services. See, e.g., In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) and In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). It is not necessary that a phrase or 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 phrase or term describes a
significant attribute or aspect about them. Moreover, whether a
phrase or 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 phrase or term would have to the average
purchaser of the goods or services because of the manner of its
use. See In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979). Thus, "[w]hether consumers could guess what the product
[or service] is from consideration of the mark alone is not the
test." In re American Greetings Corp., 226 USPQ 365, 366 (TTAB
1985).
In the present case, we agree with the Examining
Attorney that, in light of the evidence of record, it is plain
that the words "REAL ESTATE FINANCE PRESS" merely describe
printed matter, including educational brochures and reference
manuals, which is devoted to the subject of real estate finance,
such as guidelines and steps for applying for, obtaining and
maintaining mortgages for prospective home buyers. Such words,
therefore, must be disclaimed inasmuch as they immediately
Ser. No. 75/112,344
8
convey, without speculation or conjecture, that applicant’s goods
are printed publications dealing with matters of real estate
finance. Here, the Examining Attorney has clearly shown, by
dictionary definitions and the disclaimers in numerous third-
party registrations, that the term "PRESS" is merely descriptive
of printed matter, including not just newspapers and magazines
but also publications of the type offered by applicant, and that
those in the trade recognize that, by disclaiming such term, that
no one is entitled to the exclusive appropriation thereof. Lest
there be any doubt in this regard, we judicially notice4 that The
Random House Dictionary of the English Language (2d ed. 1987)
defines "press" in relevant part as "printed publications
collectively, esp. newspapers and periodicals."5 Coupled with
the fact that the reference in applicant’s specimens and the
"NEXIS" excerpts demonstrate that "REAL ESTATE FINANCE" is a
commonly known and used term, it is plain that the phrase "REAL
ESTATE FINANCE PRESS" conveys forthwith the nature and subject
matter of applicant’s educational brochures and reference manuals

4 Judicial notice may properly be taken of dictionary definitions.
See, e.g., Hancock v. American Steel & Wire Co. of New Jersey, 203
F.2d 737, 97 USPQ 330, 332 (CCPA 1953) and University of Notre Dame du
Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
5 While applicant asserts that the dictionary definitions are limited
in that they apply "to periodic publications and not instruction
manuals, which are the types of educational printed matter associated
with applicant’s mark," we agree with the Examining Attorney that
newspapers and periodicals are but "prime examples of ’press’" and
that such term is broad enough to encompass other kinds of printed
matter. Moreover, educational brochures and reference manuals are
often periodic in nature in that they are updated and/or revised at
various intervals to reflect the latest developments or other new
information.
Ser. No. 75/112,344
9
and is thus merely descriptive of such goods within the meaning
of the statute.
Applicant, it seems, does not seriously take issue with
this conclusion, relying instead upon its contention that the
words "REAL ESTATE FINANCE PRESS" form a unitary expression and
therefore need not be disclaimed. It is true, of course, that
the Board has held that merely descriptive elements of a unitary
mark need not be disclaimed. Compare In re Kraft, Inc., 218 USPQ
571, 573 (TTAB 1983) [disclaimer of merely descriptive word
"LIGHT" in mark "LIGHT N’ LIVELY" for reduced calorie mayonnaise
"is not appropriate" since mark is unitary] with In re EBS Data
Processing, Inc., 212 USPQ 964, 966 (TTAB 1981) [disclaimer of
merely descriptive term "POCKET PROFILE" in mark "PHACTS POCKET
PROFILE" for a personal medical history summary "is proper"
inasmuch as the former "is a separable element" from the latter].
Whether a mark is unitary, however, depends upon whether its
elements are inseparable and make a single and distinct
commercial impression. Dena Corp. v. Belvedere International
Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991).
Factors to be considered in determining whether matter forms part
of a single or unitary mark are: whether it is physically
connected by lines or other design features; the relative
location of the respective elements; and the meaning of the
terminology and how the meanings of the words relate to each
other and the goods. TMEP §807.13(a).
We concur with the Examining Attorney that applicant's
entire mark is not unitary and that, in particular, the merely
Ser. No. 75/112,344
10
descriptive words "REAL ESTATE FINANCE PRESS" must be disclaimed.
Plainly, such words are not so merged together or otherwise
combined with the design elements of applicant’s mark that they
cannot be regarded as a separate element of such mark, nor is
there anything which is striking or significant in the
arrangement or meaning of such words. Rather, as the Examining
Attorney has pointed out, the borders formed by the pages of the
book design in applicant’s mark serve to segregate the phrase
"REAL ESTATE FINANCE PRESS" from the term "MBA" and its
associated building silhouette. Inasmuch as applicant’s mark,
therefore, is not unitary, a disclaimer of the merely descriptive
words "REAL ESTATE FINANCE PRESS" is proper.
Decision: The requirement for a disclaimer under
Section 6(a) is affirmed. Nevertheless, in accordance with
Trademark Rule 2.142(g), this decision will be set aside and
applicant's mark will be published for opposition if applicant,
no later than thirty days from the mailing date hereof, submits
an appropriate disclaimer of the words "REAL ESTATE FINANCE
PRESS". 6
E. J. Seeherman
E. W. Hanak
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board

6 See In re Interco Inc., 29 USPQ2d 2037, 2039 (TTAB 1993). For the
proper format for a disclaimer, attention is directed to TMEP
§§1213.09(a)(i) and 1213.09(b).