Mortgage Returns, L.L.C.

Trademark Trial and Appeal Board

Aug 28, 2006

No. 78452093 (T.T.A.B. Aug. 28, 2006)

Mailed:
August 28, 2006
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mortgage Returns, L.L.C.
________

Serial No. 78452093
_______

Laila S. Wolfgram and Jeffrey L. Michelman of Blumenfeld,
Kaplan & Sandweis, P.C. for Mortgage Returns, L.L.C.

Darryl Spruill, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______

Before Quinn, Zervas and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On July 16, 2004, Mortgage Returns, L.L.C.
(“applicant”) filed an application to register the mark
MORTGAGE RETURNS in standard-character form on the
Principal Register for services now identified as,
“providing temporary use of on-line, non-downloadable
software in the field of customer relationship management
for use in tracking key dates, maintaining client contact
information, and incorporating customer account-specific
details into tracking, such as which clients to contact
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78452093
2
when and why based upon client specific information for use
by the mortgage industry” in International Class 42.
The Examining Attorney has refused registration under
Trademark Act Section 2(e)(1), 15 U.S.C. § 1051(e), on the
grounds that the mark merely describes the services.
Applicant responded to the refusal and the Examining
Attorney made the refusal final.1 Applicant appealed.
Applicant and the examining attorney filed briefs;
applicant did not request an oral hearing.
A term is merely descriptive of the services within
the meaning of Trademark Act Section 2(e)(1) if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987); In re Bright-Crest, Ltd., 204 USPQ
591 (TTAB 1979).
To determine whether a term is merely descriptive we
must consider the term not in the abstract, but in relation
to the services for which registration is sought, the
context in which it is being used, and the possible
significance that the term would have to the average

1 Applicant indicates that it offered to disclaim the term
“MORTGAGE” but the Examining Attorney declined to accept the
disclaimer because it would not overcome the refusal. In its
brief applicant indicated a continuing willingness to disclaim
“MORTGAGE.”
Ser No. 78452093
3
purchaser of the services in that context. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978).
When two or more merely descriptive terms are
combined, we must determine whether the combination of
terms evokes a new and unique commercial impression. If,
on the other hand, each component retains its merely
descriptive significance in relation to the services, then
the resulting combination is also merely descriptive. See,
e.g., In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB
2002)(SMARTTOWER merely descriptive of commercial and
industrial cooling towers).
In this case, the Examining Attorney agues that the
mark is descriptive because, “the proposed mark is merely a
composite of descriptive terms that in combination, does
not create a unitary mark with a separate nondescriptive
meaning.” Applicant argues that the mark is suggestive.
The Examining Attorney first attempts to show that
each of the terms in the mark is merely descriptive by
providing definitions of the terms from a number of online
sources; he provided the definitions for the first time
with his brief. The Examining Attorney asks the Board to
take judicial notice of the definitions of “mortgage” and
“returns” apparently recognizing that the submission of
Ser No. 78452093
4
this evidence would otherwise be untimely under Trademark
Rule 2.142(d) which requires that the record be complete
before the filing of an appeal. 37 C.F.R. § 2.142(d).
The Board will take judicial notice of certain
materials including dictionary definitions. See University
of Notre Dame du Lac v. J. C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983). However, the Board will not
take judicial notice during an appeal of definitions from
dictionaries which are only available online. In re Total
Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999).
Accordingly, we have not considered the definitions of
“mortgage” and “returns” which the Examining Attorney
provided with his brief. However, if we had, we would not
reach any different conclusions here.
To ensure full consideration of the matter we have
taken judicial notice of definitions of “mortgage” and
“returns” from the Merriam-Webster’s Collegiate Dictionary
(11th ed. 2003), definitions which are fully consistent with
those provided by the Examining Attorney.
In relevant part, the definition of “mortgage”
specifies: “… 1 : a conveyance of or a lien against
property (as for securing a loan) that becomes void upon
payment or performance according to the stipulated terms
Ser No. 78452093
5
2a : an instrument evidencing the mortgage … c : the
interest of the mortgagee in such property.” In fact,
there is no dispute as to the descriptive significance of
“mortgage” as applied to the services identified here.
Applicant acknowledges that the identified service is for
the administration of “mortgage” loans. As we indicated,
applicant has even volunteered to disclaim “MORTGAGE” as a
descriptive term.
In relevant part, the definition of “return”
specifies: “… 4 c (1) : the profit from labor, investment
or business : YIELD (2) pl RESULTS d : the rate of profit
in a process of production per unit of cost …” It is the
meaning of “returns” in the mark, and particularly as
applied to the identified services, which is in dispute
here. In fact, it is the core dispute in the case.
During the prosecution of the application, the
Examining Attorney made a number of excerpts from Internet
web sites of record in an attempt to demonstrate the
descriptive significance of “returns” in this context.
These excerpts included material from a site
associated with PIMCO Advisors, which appears to be a
financial services company involved in investment funds.
The site includes a reference to “PIMCO Total Return
Mortgage Fund A” which appears to be a bond investment
Ser No. 78452093
6
fund. Another excerpt is from a site associated with AMF
ASSET MANAGEMENT FUND and includes a heading “Calendar Year
Returns” and a “button” indicating “View Annual Returns.”
There is also a reference to the AMF Intermediate Mortgage
Fund, among other funds, with data relevant to that fund.
A third excerpt is from a site associated with Fairfax
Digital which includes an article entitled “Mortgage trusts
face lower returns as banks join in.” The article
explains, “Mortgage trusts work by pooling the funds of a
large number of relatively small investors and lending the
money to people who want to invest in or develop
properties.” These uses appear to be in relation to an
investment fund or similar vehicle consisting of mortgage-
related holdings - an area which appears to be far afield
from the services identified in this application. The
service identified here is not a financial service, but
rather a business-support, “tracking” service for use by
loan officers in the mortgage loan business.
Another excerpt is from a site with a logo with the
words “Good! = Returns” and it includes a chart with
accompanying text stating, “Good Returns provides a
comprehensive listing of home mortgage rates offered in New
Zealand.” This appears to be a use of “Returns” as part of
a service mark for services rendered in New Zealand. This
Ser No. 78452093
7
use of “returns” is not particularly probative of the
significance of “returns” in the mark at issue here.
The only other excerpt is associated with
“interest.com” and includes an article with a headline
stating, “A 15-year Mortgage Yields Faster Returns but
Payments Rise.” The article discusses the advantages and
disadvantages of 15-year verses 30-year mortgages. There
is no use of “return” or “returns” in the article. The
publisher’s use of “Returns” in the headline is ambiguous.
That is, it is unclear whether “Returns” is being used in a
technical sense, as it may be used in the world of
investment, or in a more creative way.
The Examining Attorney also provided materials from
applicant’s web site which discusses the services at issue
here, namely, “providing temporary use of on-line, non-
downloadable software in the field of customer relationship
management for use in tracking key dates, maintaining
client contact information, and incorporating customer
account-specific details into tracking, such as which
clients to contact when and why based upon client specific
information for use by the mortgage industry.” Applicant’s
materials state:
You’ve got a healthy base of existing mortgage
customers already. How do you hold onto them?
Ser No. 78452093
8
With Mortgage Returns, your company knows specifically
which customers to contact, when and why. Loan
officers are equipped with account-specific
information necessary to initiate individualized
contact with existing customers, as efficiently and as
cost-effectively as possible.

Mortgage Returns is much more than just contact
management, we are at the forefront of Customer
Relationship Management (CRM) services for the
mortgage industry. Detailed customer account
information including, rate, equity, term, maturity
date and anniversary date are all managed and tracked
automatically for the loan officer.

Another passaage on the site states: “The Mortgage Returns
concept was generated by requests from Loan Officers
looking for mortgage-indsutry specific contact management
software.”
It is clear that the service at issue is for loan
officers in the mortgage loan industry for use as a client
service and sales tool. The purpose of the service is to
retain customers and generate new business. For example,
the service may alert a loan officer at an opportune time
to suggest refinancing to a customer.
In this context, the use of the term “returns” assumes
a meaning which is not merely descriptive. It suggests
that the use of this service as a sales tool will produce
“returns” in the sense of good customer service or new
business. It will pay “dividends.” In this context
“returns” is not being used in its technical, literal sense
Ser No. 78452093
9
known in the world of finance and investment, but rather in
a suggestive sense to indicate that this service, which is
not a financial sevice but rather a work management tool,
will be beneficial.
As the Court of Appeals for the Federal Circuit has
observed:
In the complex world of etymology, connotation,
syntax, and meaning, a term may possess elements of
suggestiveness and descriptiveness at the same time.
No clean boundaries separate these legal categories.
Rather, a term may slide along the continuum between
suggestiveness and descriptiveness depending on usage,
context, and other factors that affect the relevant
public's perception of the term. See Zatarians, Inc.
v. Oak Grove Smoke House, Inc., 698 F.2d 786 [217 USPQ
986] (5th Cir. 1983) (“These categories, like the
tones in a spectrum, tend to blur at the edges and
merge together. The labels are more advisory than
definitional, more like guidelines than
pigeonholes.”).

In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001).
In this context, the use of “returns” in the MORTGAGE
RETURNS mark assumes a nuanced meaning which is more
properly categroized as suggestive rather than merely
descriptive. Accordingly, we conclude that the enire mark
MORTGAGE RETURNS is not merely descriptive of “providing
temporary use of on-line, non-downloadable software in the
field of customer relationship management for use in
tracking key dates, maintaining client contact information,
Ser No. 78452093
10
and incorporating customer account-specific details into
tracking, such as which clients to contact when and why
based upon client specific information for use by the
mortgage industry.” In concluding so we are mindful that,
in a case under Trademark Act Section 2(e)(1), we must
resolve any doubt in favor of applicant. In re Rank
Organisation Ltd., 222 USPQ 324, 326 (TTAB 1984). However,
in the absence of a disclaimer of the merely descriptive
term “MORTGAGE,” we will not reverse the refusal.
Decision: In the absence of a disclaimer of
“MORTGAGE,” the refusal under Section 2(e)(1) is affirmed.
If within 30 days of the date of this decision applicant
provides an acceptable disclaimer of “MORTGAGE,” we will
set this decision aside and reverse the refusal under
Section 2(e)(1) in accordance with Trademark Rule 2.142(g).