Robert Weinke

Trademark Trial and Appeal Board

Mar 2, 2001

No. 75390298 (T.T.A.B. Mar. 2, 2001)

03/02/01
Paper No. 12
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Robert Weinke
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Serial No. 75/390,298
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Lynn A. Sullivan of Leydig, Voit & Mayer, Ltd. for Robert
Weinke.
Angela M. Micheli, Trademark Examining Attorney, Law Office
108 (David E. Shallant, Managing Attorney).
_______
Before Cissel, Hohein and Bucher, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On November 14, 1997, applicant, a citizen the United
States, applied to register the mark “BANK GLOBAL” on the
Principal Register for “financial services, including, but
not limited to, banking and related transactions offered
electronically and through traditional methods,” in Class
36. The basis for filing the application was applicant’s
assertion that he possessed a bona fide intent to use the
mark in commerce in connection with these services.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/390,298
2
The Examining Attorney refused registration under
Section 2(e)(1) of the Lanham Act on the ground that the
mark sought to be registered is merely descriptive of the
services specified in the application. She also raised a
number of informalities, including requesting applicant
under Trademark Rule 2.61(b) to submit samples of
advertisements or promotional materials.
Applicant responded to the first office action by
amending the recitation of services to read: “financial
services, namely, banking services offered electronically
and through traditional methods,” and amending the
application to include a disclaimer of the exclusive right
to use the word “BANK” apart from the mark as shown. In
addition, applicant provided argument that the mark “BANK
GLOBAL” is not merely descriptive of the services with
which applicant intends to use it.
The refusal to register under Section 2(e)(1) of the
Act was made final in the second office action. In support
of the refusal, the Examining Attorney attached copies of
the excerpts of articles retrieved from the Nexis
database
of publications and materials from the Internet which show
the term “global” used in reference to banking services.
Examples include the following:
Ser No. 75/390,298
3
“… manage your bank balances around the world
with Scotiabank’s global banking services.”
“monitor your global bank balances easily…”
“global banking services are for organizations
that have… balance and transaction information
requirements for their global operations.”
“Korn/Ferry International’s global banking
practice consists of partner teams in the United
States, Europe, Latin America and Asia.”
“… gives you instant 24-hour access to global
banking services from your personal computer.”
“… premiere Latin American corporates have gained
access to the mainstream global bank market,
sources say.”
“… was promoted from Executive Vice President in
charge of global banking to Vice Chairman of the
business bank.”
“… dismisses as either unrealistic or politically
infeasible the obvious options, including the
creation of a new global bank…”
“He will retain his role as a senior member of
the firm’s global banking practice.”
“‘I have an advantage because I’m a big global
bank with a large corporate customer base,’
Mr.Sponholtz said.”
“‘the question for Fleet will be how to take
advantage of BankBoston’s strong Latin presence,’
said a banker at a U.S. global bank.”
“Harrison, 55, is vice chairman of Chase’s global
bank.”
“He’s already running the global bank, which
represents two-thirds of (Chase’s) bottom-line.”
and
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“analysts credit the Connecticut resident with
keeping Chase above water last year, when
Russia’s default led to trading losses at several
other global banks.”
The Examining Attorney also made final the requirement
for applicant to submit advertising or promotional
materials under Rule 2.61(b).
Applicant submitted a Notice of Appeal and requested
reconsideration of the final refusal to register.
Submitted in support of applicant’s argument that “BANK
GLOBAL” is not merely descriptive of the banking services
set forth in the application was a list 122 United States
trademark registrations of marks which assertedly include
the word “GLOBAL” and are registered in connection with
services in Class 36. Copies of a number of the listed
registrations were also provided. Applicant argued that
the term “GLOBAL” does not relate to the place of origin of
the services or the bounds within which applicant operates,
contending that it is too broad a term to describe with any
specificity a feature or characteristic of applicant’s
services.
The Board instituted the appeal, but suspended action
on it and remanded the application to the Examining
Attorney for consideration of applicant’s request for
reconsideration. She was not persuaded by applicant’s
Ser No. 75/390,298
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arguments or evidence, however, and the refusal to register
under Section 2(e)(1) of the Act was maintained.
The application file was returned to the Board, which
resumed action on the appeal. Applicant filed his appeal
brief, the Examining Attorney filed her brief on appeal,
and applicant filed a reply thereto. Applicant did not
request an oral hearing before the Board.
Until his reply brief, applicant had never even
responded to the requirement to provide advertising or
promotional materials, although the Examining Attorney had
made the requirement in her first office action and
repeated it and made it final in her second office action.
When applicant still had not addressed this issue in his
brief, the Examining Attorney, in her brief, brought it up
again. Applicant’s reply brief finally addressed the issue
by stating that because the application was filed based on
applicant’s assertion that he intends to use the mark in
commerce in connection with the stated services, rather
than on actual use of the mark, applicant is not
withholding the requested materials; rather, he does not
have any advertising or promotional materials yet.
Although we are at a loss as to why this explanation
was not provided responsive to the first two times the
request was made, we are nonetheless constrained to accept
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it at this juncture. Accordingly, the requirement under
Trademark Rule 2.61(b) is reversed.
We now turn to the central issue in this appeal, which
is the refusal to register under Section 2(e)(1) of the
Lanham Act. Based on careful consideration of the record
before us in this appeal and the arguments of applicant and
the Examining Attorney, we find that the refusal to
register is well taken.
The test for determining whether a mark is merely
descriptive within the meaning of the Lanham Act is well
settled. A mark is merely descriptive under Section
2(e)(1) if it immediately and forthwith describes a
significant quality, characteristic, function, feature,
purpose or use of the relevant services. In re Bed &
Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir.
1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); and In
re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). The mark
applicant seeks to register, when considered in connection
with banking services offered electronically and through
traditional means, is merely descriptive of those services
because it describes a recognized type of banking services,
namely global banking services, which are banking services
provided worldwide.
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The materials made of record by the Examining Attorney
clearly demonstrate that the term “global bank” is used to
identify a bank which renders services throughout the
world. If applicant were to use “BANK GLOBAL” in
connection with electronic and traditional banking
services, the mark would immediately inform prospective
customers of this significant characteristic or feature of
applicant’s services.
Applicant contends that the term sought to be
registered cannot be considered to be merely descriptive of
the services set forth in the application because it too
vague and indefinite to describe the services with the
necessary particularity, citing World Carpets, Inc. v. Dick
Littrell’s New World Carpets, 168 USPQ 609 (5th Cir. 1971),
and International House of Pancakes, Inc. v. Elca Corp.,
216 USPQ 521 (TTAB 1982). While terms like “WORLD” and
“INTERNATIONAL,” when used in connection with some services
like carpet sales and restaurant services can create
situations wherein the mark as a whole may not provide
specific or definite information about the service with
which it used, in the case at hand, the record establishes
that prospective customers of electronic and traditional
banking services know what a global bank is and know what
global banking is.
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Applicant argues that by reversing the order of the
words in the descriptive term “GLOBAL BANK,” applicant has
created a registrable service mark for his banking
services. He claims that by reversing the order of the
descriptive words, he has “arranged them in a way that is
distinguishable from the descriptive uses of the term...”
and that this somehow creates “a mark that is not merely
descriptive[,] but rather suggests to consumers the nature
of the services.” (brief p. 4)
A mark which combines descriptive words may be
registered if the juxtaposition of the words results in an
unexpected mark or one with an incongruous meaning or a
unique commercial impression. In re Ampco Foods, Inc., 227
USPQ 331 (TTAB 1985). As the Examining Attorney points
out, however, this is not what is happening in the instant
case. Citing In re Gould Paper Corp., 834 F.2d 1017, 5
USPQ2d 1110 (Fed. Cir. 1987), she quotes the Court therein
for the proposition that simply combining two highly
descriptive words will not necessarily result in a
registrable trademark.
The record before us in this appeal provides no basis
upon which we could conclude that by reversing the order of
the descriptive term “GLOBAL BANK,” applicant has
diminished the descriptive significance thereof. All
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applicant does is state the conclusion it urges us to
adopt, without providing any evidence or reasoning upon
which we could reach such a conclusion.
Applicant also argues that his mark is registrable
because other marks for financial services which include
the word “GLOBAL” have been registered, but this argument
is not persuasive either. Three of the registered marks
relied upon by applicant are registered on the Supplemental
Register, which is an admission that those marks are merely
descriptive. Each of the other marks is distinguishable
from the mark in the case before us. In any event, it is
well settled that third-party registrations are not
determinative on the issue of descriptiveness. Each case
must be decided on its own merits. In re Scholastic
Testing Service, Inc., 196 USPQ 517 (TTAB 1977). The Board
is not bound by previous decisions of Examining Attorneys
to register other marks which may or may not be descriptive
of the goods or services with which they are used. In re
Pennzoil Products, Co., 20 USPQ2d 1753 (TTAB 1991).
Applicant’s argument that his mark cannot be held to
be merely descriptive because there is no evidence in this
record that it used descriptively by others is likewise not
well taken. That applicant intends to be the first and
only one to use this descriptive term does not justify
Ser No. 75/390,298
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issuance of a registration to him. In re National Shooting
Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983).
In summary, the mark applicant seeks to register is
unregistrable under Section 2(e)(1) of the Lanham Act
because if it were to be used in connection with the
services identified in the application, it would
immediately and forthwith inform prospective customers of
applicant’s banking services that applicant is a global
bank, providing banking services on a worldwide basis.
Decision: The refusal to register is affirmed.
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