The Harrison Co., LLC

Trademark Trial and Appeal BoardJan 30, 2002

No. 75769557 (T.T.A.B. Jan. 30, 2002)

1/30/02 Paper No. 11 CEW UNITED STATES PATENT AND TRADEMARK OFFICE ___________ Trademark Trial and Appeal Board ___________ In re The Harrison Company, LLC ___________ Serial No. 75/769,557 ___________ Hugh Q. Gottschalk and Carolyn J. Fairless of Wheeler, Trigg & Kennedy for The Harrison Company, LLC. Tricia L. Sonneborn, Trademark Examining Attorney, Law Office 110 (Chris A.F. Pedersen, Managing Attorney). ____________ Before Walters, Rogers and Drost, Administrative Trademark Judges. Opinion by Walters, Administrative Trademark Judge: The Harrison Company, LLC has filed a trademark application to register the mark LOYAL POLICYHOLDER for “promoting the goods and services of insurance companies and other financial services institutions by arranging and administering a customer loyalty marketing program that tracks and analyzes customer relationships, and allows insurance companies and other financial service institutions to reward their customers with preferred THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE T.T.A.B. Serial No. 75/769,557 2 rates, buying power and other incentives based on those relationships.”1 The Trademark Examining Attorney has issued a final refusal to register, under Section 2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1), on the ground that applicant’s mark is merely descriptive of its services. Applicant has appealed. Both applicant and the Examining Attorney have filed briefs, but an oral hearing was not requested. We affirm the refusal to register. The Examining Attorney contends the following (brief, p. 5): [A]pplicant provides a marketing program to insurance companies, and other financial service institutions, which tracks certain policyholder information to identify a company’s most faithful customers. … It is quite clear that the services provided under the applicant’s mark will identify those customers with unswerving allegiance to the insurance company or other financial service institutions, i.e., loyal policyholders. Further, the average purchaser of the applicant’s services will be an insurance company or other financial service institution. As such, the average customer will be well versed in the meaning and significance of the various informational components gathered and analyzed as part of the customer loyalty marketing services. 1 Serial No. 75/769,557, in International Class 35, filed August 6, 1999, based on an allegation of a bona fide intention to use the mark in commerce. Serial No. 75/769,557 3 In support of her position, the Examining Attorney submitted dictionary definitions of “loyal” as “… faithful to a cause, ideal, custom, institution, or product”; and of “policyholder” as “one that holds an insurance contract or policy.” Applicant describes its services as follows (brief, p. 1): The Harrison Company has developed a patented, software-based marketing system for the financial services industry, encompassing the entire product line offered by those companies. The Harrison Company intends to name that portion of the marketing system which applies to insurance products the “Loyal Policyholder” system. This … system tracks, among other things, the number of insurance products purchased by a given customer, the number of referrals made by that customer to their family and friends, and the length of time that an individual has been a customer. With this information in hand, an insurance company or other financial service institution can recognize its most lucrative customers and provide product pricing benefits and preferred buying power to customers based upon their level of loyalty. Applicant contends that its mark is suggestive, rather than descriptive, stating that it suggests that applicant’s services “somehow involve loyal policyholders, [but] the mark does not indicate in any way that the services are promotional services.” Applicant further argues that its services are not marketed to policyholders, but to the insurance companies Serial No. 75/769,557 4 and financial institutions and, thus, there is no direct connection between the mark and the promotional services it identifies. The test for determining whether a mark is merely descriptive is whether the involved term immediately conveys information concerning a quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used, or intended to be used. In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not necessary, in order to find a mark merely descriptive, that the mark describe each feature of the goods or services, only that it describe a single, significant quality, feature, etc. In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985). Further, it is well-established that the determination of mere descriptiveness must be made not in the abstract or on the basis of guesswork, but in relation to the goods or services for which registration is sought, the context in which the mark is used, and the impact that it is likely to make on the average purchaser of such goods or services. In re Recovery, 196 USPQ 830 (TTAB 1977). In the present case, it is our view that, when applied to applicant’s services, the term LOYAL Serial No. 75/769,557 5 POLICYHOLDER immediately describes, without conjecture or speculation, a significant feature or function of applicant’s services, namely, that applicant will identify a client’s “loyal policyholders” (i.e., the “customers” referred to in applicant’s identification of services) and administer a customer loyalty marketing program aimed at these persons. Nothing requires the exercise of imagination, cogitation, mental processing or gathering of further information in order for purchasers of and prospective customers for applicant’s services to readily perceive the merely descriptive significance of the term LOYAL POLICYHOLDER as it pertains to applicant’s services. Decision: The refusal under Section 2(e)(1) of the Act is affirmed.