UMI Co.

Trademark Trial and Appeal Board

Jun 29, 1999

No. 74719760 (T.T.A.B. Jun. 29, 1999)

Paper No. 11
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 29, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re UMI Company
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Serial No. 74/719,760
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Richard A. Gaffin of Miller, Canfield, Paddock and Stone,
P.L.C. for UMI Company.
Martha Santomartino, Trademark Examining Attorney, Law
Office 102 (Thomas V. Shaw, Managing Attorney).
_______
Before Hanak, Hairston and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
UMI Company has filed an application to register the
mark BANKING INFORMATION SOURCE for “computer services,
namely, providing on-line information data bases for the
retrieval of information in the nature of articles from
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business publications, including bibliographic citations
and abstracts relating thereto.”1
Registration has been finally refused on the ground
that the mark is merely descriptive under Section 2(e)(1)
of the Trademark Act. Applicant and the Examining Attorney
have filed briefs, but an oral hearing was not requested.
The Examining Attorney maintains that the mark BANKING
INFORMATION SOURCE is merely descriptive in that it
immediately conveys to prospective purchasers information
with respect to a characteristic or feature of applicant’s
services, namely, that applicant is providing information
about the banking industry. Applicant contends that this
is only one possible meaning for its mark; that the mark
may equally be interpreted as a source of information about
banking per se, such as the types of transactions offered
by financial institutions, or even on-line access to bank
account information. Applicant argues that because it
would take imagination on the part of the user of
applicant’s database to determine from the mark BANKING
INFORMATION SOURCE whether the database provides general
information about the financial services industry or
specific information with respect to the transactions

1 Serial No. 74/719,760, filed August 24, 1995, based on a bona
fide intention to use the mark in commerce. An amendment to
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offered by particular institutions, its mark is not merely
descriptive.
A word or phrase is merely descriptive within the
meaning of Section 2(e)(1) is it immediately conveys
information about a characteristic, purpose, function or
feature of the goods or services with which it is being
used. Whether or not a particular term or phrase is merely
descriptive is not determined in the abstract, but rather
in relation to the goods or services for which registration
is sought, the context in which the mark is being used, and
the significance the mark is likely to have, because of the
manner in which it is used, to the average purchaser as he
encounters the goods or services bearing the mark. See In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215
(CCPA 1978); In re Nibco Inc., 195 USPQ 180 (TTAB 1977) and
the cases cited therein.
Applicant is using BANKING INFORMATION SOURCE in
connection with services which it identifies as on-line
information databases which provide information from
articles from business publications. In the specimens of
record, applicant’s databases are described as follows:
Banking Information Source records provide complete
bibliographic information, indexing, and abstracts for

allege use was filed October 7, 1996, setting forth first use
dates of September 1, 1995.
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articles published in more than 220 essential industry
publications, banking newsletters, Bank Marketing
Association’s Golden Coin Awards competition entries,
Stonier Theses, and School of Bank Marketing Papers –
plus citations to banking related articles from The
American Banker, The Wall Street Journal and The New
York Times
as well as
The Banking Information Source combines two popular
information resources from the American Bankers
Association (ABA): the ABA’s Banking Literature Index
... and FINIS (Financial Industry Information
Service)... .
This is the context within which the mark is being used and
the manner in which the mark would be viewed by prospective
purchasers or users of applicant’s services.
Without getting caught up in the rather circuitous
paths of reasoning followed by both applicant and the
Examining Attorney in their arguments, we find the
conclusion to be drawn very clear-cut. When BANKING
INFORMATION SOURCE is considered in the manner in which it
is being presented by applicant, there is only one
plausible interpretation of the mark. In the first place,
the average potential purchasers and users of applicant’s
services would be individuals seeking information about the
banking industry, not consumers seeking information about a
particular bank service. See In re Omaha National Corp.,
819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987) [“average
purchaser” refers to class or classes of actual or
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prospective customers of the applicant’s particular goods
or services]. To these individuals, the words BANKING
INFORMATION would immediately convey information with
respect to the nature or subject matter of applicant’s
databases. The services per se would be recognized to be
exactly as applicant has described them, namely, the
provision of a SOURCE of information about the banking
industry. See In re Putman Publishing Co., 39 USPQ2d 2021
(TTAB 1996) [FOOD & BEVERAGE ON-LINE immediately conveys
information about the subject matter of applicant’s
computer-accessed service to the relevant class of
consumers]. There is no second meaning for BANKING
INFORMATION SOURCE which would be applicable to applicant’s
particular services. Nor it there any double entendre
involved, as would be the case if BANKING INFORMATION
SOURCE had a second non-descriptive, but applicable,
meaning, when used in connection with applicant’s services.
Cf. Henry Siegel Co. v. M & R International Mfg. Co., 4
USPQ2d 1154 (TTAB 1987)[term CHIC, as applied to women’s
jeans, projects double entendre (both its descriptive
significance as “stylish” and its non-descriptive meaning
as the phonetic equivalent of “chick” or “young woman”) and
thus is not merely descriptive].
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Although the Examining Attorney has submitted
dictionary definitions of the individual components of
applicant’s mark, and LEXIS/NEXIS database evidence of the
descriptive use of the terms “banking information” and
“information source,” we do not find consideration of this
material necessary for our decision. The commonplace
meaning of the phrase BANKING INFORMATION SOURCE is readily
apparent to us. Furthermore, the NEXIS/LEXIS database
excerpts showing use of the phrase “on-line banking
information” are directed for the most part to the non-
applicable meaning, the supplying of information with
respect to bank accounts and the like, and thus are
irrelevant. Similarly, we find the fact that applicant
uses a 3 symbol next to the listing in its specimens of
certain of its databases and not next to others, including
the one in question, to be immaterial.
Accordingly, we find the mark BANKING INFORMATION
SOURCE merely descriptive when used in connection with
applicant’s on-line database services.
Decision: The refusal to register under Section
2(e)(1) is affirmed.
E. W. Hanak
P. T. Hairston
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H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board
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