U.S. Education Finance Manage-ment Corp.

Trademark Trial and Appeal Board

Dec 21, 2004

No. 76040856 (T.T.A.B. Dec. 21, 2004)

Mailed:
21 December 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re U.S. Education Finance Management Corporation
________
Serial Nos. 76040856 and 76040863
_______
Richard A. Flynt of Roylance, Abrams, Berdo & Goodman,
L.L.P. for U.S. Education Finance Management Corporation.
Paul F. Gast, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______
Before Chapman, Bucher, and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On May 4, 2000, U.S. Education Finance Management
Corporation (applicant), a corporation organized under the
laws of Florida and located in Miami, Florida, filed
intent-to-use applications to register the marks “U.S.
PRESTAMOS STAFFORD1 and U.S. PRESTAMOS DE CONSOLIDACION2
1 Serial No. 76040856 (the ‘856 application). The application
indicates that the word “prestamos” is translated as “loans.”
2 Serial No. 76040863 (the ‘863 application). The application
indicates that the words “prestamos de consolidacion” are
translated as “consolidation loans.”
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser Nos. 76040856 and 76040863
2
(each in typed form) on the Principal Register for services
eventually identified as “education loan services;
brokering education loans” in International Class 36.
The examining attorney3 refused to register applicant’s
marks on the ground that the marks are primarily
geographically descriptive of applicant’s services under
Section 2(e)(2) of the Trademark Act. 15 U.S.C.
§ 1052(2)(e)(2). After the examining attorney made the
refusals final, applicant filed these appeals. Because of
the similarity of the records and issues, we are issuing
one opinion that discusses both applications.
The examining attorney argues that the terms “Stafford
loans” and “consolidation loans” and their Spanish
equivalents “Prestamos Stafford” and “Prestamos de
Consolidacion” are generic terms. Then, the examining
attorney makes essentially the same argument in both cases.
[T]he average customer who sees the designation “U.S.”
will focus on this as the main element in determining
the character of the mark, that is, that it is
geographically descriptive, notwithstanding the
Spanish wording for the generic wording that may or
may not be understood… [E]ven if the terminology is
understood, the public certainly would understand the
designation “U.S.” as the dominant portion compared to
the generic element… As such, the mark can only be
characterized in its entirety as primarily
geographically descriptive because the primary
significance of the mark is geographic, because
3 The current examining attorney was not the original examining
attorney in these cases.
Ser Nos. 76040856 and 76040863
3
customers would make a services/place association, and
because the mark identifies the geographic origin of
the services.
Examining Attorney’s ‘856 Brief at 4.
Applicant argues that its mark is “a combination of
the English term ‘U.S.’ and the Spanish phrase ‘PRESTAMOS
DE CONSOLIDACION,’ which translates to ‘CONSOLIDATION
LOANS.’” Applicant’s ‘863 Brief at 2. See also ‘856 Brief
at 2 (“Applicant’s mark is a combination of the English
terms ‘U.S.’ and ‘STAFFORD’4 and the Spanish term
‘PRESTAMOS’, which translates to ‘LOANS’”). “This
juxtaposition of Spanish and English terms removes the mark
from the realm of descriptiveness and renders the mark, at
most, suggestive of Applicant’s services.” Applicant’s
‘863 Brief at 3. Thus, the “consumer must, by necessity,
pause upon encountering a phrase in a new language in order
to discern the meaning of this language.” ‘863 Reply Brief
at 2-3.
The Board has set out the following test to use in
determining whether a mark is primarily geographically
descriptive:
4 While applicant claims that “Stafford” is an English word, the
examining attorney (Brief at 4) argues that it is “still a
surname in either language and … a ‘Stafford loan’ is a generic
type of loan.” As more fully discussed herein, “Stafford” would
identify a type of Federal loan and its use by applicant in its
mark would not have any trademark significance.
Ser Nos. 76040856 and 76040863
4
[T]he Trademark Examining attorney would need to
submit evidence to establish a public association of
the goods with that place if, for example, a genuine
issue is raised that (1) the place named in the mark
may be so obscure or remote that purchasers would fail
to recognize the term as indicating the geographical
source of the goods to which the mark is applied or
(2) an admitted well-recognized term may have other
meanings, such that the term’s geographical
significance may not be the primary significance to
prospective purchasers. Where, on the other hand,
there is no genuine issue that the geographical
significance of a term is its primary significance and
where the geographical place is neither obscure nor
remote, a public association of the goods with the
place may ordinarily be presumed from the fact that
the applicant’s own goods come from the geographical
place named in the mark.

In re Handler Fenton Westerns, Inc., 214 USPQ 848, 849-50
(TTAB 1982).
The examining attorney submitted a definition to show
that “U.S.” is an abbreviation of the “United States.”
American Heritage Dictionary of the English Language
(1992). ‘863 Office Action dated July 9, 2001 at 2.5
Because applicant’s address is in Florida, applicant is
located in the United States and we can presume the
services would originate in the United States. In re
Compagnie Generale Maritime, 993 F.2d 841, 26 USPQ2d 1652,
1655 (Fed. Cir. 1993) (“Certainly, all of the goods and
5 To the extent that the examining attorney did not submit a copy
of the definition of “U.S.” in the ‘856 application, we take
judicial notice of this definition. University of Notre Dame du
Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB
1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser Nos. 76040856 and 76040863
5
services would either originate in France or should be
considered as if they did because they are sold by a French
company”). Furthermore, the United States is not a remote
or obscure geographic location, nor does applicant argue
that it is. In re U.S. Cargo Inc., 49 USPQ2d 1702, 1703
(TTAB 1998) (“[W]e may take judicial notice of the fact
that "U.S." means the United States, and that the United
States is a geographic area with defined boundaries.
Indeed, we believe the exclusive significance of "U.S." to
most purchasers would be the geographic area”)(footnote
omitted).
As in U.S. Cargo, the significance of the term “U.S.”
in the United States to most users of applicant’s services
would be a reference to the United States of America. In
addition, the examining attorney has submitted printouts of
laws and regulations to support his argument that the terms
“Stafford loans” and “consolidation loans” are generic for
education loan services and brokering education loan
services. See 20 U.S.C. § 1071(c) (“The program
established under this part shall be referred to as the
‘Robert T. Stafford Student Loan program.’ Loans made
pursuant to sections 427 and 428 shall be known as ‘Federal
Stafford Loans’”); 34 CFR § 682.100(a)(1)(“The Federal
Stafford Loan (Stafford) Program, which encourages making
Ser Nos. 76040856 and 76040863
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loans to undergraduate, graduate, and professional
students”); 34 CFR § 682.100(2)(i) (“The Secretary
guarantees lenders against losses (A) Within the Stafford
Loan Program, on loans made under Federal Insured Student
Loan (FISL) Program”). Thus, a Stafford loan is a type of
Federal guaranteed loan.
Similarly, a “consolidation loan” is a type of loan.
See 34 CFR § 682.100(a)(4) (“The Federal Consolidation Loan
Program (Consolidation Loan Program), which encourages
making loans to borrowers for the purposes of consolidating
loans…”).
Combining the geographical term “U.S.” with the
generic term “prestamos Stafford” or “prestamos de
consolidacion” does not convert the marks into non-
geographically descriptive terms. In re Monograms America
Inc., 51 USPQ2d 1317, 1319 (TTAB 1999) (MONOGRAMS AMERICA
for consultation services for owners of monogramming shops
held primarily geographically descriptive as it simply
signifies United States origin and/or geographical scope.
“Moreover, the addition of highly descriptive matter to a
geographic term does not detract from the mark’s primary
significance as being geographically descriptive”). See
also U.S. Cargo, 49 USPQ2d at 1704 (U.S. CARGO held
primarily geographically descriptive for towable trailers
Ser Nos. 76040856 and 76040863
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for carrying cargo and vehicles for commercial purposes);
In re Chalk's International Airlines Inc., 21 USPQ2d 1637,
1639 (TTAB 1991) (PARADISE ISLAND AIRLINES held primarily
geographically descriptive of transporting passengers and
goods by air); and In re Cambridge Digital Systems, 1
USPQ2d 1659, 1662 (TTAB 1986) (CAMBRIDGE DIGITAL held
primarily geographically descriptive of computer systems).
Similarly here, the addition of the wording “prestamos de
consolidation” or “prestamos Stafford” does not change the
primarily geographic impression of applicant’s mark.
Applicant’s main argument, however, is that its mark
is a combination of the “English term ‘U.S.’ and the
Spanish phrase ‘PRESTAMOS DE CONSOLIDACION,’ which
translates to ‘CONSOLIDATION LOANS.’ Numerous cases have
held that when words in English and other languages are
combined, the resulting mark is registrable and non-
descriptive.” Applicant’s ‘863 Brief at 2. See also
Applicant’s ‘856 Brief at 2 (“Applicant’s mark is a
combination of the English terms ‘U.S.’ and ‘Stafford’ and
the Spanish term ‘PRESTAMOS,’ which translates to
‘LOANS’”). Applicant cites several cases to support its
argument, including In re Universal Packaging, 222 USPQ 344
(TTAB 1984) (LE CASE not descriptive for jewelry boxes); In
re Johanna Farms, 8 USPQ2d 1408 (TTAB 1986) (LA YOGURT not
Ser Nos. 76040856 and 76040863
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descriptive for yogurt); In re Sweet Victory, Inc., 228
USPQ 959 (TTAB 1988)(GLACE LITE not descriptive for frozen
desserts). Indeed, one court has held that “the doctrine
[of foreign equivalents] does not apply when a mark is a
combination of foreign and english words.” French Transit
Ltd. v. Modern Coupon Systems Inc., 818 F. Supp. 635, 29
USPQ2d 1626, 1626 (S.D.N.Y. 1993).
We are not persuaded by applicant’s argument. First,
we note that the “English word” in applicant’s mark,
“U.S.,” is an abbreviation, not a word. Abbreviations of a
geographic place are much less likely to appear incongruous
when used with foreign words. For example, the
abbreviation “US$” would likely have the same meaning in
English and Spanish. It would appear no more incongruous
in a Spanish-language publication in the United States than
in an English-language publication. Second, we take
judicial notice of two dictionary definitions that
demonstrate that the full abbreviation “USA” means the same
in Spanish as it does in English. Collins Spanish
Dictionary, 6th Ed.; Oxford Spanish Dictionary (1997).6
Because applicant’s mark incorporates an even shorter
abbreviation, it is just as likely, if not more likely, to
Ser Nos. 76040856 and 76040863
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be recognized in both English and Spanish as standing for
the United States. Inasmuch as we are only dealing with
the perception of the mark in the U.S., there is no reason
to believe that English or Spanish speaking people in the
U.S. would have any reason to pause over the use of the
abbreviation “U.S.” Therefore, the argument that
prospective purchasers would find the marks incongruous is
not viable. If the marks “U.S. PRESTAMOS DE CONSOLIDACION”
and “U.S. PRESTAMOS STAFFORD” were used in association with
education loan services and brokering education loan
services from an entity located in the United States, the
marks would be perceived by consumers as primarily
geographically descriptive of those services.
Decision: The refusals to register applicant’s marks,
U.S. PRESTAMOS DE CONSOLIDACION and “U.S. PRESTAMOS
STAFFORD, under Section 2(e)(2) of the Trademark Act on the
ground that the marks are primarily geographically
descriptive are affirmed.
6 We are aware that the traditional Spanish abbreviations for
“Estados Unidos de America – U.S.A.” are “E.U.A. or EE.UU. or
E.U.” Cassell’s Spanish Dictionary (1959), p. 1456.