Wells Fargo Home Mortgage, a division of Wells Fargo Bank

Trademark Trial and Appeal Board

Jun 27, 2007

No. 76624811 (T.T.A.B. Jun. 27, 2007)

Mailed: June 27, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Wells Fargo Home Mortgage,
a division of Wells Fargo Bank
___________

Serial No. 76624811
___________

Brian J. Laurenzo of Dorsey & Whitney for Wells Fargo Home
Mortgage, a division of Wells Fargo Bank.

Fred Mandir, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
____________

Before Quinn, Walters and Cataldo, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Wells Fargo Home Mortgage, a division of Wells Fargo
Bank, has filed an application to register on the Principal
Register in standard character form the mark THE RELOCATION
MORTGAGE PROGRAM for “mortgage lending services,” in
International Class 36.1 The application, as filed,

1 Serial No. 76624811, filed December 15, 2004, based on use of the mark
in commerce, alleging first use and use in commerce as of October 3,
1983.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 76624811
2
includes a claim of acquired distinctiveness under Section
2(f) of the Trademark Act, 15 U.S.C. 1052(f).
The 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), and asserted that applicant’s showing of
acquired distinctiveness under Section 2(f) of the Trademark
Act, 15 U.S.C. 1052(f), is insufficient.2
Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We affirm the refusal
to register.
Basis of Refusal
Regarding the basis for refusal, we note that in the
final refusal the examining attorney stated that the
evidence he submitted shows that “THE RELOCATION MORTGAGE
PROGRAM is highly descriptive or generic for applicant’s
services.” In his brief, the examining attorney makes the
following statements (pp. 2 and 6 respectively):
The crux of applicant’s argument is that the [PTO]
has not proven that the proposed mark is generic
as applied to the services, and therefore
registration of the proposed mark must be allowed
on the Principal Register. … However, the
proposed mark was not refused under Trademark Act
Section 23. The sole refusal of record is under
Section 2(e)(1) and applicant’s claim for
registration under Section 2(f) was deemed
insufficient to overcome the refusal under Section

2 In the initial Office action, the examining attorney required a
disclaimer of MORTGAGE PROGRAM apart from the mark as a whole.
Applicant argued against this requirement and the examining attorney did
not repeat the requirement. Thus, we conclude that the disclaimer
requirement was removed and the issue is not before us in this appeal.

Serial No. 76624811
3
2(e)(1). Under Section 2(f) it is the applicant,
not the [PTO], who has the burden of proving the
acquired distinctiveness.
. . .
The evidence of record … shows that consumers
would understand that a relocation mortgage
program is merely a specific type of mortgage
lending service and that the designation “the
relocation mortgage program” is generic for
applicant’s services.

We agree with applicant that the examining attorney has
used both the terms “highly descriptive” and “generic,”
creating some confusion. However, in response to
applicant’s statements about whether the mark is generic,
the examining attorney clearly stated that the basis for the
refusal is that the mark is merely descriptive, under
Section 2(e)(1) of the Trademark Act, and that the evidence
applicant submitted under Section 2(f) of the Trademark Act
does not establish that the proposed mark has acquired
distinctiveness. We find this to be a clear statement of
the ground for refusal. Therefore, the issue of whether THE
RELOCATION MORTGAGE PROGRAM is a generic term for the
identified services is not before us in this appeal.
Descriptiveness
Applicant has conceded the mere descriptiveness of the
term sought to be registered by seeking registration
pursuant to Section 2(f) in the original application. In
essence, applicant’s Section 2(f) claim of acquired
distinctiveness is a concession that the mark is not
inherently distinctive and that it therefore is not
Serial No. 76624811
4
registrable on the Principal Register absent a sufficient
showing of acquired distinctiveness. See Yamaha
International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d
1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988) [“Where, as here,
an applicant seeks a registration based on acquired
distinctiveness under Section 2(f), the statute accepts a
lack of inherent distinctiveness as an established fact.”]
(emphasis in original); and In re Leatherman Tool Group,
Inc., 32 USPQ2d 1443 (TTAB 1994). Thus, the issue of mere
descriptiveness is deemed to be conceded in this appeal.
Moreover, after reviewing the evidence submitted by the
examining attorney in support of his position that the
proposed mark is merely descriptive and that acquired
distinctiveness is not established, and by applicant in
rebuttal, we agree that the THE RELOCATION MORTGAGE PROGRAM
is merely descriptive in connection with “mortgage lending
services” for the reasons indicated below. In other words,
when applied to applicant’s services, the term THE
RELOCATION MORTGAGE PROGRAM immediately describes, without
conjecture or speculation, a significant feature or function
of applicant’s services, namely, that applicant has a
program of providing mortgage lending services, including to
relocating employees and their employers. Nothing requires
the exercise of imagination, cogitation, mental processing
or gathering of further information in order for purchasers
Serial No. 76624811
5
of and prospective customers for applicant’s services to
readily perceive the merely descriptive significance of the
term THE RELOCATION MORTGAGE PROGRAM as it pertains to
applicant’s services. See In re Engineering Systems Corp.,
2 USPQ2d 1075 (TTAB 1986); and In re Bright-Crest, Ltd., 204
USPQ 591 (TTAB 1979).
Acquired Distinctiveness

Applicant has the burden of proving that its mark has
acquired distinctiveness. In re Hollywood Brands, Inc., 214
F.2d 139, 102 USPQ 294, 295 (CCPA 1954)(“[T]here is no doubt
that Congress intended that the burden of proof [under
Section 2(f)] should rest upon the applicant”).
“[L]ogically that standard becomes more difficult as the
mark’s descriptiveness increases.” Yamaha International
Corp., supra at 1008.
Because the examining attorney alleges that the
proposed mark is “highly descriptive” and that the evidence
of acquired distinctiveness is insufficient to establish
acquired distinctiveness, we review the evidence of
descriptiveness submitted by the examining attorney and, in
rebuttal, by applicant. The examining attorney has
submitted the following evidence3:

3 Applicant argues that the evidence is minimal in view of the amount of
information available on the Internet. We disagree and note that the
amount of evidence of descriptiveness of the individual terms, various
combinations of those terms and the mark as a whole, considered in the
context of the particular evidence submitted, leads us to conclude that
Serial No. 76624811
6
• excerpts of web page section titles from two third-
party Internet websites referring to “RELOCATION
MORTGAGE PROGRAMS FOR COMPANIES” [Wachovia] and
“RELOCATION MORTGAGE SERVICES” [Weichert Financial
Services]

• dictionary definitions of the individual terms
comprising the mark, including, under the definition of
“mortgage,” an extensive list of types of mortgages
that does not include a “relocation mortgage”

• excerpts from nine third-party Internet websites,
wherein the following phrases are used to describe a
particular service or product:

1. “mortgage program” [one site],

2. “preferred mortgage programs” [one site],

3. “reverse mortgage program” [one site],

4. “relocation mortgages” [three sites],

5. “relocation mortgage services” [one site],

6. “The Corporate Relocation Mortgage Program” [one
site],

7. “Home Services Relocation Services – Special
Relocation Mortgage Program” [one site]

• excerpts from five third-party Internet websites, all
of which use the phrase relocation mortgage program(s),
but none referring to applicant (emphasis added):

1. “The $168 million in mortgages were originated by
Prudential Home Mortgage, under its relocation
mortgage program, for companies that transfer
employees.” [online New York Times Archive]

2. “Miles are not awarded for loans obtained through
E-LOAN’s relocation mortgage program or any other
special programs, promotions or discounts.”
[airmileoffers.com]

the record is sufficient to establish that the mark is highly
descriptive.
Serial No. 76624811
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3. “Mr. Cunliffe also developed relocation mortgage
programs for Banco Mortgage (now Norwest Mortgage)
and converted the company to a relocation mortgage
operation and a pure direct-to-consumer marketing
organization.” [realestate.com]

4. “Mortgage Assistance – Mayflower can assist the
transferee with the financing of their new home
while helping them control their costs. Special
features such as pre-approvals, buy-downs, and
closing specials may be available to your
employees through specific relocation mortgage
programs.” [imsrelo.com]

5. “Mark D. Carlson, VP, Technology, at Nexstar
Financial Corporation, a provider of mortgage
outsourcing solutions for many of the nations top
lenders, as well as a leader in providing
corporate and relocation mortgage programs, added
….” [adventnet.com]

In rebuttal, applicant submitted a substantial amount
of evidence, including the following4:
• The summary results of a Google search for THE
RELOCATION MORTGAGE PROGRAM, with copies of pages from
the Internet websites identified therein. Each appears
to use the phrase as a specific reference to
applicant’s services. It appears that many of the
websites are owned by brokers or businesses affiliated
with applicant that offer applicant’s products.

4 Applicant also submitted several items that are of limited or no
probative value:
(1) Copies of pleadings in several trademark infringement actions that
applicant has brought against third parties. The pleadings refer only
to applicant’s marks “WELLS FARGO” and “WELLS FARGO MORTGAGE” and are
not relevant to the mark herein.
(2) Copies of numerous third-party registrations for mortgage services
for marks that do not contain applicant’s proposed mark, perhaps to show
that third parties do not use, or need to use, this term. While we
acknowledge that it is difficult to prove a negative, this evidence does
not establish this point, nor is it otherwise of probative value herein.
(3) Copies of third-party registrations that applicant contends are
highly descriptive but were registered under Section 2(f). We remind
applicant that each case must be decided on its own factual record and,
therefore, these registrations are of no probative value. See In re
Nett Designs Inc., 236 F.3rd 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)
and cases cited therein.

Serial No. 76624811
8
• Excerpts from applicant’s website, including results of
a Spring 2005 Web survey of 151 relocation managers,
taken by Trippel Survey and Research, an independent
firm in the relocation industry, that gave “Wells Fargo
Mortgage” the top score for services satisfaction in
the category of national mortgages providers.5

• Excerpts from applicant’s website showing use of its
proposed mark THE RELOCATION MORTGAGE PROGRAM, noting
that the service and its products launched in 1981 and
describing the nature of the services under the mark,
including the statement “our relocation mortgage
package is designed with features ….”

Additionally, we note the specimens submitted with the
application. They consist of advertisements in two issues
of the Magazine of the Employee Relocation Council and other
advertising copy. The magazine advertisements are directed
to employers and include the following statements:
• “When you offer employees the resources of the home
lending leader, there’s just no limit to the
possibilities … [f]rom assessing needs to customizing
programs, we’ll provide home financing solutions that
work better …”

• “We revolutionized our industry with The Relocation
Mortgage Program™, the nation’s first, ….

The other specimen includes the following statements:
• “The Relocation Mortgage Program™”

5 We note that the relocation managers survey information reported on
applicant’s website refers to applicant as “Wells Fargo Mortgage” and
does not refer to any other specific trademark of applicant, such as THE
RELOCATION MORTGAGE PROGRAM. As applicant notes, the examining attorney
did not submit the parameters of his Internet search, or state that the
submission is “a representative sample” of his findings. However, in
view of the dictionary definitions of the individual terms, the
substance and amount of the additional evidence of use is sufficient for
us to conclude that the term is highly descriptive in connection with
the identified services.

Serial No. 76624811
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• “A comprehensive mortgage program designed especially
for tranferees”

• “Our relocation mortgage package is designed with
features to specifically meet your unique needs as a
transferee.”

The evidence clearly establishes that there are a
substantial number of services and products offered by third
parties to those involved in the corporate employee
relocation process; that numerous financial and real estate
businesses offer, to employers or directly to transferred
and relocating employees, mortgage products that are known
as “relocation mortgages”; and that businesses offer
employers and employees various “mortgage programs” to
assist with the employee “relocation” process. In fact,
five websites excerpted in this record refer to their
services informationally as “relocation mortgage programs”;
another five websites, plus applicant itself, use the phrase
“mortgage program(s)” informationally; and five other
websites appear to refer to a mortgage product identified as
a “relocation mortgage.”
It is clear from this record that, in the mortgage
lending field, each of the individual words comprising
applicant’s proposed mark is used regularly in a descriptive
manner, as are various combinations of those words,
including the entire phrase RELOCATION MORTGAGE PROGRAM.
The proposed mark does not create a unique impression
Serial No. 76624811
10
through the combination of the words; rather, the words
retain their common dictionary meanings. Considering the
uses of the mark and its component parts by third parties
and applicant itself is part of the determination of the
descriptive nature of the mark as a whole, not a dissection
of the mark as argued by applicant. Finally, we note that
the article THE in the proposed mark is of little, if any,
trademark significance. Thus, we agree with the examining
attorney that THE RELOCATION MORTGAGE PROGRAM is highly
descriptive in connection with mortgage lending services.
We are not persuaded otherwise by applicant’s evidence of
third parties using the phrase as a mark to refer to
applicant’s identified services. Clearly, these third
parties are brokers or businesses otherwise affiliated with
applicant that are authorized to offer applicant’s mortgage
lending services, not relevant consumers. Thus, this
evidence does not rebut the showing that the mark is highly
descriptive.
In this case the standard of acquired distinctiveness
is extremely difficult to meet because we have found that
not only is THE RELOCATION MORTGAGE PROGRAM merely
descriptive in connection with the identified services, but
it is highly descriptive in connection therewith.
In support of its Section 2(f) claim, applicant submitted
the following:
Serial No. 76624811
11
• The declaration of its associate general counsel
attesting to “substantially exclusive and continuous
use in interstate commerce for more than the five years
preceding the filing date of … [the] application”; and
sales and advertising figures including, for the five
years from 1998 through 2003, total sales of $522.3
million, annual sales growth from $65.7 million in 2000
to $107.8 million in 2003, and advertising expenditures
in connection with the services under the mark of
$20,500 each year from 1998 through 2002, and $20,400
for 2003.

• Three essentially identical letters (from individuals
at BellSouth, Price Waterhouse Coopers and Target
Corporation) attesting to the purchase of applicant’s
services under the mark, and stating that the writer
“regard[s] this name as identifying the services of
Wells Fargo Home Mortgage … only, and not of any other
company making these or similar products.”

Certainly, in view of the highly descriptive nature of
the mark, the statement of substantially exclusive and
continuous use for a period of more than five years is not
sufficient to establish acquired distinctiveness. Applicant
states that it has used the proposed mark since at least
1983; however, the evidence and advertising figures pertain
only to the most recent several years prior to this appeal.
In fact, those figures show that sales declined from $81.2
million in 1998 to $65.7 million in 2000, before rising
slowly to $107.8 million in 2003. Advertising dollars
remained steady during the period, declining by a negligible
$100 in 2003. Applicant has provided no context for these
figures – there is no information as to what average annual
sales and advertising figures are in the mortgage lending
field. Similarly, a mere three form letters from corporate
Serial No. 76624811
12
customers, clearly authored for the signors by applicant or
its attorneys, do not establish that the proposed mark has
acquired distinctiveness among the relevant consumers,
namely, corporate employers and employees. The substantial
evidence of use by third parties of the proposed mark and
significant portions thereof indicate otherwise. Therefore,
we conclude that applicant’s Section 2(f) showing is
inadequate to establish that THE RELOCATION MORTGAGE PROGRAM
has acquired distinctiveness as a mark in connection with
the identified services.
Decision: The refusal under Section 2(e)(1) of the Act
is affirmed.