Arbitration Forums, Inc.

Trademark Trial and Appeal Board

Sep 21, 2006

No. 76583624 (T.T.A.B. Sep. 21, 2006)

Hearing:
6/14/06 Mailed: 9/21/06

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Arbitration Forums, Inc.
________

Serial No. 76583624
_______

Stefan V. Stein of Holland & Knight for Arbitration Forums,
Inc.

Brendan Regan, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______

Before Quinn, Hairston and Rogers, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Arbitration Forums, Inc.
to register the mark E-SUBRO HUB for goods and services
ultimately identified as “communication hubs, namely
electronic data exchange system to facilitate sending and
receiving electronic subrogation demands between insurance
and or self-insured companies” (in International Class 9);
“facilitating the exchange of needed information for
financial compensation via the Internet, namely electronic
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76583624
2
data exchange system to facilitate sending and receiving
electronic subrogation demands between insurance and or
self-insured companies” (in International Class 35); and
“electronic exchange of data stored in databases accessible
via telecommunication networks, namely electronic
subrogation demands between insurance and or self-insured
companies” (in International Class 38).1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1), on the ground that applicant’s mark, when
used in connection with applicant’s goods and services,
would be merely descriptive thereof.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs. An oral
hearing was held at which applicant’s counsel and the
examining attorney appeared.
Applicant concedes that “[t]he prefix ‘e’ is
recognized as a prefix for ‘electronic’ and is [sic]
denotes electronic commerce or ‘e-commerce’ conducted
through websites.” In addition, applicant states that
“[i]n the insurance industries, the word ‘subrogation’ is

1 Application Serial No. 76583624, filed March 29, 2004, based on
an allegation of a bona fide intention to use the mark in
commerce.
Ser No. 76583624
3
often shortened to simply ‘subro.’” (Appeal Brief, p. 5).
Applicant goes on to state, however, that websites for
conducting e-commerce are not known as “hubs.” Applicant
further states:
[T]he mark E-SUBRO HUB may suggest or
hint at the nature of Applicant’s goods
or services, and may suggest that they
somehow employ a communication hub, but
it does not in any clear or precise
way, serve to describe them.

A consumer encountering the mark might,
at most, guess by virtue of the
component “E-SUBRO” of the mark that
Applicant offers goods or provides some
services associated with subrogation
and that they would be done in
connection with e-commerce. The
addition of the word “HUB” to the mark
makes the composite mark significantly
more suggestive since the consumer
would merely be guessing “hub” could
potentially be referring to. (Appeal
Brief, p. 14).

Applicant also points to the inconsistency between the
examining attorney’s position herein and the one taken by a
different examining attorney handling applicant’s other two
applications to register E-SUBRO HUB logo marks.2 In those
applications, there was no finding that the E-SUBRO HUB
portion of the logo marks is merely descriptive requiring a
disclaimer. In support of its arguments, applicant
submitted excerpts of pages from its website.

2 Application Serial Nos. 76633981 and 76633987.
Ser No. 76583624
4
The examining attorney maintains that the mark as a
whole is merely descriptive of “a hub that concerns
electronic subrogation; that is an electronic subrogation
hub.” (Appeal Brief, unnumbered p. 8). The examining
attorney points to the use of the term “hub” in the Class 9
identification of goods, and that the recitations of
services in Classes 35 and 38 employ the definition of
“hub” (i.e., “an electronic data exchange system”) used by
applicant in its Class 9 identification. In support of the
refusal, the examining attorney relied upon a dictionary
definition of the word “hub,” portions of applicant’s
website, a list of “hits” for “subro” using Google’s search
engine, and truncated excerpts of articles in printed
publications wherein the term “subro” is used as a
shortened form of “subrogate” or “subrogation.”
A term is merely descriptive of goods or services,
within the meaning of Trademark Act Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. See, e.g., In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). A term need not immediately convey an idea of each
and every specific feature of the applicant’s goods or
Ser No. 76583624
5
services in order to be considered merely descriptive; it
is enough that the term describes one significant
attribute, function or property of the goods or services.
See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re
MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
is being used or is intended to be used on or in connection
with those goods or services, and the possible significance
that the term would have to the average purchaser of the
goods or services because of the manner of its use or
intended use. That a term may have other meanings in
different contexts is not controlling. In re Polo
International Inc., 51 USPQ2d 1061 (TTAB 1999); and In re
Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). It is
settled that:
....the question of whether a mark is
merely descriptive must be determined
not in the abstract, that is, not by
asking whether one can guess, from the
mark itself, considered in a vacuum,
what the goods or services are, but
rather in relation to the goods or
services for which registration is
sought, that is, by asking whether,
when the mark is seen on the goods or
services, it immediately conveys
information about their nature.

Ser No. 76583624
6
In re Patent & Trademark Services Inc., 49 USPQ2d 1537,
1539 (TTAB 1998).
Applicant, on its website, described its goods and
services as follows:
E-Subro Hub has been developed to help
insurance carriers increase recovery,
lower file handling and settlement
expenses, reduce loss costs, shorten
cycle times and improve customer
service.

With E-Subro Hub, carriers can
electronically send and receive
subrogation demands, attach supporting
documents, route demands to file
handlers, negotiate and much more.

In a press release on the website, applicant described its
services in the following manner:
The web-based subrogation technology
will enable users to send and receive
subrogation demands electronically,
attach supporting documents (estimates,
bills, photos, police reports, etc.)
automatically route demands to file
handlers, negotiate online and view and
download online reports. The system
will provide a flexible electronic link
regardless of the platform operated by
the user.

The prefix “E-” conveys the recognized meaning of
“electronic.” See In re Styleclick.com Inc., 57 USPQ2d
1445, 1448 (TTAB 2000). As noted earlier, applicant
acknowledges that “[t]he prefix ‘e’ is recognized as a
prefix for ‘electronic’ and is [sic] often denotes
Ser No. 76583624
7
electronic commerce or ‘e-commerce’ conducted through
websites.”
The record includes numerous examples from applicant’s
website, as well as excerpts from printed publications,
showing that “subro” is a commonly used and recognized
shortened form of the term “subrogation.” Indeed,
applicant acknowledges that “[i]n the insurance industries,
the word ‘subrogation’ is often shortened to simply
‘subro.’”
In view of the above, there is no doubt that “E-SUBRO”
means “electronic subrogation,” and that relevant
purchasers in the insurance industry would understand it as
such. Thus, the term “E-SUBRO” is merely descriptive for
the type of goods and services produced by applicant.
Accordingly, the merits of this appeal rest, in large
part, on the meaning of “HUB” in applicant’s mark. The
only evidence of record bearing on the meaning of “hub” is
a dictionary definition submitted by the examining
attorney. The term “hub” is defined as follows: “the
central part of a car wheel (or fan or propeller etc.)
through which the shaft or axle passes; a center of
activity or interest or commerce or transportation; a focal
point around which events revolve; “the playground is the
hub of parental supervision”; “the airport is the economic
Ser No. 76583624
8
hub of the area.” Webster’s Revised Unabridged Dictionary
(1998). We further take judicial notice of the meaning of
“hub” as set forth in a computer dictionary: “a central
connecting device in a network that joins communications
lines together in a star configuration.” The Computer
Glossary (7th ed. 1995).
With respect to the goods listed in applicant’s Class
9 identification, we note, of course, applicant’s use of
the terminology “communication hubs.” Further, in response
to the examining attorney’s inquiry as to whether
applicant’s services included an “electronic hub,”
applicant answered “no.” Applicant went on, however, to
state the following: “Applicant’s services include a
communication hub to facilitate sending and receiving
electronic subrogation demands between insurance and/or
self-insured companies. The term ‘hub’ does not have any
significance in applicant’s industry or as applied to
Applicant’s goods or services.” (Response, November 21,
2005).
Given the use of the specific term “hub” in the Class
9 identification of goods, we are hard pressed to not find
the term merely descriptive for goods identified as
“communication hubs.” Based on the use of the term in the
identification of goods, and the meaning of “hub” in the
Ser No. 76583624
9
context of computer hardware, we find that the term is
merely descriptive of the “communication hubs” listed in
the identification.
We have little sympathy for applicant’s statement that
the examining attorney suggested the identification of
goods, and that the term “hub” would not otherwise have
been used.3 The simple fact remains that applicant was not
forced to accept the proposed terminology, but rather
applicant could have declined the examining attorney’s
suggestion. After accepting the suggested terminology,
applicant has little basis upon which to blame the
examining attorney for its predicament.
Accordingly, we find that the applied-for mark, E-
SUBRO HUB, is, in its entirety, merely descriptive for the
goods identified in Class 9.
With respect to the services listed in Classes 35 and
38, we find that the term “hub” is only suggestive when
used in connection with the identified services. The term
suggests that applicant’s services provide a center of

3 After our review of the excerpts of applicant’s website, as
well as hearing the responses of counsel to the Board’s inquiries
at the oral hearing, we have doubts about whether applicant’s
intended use of the mark will encompass sales of “communication
hubs,” as goods in trade, rather than merely use of such goods in
rendering its services. In any event, the involved application
is based on an intention to use, and no amendment to allege use
was filed; thus, there are no specimens of use showing the mark
as used on a product.
Ser No. 76583624
10
activity around which electronic subrogation revolves. In
this sense, the term is not merely descriptive, but rather
only suggestive. Thus, while “E-SUBRO” is merely
descriptive for applicant’s services, the term “HUB” is
not. Accordingly, the mark as a whole is not merely
descriptive; however, in order to be registrable, the term
“E-SUBRO” must be disclaimed apart from the mark.
In reaching this result, we acknowledge that it is
somewhat inconsistent with the USPTO’s approach taken in
applicant’s co-pending applications. Although uniform
treatment under the statute is an administrative goal, our
task in this appeal is to determine, based on the record
before us, whether applicant’s particular mark sought to be
registered is merely descriptive. Moreover, the Board is
not bound by the prior actions of either of the examining
attorneys examining applicant’s applications.
Decision: The refusal to register in all classes is
affirmed. However, with respect to Classes 35 and 38, this
decision will be set aside if applicant, within thirty days
of the date hereof, files a disclaimer of “E-SUBRO” apart
from the mark.