Chared Services Consortium, LLC

Trademark Trial and Appeal Board

Apr 22, 2009

No. 77270615 (T.T.A.B. Apr. 22, 2009)

Mailed:
22 April 2009
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Chared Services Consortium, LLC
________

Serial No. 77270615
_______

Sherry H. Flax of Saul Ewing LLP for Chared Services
Consortium, LLC.

Andrea R. Hack, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Hairston, Drost, and Taylor, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On September 4, 2007, applicant, Chared1 Services
Consortium, LLC applied to register the mark COMPENSATING
TIMES (in standard character form) on the Principal
Register for: “Newsletters in the field of insurance,
workers compensation, indemnity, and self-insured employer

1 While the application clearly identifies the applicant as
“Chared Services Consortium, LLC,” it is possible that this is a
typographical error and that applicant is actually “Shared
Services Consortium, LLC.”
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Ser. No. 77270615
2
liability management” in Class 16. The application (Serial
No. 77270615) alleges a date of first use anywhere and in
commerce of September 1, 2006. Applicant has disclaimed
the term “Times.” The examining attorney has refused
registration on the ground that the term COMPENSATING TIMES
is merely descriptive of applicant’s goods. 15 U.S.C.
§ 1052(e)(1). The examining attorney argues that the term
“‘COMPENSATING’ is widely used in the insurance industry to
refer to payments made to make the insure whole. In
relation to applicant’s goods, it is clear from the
evidence that ‘COMPENSATING TIMES’ is descriptive.” Brief
at unnumbered p. 8.
A summary of the examining attorney’s evidence is set
out below:
Insurance – money paid for insurance, or as
compensation under an insurance policy
Compensate – to pay (someone) money in exchange for
work done, for something lost or damaged, or for some
inconvenience
www.askoxford.com

How does insurance compensate me for a loss?
An insurance policy compensates you against the
financial impact that can arise following loss,
damage, or destruction of your property…
www.hsbc.co.in

Finally, existing sources do not provide factors for
estimating how much motor vehicle insurance pays
annually to compensate bodily injury versus property
damage.
www.nhtsa.dot.gov

Ser. No. 77270615
3
This overview provides information about how much
Chubb U.S. insurers currently compensate their
producers.
www.chubb.com

The Workers’ Compensation System was established by
the Vermont Legislature in 1915 to compensate and
protect employees who suffer personal injury by
accidents arising out of and in the course of
employment…
www.labor.vermont.gov

Where the insured amount, compensation, and a time
limit for payment are defined in the insurance
contract, the insurer shall compensate or make payment
in accordance with the stipulations therein.
www.chinadaily.com

Accident and Health (Sickness) Insurance
A form of insurance compensating an individual for
loss as a result of an accident or illness.
www.wawanesa.com

In addition, the thesaurus at the online site
www.thefreedictionary.com contains the following entry
under compensate: “underwrite, insure, cover – protect by
insurance. This insurance won’t cover this.”
Applicant’s specimen indicates that the “University &
College Insurance Consortium2 is a licensed non-profit trust
that provides comprehensive workers compensation and
safety/risk control services.” Finally, the examining
attorney also submitted evidence to support the requirement
for a disclaimer of the term “Times” for newsletters.

2 Compensating Times is identified as a “quarterly publication
produced by the University & College Insurance Consortium.”
Ser. No. 77270615
4
In its response to the examining attorney’s evidence
and arguments, applicant argues that the examining attorney
“has provided no evidence that a consumer who encounters
the term COMPENSATING will immediately understand that
Applicant’s goods are newsletters in the fields of
insurance, workers compensation, indemnity, etc.” Brief at
1. “COMPENSATING is the present participle, that relates
to making payment. But ‘to pay’ does not even suggest the
subject of insurance, much less describe it.” Brief at 2.
Applicant also submitted copies of five registrations for
COMPENSATE for “computer software program for workers’
compensation claims management” (No. 1934799); AD-COMP for
“insurance administration in the field of workers’
compensation liability” (No. 3023571); @COMP for “workers’
compensation insurance services…” (No. 2655554); COMP-LINK
for “computer programs … for accessing information from and
providing information to a database dealing with workers’
compensation, medical and insurance claims” (No. 2320491);
and SMART-COMP for “computer software for … rating and
analyzing workman’s compensation claims” (No. 2371938).
After the examining attorney made the refusal final,
applicant filed a request for reconsideration and appealed
to this board.
Ser. No. 77270615
5
“A term is merely descriptive if it immediately
conveys knowledge of a quality, feature, function, or
characteristic of the goods or services with which it is
used.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007). See also In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); In re
Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505,
507 (CCPA 1980). Courts have long held that to be “merely
descriptive,” a term need only describe a single
significant quality or property of the goods. Gyulay, 3
USPQ2d at 1009; Meehanite Metal Corp. v. International
Nickel Co., 262 F.2d 806, 120 USPQ 293, 294 (CCPA 1959).
“Descriptiveness of a mark is not considered in the
abstract. Rather, it is considered in relation to the
particular goods for which registration is sought, the
context in which it is being used, and the possible
significance that the term would have to the average
purchaser of the goods because of the manner of its use or
intended use.” Bayer, 82 USPQ2d at 1831. See also In re
Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978). “Evidence of the public’s understanding of the term
may be obtained from any competent source, such as
purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers, and other
Ser. No. 77270615
6
publications.” In re Merrill Lynch, Pierce, Fenner, and
Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir.
1987).
Here, it is clear that the term “compensating” is a
term that has a readily understood meaning in the insurance
field. As the record indicates, the purpose of insurance
is to compensate the insured for a loss. One of the
specific subjects of applicant’s newsletter is “workers
compensation.” Therefore, the term “compensating”
describes a subject of applicant’s newsletter inasmuch as
the newsletter would deal with compensating people for
their loss. See, e.g., Specimen (“We are now conducting
our claims operations…”). Furthermore, applicant has
disclaimed the term “Times” and the examining attorney has
included evidence that the term “Times” has been disclaimed
for publications. See Registration Nos. 2093228, 2138550,
2138061, 2373647, and 2617963. Accord Times Newspapers
Ltd. v. Times Publishing Co., 25 USPQ2d 1835, 1841-42 (M.D.
Fla. 1993) (“While this Court is not empowered to label the
word ‘Times’ generic, it cannot be categorized as unique or
fanciful, by any stretch of the imagination. In any event,
it must be kept in mind that a trademark’s strength is
acquired and retained through actual use”). Therefore, the
Ser. No. 77270615
7
individual terms have a descriptive connotation when
applied to applicant’s newsletters.
The next question becomes whether the combination of
the terms “Compensating” and “Times” is merely descriptive.
In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1030
(TTAB 2007) (“Finally, in determining whether a mark is
merely descriptive, we must consider the mark in its
entirety”). Even novel ways of referring to a product may
nonetheless be merely descriptive. Clairol, Inc. v. Roux
Distributing Co., Inc., 280 F.2d 863, 126 USPQ 397, 398
(CCPA 1960):
The record shows that “hair color bath” tells the
potential purchasers only what the goods are, what
their function is, what their characteristics are and
what their use is. Even though “color bath” may have
been a novel way of describing a liquid for coloring
hair, the words were, as used by appellee,
nevertheless descriptive of its hair coloring liquid
at the time when appellant, to more fully describe the
goods, added the common word “hair” thereto. The
resultant expression is nothing but the normal use of
the English language. The same merchandise may, and
often does, have more than one generic name.

One factor we take into consideration is the fact that many
of applicant’s readers and subscribers would be
sophisticated since they would be associated with self-
insured employer liability management plans and workers
compensation plans. See, e.g., Specimen (“To Employ or to
Contract … That is the Question.’ Our institutions are
Ser. No. 77270615
8
frequently faced with the decision as to whether a
recognized function should be performed by an employee…”).
These subscribers would be well aware that, as the evidence
indicates, the term “compensating” is not a general or
vague such as “pay,” which would be common to many
businesses. Instead, they would realize that the term is a
term that exactly describes the point of the workers
compensation or self-insured plans, i.e., to compensate
employees and others for losses and/or injuries.
When we view the term COMPENSATING TIMES in relation
to applicant’s newsletter, we conclude that there is
nothing incongruous about the term. See In re Gould Paper
Corp., 834 F.2d 1017, 5 USPQ2d 1017 (Fed. Cir. 1987)
(SCREENWIPE generic for a wipe for cleaning television and
computer screens). As we discussed earlier, we must
consider the question of descriptiveness by viewing the
mark in relation to the goods, which in this case are
newsletters about insurance, workers compensation,
indemnity, and self-insured employer liability management.
Under these circumstances, applicant’s mark immediately
informs prospective purchasers of a feature or
characteristic of the goods, i.e., that they are
publications and the subject matter concerns, inter alia,
workers’ compensation programs and self-insurance
Ser. No. 77270615
9
compensation. See In re Kronholm, 230 USPQ 136, 137 (TTAB
1986) (“It is clear that applicant's cable television
network services will have, as their subject matter and
intended audience, colleges and universities in this
country. The term sought to be registered [COLLEGE CABLE
NETWORK] comprises a combination of descriptive words which
lose no descriptive significance in the expression, one
which aptly describes a significant feature or
characteristic of applicant’s services”). Applicant has
not pointed to any other meaning or double entendre that
the mark COMPENSATING TIMES can have other than to describe
a newsletter about workers compensation and other insurance
compensation issues. Nor are we aware of any. This is not
a case such as In re Colonial Stores Inc., 394 F.2d 549,
157 USPQ 382, 385 (CCPA 1968) where the CCPA held that “the
term ‘sugar’ and ‘spice’ used individually are well known
and well understood by the purchasing public. However,
when combined and used on bakery goods, we think they may
function as an indication of more than a mere description
of the ingredients of the goods on which the mark is used
and, on the record made below, are not ‘merely
descriptive.’”
Therefore, we find that the examining attorney has
made out a prima facie case that applicant’s term
Ser. No. 77270615
10
COMPENSATING TIMES is merely descriptive of the identified
newsletters and applicant has not rebutted the examining
attorney’s showing. Applicant’s third-party registrations
are not persuasive since they are mostly unitary marks
involving the term “Comp” for different goods or services.
Furthermore, even “if some prior registrations had some
characteristics similar to Nett Designs’ application, the
PTO's allowance of such prior registrations does not bind
the Board or this court.” In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
Therefore, we conclude that applicant’s mark is merely
descriptive.
Decision: The refusal to register applicant’s mark
COMPENSATING TIMES under Section 2(e)(1) of the Trademark
Act is affirmed.