GMAC Mortgage Corporation

Trademark Trial and Appeal Board

Nov 23, 2005

No. 76551540 (T.T.A.B. Nov. 23, 2005)

Mailed:
23 November 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re GMAC Mortgage Corporation
________

Serial No. 76551540
_______

Sherry H. Flax of Saul Ewing LLP for GMAC Mortgage
Corporation.

Douglas M. Lee, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Bucher, Drost, and Kuhlke, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On October 16, 2003, GMAC Mortgage Corporation
(applicant) applied to register the mark EQUITY REWARDS, in
standard character form, on the Principal Register for
"credit card services” in Class 36. The application is
based on applicant’s allegation of its bona fide intention
to use the mark in commerce. Applicant has disclaimed the
term “Equity.”
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 76551540
2
The examining attorney1 refused to register applicant’s
mark on the ground that the mark would be merely
descriptive under Section 2(e)(1) of the Trademark Act, 15
U.S.C. § 1052(e)(1), if it were used with applicant’s
services. The examining attorney maintains that
applicant’s mark is merely descriptive because: “the
proposed mark EQUITY REWARDS merely describes a feature of
applicant’s credit card services, namely, a credit card
featuring a rewards program linked to the cardholder’s home
mortgage loan. In particular, the cardholder can earn
‘points’ for using the card which in turn can be used to
pay down his mortgage balance by applying the ‘points’
directly to the mortgage principal (the outstanding balance
of the mortgage) which increases the cardholder’s equity in
his home.” Brief at unnumbered p. 3.
Applicant, in turn, argues that the mark has a variety
of meanings, the mark does not immediately describe its
services, and there are third-party registrations in which
the term “rewards” has not been disclaimed.
After the examining attorney made the refusal final,
applicant appealed to this board.

1 The present examining attorney was not the original examining
attorney in the case.
Ser. No. 76551540
3
Our principal reviewing court in In re MBNA America
Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir.
2003) discussed the issue of when a mark is merely
descriptive.
A mark is merely descriptive if it immediately
conveys information concerning a quality or
characteristic of the product or service. [In re
Nett Designs, 236 F.3d 1297, 1341, 57 USPQ2d 1564
(Fed. Cir. 1999)]. The perception of the relevant
purchasing public sets the standard for determining
descriptiveness. Id. Thus, a mark is merely
descriptive if the ultimate consumers immediately
associate it with a quality or characteristic of the
product or service. On the other hand, “if a mark
requires imagination, thought, and perception to
arrive at the qualities or characteristics of the
goods [or services], then the mark is suggestive.”
Id.

It is important that we view the mark that is alleged
to be descriptive in the context of the goods or services
in the identification in the application. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978) (“Appellant’s abstract test is deficient – not only
in denying consideration of evidence of the advertising
materials directed to its goods, but in failing to require
consideration of its mark ‘when applied to the goods’ as
required by statute”).
In this case, applicant’s services are identified as
“credit card services.” The press release concerning
applicant’s credit card describes the card as follows:
Ser. No. 76551540
4
GMAC Mortgage Equity Rewards MasterCard, Helps
Cardholders Pay Down Faster

GMAC Mortgage announced the GMAC Mortgage Equity
Rewards MasterCard(SM), a no-annual-fee Platinum Plus
credit card, issued by MBNA America Bank, N.A., that
helps cardholders pay down their mortgage balance with
GMAC Mortgage by applying Equity Rewards directly to
mortgage principal.

Cardholders earn one point for every dollar in net
retail purchases charged to the card. Each time a
cardholder accumulates 2,500, $25 is credited
automatically to the cardholder's mortgage principal
with GMAC mortgage.

The website Cardweb.com describes applicant’s card as
follows:
The second rewards credit card linked [to] a home
mortgage was introduced this week by GMAC Mortgage and
MBNA America Bank… The new GMAC/MBNA card helps
cardholders pay down their mortgage balance with GMAC
Mortgage by applying the “equity rewards” directly to
the mortgage principal.

“Equity” is defined as “the residual value of a
business or property beyond any mortgage thereon and
liability therein.”2 By reducing the “mortgage balance,” a
property owner is increasing the owner’s equity in the
property. Therefore, the term “Equity” exactly describes a
credit card that reduces the mortgage’s value and increases
a cardholder’s equity in real property.

2 We take judicial notice of the definitions in the examining
attorney’s brief. 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. No. 76551540
5
The next question is whether the term “rewards” is
merely descriptive of credit card services. The examining
attorney maintains that the word “‘rewards’ by itself is
commonly used in the credit card industry to refer to a
benefit in which cardholders obtain cash, travel,
merchandise, and/or other types of privileges through use
of the credit card.” Brief at unnumbered p. 4. The
evidence supports the examining attorney’s position. Even
the MBNA website, which is a partner with applicant, lists
a category as “Choose Your Rewards – Explore a world of
immense value, convenience, and choice with the only
rewards program that lets you choose the rewards that are
right for you.”
Under the heading “Earn Valuable Points with Shopping
Rewards – Do the math with shopping reward credit cards.
For every dollar you spend, you accumulate points that
multiply into future purchases,” some of the following
cards are listed (emphasis added):
WorldPoints (SM)
Explore a world of immense value, convenience, and
choice with the only rewards program that lets you
choose the rewards that are right for you – including
cash, travel, great merchandise, and gift
certificates.

Bass Pro Shops® Outdoor Rewards
Earn 1% rewards for all of your everyday purchases…

Amtrak Guest Rewards®
Ser. No. 76551540
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Earn points toward FREE Amtrak® travel, hotel stays,
rental car rewards, airline miles and retail gift
certificates…

Furthermore, the site has separate categories under
“Select a Card” entitled “Shopping Rewards” and “Travel
Rewards.”
The Cardweb.com site begins with a box that asks:
Looking for a particular type of card? Click on any
of the card types listed below to view CardWeb.com’s®
monthly card surveys.

Click Here For Our Featured Cards
· Low Rate (ranked by APR)
· Low into/Promotional Rate
· No Annual-Fee
· Premium (gold, platinum, etc.)
· Rewards (gas, travel, cash-back, etc.)

The site then asks “Are you looking for a card that
offers rewards?”
The site then goes to a page entitled “Reward Cards
Survey” and lists numerous cards by category. One of the
categories is “Reward Type” and the various rewards are
listed as “cash back,” “other,” “airline” and “travel.”
The BankOne site under credit cards has a category
entitled “Choose rewards – Every purchase you make gets you
closer to a dream vacation, cool merchandise or quick
cash.”
The Visa website has a webpage that lists the benefits
of its credit cards. Some of these benefits are identified
Ser. No. 76551540
7
as: Zero Liability, Lost/Stolen Card Reporting, Roadside
Dispatch, and Rewards Program.
The examining attorney also included NEXIS printouts
that show the term “reward(s)” used in association with
credit cards.
[T]here are advantages such as gaining reward points
with their credit card companies.
Omaha World Herald, March 30, 2004.

We’re talking, of course, about credit cards. Reward
credit cards, specifically – those plastic passes that
offer a plethora of perks, prizes and privileges.
Wichita Eagle, March 28, 2004.

I pay my bills by credit card because of the
convenience and rewards…
Plain Dealer, March 15, 2004.

MONEY: Are “reward” credit cards actually worth it?
Time, March 15, 2004.

The evidence shows that the term “rewards” used in
association with credit card services that provide a
benefit to cardholders for using the credit card would be
described as a “reward” card. Therefore, the term
“rewards” is merely descriptive of a credit card that has a
“rewards program” associated with it.
We also note that the examining attorney has submitted
several registrations that involve credit card services
that have disclaimed the term “rewards.” See, e.g.
Registration No. 2,478,020 (SMARTRAK REWARDS for credit
card services offering travel incentives, “Rewards”
Ser. No. 76551540
8
disclaimed); No. 2,600,459 (PRIME REWARDS for credit card
services featuring a rewards program in which points are
accumulated and redeemable for purchases of, or discounts
on, various goods or services; “Rewards” disclaimed); No.
2,616,952 (CHASE TRAVEL REWARDS for credit card services
involving the awarding of points for discounts on travel
related services; “Travel Rewards” disclaimed); No.
2,578,245 (USAA CASH REWARDS for credit card services;
“Cash Rewards” disclaimed), and No. 2,788,641 (MYPOINTS
REWARDS for credit card services; “rewards” disclaimed).
Applicant has responded to this evidence by submitting
several registrations that show credit card services where
the term “Rewards” has not been disclaimed. See, e.g.,
Registration No. 2,411,912 (DEBIT REWARDS for debit and
credit card services; “Debit” disclaimed); No. 2,099,787
(MEMBERSHIP REWARDS for charge card services); and No.
2,025,900 (CHECK CARD REWARDS for debit card and credit
card services; “Check Card” disclaimed).3 The examining
attorney’s and applicant’s registrations do not clearly
show whether the term “rewards” is descriptive for credit

3 Applicant also refers to a cancelled registration for EQUITY
REWARDS and star design for mortgage banking and mortgage lending
services. First, the services in the cancelled registrations are
different. Second, “a canceled registration does not provide
constructive notice of anything.” Action Temporary Services Inc.
v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed.
Cir. 1989).
Ser. No. 76551540
9
card services. However, we point out that even “if some
prior registrations had some characteristics similar to
[applicant’s mark], 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). Clearly, the path to overcoming a
descriptiveness refusal is not simply a matter of finding a
few registrations where a term has not been disclaimed and
arguing for a similar result. Here, the evidence submitted
by the examining attorney demonstrates that, at least more
recently, the term “Rewards” has come to describe credit
card that have a program to reward people for using the
card. The fact that the Office did not require a
disclaimer of the term “rewards” in several registrations
the Office issued in 1996, 1997, and 1998 does not preclude
the Office from forever finding the term descriptive based
on new evidence in 2004.
Applicant also argues that the examining attorney
“attempts to create a new standard for descriptiveness –
one on which the appraiser of the mark is already aware of
the nature of the services and then concludes that it was
described by the mark all along.” Reply Brief at 3.
Applicant apparently relies on the fact that there are also
credit cards that are associated with the equity in real
Ser. No. 76551540
10
estate. See, e.g., Chicago Sun-Times, November 14, 2003
(“Bank of America is testing a rewards that will allow
customers who use a credit card to tap their home equity to
earn points that can be used for cookware, restaurant
meals, golf clubs and other products”). As we noted
earlier, we must consider the mark in the context in which
it is used. This is not a new standard for descriptiveness
but the traditional Abcor approach.
Similarly, that applicant can take the dictionary
definitions of the individual words in the term and
come up with a meaning that makes no sense in
connection with the services recited in the
application does not mandate a different conclusion on
the issue of mere descriptiveness. As stated above,
the determination of descriptiveness is made in the
context of the identified services, and the meaning of
“ETHNIC ACCENTS” in connection with applicant's
services is clearly that of home furnishings or
decorations relating to various ethnicities.

In re Ethnic Home Lifestyles Corp., 70 USPQ2d 1156, 1159
(TTAB 2003). See also In re Time Solutions Inc., 33 USPQ2d
1156, 1158 (TTAB 1994).
When consumers encounter applicant's mark, YOUR HEALTH
INSURANCE MANAGER, used in the context of applicant's
advertising, which describes applicant's goods as "new
PC software to manage your medical records and health
insurance" and lists the various tasks performed by
the software programs, as recited above, we have no
doubt that the mark will immediately convey to them
information concerning a significant feature or
function of applicant's programs, namely, that they
manage, i.e., handle with skill, personal health
insurance matters.

Ser. No. 76551540
11
The mark must be viewed in the context of the goods or
services in order to evaluate properly the question of
descriptiveness. For example, the term “hot” can describe
food that is extremely warm or food that is spicy. Without
considering the context, it would not be clear whether and
why the term “hot” is descriptive of a food product. For
credit cards, without looking at the context, it would not
be clear whether the term “car” used in association with a
rewards program described a card that provided rental car
rewards or assisted a future car buyer in obtaining points
that could be applied as part of a down payment.
Finally, we must consider the mark EQUITY REWARDS as a
whole. We must also view the mark in association with
applicant’s credit card services. Applicant’s credit card
services involve a reward program that involves paying a
credit cardholder’s mortgage principal that increases the
cardholder’s equity. This fact would be clear to any
prospective purchaser reading the press release for
applicant’s credit card. The term EQUITY REWARDS would
immediately describe the fact that applicant’s credit card
services has a reward program that benefits a cardholder’s
equity. Therefore, the mark is merely descriptive of
applicant’s services.
Ser. No. 76551540
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Decision: The refusal to register under Section
2(e)(1) of the Trademark Act is affirmed.