Guaranteed Rate, Inc.

Trademark Trial and Appeal Board

Jul 30, 2020

87054820 (T.T.A.B. Jul. 30, 2020)

Mailed: July 30, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Guaranteed Rate, Inc.
_____

Application Serial No. 87054820
Application Serial No. 87054849
_____

Rebecca Liebowitz of Venable LLP, for Guaranteed Rate, Inc.

Andrea P. Butler, Trademark Examining Attorney, Law Office 124,
Lydia Belzer, Managing Attorney.
_____

Before Bergsman, Lynch and Larkin, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

The issue addressed by this decision is whether Applicant has proven that the
words “GUARANTEED RATE” have acquired distinctiveness.
Guaranteed Rate, Inc. (Applicant) seeks registration on the Principal Register of
the marks listed below both for “financial services, namely, mortgage refinancing;
mortgage banking; mortgage banking services, namely, origination, acquisition,
servicing, securitization and brokerage of mortgage loans; mortgage brokerage;
mortgage lending; mortgage refinancing,” in Class 36 (hereafter collectively
“mortgage lending services”):
This Opinion Is a
Precedent of the TTAB
Precedent of the TTAB
PrePrecedent of the TTAB
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1. GUARANTEED RATE (in standard characters) under the provisions of Section
2(f) of the Trademark Act, 15 U.S.C. § 1052(f);1 and
2. GUARANTEED RATE and design shown below:2

The second application includes the following description of the mark:
The mark consists of the word “GUARANTEED” in grey
and “RATE” in white, where the word “RATE” appears on
a red arrow pointing down.
The color(s) grey, red and white is/are claimed as a feature
of the mark.
Applicant claims that the term “Guaranteed Rate” in the second application has
become distinctive of its described services pursuant to Section 2(f) of the Trademark
Act.
Applicant claims ownership of the registered marks listed below:
1. Registration No. 3144843 for the mark GUARANTEED RATE and design,
reproduced below, for “mortgage banking and mortgage brokerage services,” in
Class 36:3

1 Application Serial No. 87054820 filed May 31, 2016, under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), claiming first use anywhere and first use in commerce as of March
2000.
2 Application Serial No. 87054849 filed May 31, 2016, under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), claiming first use anywhere and first use in commerce as of March
2000.
3 Registered September 19, 2006; renewed.
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The description of the mark reads as follows:
Color is not claimed as a feature of the mark. The mark
consists of the words “guaranteed rate” together with a
fanciful downward arrow design.
Applicant disclaimed the exclusive right to use “Guaranteed Rate.”
2. Reg. No. 5470704 for the mark GUARANTEED RATE AFFINITY (in standard
character form) for “financial services, namely, mortgage refinancing;
mortgage banking; mortgage banking services, namely, origination,
acquisition, servicing, securitization and brokerage of mortgage loans;
mortgage brokerage; mortgage lending; mortgage refinancing,” in Class 36.4
Applicant claimed that “Guaranteed Rate” has acquired distinctiveness under
Section 2(f) of the Trademark Act; and
3. Registration No. 5470770 for the mark GUARANTEED RATE AFFINITY and
design, reproduced below, for “financial services, namely, mortgage
refinancing; mortgage banking; mortgage banking services, namely,
origination, acquisition, servicing, securitization and brokerage of mortgage

4 Registered May 15, 2018.
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loans; mortgage brokerage; mortgage lending; mortgage refinancing,” in Class
36.5

The description of the mark reads as follows:
The color(s) black, white and red is/are claimed as a feature
of the mark. The mark consists of the word
“GUARANTEED” in black and “RATE” in white, where the
word “RATE” appears on a red arrow pointing down, and
the word “AFFINITY” appears in white and black below
“GUARANTEED” and the A in “AFFINITY” appears in a
red rectangle.
Applicant claimed that “Guaranteed Rate” has acquired distinctiveness under
Section 2(f) of the Trademark Act.
The Examining Attorney refused registration of the marks in the involved
applications under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on
the ground that the term GUARANTEED RATE is merely descriptive and must be
disclaimed in the composite mark, and Applicant’s claim of acquired distinctiveness
is insufficient to support registration as to either mark. In addition, the Examining
Attorney refused to register Applicant’s marks on the ground that the term
GUARANTEED RATE in the applied-for marks fails to function as a mark because
it is merely informational. Sections 1, 2, 3, and 45 of the Trademark Act, 15 U.S.C.
§§ 1051-1053, 1127.

5 Registered May 15, 2018.
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We consolidate the appeals in these applications because they share common
issues of fact and law. See In re S. Malhotra & Co. AG, 128 USPQ2d 1100, 1102 (TTAB
2018); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(TBMP) § 1214 (2020). Citations to the record are to the file history of Application
Serial No. 87054820 unless otherwise indicated.6
In these appeals, Applicant has conceded that GUARANTEED RATE is
descriptive by claiming that it has acquired distinctiveness as its service mark. See
Yamaha Int’l Corp. v. Hoshino Gakki Co., 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.”). Applicant bears the burden to establish
acquired distinctiveness, id. at 1006, and the Examining Attorney contends that the
Section 2(f) showing is insufficient.
To establish that a term has acquired distinctiveness, “an applicant must show
that in the minds of the public, the primary significance of a product feature or term
is to identify the source of the product rather than the product itself.” See In re La.
Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1265 (Fed. Cir. 2015)
(quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d

6 References to the briefs, motions and orders on appeal are to the Board’s TTABVUE docket
system. Citations to the examination record refer to the Trademark Office’s online
Trademark Status & Document Retrieval system (TSDR), by page number. All citations to
the documents contained in the TSDR database are to the downloadable .pdf version of the
documents.
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1713, 1729 (Fed. Cir. 2012)). To meet this burden, an applicant may offer three basic
types of evidence:
1. A claim of ownership of one or more active prior registrations on the Principal
Register of the same mark for goods or services that are sufficiently similar to
those identified in the pending application. Trademark Rule 2.41(a)(1), 37
C.F.R. § 2.41(a)(1).
2. A verified statement that the mark has become distinctive of the applicant’s
goods or services by reason of the applicant’s substantially exclusive and
continuous use of the mark in commerce for five years before the date on which
the claim of distinctiveness is made. Trademark Rule 2.41(a)(2), 37 C.F.R.
§ 2.41(a)(2).
3. Other appropriate evidence of acquired distinctiveness. Trademark Rule
2.41(a)(3), 27 C.F.R. § 2.41(a)(3).
The applicant may submit one or any combination of these types of evidence.
Depending on the nature of the mark and the facts in the record, the examining
attorney may determine that a claim of ownership of a prior registration(s) or a claim
of five years’ substantially exclusive and continuous use in commerce is insufficient
to establish a prima facie case of acquired distinctiveness.7 In which case, the
applicant may then submit additional other evidence of acquired distinctiveness.

7 Under the statute, the Director is not required to accept these claims and has discretion to
require the applicant to submit other evidence to show an applicant’s mark has become
distinctive. See Section 2(f) (stating that “[t]he Director may accept as prima facie evidence
that the mark has become distinctive, as used on or in connection with the applicant’s goods
in commerce, proof of substantially exclusive and continuous use thereof as a mark by the
applicant in commerce for the five years before the date on which the claim of distinctiveness
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Our ultimate Section 2(f) analysis of acquired distinctiveness and determination
in this case is based on all of the evidence considered as a whole.
[T]he considerations to be assessed in determining whether
a mark has acquired secondary meaning can be described
by the following six factors: (1) association of the [mark]
with a particular source by actual purchasers (typically
measured by customer surveys); (2) length, degree, and
exclusivity of use; (3) amount and manner of advertising;
(4) amount of sales and number of customers;
(5) intentional copying; and (6) unsolicited media coverage
of the product embodying the mark.
In re Snowizard, Inc., 129 USPQ2d 1001, 1005 (TTAB 2018) (quoting Converse, Inc.
v. Int’l Trade Comm’n, 907 F.3d 1361, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018)). “All
six factors are to be weighed together in determining the existence of secondary
meaning.” Converse, 128 USPQ2d at 1546.
To assess Applicant’s burden in showing acquired distinctiveness, we must
determine the degree of descriptiveness of GUARANTEED RATE. In re Virtual
Indep. Paralegals, LLC, 2019 USPQ2d 111512, *10 (TTAB 2019) (citing Royal Crown
Cola Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1048 (Fed. Cir. 2018)).
We find that the term “GUARANTEED RATE” is highly descriptive when used in
connection with mortgage lending services because it immediately conveys a feature
of the services (i.e., a mortgage rate that will not change). In fact, in our view, the
term “guaranteed rate” rises to the level of being a key aspect of the services. Cf.

is made”) (emphasis added); see also La. Fish Fry, 116 USPQ2d at 1265 (“Although Section
2(f) of the Lanham Act, 15 U.S.C. § 1052(f), provides that the PTO may accept five years of
‘substantially exclusive and continuous’ use as prima facie evidence of acquired
distinctiveness, the statute does not require the PTO to do so.”).
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Royal Crown Cola v. Coca-Cola, 127 USPQ2d at 1047 (“The Board therefore must
consider whether ZERO is generic because it refers to a key aspect of at least a sub-
group or type of the claimed beverage goods.”).8
The Examining Attorney introduced evidence to prove that GUARANTEED RATE
is merely descriptive and has not acquired distinctiveness in the form of dictionary
definitions of the component words,9 and third-party uses of “guaranteed rate,” and
similar terms such as “guaranteed mortgage rate,”10 and “guaranteed interest rate.”11

8 Words that identify a key aspect of a service may indicate that a term is generic. Real Foods
Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1379 (Fed. Cir. 2018)
(“[A] term can be generic for a genus of goods or services if the relevant public understands
the term to refer to a key aspect of that genus.’), quoting Royal Crown, 127 USPQ2d at 1046
(ellipsis, internal quotation marks, and citation omitted); In re Cordua Rests., Inc., 823 F.3d
594, 118 USPQ2d 1632, 1637 (Fed. Cir. 2016) (same). But the Examining Attorney here did
not make a genericness refusal. Nevertheless, we consider the fact that there is potential
evidence of genericness to support our finding that the term is highly descriptive.
9 October 23, 2017 Office Action (TSDR 8-29).
10 As examples: the Bankrate.com webpage attached to the October 23, 2017 Office Action
(TSDR 32) on “Abbreviations used in mortgage tables” defines “Lock” as “the practice of
guaranteeing an interest rate on a mortgage for a specific number of days… locking in a
guaranteed mortgage rate”); the Century 21 website, attached to the October 23, 2017 Office
Action (TSDR 103) page on Mortgage Definitions, defines “lock-in” as “A specific, guaranteed
interest rate if the loan is closed within a specific time”; State Bank of Chilton website
attached to the October 23, 2017 Office Action (TSDR 34) reverts to a “60 day rate lock” and
“[y]our guaranteed mortgage rate”; The My Mortgage Insider website attached to the October
23, 2017 Office Action (TSDR 43) promotes that “[a]nother advantage to opting for an ARM
is that you have a guaranteed mortgage rate for a short amount of time.”
11 As examples: The Truth About Mortgage website attached to the October 23, 2017 Office
Action (TSDR 46) features an article titled “Do Mortgage Rates Change Daily?” stating “if
you want a guaranteed interest rate on your mortgage, you need to lock it in.” The Merrimack
Valley Credit Union website attached to the October 23, 2017 Office Action (TSDR 49) offers
to “lock in a guaranteed interest rate up to 60 days before closing.” The Strive Lending
website attached to the October 23, 2017 Office Action (TSDR 51) discusses VA mortgages,
describing one as having “a guaranteed interest rate for the first five years.” The SECU
Mortgage Glossary attached to the October 23, 2017 Office Action (TSDR 54) entry for “Lock
Period” states that “[i]n order to hold the guaranteed interest rate for a loan, the loan closing
must occur during the lock period.”
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The examples of the use of “guaranteed rate” listed below are representative of the
third-party evidence the Examining Attorney submitted:12
The Mortgage Professor website’s Tutorial on Annual
Percentage Rate, 5 TTABVUE 13, explains that “[a]
HELOC is line of credit… If the HELOC has an
introductory guaranteed rate, any rate adjustments are
deferred, but typically guaranteed rates hold for only a few
months.”
The State Bank Delano Mortgage website attached to the
October 23, 2017 Office Action (TSDR 30) states, “In order
to receive a guaranteed rate, you must have applied for
an application through State Bank of Delano and received
a verbal confirmation from a loan officer that your desired
rate is locked. Your guaranteed mortgage rate will
depend on factors ….”
The Mortgages Unlimited website attached to the October
23, 2017 Office Action (TSDR 38) states, “RATE
GUARANTEE: In order to receive a guaranteed rate, you
must have applied for an application through the Metzler
Team at Mortgages Unlimited and received a WRITTEN
confirmation from a loan officer that your desired rate is
locked. Your guaranteed mortgage rate will depend….”
Generally, the evidence conveys that “locking in” a mortgage rate is referred to
and explained as obtaining a “guaranteed rate” (often used interchangeably with
“guaranteed mortgage rate” and “guaranteed interest rate”) for a particular period.
These uses collectively show that GUARANTEED RATE is highly descriptive of
mortgage lending services. Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion
Techs., Inc., 123 USPQ2d 1844, 1849-51 (TTAB 2017) (third-party uses of elements

12 See also the third-party uses of “Guaranteed Rate(s)” to advertise mortgage lending
services the Examining Attorney submitted to show that Applicant’s use evidence of acquired
distinctiveness is not substantially exclusive, which we discuss infra.
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of applicant’s claimed mark MEDICAL EXTRUSION TECHNOLOGIES established
that the claimed mark was highly descriptive). Because of the highly descriptive
nature of the proposed mark, Applicant faces a proportionately higher burden to
establish acquired distinctiveness. Royal Crown Cola v. Coca-Cola, 127 USPQ2d at
1047 (“‘the applicant’s burden of showing acquired distinctiveness increases with the
level of descriptiveness; a more descriptive term requires more evidence of secondary
meaning.’”) (quoting In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424
(Fed. Cir. 2005)).
Applicant did not submit any consumer survey or other direct evidence of the
association of GUARANTEED RATE with Applicant,13 nor any evidence of
intentional copying. It relies instead on evidence under the second, third, fourth and
sixth considerations for a Section 2(f) claim set out above, as well as the declaration
of an officer of Applicant recounted below, to prove that “GUARANTEED RATE” has
acquired distinctiveness:

13 “Consumer surveys can, when conducted properly, be a form of direct evidence of acquired
distinctiveness,” In re Hikari Sales USA, Inc., 2019 USPQ2d 111514, *14-15 (TTAB 2019),
and may be helpful in proving it, but they are not required. See Schlafly v. Saint Louis
Brewery, LLC, 909 F.3d 420, 128 USPQ2d 1739, 1743 & n.2 (Fed. Cir. 2018) (citing Yamaha
Int’l Corp., 6 USPQ2d at 1010). See also Trademark Rule 2.41(a)(3); 37 C.F.R. § 2.41(a)(3) (to
prove acquired distinctiveness, an applicant may submit “verified statements, depositions, or
other appropriate evidence showing duration, extent, and nature of the authorized users’ use
in commerce and advertising expenditures in connection therewith (identifying types of
media and attaching typical advertisements), and verified statements, letters or statements
from the trade or public, or both, or other appropriate evidence of distinctiveness.”).
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1. Applicant has been using GUARANTEED RATE in connection with mortgage
lending services since 2000.14
2. As discussed above, Applicant is the owner of Reg. No. 5470704 for the mark
GUARANTEED RATE AFFINITY (in standard character form) and
Registration No. 5470770 for the mark GUARANTEED RATE AFFINITY and
design, for the same mortgage lending services identified in the applications at
issue. These marks registered with a claim of acquired distinctiveness for the
term “GUARANTEED RATE.” There is no evidence that these registrations
are subject to any petitions for cancellation.15
3. “Since 2007, Applicant has spent more than $140,972,095 in advertising and
promotional activities for its mortgage lending services under the
GUARANTEED RATE mark.”16 In fiscal year 2017 alone, Applicant spent
$33,930,234 advertising and promoting its mortgage lending services under
GUARANTEED RATE.17

14 Blabolil Decl. ¶3 attached to the September 14, 2017 Response to Office Action (TSDR 11).
Rebecca Blabolil is Applicant’s Chief Compliance Officer. Id at ¶1 (TSDR 11).
15 Applicant’s Brief, p. 19 (12 TTABVUE 22) (referring to the prior registrations as evidence
of acquired distinctiveness). The Examining Attorney argues that Applicant’s registrations
are not relevant because each application must be considered on its own record. Examining
Attorney’s Brief (14 TTABVUE 17). However, the two registrations are evidence of record
that we may consider in analyzing whether GUARANTEED RATE has acquired
distinctiveness.
16 Blabolil Decl. ¶7 attached to the April 19, 2018 Request for Reconsideration (4 TTABVUE
91).
17 Id. at ¶8 (4 TTABVUE 91).
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4. Representative samples of Applicant’s advertising are reproduced below. We
note that, with some exceptions, they mostly show Applicant’s proposed
mark that includes stylization and a design element:
a. June 2017 Milwaukee Brewers baseball games18

b. Postcard mailer19

18 Blabolil Decl. attached to the September 14, 2017 Response to Office Action (TSDR 16).
19 Id. at TSDR 26-27.
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c. General Advertisement20

20 Id. at TSDR 29.
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5. “Applicant estimates that it has earned more than $3,581,871,186 in sales for
Applicant’s services under the GUARANTEED RATE mark in the past 11
fiscal years.”21 In fiscal year 2017 alone, Applicant earned $569,470,597 in
sales for its services.22
6. In 2016, Scotsman Guide, a mortgage industry publication, ranked Applicant’s
GUARANTEED RATE mortgage lending services as the fifth largest mortgage
lender in overall volume.23
7. “The services under the GUARANTEED RATE mark are sold to over 500,000
customers throughout the country.”24
8. The Zillow website (Zillow.com) profiles GUARANTEED RATE as a mortgage
lender:

Guaranteed Rate is the eighth large retail mortgage lender
in the U.S. … Guaranteed Rate has helped hundreds of
thousands of homeowners with approximately $100 billion
in home purchase loans and refinance since 2000 and $18
billion in 2015 alone. Guaranteed Rate was ranked No. 1
in Scotsman Guide’s Top Mortgage Lenders 2015 honors
and was named one of Chicago’s Top Workplaces by the

21 Id. at ¶4 (4 TTABVUE 90). It is not clear what Applicant means by “earned more than …
in sales.”
22 Id. at ¶5 (4 TTABVUE 90).
23 Id. at ¶13 (4 TTABVUE 91); see also Top Overall Volume: Scotsman’s Guide’s Top Mortgage
Lenders 2016 reporting over 73,000 closed loans amounting to $23 billion dollars in volume
in 2016 (4 TTABVUE 57).
24 Blabolil Decl. ¶32 attached to the September 14, 2017 Response to Office Action (TSDR
13). We interpret this to mean that Applicant has underwritten over 500,000 mortgages.
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Chicago Tribune in four of the past five years. In 2015,
Guaranteed Rate was recognized as one of Inc. 5000’s
Fastest Growing Companies in America.
Zillow posts 5577 reviews of Guaranteed Rate.25
9. The Lending Tree website (lendingtree.com) posts 935 reviews of
GUARANTEED RATE.26
10. The Bankrate website (bankrate.com) posts 255 reviews of GUARANTEED
RATE.27
11. The Nerdwallet website (nerdwallet.com) reviewed Applicant as follows:28
Guaranteed Rate
Mortgage Review
Deborah Kearns (January 11, 2018)
Headquartered in Chicago, Guaranteed Rate has closed
more than $100 billion in mortgage loans since its
inception in 2000. The company has weathered housing
booms, busts and everything in between with a single goal:
to transform the mortgage industry by offering customers
transparency and efficiency.
* * *
Online, you’ll find that Guaranteed Rate enjoys high marks
and hundreds of positive reviews on sites like Better
Business Bureau, Yelp and LendingTree.com.

25 Blabolil Decl. attached to the April 19, 2018 Request for Reconsideration (4 TTABVUE 20).
26 Id. at 4 TTABVUE 22.
27 Id. at 4 TTABVUE 28.
28 Id. at 4 TTABVUE 33-40; Blabolil Decl. attached to the September 14, 2017 Response to
Office Action (TSDR 41 and 52). See also ConsumerAdvocate.org at 4 TTABVUE 42, and
ValuePenguin.com at 4 TTABVUE 47.
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12. Applicant ran an advertisement for its GUARANTEED RATE mortgage
lending services during the 2016 Super Bowl.29
13. The Chicago Tribune has recognized Applicant as a top workplace in 2010 and
2012-2017.30
14. Chicago Agent Magazine named Applicant as the top lender of the year in 2010
and 2016.31
15. Effective November 1, 2016, the Chicago White Sox baseball team changed the
name of its stadium to GUARANTEED RATE Field.32 An article posted on the
Chicago Tribune website (chicagotribune.com) reported that “[i]n a marriage
between the White Sox and one of the largest home lenders in the United

29 Id. at 4 TTABVUE 58. The news article regarding Applicant’s advertisement reported that
Applicant’s advertisement ran in the Chicago, Boston, Tampa, and Salt Lake City markets.
30 Id. at ¶19 (4 TTABVUE 59, 61, and 92).
31 Id. at ¶15 (4 TTABVUE 59 and 91).
32 Id. at ¶20 (4 TTABVUE 77-81 and 92).
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States, the ballpark located at 35th and Shields will undergo a name change
Nov. 1 from U.S. Cellular Field to Guaranteed Rate Field.”33
In part to counter the claim of acquired distinctiveness, the Examining Attorney
submitted examples of third parties using “Guaranteed Rate(s)” to advertise their
mortgage lending services. See, e.g., In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d
1056, 1058 (Fed. Cir. 1999) (“The examples of use of the phrase by others in its
descriptive form support the board’s conclusion that the mark had not acquired
distinctiveness.”). The third party users, some of which we referred to above, are
listed below:
1. BRealEstate.net advertising “guaranteed rates” reproduced below:34

2. Refinancenjz.com advertising its “loan rates online” including “Guaranteed
Rate Mortgage Payment.”35

33 4 TTABVUE 78. The article also quoted Marc Ganis, a Chicago-based sports business
consultant, who said “You’re in one of the great corporate environments in the world, in the
third-largest market in the United States, with a sport that plays 81 home games, with a
stadium that is on one of the most traveled highways in the country.” (4 TTABVUE 80).
34 May 18, 2018 Denial of Request for Reconsideration (6 TTABVUE 6).
35 Id. at 6 TTABVUE 9.
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3. US Bank website (usbank.com) advertising its rates on VA loans and
explaining that “Your guaranteed rate will depend on various factors including
loan product, loan size, credit profile, property value, geographic location,
occupancy and other factors.”36
4. Woodlands National Bank (woodlandsnationalbank.com) advertising its
mortgage rates and explaining that “Your guaranteed rate will depend on
various factors including loan product, loan size, credit profile, property value,
geographic location, occupancy and other factors.”37
5. Adirondack Trust Company (adirondacktrust.com) advertising its fixed-rate
mortgages that include a “Guaranteed rate for the term of your loan.”38
6. Webster Bank (websteronline.com) advertising adjustable rate mortgages. In
its disclaimer statement, the bank warns that the figures used in its website
are exemplary and do not “represent a guaranteed rate.”39
7. Farmington Bank (farmingtonbank.com) advertising adjustable rate
mortgages. In its disclaimer statement, the bank warns, “This APR listed as
an example only and does not represent a guaranteed rate.”40
8. State Bank Delano Mortgage (statebankofdelano.com) presenting its “Daily
Interest Rates Table.” The bank advises “In order to receive a guaranteed rate,

36 Id. at 6 TTABVUE 10.
37 Id. at 7 TTABVUE 2.
38 Id. at 7 TTABVUE 5.
39 Id. at 8 TTABVUE 5.
40 Id. at 8 TTABVUE 9.
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you must have applied for an application through State Bank of Delano and
received a verbal confirmation from a loan officer that your desired rate is
locked.”41
9. Mortgages Unlimited (joemetzler.com) explains:
RATE GUARANTEE: In order to receive a guaranteed
rate, you must have applied for an application through the
Metzler Team at Mortgages Unlimited and received
WRITTEN confirmation from a loan officer that your
desired rate is locked.”42
Also, as we previously noted, the record includes third-party uses of similar terms
such as “guaranteed mortgage rate,”43 “guaranteed interest rate,”44 and “rate
guarantee”45 in connection with mortgage lending services.
Under the third and fourth considerations of Converse, Applicant’s advertising
and sales figures are impressive. There also is some evidence under the sixth
consideration that Applicant has received unsolicited media coverage of its business
generally, which the sales numbers suggest is a successful business. However, we are
not convinced that this evidence demonstrates consumer recognition of this highly
descriptive wording as indicating a single source especially because of the extensive
evidence of third-party use. See Boston Beer, 53 USPQ2d at 1058-59 (claim based on
annual sales under the mark of approximately eighty-five million dollars, and annual

41 October 23, 2017 Office Action (TSDR 31).
42 Id. at TSDR 39.
43 October 23, 2017 Office Action (TSDR 35).
44 October 23, 2017 Office Action (TSDR 50, 66, 73, 102, 105, and 109).
45 March 14, 2017 Office Action (TSDR 15, 16, 18, 19, 21, 23, and 25); August 31, 2016 Office
Action (TSDR 34, 37, 39, and 42).
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advertising expenditures in excess of ten million dollars, not sufficient to establish
acquired distinctiveness in view of highly descriptive nature of the mark, which was
in part supported by “use of the phrase by others in its descriptive form”); In re
Melville Corp., 228 USPQ 970, 972 (TTAB 1986) (affirming the rejection of Section
2(f) evidence as insufficient, regardless of $70 million in advertising and $3.7 billion
in revenue, given “the absence of any direct evidence that the purchasing public has
come to recognize applicant’s slogan [BRAND NAMES FOR LESS] as a term
identifying applicant’s services”).
We first find that standing alone, Applicant’s use since 2000 is not dispositive,
even if we would consider Applicant’s use to be substantially exclusive. “Although
Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f), provides that the PTO may accept
five years of ‘substantially exclusive and continuous’ use as prima facie evidence of
acquired distinctiveness, the statute does not require the PTO to do so.” La. Fish Fry,
116 USPQ2d at 1265. The USPTO and the Board have discretion to find such a use
claim insufficient, especially where, as here, the mark at issue is highly descriptive
and third parties use it in connection with the same kinds of services covered by
Applicant’s application. Id. See also In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ
1, 3 (Fed. Cir. 1984) (affirming USPTO’s decision to require more than an affidavit of
eight years of continuous and substantially exclusive use); In re Kalmbach Publ’g Co.,
14 USPQP2d 1490, 1492 (TTAB 1989) (deeming a Section 2(f) claim of more than 10
years of use insufficient for a highly descriptive mark “without specific evidence of
the extent of the mark's exposure to the purchasing public and of the purchasers’
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perception of the asserted mark”); In re Synergistics Research Corp., 218 USPQ 165,
167 (TTAB 1983) (“we have consistently held that a declaration or affidavit of
continuous and exclusive use as a mark for an extended period of years is insufficient
in and of itself to support registrability under Section 2(f) of the Trademark Act where
the term sought to be registered is highly descriptive in character”).
Although the scope of Applicant’s use is extensive, the record is unclear to what
extent Applicant uses the wording GUARANTEED RATE standing alone, rather
than as part of its mark with stylization and a design that includes color.46 This is
significant because the greater the extent of the use of the word mark together with
these other elements, the more difficult it is for Applicant to show “that consumers
perceive the wording alone as an indication of source of the [services], rather than as
a highly descriptive designation.” Apollo Med. Extrusion Techs., 123 USPQ2d at 1855.
The nature and number of third-party descriptive uses in the record undermines
Applicant’s attempt to obtain trademark rights in a designation that is not inherently
distinctive, because it interferes with the relevant public’s perception of the
designation as an indicator of a single source. See, e.g., Boston Beer, 53 USPQ2d at
1058; see also Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1730 (Fed. Cir. 2012) (“We conclude that the Board’s failure to

46 For example, in application Serial No. 87054820 for GUARANTEED RATE in standard
character form, the specimen of use displayed the stylized mark with the design. Even the
advertisements evidencing the use of the standard character GUARANTEED RATE mark
also displayed the mark in stylized form. See September 14, 2017 Office Action (TSDR 29-
30). Applicant’s Twitter, Facebook, Instagram, and YouTube accounts feature
GUARANTEED RATE alongside Applicant’s red arrow design mark. April 19, 2018 Request
for Reconsideration (4 TTABVUE 68-71).
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consider all pre-decision third-party use of the term ‘coach’ for educational materials
undermines its secondary meaning analysis and requires remand so that the Board
can assess the extent to which those titles might cut against a claim of ‘substantially
exclusive use.’”); Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939,
940-41 (Fed. Cir. 1984) (“When the record shows that purchasers are confronted with
more than one (let alone numerous) independent users of a term or device, an
application for registration under Section 2(f) cannot be successful, for distinctiveness
on which purchasers may rely is lacking under such circumstances.”); House of
Worsted-Tex, Inc. v. Superba Cravats, Inc., 284 F.2d 528, 128 USPQ 119, 121 (CCPA
1960) (“At the very least, the record shows that ‘Ivy League’ has a primary meaning
according to which it indicates a group of eastern colleges and universities and, by
extension, things and matters pertaining thereto. In the clothing field ‘Ivy League’
clothing would indicate to persons familiar with the ‘Ivy League’ educational
institutions―and their number is legion―styles somehow associated therewith. It
would require much to develop a secondary meaning whereby the public would come
to associate ‘Ivy League’ with a single manufacturer or vendor”); DeWalt, Inc. v.
Magna Power Tool Corp., 289 F.2d 656, 129 USPQ 275, 279 (CCPA 1961) (“Power
Shop” for woodworking saws is not substantially exclusive “in view of [Opposer’s]
millions of competitive and continuing uses of ‘power shop.’”).47

47 See also In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1024 (TTAB 2017) (finding
that “the presence in the market of yellow-packaged cereals from various sources . . . would
tend to detract from any public perception of the predominantly yellow background as a
source-indicator pointing solely to Applicant.”); Apollo Med. Extrusion Techs., 123 USPQ2d
at 1853 (finding that “the nature and number of third-party descriptive uses in the record
indicate that use by applicant [of MEDICAL EXTRUSION TECHNOLOGIES] has not been
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The copious evidence of third-party use of “guaranteed rate,” “guaranteed
mortgage rate,” and “guaranteed interest rate” in connection with mortgage lending
services weighs heavily against Applicant’s claim of acquired distinctiveness. That
other entities have repeatedly used this wording in connection with mortgage lending
services is inconsistent with the requirement for acquired distinctiveness that the
mark sought to be registered indicate a single source. Given the number of third-
party uses in the same field in which Applicant uses it, consumers are likely to
perceive the term “Guaranteed Rate” when used in connection with mortgage lending
services not as a trademark for one company, but rather as a term commonly used by
many entities in the industry, and in common speech, to describe a feature of
mortgage services. See Apollo Med. Extrusion Techs., 123 USPQ2d at 1854 (citing
Quaker State Oil Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ 361,
363 (CCPA 1972) (“evidence of a significant and continuous concurrent use of the
term by appellee rebuts appellant’s contention that it has exclusively and
continuously used the mark with the result that it has become distinctive of its
goods.)). As the Board stated in a similar case:
[T]he average cigarette consumer would be likely to equate
“ENRICHED FLAVOR” with other similar designations
[e.g., “Full Rich Tobacco Flavor,” “Full Flavor,” and “Rich
Tobacco Flavor”] that he or she has been exposed to over
the years and attribute it to the same descriptive
significance intended by the other phrases, namely, a

‘substantially exclusive as is required for a showing of acquired distinctiveness under Section
2(f)”); Sheetz of Del., Inc. v. Doctor’s Assoc. Inc., 108 USPQ2d 1341, 1370 (TTAB 2013)
(extensive third-party use weighs against finding applicant’s use of FOOTLONG for
sandwiches substantially exclusive).
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message to the effect that applicant’s “MERIT” cigarettes
have an enriched flavor or, if you will, a rich full flavor.
R.J. Reynolds Tobacco Co. v. Philip Morris, Inc., 210 USPQ 34, 42 (TTAB 1981).
Likewise, consumers would equate the term “Guaranteed Rate” with “guaranteed
mortgage rate” and “guaranteed interest rate,” and attribute to “Guaranteed Rate”
the same highly descriptive significance.
We note again that Applicant did not offer a survey showing that the words
GUARANTEED RATE alone (apart from Applicant’s stylized form and color-bearing
design) serves as a designator of a unique source of mortgage lending services. While
we of course do not imply that a survey is legally necessary,48 we find that, on the
record here, the evidence is insufficient to convince us that “in the minds of the public,
the primary significance of [the] term is to identify the source of the [service] rather
than the [service] itself.” Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11,
214 USPQ 1, 4 n.11 (1982). See also Roselux Chem. Co. v. Parsons Ammonia Co., 299
F.2d 855, 132 USPQ 627, 633 (CCPA 1962) (“Distinctiveness means that the primary
meaning of the word, in this limited field, is as a designation of source rather than of
a characteristic of the product.”). Rather, the evidence of record, on balance, indicates
to us that “the primary function, in this limited field, of the word[s] for which
registration is sought is in describing a characteristic of the [service]”. In re Preformed
Line Prods. Co., 323 F.2d 1007, 139 USPQ 271, 272 (CCPA 1963).

48 Nor do we imply that a survey favorable to Applicant would change our decision.
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Finally, we turn to Applicant’s arguments that we consider that GUARANTEED
RATE has acquired distinctiveness because Applicant was able previously to obtain
allowance of two registrations that include those words without a disclaimer. As
mentioned, Applicant owns Registration No. 5470704 for the mark GUARANTEED
RATE AFFINITY (in standard character form) and Registration No. 5470770 for the
mark GUARANTEED RATE AFFINITY and design, reproduced below, both for
mortgage lending services registered with a claim of acquired distinctiveness-in-part
under Section 2(f) of the Trademark Act as to “Guaranteed Rate.”

The same examining attorney (not the examining attorney in this case) approved
for publication both registrations on May 15, 2018 without requiring a disclaimer of
“guaranteed rate.” Trademark Rule 2.41(a), 37 C.F.R. § 2.41(a), provides that
[i]n appropriate cases, ownership of one or more active
prior registrations on the Principal Register or under the
Trademark Act of 1905 of the same mark may be accepted
as prima facie evidence of distinctiveness if the goods or
services are sufficiently similar to the goods or services in
the application; however, further evidence may be
required.
We find that Applicant’s prior registrations are not sufficient to prove that
GUARANTEED RATE has acquired distinctiveness. Additional evidence is required
for this purpose for two reasons. First, we find that the term GUARANTEED RATE
is so highly descriptive that we find reliance on prior registrations insufficient, in and
of itself, to demonstrate acquired distinctiveness. Trademark Rule 2.41(a)(1),
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37 C.F.R. § 2.41(a)(1) (“In appropriate cases, ownership of one or more active prior
registrations on the Principal Register … of the same mark may be accepted as prima
facie evidence of distinctiveness …; however, further evidence may be required.”). See
also In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 869 (Fed. Cir. 1985)
(finding claim of ownership of a prior registration insufficient to establish acquired
distinctiveness where registration was refused as primarily geographically
deceptively misdescriptive); Milwaukee Elec. Tool Corp. v. Freud Am., Inc., 2019
USPQ2d 460354, *22 (TTAB 2019) (“Freud’s reliance on the ‘769 registration does not
preclude Milwaukee from establishing that the mark is so non-distinctive (i.e.,
common) that a prior registration for the same mark for similar goods is insufficient
to establish acquired distinctiveness.”), complaint filed, No. 20-cv-109 (M.D.N.C. Feb.
3, 2020); In re Cordua Rests. LP, 110 USPQ2d 1227, 1234 (TTAB 2014) (prior
registration alone not sufficient to establish acquired distinctiveness in highly
descriptive term), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016).
... [E]ach application for registration of a mark for
particular goods must be separately evaluated. Nothing in
the statute provides a right ipso facto to register a mark for
additional goods when items are added to a company’s line
or substituted for other goods covered by a registration.
Nor do the PTO rules afford any greater rights. Under Rule
2.41(b), in appropriate cases, a prior registration on the
Principal Register for the same mark “may” be accepted as
“evidence” of distinctiveness, but the same rule reserves to
the PTO discretion to require additional proof.
Loew's Theatres, 226 USPQ at 869; see also Cordua, 823 F.3d at 600, 118 USPQ2d at
1635 (“The PTO is required to examine all trademark applications for compliance
with each and every eligibility requirement, . . . even if the PTO earlier mistakenly
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registered a similar or identical mark suffering the same defect.”). Indeed, the
existence of these two registrations without disclaimers of “Guaranteed Rate” are
insignificant in the mix of evidence in this particular set of circumstances.
Second, because Applicant’s prior marks have not been registered for five years, a
competitor could challenge the registrations on the ground that GUARANTEED
RATE is merely descriptive and has not acquired distinctiveness. Therefore, our
holding here that GUARANTEED RATE has not acquired distinctiveness is not a
collateral attack on the validity of those registrations. Compare In re Am. Sail
Training Ass’n, 230 USPQ 879, 880 (TTAB 1986), where the Board held that an
examining attorney may not require a disclaimer of TALL SHIPS in an application
for registration of the mark RETURN OF THE TALL SHIPS, where applicant owns
an incontestable registration for the mark TALL SHIPS covering identical services.
Requiring proof that an applicant has been effective in its efforts to sway public
perception from primarily viewing a term in its ordinary descriptive sense to instead
primarily signifying a brand49 works hand-in-hand with the corollary that “our
society is better served if … highly descriptive or generic terms remain available for
use among competitors.” In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89, 91
(CCPA 1980) (footnote omitted). See also In re Abcor Dev. Corp., 588 F.2d 811, 813,
200 USPQ 215, 217 (CCPA 1978) (“The major reasons for not protecting [descriptive]

49 See, e.g., Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1480 (TTAB 2016)
(“The ultimate test in determining whether a designation has acquired distinctiveness is
Applicant’s success, rather than its efforts, in educating the public to associate the proposed
mark with a single source.”).
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marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale
of particular goods; and (2) to maintain freedom of the public to use the language
involved, thus avoiding the possibility of harassing infringement suits by the
registrant against others who use the mark when advertising or describing their own
products.”) (citation omitted). The record in this case reflects that, notwithstanding
Applicant’s substantial efforts, the public, including Applicant’s competitors, still
primarily use and understand the term “guaranteed rate” to describe a feature of
mortgage lending services.
Considering the record in its entirety, Applicant has not met its burden to
establish acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C.
§ 1052(f), as to the highly descriptive wording GUARANTEED RATE.
In view of our affirmance of the refusals to register under Trademark Act Section
2(e)(1), 15 U.S.C. § 1052(e)(1), and lack of acquired distinctiveness, we do not reach
the Examining Attorney’s alternative grounds for refusing to register Applicant’s
marks as failing to function as marks (because they are merely informational) under
Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§ 1051-1053, 1127.
Decision: The refusal to register application Serial No. 87054820 for the mark
GUARANTEED RATE in standard character form based on mere descriptiveness and
lack of acquired distinctiveness is affirmed.
The refusal to register application Serial No. 87054849 for the mark
GUARANTEED RATE and design based on mere descriptiveness and lack of acquired
distinctiveness is affirmed. However, in the event that Applicant submits the
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required disclaimer within thirty days from the date of this decision, the requirement
for the disclaimer will have been met and the application will proceed.50 Trademark
Rule 2.142(g), 37 C.F.R. § 2.142(g).

50 A proper disclaimer reads as follows: “No claim is made to the exclusive right to use of
Guaranteed Rate apart from the mark as shown.”