National Penn Bank

Trademark Trial and Appeal Board

Feb 21, 2002

No. 75696025 (T.T.A.B. Feb. 21, 2002)

2/21/02

Paper No. 11
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re National Penn Bank
________

Serial No. 75/696,025
_______

John F. A. Earley, III of Harding, Earley, Follmer &
Frailey for National Penn Bank.

Michael W. Baird, Trademark Examining Attorney, Law Office
109 (Ronald R. Sussman, Managing Attorney).
_______

Before Seeherman, Hanak and Chapman, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
National Penn Bank (a federally chartered national
bank) appeals from the Examining Attorney’s final refusal
to register on the Principal Register the mark DIRECT
INVEST for services ultimately identified as “banking
services, namely, interest bearing retail checking
accounts, which provides a free check card, free PC
banking, free phone banking, unlimited check writing, and
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/696025
2
FDIC insurance coverage,”1 under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1), on the basis that the
mark, when used in connection with applicant’s services, is
merely descriptive of them. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested.
Essentially, the Examining Attorney’s position is that
the word DIRECT refers to “bank-at-home services” and the
word INVEST refers to “any interest-bearing accounts”
(brief, p. 2); and that the combination of the terms
remains merely descriptive of applicant’s interest-bearing
checking account services. Specifically, the Examining
Attorney argues that “the common meaning of the component
terms merely indicates [describes] that the claimed
services feature the ability to manage investments from a
remote location through the use of a personal computer.”
(Brief, p. 6.)
Applicant argues that the primary services of a bank
are as a safe depository for the money of its customers or
as a lending institution for loans to its customers,
whereas “invest” means to put money into business, real

1 Application Serial No. 75/696,025, filed April 30, 1999, based
on applicant’s assertion of a bona fide intention to use the mark
in commerce.
Ser. No. 75/696025
3
estate, stocks, bonds, etc.; that checking accounts are not
considered an investment vehicle; that the Examining
Attorney’s evidence regarding “direct investment” being a
specific type of banking service does not relate to
applicant’s identified services; that applicant’s mark is
suggestive rather than merely descriptive because the mark
does not immediately convey information to prospective
purchasers about applicant’s services, but instead requires
imagination and thought to make a connection between the
mark and applicant’s services; and that any doubt as to the
question of whether a mark is merely descriptive should be
resolved in applicant’s favor.
It is well settled that “a term is descriptive if it
forthwith conveys an immediate idea of the ingredients,
qualities or characteristics of the goods [or services].”
(Emphasis added). In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978). Moreover, the
immediate idea must be conveyed with a “degree of
particularity.” In re TMS Corporation of the Americas, 200
USPQ 57, 59 (TTAB 1978). See also, In re Entenmann’s Inc.,
15 USPQ2d 1750, 1751 (TTAB 1990), aff’d, unpub’d, Fed. Cir.
February 13, 1991.
Further, it is well-established that the determination
of mere descriptiveness must be made not in the abstract or
Ser. No. 75/696025
4
on the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the term or phrase is being used or is intended to be
used on or in connection with those goods or services, and
the impact that it is likely to make on the average
purchaser of such goods or services. See In re Pennzoil
Products Co., 20 USPQ2d 1753 (TTAB 1991).
It has long been acknowledged that there is often a
very narrow line between terms which are merely descriptive
and those which are suggestive, and the borderline between
the two is hardly a clear one. See In re Atavio Inc., 25
USPQ2d 1361 (TTAB 1992).
Viewing this record in its entirety, we find that the
Examining Attorney has not established a prima facie
showing that the mark DIRECT INVEST is merely descriptive
of applicant’s identified services, “banking services,
namely, interest bearing retail checking accounts, which
provides a free check card, free PC banking, free phone
banking, unlimited check writing, and FDIC insurance
coverage.” The excerpted stories retrieved from the Nexis
database do not evidence use of the words “DIRECT INVEST”
descriptively in relation to the services which are the
subject of this application. Instead, they show that the
words have several different connotations, such as the
Ser. No. 75/696025
5
following (emphasis in original printouts), none of which
are applicable to applicant’s identified services:
HEADLINE: Independent Stance
...capital account restrictions
such as those making it hard for
Slovene firms to borrow abroad,
encouraging greater inflows of
foreign direct investment, and
opening up the banking sector to
greater foreign competition.
Slovenia may have more or less
completed the privatization of
its formerly ‘socially-owned’
firms, albeit... “Banker,”
January 1999;

HEADLINE: Not (Yet) Gone the Way
of All Asia
...net inflows in current U.S.
dollars of foreign direct
investment;...(source: world
bank), “The New York Times,”
November 15, 1998; and

HEADLINE: GETTING real About
going Global; What’s Fizz? What’s
Fizzle
...spree of intercontinental
mergers and acquisitions—not just
monstrous couplings like Daimler
and Chrysler, British Petroleum
and Amoco, Deutsche Bank and
Bankers Trust, but scores upon
scores of more modest deals, so
that cross-border M&A now
accounts for more than half of
all new direct investment
worldwide.... “Fortune,”
February 15, 1999.

The evidence submitted by the Examining Attorney
indicates that “direct banking” relates to the customer’s
ability to conduct his or her banking business on-line or
Ser. No. 75/696025
6
via telephone, and that “direct investment” is an activity
engaged in by some types of financial institutions.2
However, as applicant argues, the activity of direct
investment is far different from the services identified in
the application. That is, in connection with applicant’s
checking account services, the mark DIRECT INVEST does not
readily and immediately evoke an impression and an
understanding of the specific nature of applicant’s
identified services. See In re Intelligent Medical Systems
Inc., 5 USPQ2d 1674 (TTAB 1987); In re TMS Corporation of
the Americas, supra; and In re Silva Mind Control
International, Inc., 173 USPQ 564 (TTAB 1972).
Decision: The refusal to register the mark as merely
descriptive under Section 2(e)(1) is reversed.

2 For example, the Examining Attorney submitted three banking
dictionary definitions of the term “direct investment”; and the
definition from the Dictionary of Finance and Banking (Second
Edition 1997) reads as follows:
“The investment by some US banks in the equity
of certain kinds of company [sic], e.g., real
estate and property development. Savings and
loans companies suffered heavy losses and
failures in the late 1980s as a result of such
direct investments. National banks are
prohibited from making direct investments and
many other institutions are now wary of doing
so.”