SBH, Inc.

Trademark Trial and Appeal Board

Sep 17, 2008

No. 77111272 (T.T.A.B. Sep. 17, 2008)

Mailed:
September 17, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re SBH, Inc.
________

Serial No. 77111272
_______

David H. Chervitz of Riezman Berger, PC for SBH, Inc.

Zhaleh Delany, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
_______

Before Rogers, Bergsman and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

SBH, Inc. filed a use-based application for the mark
SECURITIES INSURANCE, in standard character format, for
“investment advice,” in Class 36.
The Examining Attorney refused registration on the
ground that the mark is merely descriptive pursuant to
Section 2(e)(1) of the Trademark Act of 1946, 15 U.S.C.
§1052(e)(1). The Examining Attorney also refused
registration based on applicant’s failure to comply with
the requirement to submit an acceptable specimen showing
use of the mark.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77111272
2
A. Whether applicant’s mark is merely descriptive?
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the services it identifies.
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987). Whether a particular term is merely descriptive is
determined in relation to the services for which
registration is sought and the context in which the term is
used, not in the abstract or on the basis of guesswork. In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB
2002). In other words, the question is not whether someone
presented only with the mark could guess what the services
are. Rather, the question is whether someone who knows
what the services are will understand the mark to convey
information about them. In re Tower Tech, Inc., 64 USPQ2d
1314, 1316-1317 (TTAB 2002); In re Patent & Trademark
Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home
Builders Association of Greenville, 18 USPQ2d 1313, 1317
(TTAB 1990); In re American Greetings Corp., 226 USPQ 365,
366 (TTAB 1985).
“On the other hand, if one must exercise mature
thought or follow a multi-stage reasoning process in order
to determine what product or service characteristics the
Serial No. 77111272
3
term indicates, the term is suggestive rather than merely
descriptive.” In re Tennis in the Round, Inc., 199 USPQ
496, 497 (TTAB 1978). See also, In re Shutts, 217 USPQ
363, 364-365 (TTAB 1983); In re Universal Water Systems,
Inc., 209 USPQ 165, 166 (TTAB 1980).
Even where individual terms are descriptive, combining
them together may evoke a new and unique commercial
impression. However, if each component retains its merely
descriptive significance in relation to the services,
without the combination of terms creating a unique or
incongruous meaning, then the resulting combination is also
merely descriptive. In re Tower Tech., Inc., 64 USPQ2d
1314, 1317-1318 (TTAB 2002). Any doubt as to whether a
mark is descriptive or suggestive is resolved in favor of
publication of the mark for opposition. In re Conductive
Systems, Inc., 220 USPQ 84, 86 (TTAB 1983); In re Morton-
Norwich Prods., Inc., 209 USPQ 791 (TTAB 1981).
The Examining Attorney contends that SECURITIES
INSURANCE is merely descriptive because it is the
combination of two descriptive terms that retain their
descriptive significance when used in connection with
investment advice.1

1 In her appeal brief, the Examining Attorney included a
definition of “security” as a “document indicating ownership or
Serial No. 77111272
4
Where, as in this case, the combination
of the descriptive words SECURITIES and
INSURANCE creates no incongruity, and
no imagination is required to
understand the nature of the services,
the mark is merely descriptive. It
will take no leap of the imagination on
the part of the consumer to determine
that the Applicant’s “investment
advice” services include advice on how
to protect securities investments from
loss, fraud or other damage via
insurance or securities insurance.
This is especially true in that
securities insurance, or insurance for
securities, represents a particular
category of insurance services designed
to protect the insured against
securities loss, fraud or other claims.2
(Emphasis in the original).

creditorship; a stock certificate or bond” and “insurance” as
“coverage by a contract binding a party to indemnify another
against a specific loss in return for premiums paid.” The
Examining Attorney cited The American Heritage Dictionary of the
English Language (4th ed. 2000) obtained from an online source,
and requested that we take judicial notice of the dictionary
definitions. In its Reply Brief, the applicant objected to the
dictionary definitions on the ground that “the Board will not
take judicial notice of definitions found only in on-line
dictionaries and not available in printed format. The Trademark
Examining Attorney has provided no evidence that the on-line
dictionary definitions attached to the brief are available in
printed format.” Applicant’s objection is not well taken.
First, The American Heritage Dictionary of the English Language
is a well-known dictionary that exists in printed format.
Second, in any event, we would have referenced a print version of
a dictionary to determine the meaning of “securities” and
“insurance.” In view of the foregoing, applicant’s objection to
the dictionary definitions is overruled.

2 The Examining Attorney’s Appeal Brief, p. 2.

Serial No. 77111272
5
In support of the refusal, the Examining Attorney
submitted excerpts from the following websites:3
1. Finasrådet website4
The Guarantee Fund for Depositors and
Investors
* * *

Insurance for securities

If a bank is unable to return
securities to an investor, the Fund
covers investor losses of up EUR 20,000
after deduction of the debt of the
investor vis-à-vis the bank.
Securities (securities deposits) are
not usually affected by compulsory
winding-up or suspension of payments of
a financial institution. The owners of
such deposits will typically be secured
creditors and thereby have their
securities (deposits) returned
independently of the insolvent estate.

3 Although the excerpts from the Finasrådet website, a Danish
website, and the Padamsey website, an Indian website, are from
foreign websites, they have some probative value in this case.
Information originating on foreign websites that are accessible
to the United States public may be relevant to discern the
commercial impression engendered by a term. In re Bayer
Atktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1835 (Fed.
Cir. 2007). Particularly, in this case, involving investment
advice, it is reasonable to consider a relevant article regarding
“securities insurance” because that investment vehicle is likely
to be of interest worldwide regardless of its country of origin.
See In re Remacle, 66 USPQ2d 1222, 1224 n.5 (TTAB 2002) (“it is
reasonable to assume that professionals in medicine, engineering,
computers, telecommunication and many other fields are likely to
utilize all available resources, regardless of country of origin
or medium”).

4 www.finansraadet.dk

Serial No. 77111272
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2. Padamsey Website5
Securities
Typical Claim Requirements –
Securities Insurance
Insurance for securities is a recent product in
India, and has become quite popular for the
financial services sector. Stock Exchanges,
Stock Brokers, Securities Custodians, Electronic
Securities Depository and their Participants,
event Registrars and Transfer Agents have opted
for insurances to help protect their business.
Insurance Policies covering this sector generally
are liability policies and provide cover for
several different perils, under different
insurance sections and broadly comprise of:
• Employee Infidelity or Dishonesty
• Physical Loss of Securities
• Loss due to Counterfeit Securities
• Computer Crime
• Third party Liability Claims due to
Errors and Negligence

2. Hoovers Website6

Subsidiary Financial Security Assurance
provides guaranty insurance on
municipal bonds and asset-backed
obligations. The company insures new
issues and those already trading in the
secondary market; it also writes
portfolio insurance for securities held
by investment funds. The company is
licensed as a guaranty insurer in the
U.S.

5 www.padamsey.com. This does not appear to be a website
directed to investors in the United States as indicated by the
introduction that “[i]nsurance for securities is a recent product
in India.” Accordingly, we give this website very little
consideration.

6 www.hoovers.com
Serial No. 77111272
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3. The District of Columbia website7

Insurance, Securities and Banking

Getting Help With Your Investments

* * *

SIPC provides insurance for securities
accounts of up to $500,000 per
customer, with a limit of $100,000 per
customer on cash being held by the
firm. Many brokerages purchase
additional coverage, often up to a
couple of million dollars. It’s
important to know that the SIPC
coverage applies only in the case of
financial insolvency. It doesn’t cover
you in case of broker theft or fraud;
you must turn to the courts for redress
in such cases.

Finally, applicant’s substitute specimen references
the “Current Need In Marketplace” by identifying such
investor exposure as “No product available to protect a
portfolio of securities.”
Applicant contends that the mark is not merely
descriptive because it does not directly describe
“investment advice.”
If you ask a prospective purchaser what
SECURITIES INSURANCE is, the
prospective purchaser cannot, without
further clues, immediately conclude
what Applicant’s services are.8

* * *

7 www.disr.washingtondc.gov
8 Applicant’s Brief, p. 3.
Serial No. 77111272
8
In essence, the consumer’s mind would
not jump instinctively from a
contemplation of the mark to knowledge
of a quality or characteristic of the
services being offered by the
Applicant. Rather, imagination,
reflection, or a mental pause is
required to deduce a quality or
characteristic of the services. When
viewing Applicant’s mark SECURITIES
INSURANCE, a customer would not
immediately know that the services
being offered are investment advice.9

The term “Securities Insurance” means indemnification
for stocks or bonds. As such, it is the subject of
investment advice, and therefore merely descriptive. See
In re Pencils Inc., 9 USPQ2d 1410, 1411 (TTAB 1988) (“the
term ‘pencils’ is merely descriptive of an item that is
sold in stationery and office supply stores”); Brewski Beer
Co. v. Brewski Brothers Inc., 47 USPQ2d 1281, 1287 (TTAB
1998) (the words “beer” and “brewski” as applied to bar
services are highly descriptive). See also In re Lens.com,
Inc., 83 USPQ2d 1444 (TTAB 2007) (LENS generic for “retail
store services featuring contact eyewear products rendered
via a global computer network”); In re Eddie Z’s Blinds and
Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005)
(BLINDSANDDRAPERY.COM generic for retail store services
featuring blinds, draperies and other wall coverings,
conducted via the Internet); In re Candy Bouquet

9 Applicant’s Brief, p. 5.
Serial No. 77111272
9
International, Inc., 73 USPQ2d 1883 (TTAB 2004) (CANDY
BOUQUET generic for “retail, mail, and computer order
services in the field of gift packages of candy”).
The problem with applicant’s analysis is that it
starts with the mark SECURITIES INSURANCE and asks whether
the purchaser can conclude what applicant’s services are.
As indicated above, the proper analysis should start with
the services “investment advice” and inquire whether the
term SECURITIES INSURANCE describes a significant feature
or subject of the “investment advice.” The evidence shows
that SECURITIES INSURANCE may be the subject of investment
advice. Thus, the mark directly describes a subject of
applicant’s services.10
Moreover, in the composite mark SECURITIES INSURANCE,
the words “securities” and “insurance” retain their
ordinary meanings and do not form a unique or incongruous
meaning.
In view of the foregoing, we find that applicant’s
mark SECURITIES INSURANCE in connection with “investment
advice” is merely descriptive.

10 Even if applicant’s analysis were correct, all applicant has
provided is argument in regard to what a prospective purchaser
would conclude when confronted with applicant’s mark. We have
been provided with no evidence to support the argument.
Serial No. 77111272
10
B. Acceptability of specimens.
Applicant’s original specimen is the cover sheet of a
brochure displaying applicant’s name and the mark. The
Examining Attorney required a new specimen because the
brochure cover purportedly did not show use of the mark in
connection with investment advice.
Applicant submitted a substitute specimen comprising
the cover of a brochure displaying the mark and a second
page displaying the following information:

According to the Examining Attorney the substitute
specimen is unacceptable because “the specimens of record
fail to make the requisite association between the applied-
for mark and the services identified in the application.
Serial No. 77111272
11
. . . In other words, the advertising must show use of the
applied-for mark in a manner that would be perceived by
purchasers as identifying the source for the Applicant’s
services.”11 Essentially, the Examining Attorney is
requiring that the specimens expressly state “investment
advice,” or some synonymous term.
The page on which the applied-for mark
SECURITIES INSURANCE appears makes
absolutely no reference to the
“investment advice” services identified
in the application, and, is therefore,
unacceptable. The other unnumbered
page of a brochure submitted, even if
assumed to be from the same brochure
including the page displaying the
applied-for mark SECURITIES INSURANCE,
is also unacceptable because it makes
no association between the applied-for
mark and the “investment advice”
services identified in the application.
That is, even if it were assumed that
the two unnumbered specimen pages of
record originate from the same
brochure, one page displaying the mark,
and one page describing the services,
the page submitted to describe the
services does not make clear that the
services are necessarily “investment
advice” services. It simply implies
that the services are in some way
related to securities insurance, but it
is not readily apparent that the
services are “investment advice”
services. (Emphasis in the original).12

11 Examining Attorney’s Appeal Brief, p. 4.
12 Examining Attorney’s Appeal Brief, p. 4. The declaration
supporting applicant’s substitute specimen states that “[t]he
substitute specimen” was in use since the filing date of the
application. We interpret that to mean that both pages are from
one document. Also, we agree with applicant that if the
Examining Attorney had some doubt regarding the authenticity or
Serial No. 77111272
12

A service mark specimen must show the mark used in the
sale or advertising of the services recited in the
application. Trademark Rule 2.56(b)(2), 37 CFR
§2.56(b)(2). Where a mark is used in advertising the
services, the specimen must show an association between the
mark and the service for which registration is sought.
TMEP §1301.04(b) (5th ed. 2007). However, to create an
association between the mark and the services, the specimen
does not have to spell out the specific nature and type of
services. A general reference to the industry may be
acceptable. See TMEP §1301.04(c) (5th ed. 2007). See also
In re Ralph Mantia Inc., 54 USPQ2d 1284, 1286 (TTAB 2000);
In re Southwest Petro-Chem, Inc., 183 USPQ 371, 372 (TTAB
1974). In this case, the section of the brochure
explaining the need in the marketplace for “securities
insurance” by identifying the investor exposure creates the
required association between the mark and the services
because it shows the investor why he/she/it needs
applicant’s SECURITIES INSURANCE investment advice
services.

genuineness of the substitute specimen, she should have raised
that as an issue prior to the appeal.
Serial No. 77111272
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In view of the foregoing, we find that that
applicant’s substitute specimen shows the mark SECURITIES
INSURANCE used in connection with “investment advice.”
Decision: The refusal to register is affirmed.
The requirement to submit an acceptable specimen is
reversed.
Accordingly, registration to applicant is refused.