University Federal Credit Union

Trademark Trial and Appeal Board

Jul 23, 2007

No. 78439822 (T.T.A.B. Jul. 23, 2007)

Mailed:
July 23, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re University Federal Credit Union
________

Serial No. 78439822
_______

Gail Taylor Russell of Taylor Russell & Russell, P.C. for
University Federal Credit Union

Mark Rademacher, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney)
_______

Before Seeherman, Kuhlke and Walsh, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

University Federal Credit Union has appealed from the
final refusal of the Trademark Examining Attorney to
register MEMBERS HOME ADVISOR for “mortgage lending
services, namely providing residential loans to federally
chartered and state chartered credit unions members only.”1
Registration has been refused on two grounds: Pursuant to

1 Application Serial No. 78439822, filed June 23, 2004, based on
Section 1(b) of the Trademark Act (intent-to-use).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78439822
2
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that applicant’s mark is merely
descriptive of its identified services; and pursuant to
Section 2(d), 15 U.S.C. §1052(d), on the ground that
applicant’s mark so resembles the mark HOMEADVISOR,
previously registered for “providing information concerning
real estate, real estate financing, real estate agents and
the purchase, sale and rental of real estate, all via
computer networks and global communication networks,”2 that
it is likely, if used in connection with applicant’s
identified services, to cause confusion or mistake or to
deceive.
Applicant and the Examining Attorney have filed appeal
briefs.
We affirm the refusals on both grounds.
We turn first to the refusal based on mere
descriptiveness. A term is deemed to be merely descriptive
of goods or services, within the meaning of Section 2(e)(1)
of the Trademark Act, 15 U.S.C. §1052(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A term

2 Registration No. 2548679, issued March 19, 2002.
Ser No. 78439822
3
need not immediately convey an idea of each and every
specific feature of the applicant’s goods or services in
order to be considered to be merely descriptive; rather, it
is sufficient that the term describes one significant
attribute, function or property of the goods or services.
In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re
MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a term is
merely descriptive is determined not in the abstract, but
in relation to the goods or services for which registration
is sought, the context in which it is being used on or in
connection with the goods or services, and the possible
significance that the term would have to the average
purchaser of the goods or services because of the manner of
its use; that a term may have other meanings in different
contexts is not controlling. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979). Moreover, if the mark is
descriptive of any of the goods or services for which
registration is sought, it is proper to refuse registration
as to the entire class. In re Analog Devices Inc., 6
USPQ2d 1808 (TTAB 1988), aff’d without pub. op., 871 F.2d
1097, 10 USPQ2d 1879 (Fed. Cir. 1989).
Ser No. 78439822
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In support of his position that the mark is merely
descriptive, the Examining Attorney has made of record
dictionary definitions of the individual words,3 to wit:
Member: 3. One that belongs to a group
or organization.

Home: 1. A place where one lives;
residence
2. A structure or unit for domestic
living.

Adviser or Advisor: 1. One that
advises, such as a person or firm that
offers official or professional advice
to clients.

The Examining Attorney has also made of record pages
from applicant’s website. Under the general heading
“Mortgages” is the statement “Traverse the maze of home
loan products. We’ll help you identify which is best for
your situation.” www.ufcu.org/learning/home/index/php?
loc=menu. On another webpage, under the subheading
“Mortgage loans, applicant states that:
Members’ Home Advisor is the total UFCU
solution. We are very concerned about
your “home schooling”, and have the
following solutions, services and
mortgage products available for you.

3 The definitions of “member” and “home” are taken from The
American Heritage Concise Dictionary; the definition of
“Adviser/advisor” is taken from The American Heritage Dictionary
of the English Language.
Ser No. 78439822
5
The webpage goes on to list various activities involved in
home purchase, and the advice that applicant offers,
including:
Mortgages: “We have lots of products,
but what matters is which one is right
for you: your budget, your savings,
your current income and debts and your
future plans. On-line approval and
education is one click away!

Refinancing: Refinancing your mortgage
can be a smart way to reduce your
monthly payments—if you have all the
information. We will help you
determine if refinancing is right for
you.

In addition, the Examining Attorney has submitted a
copy of a second application filed by applicant for MEMBERS
HOME ADVISOR and design for “mortgage lending services,
namely providing residential loans, loan refinancing, home
equity loans and lines of credit to federally chartered and
state chartered credit unions members only” in which
applicant disclaimed the words MEMBERS HOME ADVISOR, an
acknowledgement by applicant that it does not have
exclusive rights to this phrase.4 The Examining Attorney
has also pointed out that the registration for HOMEADVISOR
that has been cited against applicant’s application in
connection with the refusal based on Section 2(d)

4 Application Serial No. 78516791.

Ser No. 78439822
6
(discussed infra) was registered pursuant to Section 2(f)
of the Trademark Act, thus showing that the term
HOMEADVISOR was found to be merely descriptive, and was so
acknowledged by the registrant.
Finally, the Examining Attorney has pointed to
applicant’s own admission, repeated in both applicant’s
response to the first Office action and in its request for
reconsideration, that:
... “home advisor” merely combines two
common descriptive terms that relate to
advice concerning homes. Applicant’s
mark further limits these descriptive
terms to “members.”5

Applicant’s argument that its mark is not merely
descriptive is essentially that “if a consumer or
prospective consumer of Applicant’s services was presented
with the mark MEMBERS HOME ADVISOR, that consumer would not
immediately conclude that the service to be provided under
the mark are mortgage lending services.” Brief, pp. 6-7.
Applicant has asserted, in both its response to the first
Office action and in its request for reconsideration, that
MEMBERS HOME ADVISOR “might just as likely relate to
advising furniture, appliance or other home furnishing

5 Applicant made this statement in arguing against the
likelihood of confusion refusal. Nonetheless, it constitutes an
admission by applicant that this portion of its mark is
descriptive.
Ser No. 78439822
7
purchases at membership retail outlets such as COSTCO and
SAM’S CLUB.”
Applicant’s position ignores the well-established
principle, set forth above, that whether a mark is merely
descriptive must be determined not in the abstract, but in
relation to the identified services. In re Abcor
Development Corp., supra, In re Engineering Systems Corp.,
2 USPQ2d 1075 (TTAB 1986). As noted, applicant has
acknowledged that HOME ADVISOR combines two common
descriptive terms that relate to advice regarding homes,
and that when MEMBERS is added to these terms, it describes
that the advice is limited to members. Applicant’s website
confirms that an integral element of its mortgage lending
services is giving advice about, inter alia, home
mortgages. See In re Reed Elsevier Properties Inc., 482
F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007), in which the
Court affirmed the Board’s finding that LAWYERS.COM was a
generic term for information exchange concerning the law,
legal news, and legal services because lawyers “are
necessarily an integral part of the information exchange
about legal services.” Id., 82 USPQ2d at 1380. The Court
also stated, citing In re Steelbuilding.com, 415 F.3d 1293,
75 USPQ2d 1420 (Fed. Cir. 2005), that it is appropriate for
the Board to consider the applicant’s website to understand
Ser No. 78439822
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the meaning of the services for which registration is
sought.
When the mark is viewed in connection with the
identified services--mortgage lending services, namely
providing residential loans to federally chartered and
state chartered credit unions members only--it immediately
and directly tells consumers the nature of the advice
regarding homes that applicant provides, i.e., that a
characteristic of its mortgage loan services is to provide
advice directed to its members regarding mortgages for
their residences or homes. Accordingly, we affirm the
refusal of registration on the ground that applicant’s mark
is merely descriptive of its identified services.
This brings us to a consideration of the second ground
for refusal, that applicant’s mark MEMBERS HOME ADVISOR for
“mortgage lending services, namely providing residential
loans to federally chartered and state chartered credit
unions members only” is likely to cause confusion with
HOMEADVISOR for “providing information concerning real
estate, real estate financing, real estate agents and the
purchase, sale and rental of real estate, all via computer
networks and global communication networks.” Our
determination of this issue is based on an analysis of all
of the probative facts in evidence that are relevant to the
Ser No. 78439822
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factors set forth in In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See
also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
Turning first to the services, we note that applicant
originally applied to register its mark for “home buying
services, namely providing members with extensive
information and assistance in connection with the home
buying purchase process; mortgage lending services, namely
providing residential loans, loan refinancing, home equity
loans and lines of credit.” Applicant amended its
identification after the Examining Attorney raised the
issue of likelihood of confusion, presumably to remove from
the identification those services that were the same as or
very similar to the services in the cited registration.
However, deleting identical or highly similar services is
not necessarily sufficient to avoid a finding of likelihood
of confusion. It is not necessary that the goods or
Ser No. 78439822
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services of an applicant and registrant be similar or
competitive, or even that they move in the same channels of
trade, to support a holding of likelihood of confusion. It
is sufficient that the respective goods or services are
such that they would or could be encountered by the same
persons under circumstances that could, because of the
similarity of the marks, give rise to the mistaken belief
that they originate from the same producer. See In re
International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In this case, the Examining Attorney has submitted
evidence of the relatedness of the services in the form of
third-party registrations and both third-party websites and
applicant’s own website. With respect to the latter, under
the general heading “Mortgage Loans” applicant has listed
such subtopics as “Buying a Home,” “Selling a Home,”
“Mortgages,” and “Refinancing,” and has described applicant
as being “One Source for All Your Real Estate Needs.” As
noted in our discussion of the descriptiveness refusal,
applicant states on its “Mortgage Loans” webpage that it is
“concerned about your ‘home schooling,’” and the various
subtopics explain that applicant, in connection with
“Buying a Home,” “will refer you to a REALTOR® we know and
trust who will guide you through the process” and, for
Ser No. 78439822
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“Refinancing,” “will help you determine if refinancing is
right for you.” Applicant’s website shows that it provides
information and advice about residential real estate
generally, including real estate agents, real estate
financing and the purchase and sale of real estate. See,
the “Members’ Home Advisor Pledge,” which promises the
buyer (consumer), inter alia, that applicant will “provide
you with information that will help you evaluate both the
home and the area” and “determine values in today’s market
and resale potential.”
In addition, the third-party websites show that credit
unions offer information on real estate financing as well
as mortgage lending services. For example, the website for
Provident Credit Union, www.providentcu.org, allows one to
apply for a mortgage, and also makes available personal
assistance by “Loan Advisors” who “answer any of your
questions.” The website advertises that a person can use
the website, inter alia, to obtain information about making
“financial decisions involved in purchasing or refinancing
a home.” The website for Nevada Federal Credit Union,
www.nevadafederal.org, indicates that it offers home
loans/mortgages, and also explains what the various types
of home loans are, e.g., first mortgages and home equity
loans.
Ser No. 78439822
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Third-party registrations made of record by the
Examining Attorney include No. 3024353 for MORTAGE DELIVERY
ONLINE for, inter alia, mortgage lending and for providing
information, research, analysis and consultation in the
field of real estate; and No. 2974937 for ONE PRICE PROMISE
for, inter alia, mortgage brokerage services, real estate
brokerage services, and providing information in the field
of real estate by means of a global computer network.
Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
We note that the number of third-party registrations
submitted by the Examining Attorney is rather limited,
particularly the registrations that are for the specific
services that are the subject of applicant’s application
and the cited registration, as opposed to third-party
registrations for real estate services generally, but which
do not include mortgage lending services, such as
Registration No. 3039975 for HOMEBUILDER.COM that includes,
inter alia, providing information about mortgage lending
rather than mortgage lending services per se. However,
when the evidence is considered in its totality, we find
Ser No. 78439822
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that the Office has met its burden of showing that services
of the type identified in applicant’s application and the
cited registration can emanate from a single source.
In addition, the complementary nature of the services
is obvious. Because mortgage lending services in the
nature of residential loans are necessarily offered to and
obtained by people who wish to buy a home, those same
people will require information about real estate,
including information about the purchase of real estate,
real estate agents, and real estate financing. As a
result, these individuals are likely to encounter both
mortgage lending services and services providing
information about real estate that is provided via computer
networks.
Applicant has pointed out that its services are
limited to members of federally chartered and state
chartered credit unions. However, the cited registration
is not limited as to the customers for the various real
estate and real estate financing information provided by
the registrant; thus, we must deem the registrant’s
customers to include members of chartered credit unions as
well. Applicant has also asserted that, because the owner
of the cited registration is Microsoft Corporation, and
because Microsoft is a software company rather than a
Ser No. 78439822
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financial institution, the information service provided by
Microsoft is not the same as a mortgage lending service
provided by a chartered financial institution. However,
the determination of likelihood of confusion must be based
on an analysis of the goods and/or services recited in an
applicant’s application and the goods and/or services
identified in the cited registration, not on what the
evidence shows the goods and/or services to be. See
Canadian Imperial Bank of Commerce v. Wells Fargo Bank,
N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); In re
William Hodges & Co., Inc., 190 USPQ 47 (TTAB 1976). The
owner of the cited registration is entitled to all the
presumptions of Section 7(b) of the Trademark Act,
including the registrant’s exclusive right to use the
registered mark in connection with the services specified
in the certificate. Thus, we cannot read limitations into
the registrant’s rights based on applicant’s statements
about the nature of the registrant and its activities.
As noted, the Examining Attorney has submitted
evidence that services of the type identified in
applicant’s application and the cited registration can
emanate from a single source and be offered under a single
mark. Accordingly, the du Pont factor of the similarity of
the services favors a finding of likelihood of confusion.
Ser No. 78439822
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With respect to the du Pont factor of the channels of
trade, applicant argues that its mark will be encountered
by a “distinct group of individuals, specifically federally
and state chartered credit union members, who will be
seeking mortgages directly from Applicant.” Brief, p. 3.
Applicant asserts that these individuals will rely on
established relationships with their credit union, and “are
just as likely to use their normal channels of trade to
seek out mortgages from Applicant, including visiting a
physical branch office of Applicant, telephoning Applicant
and responding to brochures mailed to them,” brief, p. 4,
rather than searching for real estate information via a
global communication network. The problem with applicant’s
argument is that mortgage lending services identified in
applicant’s application may be offered by means of computer
and global communication networks, as the website evidence
submitted by the Examining Attorney demonstrates. This is
the same channel of trade of the services identified in the
cited registration. Moreover, because both the applicant’s
and the cited registrant’s identified services can both be
offered to the same individuals, i.e., credit union members
who use the registrant’s services to obtain information
about real estate financing and who also need a residential
mortgage, such consumers are likely to believe, if these
Ser No. 78439822
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services are offered under confusingly similar marks, that
they emanate from or are sponsored by the same source.
Thus, even if consumers are aware that the mortgage lending
services offered under the mark MEMBERS HOME ADVISOR come
from applicant, they are likely to believe, upon seeing the
mark HOMEADVISOR in connection with information services
about real estate financing, etc, rendered via computer and
global communication networks, that these services have a
single source.
The du Pont factor of the similarity of the channels
of trade favors a likelihood of confusion.
This brings us to a consideration of the similarity of
the marks. Applicant’s mark is MEMBERS HOME ADVISOR; the
cited registration is for HOMEADVISOR. Applicant has
essentially taken the entirety of the registered mark and
added the word MEMBERS to it. Although we note that
HOMEADVISOR is run together in the cited mark, the two
words that make up the mark, HOME and ADVISOR, are readily
apparent. Thus, the HOME ADVISOR/HOMEADVISOR portions of
the mark are identical in pronunciation and connotation,
and virtually identical in appearance. The additional word
MEMBERS in applicant’s mark is insufficient to distinguish
its mark from that of the registrant. MEMBERS is merely
descriptive of the services, and customers would regard it
Ser No. 78439822
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as a merely informational term indicating that the services
are directed to or limited to members of credit unions.
Thus, consumers who are familiar with the registered mark
HOMEADVISOR, and see MEMBERS HOME ADVISOR used in
connection with related services, would view the mark as a
variation of the HOMEADVISOR mark, a variation that
provides more specific information about the nature of the
services, but still indicates the same source of the
services as the HOMEADVISOR mark. Overall the marks are
similar in appearance, pronunciation, connotation and
commercial impression. This du Pont factor favors a
finding of likelihood of confusion.
Although applicant has not raised this point as an
argument in its brief, as we noted in our discussion of the
refusal based on the ground of mere descriptiveness, the
registrant’s mark HOMEADVISOR was registered under the
provisions of Section 2(f) of the Trademark Act, thus
indicating that the words were merely descriptive when the
mark was initially adopted. However, because the mark has
acquired distinctiveness, we cannot say that the
registration is entitled to only a limited scope of
protection, as we would for a highly suggestive mark, or
for words that are merely descriptive. Instead, we must
give the registration the normal scope of protection to
Ser No. 78439822
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which an ordinary mark is entitled, and therefore the
addition of a descriptive term to the registered mark is
not sufficient to distinguish applicant’s mark from the
registrant’s.
We also think it appropriate to comment on the fact
that applicant’s co-pending application for MEMBERS HOME
ADVISOR and design was approved for registration by another
Examining Attorney despite the existence of the
registration which has been cited against applicant’s
subject application. Applicant has not raised this point
in its brief, and therefore may recognize that it does not
have an effect on our decision. We do not know why the
Examining Attorney allowed this application—perhaps the
presence of a design and the manner in which the words are
depicted in that mark were considered to be enough to
distinguish it from the registrant’s mark. In any event,
we must consider the issue of likelihood of confusion based
on the mark for which registration is sought and on the
record before us, and another Examining Attorney’s decision
on a different application does not bind us in our
determination herein. In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564 (Fed. Cir. 2001)
Both applicant and the Examining Attorney have limited
their arguments to the du Pont factors of the similarity of
Ser No. 78439822
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the marks, the similarity of the services, and the
similarity of trade channels. Because of this, and because
no evidence has been submitted on other factors, we, too,
have limited our discussion to these factors. To the
extent that any other factors are applicable, we must treat
them as neutral. In particular, there is no evidence
regarding the care or sophistication of consumers of these
services. However, because both applicant’s and the
registrant’s services are rendered to ordinary consumers,
we do not regard the consumers as having any particular
sophistication. Further, although obtaining a mortgage is
of great importance to consumers, it is the loan itself,
rather than the party providing the loan, that is of
importance. Thus, we do not consider individuals who would
be the customers for applicant’s services to exercise more
than the usual degree of care in choosing the services.
Decision: The refusals of registration on the grounds
of mere descriptiveness and likelihood of confusion are
affirmed.