Assured Guaranty Ltd.

Trademark Trial and Appeal Board

May 5, 2008

No. 78857012 (T.T.A.B. May. 5, 2008)

Mailed:
May 5, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Assured Guaranty Ltd.
________

Serial No. 78857012
_______

Joan L. Long of Mayer Brown LLP for Assured Guaranty Ltd.

Laurie Mayes, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
_______

Before Walters, Grendel and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Assured Guaranty Ltd., applicant herein, seeks
registration on the Principal Register of the mark ENDURING
FINANCIAL STRENGTH (in standard character form) for
services recited in the application as “insurance services,
namely, underwriting financial guaranty insurance and
reinsurance for municipal and structured finance
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78857012
2
obligations and mortgage guaranty insurance and
reinsurance.”1
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark on the ground that the
mark, as used in connection with the services recited in
the application, is merely descriptive of such services.
Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1).
Applicant has appealed the final refusal. After
careful consideration of the evidence of record and the
arguments of counsel, we affirm the refusal to register.
Initially, we sustain the Trademark Examining
Attorney’s objection to the evidence submitted by applicant
for the first time with its appeal brief. That evidence is
untimely and shall be given no consideration. Trademark
Rule 2.142(d), 37 C.F.R. §2.142(d).2
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

1 Serial No. 78857012, filed on April 7, 2006. The application
is based on use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a). March 27, 2005 is stated in the application to
be the date of first use of the mark anywhere, and April 22, 2005
is stated to be the date of first use of the mark in commerce.

2 Moreover, the mere listing of third-party registrations in
applicant’s brief does not suffice to make such registrations of
record. See In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 n.3
(TTAB 1994); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB
1983).
Ser No. 78857012
3
is being used on or in connection with those 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, it is settled that “[t]he question is not
whether someone presented with only the mark could guess
what the goods or services are. Rather, the question is
whether someone who knows what the goods or services are
will understand the mark to convey information about them.”
In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
See also In re American Greetings Corporation, 226 USPQ 365
(TTAB 1985).
Laudatory terms or phrases are a species of merely
descriptive marks. “Marks that are merely laudatory and
descriptive of the alleged merit of a product are also
regarded as being descriptive…. Self-laudatory or puffing
marks are regarded as a condensed form of describing the
character or quality of the goods.” In re Boston Beer Co.
L.P., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir.
1999)(THE BEST BEER IN AMERICA for beer and ale found to be
laudatory and incapable of distinguishing source). See also
In re Nett Designs Inc., 236 F.3d 1338, 57 USPQ2d 1564
Ser No. 78857012
4
(Fed. Cir. 2001)(THE ULTIMATE BIKE RACK found to be a
laudatory descriptive phrase that touts the superiority of
the applicant’s bike racks); In re The Place Inc., 76
USPQ2d 1467 (TTAB 2005)(THE GREATEST BAR found to be
laudatory and thus merely descriptive of restaurant and bar
services). Cf. Hoover Co. v. Royal Appliance Manufacturing
Co., 238 F.3d 1357, 57 USPQ2d 1720 (Fed. Cir. 2001)(NUMBER
ONE IN FLOORCARE is laudatory and thus not inherently
distinctive as applied to vacuum cleaners).
Also, slogans which would not be perceived as source
indicators but only as informational matter are not deemed
to be inherently distinctive and thus are not registrable.
See, e.g., In re Melville Corporation, 228 USPQ 970 (TTAB
1986)(BRAND NAMES FOR LESS merely descriptive of retail
clothing store services); cf. In re Remington Products
Inc., 3 USPQ2d 1714 (TTAB 1987)(PROUDLY MADE IN USA fails
to function as mark for electric shavers and parts
therefor).
Applying these principles in the present case, we find
that ENDURING FINANCIAL STRENGTH is a laudatory,
informational, and merely descriptive designation when used
in connection with insurance services such as applicant’s.
It would be viewed by prospective purchasers not as an
indication of source, but rather as merely a description of
Ser No. 78857012
5
the quality and dependability of applicant and its
services.
First, the evidence of record shows that “financial
strength” is a criterion upon which insurance companies are
rated by rating agencies, and that it also is a specific
positive or desirable attribute by which insurance
companies tout and describe their services. Applicant
itself, in its 2004 Annual Report, touts its “financial
strength ratings”:
Our success in the direct financial guaranty
system is significantly impacted by AGC’s current
financial strength ratings. We believe our
business plan is focused on the proper segments
of the market, supported by our substantial
capital base, sound underwriting and credit
discipline, all of which are benchmarks for
ratings improvement.
(www.assuredguaranty.com).

Other examples in the record of descriptive usage of
“financial strength” in connection with insurance services
include (emphasis added):
Because insurers and reinsurers lost so much
money after hurricanes Katrina, Rita and Wilma,
rating agencies, which rate the financial
strength of insurance companies, began to require
reinsurers to have more available capital to
cover losses, Denzer said. Reinsurers will need
to raise their premiums to generate some of that
capital. The rating agencies also now are
requiring insurers to buy more reinsurance,
Hewitt said.
(Pioneer Press (St. Paul, Minnesota) (December
30, 2006));

Ser No. 78857012
6
Overall, Moody’s awarded the industry an A1
average insurance financial strength rating
which, notably, falls within the lower level of
its investment grade ratings.
(Life Insurance International (December 11,
2006));

The most prominent independent ratings agencies
continue to recognize American General Life in
terms of insurer financial strength...
(www.aigag.com);

In 1999, Provident Mutual continued its heritage
of financial strength, one that is built on
profitable growth, diversified and increasing
sources of revenues, a high-quality conservative
balance sheet and a strong capital position.
...
Once again, Provident Mutual’s consistent
financial strength was reflected by the insurance
industry rating agencies.
(Provident Mutual 1999 Annual Report, from
www.nancywest.net/investing);

In this letter, Buffett spends some time
discussing how Berkshire’s insurance companies
can differentiate themselves in what is
essentially a commodity business:

“At Berkshire, we work to escape the industry’s
commodity economics in two ways. First, we
differentiate our product by our financial
strength, which exceeds that of all others in
the industry.”
(www.finance-weblog.com).

Based on this evidence, we find that FINANCIAL
STRENGTH, as it appears in applicant’s mark, would be
viewed as a merely laudatory, informational and descriptive
phrase denoting the quality and reliability of applicant’s
services, and not as an inherently distinctive indication
of source.
Ser No. 78857012
7
Second, and more importantly, we find that applicant’s
mark in its entirety, ENDURING FINANCIAL STRENGTH, likewise
is merely laudatory, informational and descriptive of
applicant’s services. Indeed, the adjective3 ENDURING only
heightens the laudatory nature of the phrase as a whole.
The evidence of record clearly supports this finding.
Initially, we note that applicant itself uses the
phrase in a laudatory, informational, non-service mark
manner in its 2004 Annual Report (at
www.assuredguaranty.com). In his “letter to shareholders,”
applicant’s president and Chief Executive Officer Dominic
J. Frederico states as follows, in pertinent part (emphasis
added):
All of us at Assured Guaranty are focused on
adding to our achievements in 2005 and building
on the foundation that was started more than 17
years ago to create a leading financial guaranty
insurance and reinsurance company that provides
enduring financial strength for fixed income
investors and long-term value creation for our
shareholders.

An applicant’s own usage of the designation in question in
a non-distinctive manner is highly probative evidence of
the merely descriptive nature of the designation. See In

3 Applicant’s contends that the word ENDURING, as used in the
mark, might be seen as a verb rather than an adjective. We find
this argument to be wholly unpersuasive.
Ser No. 78857012
8
re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed.
Cir. 1987).
The record also shows that others in the insurance
field use “enduring financial strength” as an informational
and laudatory phrase describing the quality and
dependability of their insurance services. The Trademark
Examining Attorney has made of record an excerpt from the
website of The Doctors Company (www.thedoctors.com),
another insurance company, which includes the following
statement (emphasis added):
The Doctors Company has received consecutive “A”
(Excellent) ratings from insurance industry
ratings agency A.M. Fiest company since 1985,
reflecting our company’s enduring financial
strength, security and performance.

An excerpt from the website of another insurance company,
American General Life Insurance Company (www.aigag.com),
includes the following statements (emphasis added):
Few companies can match the enduring financial
strength of American General Life Insurance
Company, one of the world’s leading providers of
financial services.

When you trust AIG Employee Benefit SolutionsSM
with your employee benefits plan, you get more
than outstanding products, service and support.
You get the enduring financial strength of one of
the market’s leading providers, a name that’s
known and trusted across the insurance industry:
AIG American General.

Ser No. 78857012
9
Also of record is an excerpt from the website of another
insurance company, Chubb Group of Insurance Companies
(www.chubb.com), which includes the following statement
(emphasis added):
Chubb’s strong balance sheet and superior credit
rating are assurances of our enduring financial
strength. Agents and brokers consistently rank
Chubb at the top of the insurance field, and
customers have chosen Chubb for more than a
century.

An excerpt from a financial advice website (www.finance-
weblog.com) quotes the famous investor Warren Buffet of
Berkshire Hathaway as follows (in pertinent part; emphasis
added):
Periodically, however, buyers remember Ben
Franklin’s observation that it is hard for an
empty sack to stand upright and recognize their
need to buy promises only from insurers that have
enduring financial strength. It is then that we
have a major competitive advantage.

We find that this evidence of use of “enduring
financial strength” by applicant and others in the
insurance field in its ordinary, non-distinctive sense
suffices to establish that the phrase would not be viewed
as an indication of source, but rather as a laudatory,
informational and descriptive phrase extolling and
describing the quality and dependability of applicant and
its insurance services.
Ser No. 78857012
10
Applicant’s arguments to the contrary are not
persuasive.
First, the laudatory and merely descriptive nature of
the phrase “enduring financial strength” as used in
connection with applicant’s insurance services is not
lessened or negated by the fact that the phrase might be
equally merely descriptive if used in connection with other
industries or fields. In re Hutchinson Technology Inc.,
852 Fed.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988), relied on
by applicant, is readily distinguishable. Unlike the word
TECHNOLOGY involved in that case, which was found to be too
vague to be merely descriptive, “enduring financial
strength” immediately and specifically describes a
particular desirable characteristic of applicant’s
services, i.e., their dependability.4 This case thus is
more like In re Finisar Corp., 78 USPQ2d 1618 (TTAB 2006),
where the Board rejected a similar argument, distinguishing
Hutchinson by finding that the term SMART, unlike the word
TECHNOLOGY and despite its potential applicability to
numerous products, was sufficiently definite to be merely

4 To use applicant’s proffered example (at pages 10-11 of its
appeal brief), the word “dependable” in fact would be merely
descriptive and unregistrable whether it is applied to insurance
services or to automobiles or to any other product or service as
to which dependability is a specific and desirable attribute.
Ser No. 78857012
11
descriptive of a particular feature of the goods involved
in that case (optical tranceivers).
Second, and relatedly, we are not persuaded by
applicant’s argument that that “enduring financial
strength” is not merely descriptive because purchasers
likely would not be able to immediately identify what
applicant’s particular services are merely by looking at
the mark. As noted above, “[t]he question is not whether
someone presented with only the mark could guess what the
goods or services are. Rather, the question is whether
someone who knows what the goods or services are will
understand the mark to convey information about them.” In
re Tower Tech Inc., supra, 64 USPQ2d at 1316-17. We find
that purchasers who know that applicant’s services are
insurance services will readily understand “enduring
financial strength” to mean that applicant and its services
are dependable.
Third, we reject applicant’s argument that regardless
of the mere descriptiveness of each of the words in the
mark, their combination results in a composite with an
inherently distinctive commercial impression. Applicant
does not identify what that new commercial impression might
be, and we can think of none. The composite viewed
Ser No. 78857012
12
together is as merely descriptive as the component words
are when viewed separately.
Based on the evidence of record and for the reasons
discussed above, we conclude without doubt that ENDURING
FINANCIAL STRENGTH is merely descriptive as applied to the
services recited in the application, and that Trademark Act
Section 2(e)(1) therefore bars registration of the mark on
the Principal Register.5

Decision: The refusal to register is affirmed.

5 For the first time in its appeal brief, applicant requests
that, if we affirm the Section 2(e)(1) refusal to register the
mark on the Principal Register, we allow the application to be
registered on the Supplemental Register. However, an application
involved in an ex parte proceeding at the Board may be reopened
after final decision only for entry of a disclaimer; any other
basis for reopening the application after appeal, including a
request for amendment to the Supplemental Register, must be
pursued by way of a petition to the Director. See Trademark Rule
2.142(g), 37 C.F.R. §2.142(g); In re Phillips-Van Heusen Corp.,
63 USPQ2d 1047, 1047 n.2 (TTAB 2002). See generally TBMP §1218.
Accordingly, we shall give no consideration to applicant’s
request for registration on the Supplemental Register.