Capital Financial Advisors, Inc.

Trademark Trial and Appeal Board

Oct 24, 2008

No. 76661472 (T.T.A.B. Oct. 24, 2008)

Mailed:
October 24, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Capital Financial Advisors, Inc.
________

Serial No. 76661472
_______

Thomas I. Rozsa of the Rozsa Law Group LC for Capital
Financial Advisors, Inc.

Lindsey H. Rubin, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Grendel, Drost and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Capital Financial Advisors, Inc. (“applicant”) filed a
use-based application for the phrase IS YOUR MORTGAGE
CONTRIBUTING TO YOUR WEALTH? (in standard character format)
for “mortgage brokerage services,” in Class 36. Applicant
submitted the print advertisement shown below as its
specimen of use.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76661472
2

The Examining Attorney refused registration on the
ground that “the proposed mark, as used on the specimen of
record, conveys purely informational matter relating to
applicant’s services. Thus, the proposed mark does not
function as a service mark to indicate the source of
applicant’s services. Trademark Act Sections 1, 2, 3 and
45, 15 U.S.C. §§1051, 1052, 1053 and 1127.”
Serial No. 76661472
3
Specifically, the specimen of record
consists of an advertisement for
applicant’s services, which shows the
proposed mark used as a common question
used to grab the attention of potential
consumers seeking financial advice, in
particular, those seeking advice about
mortgages.1

In response to the refusal, the applicant submitted
excerpts from its website as a substitute specimen. The
relevant portion of that specimen displaying the subject
matter sought to be registered is shown below.2

The refusal was made final and applicant appealed.
In its brief, applicant argues, in essence, that
because the specimens show IS YOUR MORTGAGE CONTRIBUTING TO
YOUR WEALTH? used in connection with mortgage brokerage
services, it functions as a service mark to identify those

1 November 20, 2006 Office Action.
2 Subsequently, applicant submitted a second copy of the print
advertisement submitted as original specimen.
Serial No. 76661472
4
services. In other words, the term at issue “is clearly
used in conjunction with the specific services . . . which
is appropriate service mark use.”3 In its reply brief,
applicant emphasized that IS YOUR MORTGAGE CONTRIBUTING TO
YOUR WEALTH? functions as a service mark because it was
separately displayed and used in conjunction with mortgage
brokerage services.
The issue before us is whether the phrase IS YOUR
MORTGAGE CONTRIBUTING TO YOUR WEALTH?, as displayed in the
specimens, used as a service mark.
A service mark is “a mark used in the sale or
advertising of services to identify the services of one
person and distinguish them from the services of others.”
Section 45 of the Trademark Act of 1946, 15 U.S.C. §1127.
Not every word, phrase, or slogan that appears in
advertising, marketing and other sales materials function
as a service mark. In re Morganroth, 208 USPQ 284, 287
(TTAB 1980). Thus, the mere fact that the subject matter
sought to be registered appears as a distinct phrase or
slogan, separate and apart from other matter, does not make
it a service mark. To be a mark, the word, phrase or
slogan at issue, must be used in a manner calculated to
project to purchasers or potential purchasers a single

3 Applicant’s Brief, pp. 2-3.
Serial No. 76661472
5
source or origin of the services. The mere intent that the
term, phrase or slogan function as a service mark is not
enough in and of itself. In re Morganroth, 208 USPQ at
287. See also In re Volvo Cars of North America Inc., 48
USPQ2d 1455, 1459 (TTAB 1998); In re Remington Products
Inc., 3 USPQ2d 1714, 1715 (TTAB 1987).
The critical question in determining whether
applicant’s phrase is a service mark is the commercial
impression it makes on the relevant public (i.e., whether
it would be perceived as mark or merely as an informational
phrase). In re Volvo Cars of North America Inc., 48 USPQ2d
at 1459; In re Remington Products Inc., 3 USPQ2d at 1715;
In re Morganroth, 208 USPQ at 287. Unfortunately, there is
no evidence bearing on the reaction of the purchasing
public to applicant’s use of its phrase IS YOUR MORTGAGE
CONTRIBUTING TO YOUR WEALTH? Accordingly, we must look to
the specimens to determine how consumers would perceive the
subject matter sought to be registered. In re The Signal
Companies, Inc., 228 USPQ 956, 957 (TTAB 1986); In re
Wakefern Food Corp, 222 USPQ 76, 77 (TTAB 1984).
We find that the primary significance of the phrase IS
YOUR MORTGAGE CONTRIBUTING TO YOUR WEALTH?, as used by
applicant, is likely to be perceived as advertising copy or
a promotional tool to grab the consumer’s attention, but it
Serial No. 76661472
6
would not be perceived as indicating the source of any
services. Our conclusion is not based on a finding that
applicant’s phrase is not prominently displayed or that it
is not used in connection with mortgage brokerage services.
“[I]t is not enough that the services be identified in the
same advertising piece on which the matter sought to be
registered appears. There must also be a direct
association between that matter and [applicant] as the
source of the indicated services.” In re The Signal
Companies, Inc., 228 USPQ at 958.
In this case, we find that the phrase IS YOUR MORTGAGE
CONTRIBUTING TO YOUR WEALTH? would not be perceived by
persons reading the advertisement any differently from the
way they would perceive any other information or
advertising about the mortgage brokerage services. The
phrase provides a framework for potential clients to
analyze their mortgage requirements. In the original
specimen, applicant’s phrase is analogous to other
statements that appear with it such as:
Q. Is your mortgaging contributing to
your wealth?

A. At Capital Financial Advisors, we
see your mortgage as an integral
part of financial well-being.

Q. Does it positively affect your
estate plan, retirement, taxes,
Serial No. 76661472
7
investment strategy, small
business, or living expenses?

A. We’ll show you how to turn your
mortgage into an asset.

In the substitute specimen, it appears as a quotation
by the mortgage broker to get the potential client to
consider whether he/she is getting the most out of his/her
mortgage.
As the subject matter sought to be registered is
presented in the specimens, consumers would not attribute
any service mark significance to it (i.e., that the phrase
identifies a brand of mortgage services). See In re Manco
Inc., 24 USPQ2d 1938, 1942 (TTAB 1992) (THINK GREEN and
design conveys ecological concerns, not source); In re
Melville Corporation, 228 USPQ 970, 971 (TTAB 1986)
(consumer’s will be view BRAND NAMES FOR LESS as a
merchandising slogan conveying information about
applicant’s services); In re Wakefern Food Corp, 222 USPQ
at 78 (WHY PAY MORE! would be perceived as a familiar
phrase suggesting that applicant’s stores offer lower
prices); In re Tilton Warren, Inc., 221 USPQ 86, 88 (TTAB
1984) (WATCH THAT CHILD is a familiar safety slogan and
would not be perceived as a trademark); In re European-
American Bank & Trust Co., 201 USPQ 788, 790 (TTAB 1979)
Serial No. 76661472
8
(consumers will identify THINK ABOUT as a familiar
expression and would perceive its ordinary meaning).
Accordingly, we are of the opinion that the phrase IS
YOUR MORTGAGE CONTRIBUTING TO YOUR WEALTH?, as used by
applicant, does not function as a service mark to identify
and distinguish mortgage brokerage services.
Decision: The refusal to register is affirmed.