Capital Resources Group LLC

Trademark Trial and Appeal Board

Jan 7, 2008

No. 78610179 (T.T.A.B. Jan. 7, 2008)

Mailed:
January 7, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Capital Resources Group LLC
________

Serial No. 78610171
Serial No. 78610179
_______

Lesia O. Skrypoczka, Esq. of Akin Gump Strauss Hauer & Feld
for Capital Resources Group LLC

Kathryn E. Coward, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Seeherman, Quinn, and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Capital Resources Group LLC filed two intent-to-use
applications for the marks STUDENT LOAN DIRECT and
STUDENTLOANDIRECT, both marks in standard characters format
and for identical services, namely1:
educational loan services; financing of goods and
services related to education; research in the area of
financial resources for kindergarten through grade 12,
college, university and adult education; college
savings plans; providing scholarships for education;

1 Application Serial Nos. 78610171 and 78610179 were both filed
on April 15, 2005. Because the applications are owned by the
same applicant, were reviewed by the same examining attorney, and
involve common issues of fact and law, we have consolidated the
appeals.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78610171
Serial No. 78610179

2
management of corporate financial resources for use in
education, training and recruitment.

The application for the former mark contains a
disclaimer of “STUDENT LOAN.”
Both applications were refused registration on the
ground that the marks are merely descriptive pursuant to
Section 2(e)(1) of the Lanham Act, 15 U.S.C. § 1052(e)(1).
The examining attorney’s arguments regarding the
descriptiveness refusals are essentially the same for both
applications. She contends that the phrase STUDENT LOAN
either describes the type of services recited in the
application, namely, providing educational loan and
financing for goods and services relating to education, or
the phrase describes the subject matter of applicant’s
research services. The examining attorney also argues that
“[b]ecause the services can be obtained straight from
applicant without an intervening person, condition, or
agency,” the term DIRECT “merely describes the method by
which the services are offered to the consumer.” Brief at
p. 3. And, taken together, she concludes that the marks
STUDENTLOANDIRECT and STUDENT LOAN DIRECT are merely
descriptive of the services recited in the applications.
Applicant has appealed the final refusals. Both
applicant and the examining attorney have filed briefs for
Serial No. 78610171
Serial No. 78610179

3
each application.
In support of her refusals, the examining attorney has
made dictionary definitions of record for the phrase
“student loan” and the word “direct.” They are as follows:
Student loan
noun
loan for students: a loan taken by a student to
pay for educational expenses, usually at a
favorable rate of interest that is subsidized by
the government.

[from MSN Encarta online dictionary, definition
found at
http://encarta.msn.com/dictionary_/student%2520lo
an.html]
____________________

Direct
TRANSITIVE
VERB:
1. To manage or conduct the affairs of;
regulate. 2. To have or take charge of; control.
See synonyms at conduct. 3. To give
authoritative instructions to: directed the
student to answer. 4. To cause to move toward a
goal; aim. See synonyms at aim. 5. To show or
indicate the way for: directed us to the
airport. 6. To cause to move in or follow a
straight course: directed their fire at the
target. 7. To indicate the intended recipient on
(a letter, for example). 8. To address or adapt
(remarks, for example) to a specific person,
audience, or purpose. 9a. To give guidance and
instruction to (actors or musicians, for
example) in the rehearsal and performance of a
work. b. To supervise the performance of.
INTRANSITIVE
VERB:
1. To give commands or directions. 2. To conduct
a performance or rehearsal.
ADJECTIVE: 1. Proceeding without interruption in a straight
course or line; not deviating or swerving: a
direct route. 2. Straightforward and candid;
frank: a direct response. 3. Having no
intervening persons, conditions, or agencies;
Serial No. 78610171
Serial No. 78610179

4
immediate: direct contact; direct sunlight. 4.
Effected by action of the voters, rather than
through elected representatives or delegates:
direct elections. 5. Being of unbroken descent;
lineal: a direct descendant of the monarch. 6.
Consisting of the exact words of the writer or
speaker: a direct quotation; direct speech. 7.
Lacking compromising or mitigating elements;
absolute: direct opposites. 8. Mathematics
Varying in the same manner as another quantity,
especially increasing if another quantity
increases or decreasing if it decreases. 9.
Astronomy Designating west-to-east motion of a
planet in the same direction as the sun's
movement against the stars. 10. Sports Being a
free kick in soccer by which a goal can be
scored without the ball being touched by a
second player.
ADVERB: Straight; directly.
[from The American Heritage Dictionary of the
English Language: Fourth Edition. 2000.]

The examining attorney maintains that it is the third
adjectival meaning for the term “direct” (i.e., “[h]aving
no intervening persons, conditions, or agencies”) that is
appropriate given the context of applicant’s recited
services.
The examining attorney attached to her final Office
Action printouts from a Patent and Trademark Office
electronic database evidencing third-party registrations
for marks containing the term “direct” and involving loan
or lending services. The registrations either contain a
disclaimer of “direct” or are on the Supplemental Register.
The examining attorney acknowledges that such evidence is
Serial No. 78610171
Serial No. 78610179

5
not conclusive on the issue of descriptiveness, but
contends it shows that “the term [“direct”] has been found
to be descriptive in some cases” and is “commonly used in
the lending industry.”
The examining attorney also attached three articles
obtained from the internet to her final Office Action. The
articles are captioned as: a) “Direct vs Indirect
Lending,” b) “How Do I Get My Stafford Loan? Direct
Lending vs. FFELP Schools,” and c) “Straight Talk on
Student Loans.” These articles, she argues, is evidence
that “direct lending” is a term used to describe a “form of
lending used in the field of loan financing especially for
student loans.”
Applicant argues that the term “direct” has many
possible meanings and “as used in Applicant’s mark and
applied to the services would not be immediately understood
by the public with any level of particularity.” Brief at
p. 4. Applicant points out that the dictionary definition
of “direct,” as relied on by the examining attorney,
provides “several recognized meanings,” and “mental steps
would be required to glean any particular meaning for the
term….”
Applicant argues that even if the term “direct” is
held to be descriptive, applicant’s mark is “one unitary
Serial No. 78610171
Serial No. 78610179

6
phrase.” Taken together, applicant contends, this phrase
is a “unique and distinctive mark which is not merely
descriptive of the services claimed in the application.”
Brief at p. 7.
Applicant contends that “[t]he practice of the
Trademark Office in registering on the Principal Register
marks containing ‘DIRECT’ with no disclaimer or evidence of
distinction required clearly underscores the fact that
‘DIRECT’ is not merely descriptive in this case.” Brief at
p. 5. To support this, applicant specifically relies on
nine registrations involving International Class 36
(financial and insurance) services for marks containing the
term “direct” in which that word was not disclaimed.2
Before addressing the merits of the refusal, we note
that applicant argues in its reply brief that one of the
internet articles relied on by the examining attorney is
“inherently unreliable.” As to the article captioned
“Direct vs Indirect Lending,” applicant contends “there is
no way to ascertain if this is an article from an

2 We note that applicant identified Registration No. 2480188
twice in the list of third-party registrations identified in its
appeal brief. Applicant previously submitted printouts from a
Patent and Trademark Office electronic database for these and
other third-party applications during the prosecution of the
application. As to the third-party applications, they have no
evidentiary value other than to show that they were filed. In re
Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1699 (TTAB 1992).

Serial No. 78610171
Serial No. 78610179

7
authoritative source on the subject, or the blogging of a
self-proclaimed ‘money expert’.” Although applicant does
not specifically attack the admissibility of this article,
we find it necessary to point out that internet evidence is
generally admissible and may be considered for purposes of
evaluating a trademark. In re Bayer Aktiengesellschaft,
488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir. 2007). See also
TMEP §710.01(b) (4th ed. 2005) (“Articles downloaded from
the Internet are admissible as evidence of information
available to the general public, and of the way in which a
term is being used by the public. However the weight given
to this evidence must be carefully evaluated because the
source is often unknown”). Accordingly, we have considered
this article in this light and in conjunction with all of
the other evidence of record.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(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 Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
A term need not immediately convey an idea of each and
every specific feature of the applicant's goods or services
Serial No. 78610171
Serial No. 78610179

8
in order to be considered merely descriptive; it is enough
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); and 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
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 (TTAB
1979). 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 (TTAB 2002); see also In
re Home Builders Association of Greenville, 18 USPQ2d 1313
(TTAB 1990); and In re American Greetings Corporation, 226
USPQ 365 (TTAB 1985).
We turn now to the examining attorney’s Section
2(e)(1) refusals as applied to applicant’s marks
Serial No. 78610171
Serial No. 78610179

9
STUDENTLOANDIRECT and STUDENT LOAN DIRECT. Initially, we
note that there is no issue as to whether the phrase
“student loan” is descriptive. Clearly, the phrase is
descriptive for applicant’s “educational loan services” and
applicant has not argued to the contrary.
As to the remaining term, “direct,” the examining
attorney asserts that it is descriptive of the services to
be rendered, i.e., straight from the applicant without an
intervening person, condition, or agency. We agree with
the examining attorney in view of the evidence of record.
Specifically, the evidence establishes that the term
“direct” takes on this connotation when used in connection
with lending and loans, including those made for
educational purposes. For example, the article “Direct vs
Indirect Lending” (www.wfhummel.cnchost.com) describes
“direct lending” as involving “the transfer of funds from
the ultimate lender to the ultimate borrower, most often
through a third party.” In contrast, the article describes
“indirect” lending as involving a “financial intermediary
who pools the funds of many lenders in order to re-lend at
a markup over the cost of the funds.” As previously
stated, applicant has objected to this article because the
author is unknown; however, the article is still evidence
of the perception of the author as to the descriptive
Serial No. 78610171
Serial No. 78610179

10
nature of “direct” with respect to loans, as well as to the
understanding of those that read the article. We also note
that applicant has not submitted any evidence that rebuts
or contradicts the use of the term “direct.”
The article “How Do I Get My Stafford Loan? Direct
Lending vs. FFELP Schools” (www.princetonreview.com),
discusses different ways for students to obtain federal
loans, including “direct lending.” Here, “direct lending”
is described as “remov[ing] the ‘middle-man’ from the
equation of applying for an receiving student loans.”
Finally, in the third article, “Straight Talk on
Student Loans” (www.ppionline.org), the author discusses
student loan practices. He contrasts “direct lending,”
which he describes as the federal government “lending
directly to students,” with the federal government
guaranteeing bank loans to students. The “direct lending”
method is touted as more efficient because the “middlemen
are cut out of the process.”
Based on the above and contrary to applicant's
contention, we find that there is no exercise of
imagination required from prospective users of applicant's
services in order for them to readily perceive the term
“direct,” when used in applicant’s marks and in connection
with applicant’s recited services, as describing the type
Serial No. 78610171
Serial No. 78610179

11
or subject matter of applicant’s student loan and
educational financing services, namely, that purchasers may
receive direct student loans or direct lending from
applicant for their educational needs.
As noted, both applicant and the examining attorney
rely on third-party registrations to support their
respective arguments regarding whether or not the term
“direct” is descriptive of applicant’s recited services.
Of the third-party registrations identified by applicant in
its appeal brief for marks containing the term “direct” on
the Principal Register without a disclaimer, only two
involve lending or some type of loan service.3 The other
third-party registrations applicant relies on have little
or no probative value because they involve services in the
fields of employment benefit administration, financial
investment, real estate brokerage, etc. The examining
attorney, on the other hand, identified in her final Office
action what she called a “sample” of ten third-party
registrations for marks containing the term “direct.” All
of these registrations either contain a disclaimer of
“direct” or are on the Supplemental Register and all

3 We refer to Registration Nos. 2639138 (RV CREDIT DIRECT for
“providing financing and origination of loans for recreational
vehicles”) and 2480188 (CHASE HOME LOAN DIRECT for “mortgage
banking services”).
Serial No. 78610171
Serial No. 78610179

12
involve lending or some type of loan service. Thus, to the
extent that we accord any weight to the third-party
registrations of record in our analysis as to whether the
term “direct” is descriptive in connection with applicant’s
student loan or financing services, we note that an
overwhelming majority of these registrations suggest that
the term is descriptive in connection with loan or
financing services. In any case, as expressly stated by
our principal reviewing court in In re Nett Designs Inc.,
236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001), “The
Board must decide each case on its own merits,...Even if
some prior registrations had some characteristics similar
to [the subject] application, the PTO's allowance of such
prior registrations does not bind the Board or this court.”
Applicant’s argument that even if the term “direct” is
deemed to be descriptive, the “combination of descriptive
elements may result in a non-descriptive composite” is also
misplaced. A term which is created by combining two or
more unregistrable words may achieve registration if, in
combination, a new and different commercial impression is
achieved and/or the term so created imparts a bizarre or
incongruous meaning as used in connection with the goods or
services. See In re Oppedahl & Larson LLP, 373 F.3d 1171,
71 USPQ2d 1370 (Fed. Cir. 2004); In re National Shooting
Serial No. 78610171
Serial No. 78610179

13
Sports Foundation, 219 USPQ 1018 (TTAB 1983). In this
case, however, applicant does not identify (and we do not
see) any new different commercial impression or point to a
bizarre or incongruous meaning created by the combination
of the terms. To the contrary, we find that applicant's
marks, when used in connection with applicant's recited
services, comprise three descriptive components which,
taken together, create marks that are merely descriptive of
the services.
In summary, we find that the evidence supports the
examining attorney’s refusals to register applicant’s marks
on the basis that they are merely descriptive of the
recited services. Specifically, we find that the marks
STUDENTLOANDIRECT and STUDENT LOAN DIRECT immediately
describe, without conjecture or speculation, the type or an
important feature of applicant's educational loan services,
namely, that the recited services will include student
loans that are directly lended.
Decision: The refusals to register the marks under
Section 2(e)(1) are affirmed.