Consumer Insurance Group, Inc.

Trademark Trial and Appeal Board

Jun 19, 2001

No. 75772303 (T.T.A.B. Jun. 19, 2001)

06/19/01
Paper No. 9
EJS
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Consumer Insurance Group, Inc.
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Serial No. 75/772,303
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Thomas S. Birney of Dorr, Carson, Sloan & Birney, P.C. for
Consumer Insurance Group, Inc.
Doritt Carroll, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney)
_______
Before Simms, Seeherman and Wendel, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Consumer Insurance Group, Inc. has appealed from the
final refusal of the Trademark Examining Attorney to
register ETERM as a service mark for “insurance brokerage.”1
Registration has been refused by the Trademark Examining
Attorney pursuant to Section 2(e)(1) of the Trademark Act,
1 Application Serial No. 75/772,303, filed August 10, 1999, and
asserting first use and first use in interstate commerce on
May 8, 1998.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/772,303
2
15 U.S.C. 1052(e)(1), on the ground that applicant’s mark
is merely descriptive of applicant’s services.
Applicant and the Examining Attorney have filed appeal
briefs.2 An oral hearing was not requested.
It is the Examining Attorney’s position that ETERM is
merely descriptive because it immediately conveys to
consumers that applicant provides term insurance
electronically via a global computer network. In support
of this position, the Examining Attorney has made of record
dictionary definitions of term insurance -- “insurance
providing coverage for losses to the insured during a
stated period but becoming void upon its expiration”3 and e-
-- “an abbreviation of “electronic” that generally indicate
[sic] information or functions involving the Internet”;4
excerpts taken from various websites showing use of the “e-
” prefix for Internet-related goods and services, including
2 In its brief applicant listed certain “E” marks. The
Examining Attorney has objected to our consideration of this
“evidence.” The objection is well taken. Trademark Rule
2.142(d) provides that the record in an application should be
complete prior to the filing of an appeal. Evidence cannot be
made of record with the appeal brief. Apart from the
untimeliness, the submission of a list of registrations is
insufficient to make them of record. In re Duofold Inc., 184
USPQ 638 (TTAB 1974). In any event, even if the registrations
had been properly made of record, they would not cause us to
reach a different result in this case. See In re Styleclick.com,
Inc., 57 USPQ2d 1445 (TTAB 2000).
3 The American Heritage Dictionary of the English Language, 3d
ed. © 1992, electronic version.
4 Official Internet Dictionary, © 1998.
Ser. No. 75/772,303
3
“e-business”, “e-conferences” and “e-commerce”; and
excerpts from the LEXIS-NEXIS data base showing use of
“e-insurance,” including the following:
First Union Corp. has purchased
Professional Direct Agency, an online
insurance agency, for $4.35 million in
case in order to move into e-insurance.
“The American Banker,” July 26, 2000
The field of “e-insurance” alone,
dedicated to streamlining all aspects
of the insurance business, has produced
nothing short of an explosion of new
companies….
“The Washington Post,” July 16, 2000
…Internet to streamline and automate
the insurance distribution process to
facilitate end-to-end transaction
processing. Carriers and distributors
can significantly decrease costs,
increase revenue and improve service
levels by using ChannelPoint’s
applications and Exchange Platform
technology to conduct e-insurance
transactions.
“National Underwriter,” May 22, 2000
Moreover, the Examining Attorney has pointed to
applicant’s own materials to demonstrate that applicant’s
insurance brokerage services include term insurance, and
that applicant provides its insurance brokerage services
via the Internet. Its website states that “eterm is
committed to making it as easy and convenient as possible
for you to purchase the quality, low-cost term life
insurance that you need.” Further, its very specimens are
Ser. No. 75/772,303
4
excerpts from its website, and advertise the ETERM services
as “Web’s Fastest Life Insurance Quote.”
A mark is merely descriptive, and therefore prohibited
from registration by Section 2(e)(1) of the Act, if it
immediately conveys knowledge of the ingredients, qualities
or characteristics of the goods (or services). In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In
re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
In this case, based on the evidence of record, we find that
ETERM immediately conveys to purchasers of applicant’s
insurance brokerage services that applicant offers term
insurance electronically, through the Internet/global
network.
The evidence demonstrates that the prefix E- is used
to show that products and services are offered through or
utilize the Internet. The evidence also shows that TERM is
a descriptive term which identifies a type of insurance,
and that such insurance is offered through the Internet.
When these elements are combined as ETERM, and used for
insurance brokerage services, the mark immediately conveys
to consumers that term insurance is being offered
electronically through the Internet. See In re
Styleclick.com Inc., 57 USPQ2d 1445, 1448 (TTAB 2000) (“in
sum, ‘e-,’ when used as a prefix in the manner of
Ser. No. 75/772,303
5
applicant’s mark, has the generally recognized meaning of
‘electronic’ in terms of computers and the Internet. When
this non-source-identifying prefix is coupled with the
descriptive word ‘fashion,’ the mark E FASHION, as a whole,
is merely descriptive for applicant’s goods and/or
services.”)
Applicant argues that ETERM is a coined term and not a
word in the English language. However, as stated above,
the use of the “E-” prefix is generally used to indicate
information or functions involving the Internet, such that
when E is combined with TERM, and the resulting ETERM is
used for insurance brokerage services, people will
immediately understand the meaning of this term.
Applicant also appears to argue that consumers would
not know, from the term ETERM alone, that applicant offers
insurance brokerage services, and asserts (without any
evidentiary support) that ETERM “is used as an acronym for
‘terminal emulation’ software at www.eterm.org.” Brief,
p. 3. Applicant also states that the word “term” by itself
has a wide variety of possible meanings unrelated to life
insurance.
The fallacy of applicant’s position is that the
question of registrability is not decided in a vacuum, but
in relation to the goods on which, or the services in
Ser. No. 75/772,303
6
connection with which, it is used. Applicant’s approach—
whether the word conveys the characteristics, qualities,
etc. of a product or service to one who does not know what
the product or service is, was rejected by our primary
reviewing Court in In re Abcor Development Corporation, 588
F.2d 811, 200 USPQ 215 (CCPA 1978).
Applicant has also pointed out that the Patent and
Trademark Office previously published, in 1998, an
application for ETERM for insurance services, thereby
indicating that the Office has taken a position that the
mark is inherently distinctive. As the Board recognized in
In re Styleclick.com Inc., supra, there has been
inconsistent treatment by the Office with respect to
“e-” prefix marks. The Board suggested the inconsistencies
may have been due to the fact that previously the meaning
of the “e-” prefix may have been known only by those few
who were then accessing the Internet. At this point in
time, we have no doubt that the meaning of the “e-” prefix
is commonly recognized and understood by virtually everyone
as a designation for the Internet. Id. Accordingly, the
fact that a previous application for ETERM for insurance
services was approved for publication by an Examining
Attorney does not persuade us that the same result should
occur in this case. As has been frequently stated, each
Ser. No. 75/772,303
7
case must be decided on its own merits. In view of the
record herein, we have no doubt that ETERM is merely
descriptive for insurance brokerage services.
Decision: The refusal of registration is affirmed.