David M. Chester

Trademark Trial and Appeal Board

Apr 27, 2007

No. 76636335 (T.T.A.B. Apr. 27, 2007)

Mailed:
April 27, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re David M. Chester
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Serial No. 76636335
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John D. Gugliotta of Patent, Copyright & Trademark Law
Group for David M. Chester.

Christopher L. Buongiorno, Trademark Examining Attorney,
Law Office 102 (Thomas V. Shaw, Managing Attorney).
_______

Before Quinn, Holtzman and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

David M. Chester (applicant) has filed an application
to register SETTLE YOUR CLAIM (in standard character form)
on the Principal Register for services ultimately
identified as “Legal services; and attorney services
including litigating in-court settlements and negotiating
out of court settlements” in International Class 42.1

1 Application Serial No. 76636335, filed April 18, 2005, alleging
a bona fide intention to use the mark in commerce under Trademark
Act Section 1(b). 15 U.S.C. §1051(b). The original application
included the following services: “Direct mail advertising and
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76636335
2
The examining attorney has refused registration under
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 services.
When the refusal was made final, applicant appealed
and briefs have been filed. We affirm the refusal to
register.
“A mark is merely descriptive if it ‘consist[s] merely
of words descriptive of the qualities, ingredients or
characteristics of’ the goods or services related to the
mark.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370, 1371 (Fed. Cir. 2004), quoting, Estate of P.D.
Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920).
See also In re MBNA America Bank N.A., 340 F.3d 1328, 67
USPQ2d 1778, 1780 (Fed. Cir. 2003). The test for
determining whether a mark is merely descriptive is whether
it immediately conveys information concerning a quality,
characteristic, function, ingredient, attribute or feature
of the product or service in connection with which it is
used, or intended to be used. In re Engineering Systems
Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-Crest, Ltd.,

on-line advertising in the fields of attorney services, legal
services and negotiating of out of court settlements” in
International Class 35. Applicant’s request to divide the
application and place the class 35 services in a separate
application was granted on March 7, 2006.
Ser No. 76636335
3
204 USPQ 591 (TTAB 1979). It is not necessary, in order to
find a mark merely descriptive, that the mark describe each
feature of the goods or services, only that it describe a
single, significant quality, feature, etc. In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re
Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
Further, it is well-established that the determination of
mere descriptiveness must be made not in the abstract or on
the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the impact that it is likely to
make on the average purchaser of such goods or services.
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
218 (CCPA 1978).
The examining attorney argues that the proposed mark
SETTLE YOUR CLAIM “describes a purpose or feature of
applicant’s services—settle the prospective client’s
claim.” Br. unnumbered p. 2. He further argues that the
combination of terms in the mark does not “evoke a new and
unique commercial impression apart from the descriptive
meaning.” Br. unnumbered p. 4. In support of the refusal,
the examining attorney submitted web pages from two law
firms where the phrase “settle your claim” is used
descriptively, as shown below with emphasis added:
Ser No. 76636335
4
After the elimination of no-fault benefits, it
may become more difficult to settle your claim
without the help of a lawyer...The Following
Information May be Helpful If You Choose To
Settle Your Claim On Your Own:...One of the first
questions to consider is when is the correct time
to settle your claim...When you are ready to
settle your claim, you should provide this
information to the insurance adjuster through a
written settlement letter. www.kenjaray.com;

How long will it take to settle my
claim...The length of time to settle your claim
is usually determined by you and your doctor.
www.hardwickpendergast.com.

We take judicial notice of the following dictionary
definitions:2
CLAIM: 4. a. A demand for payment in
accordance with an insurance policy or other
formal arrangement.

The American Heritage Dictionary of the English
Language (3d ed. 1992).

SETTLE: 1. to conclude a lawsuit by entering into
an agreement,

Merriam-Webster’s Dictionary of Law (2001).

When we consider the dictionary definitions of the
words CLAIM and SETTLE and use of the phrase SETTLE YOUR
CLAIM in the excerpts retrieved from the Internet, we find
that the phrase SETTLE YOUR CLAIM is at least descriptive
of a significant feature or characteristic of the services,

2 University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Ser No. 76636335
5
namely, that applicant offers litigation of in-court
settlements and negotiation of out-of-court settlements.
Applicant argues that absent the context of legal
services the “words SETTLE YOUR CLAIM can have numerous,
contradictory or ambiguous meaning [sic].” Br. p. 3. It
is not necessary that the proposed mark contain the wording
“legal services” in order to be considered merely
descriptive, it is enough that the proposed mark
immediately inform the consumer about a feature of the
services, in this case that would be the settlement
services applicant provides. Similarly, applicant’s
unsupported argument that the phrase SETTLE YOUR CLAIM
presents a unique commercial impression is unpersuasive.
As shown by the evidence of record, this exact phrase is
commonly used by applicant’s competitors to assist in
describing the offered services. Finally, applicant’s
reference to third-party registrations is not convincing.
First, the Board does not take judicial notice of
registrations and the mere submission of a list of
registrations does not make these registrations part of the
record. In re Delbar Products, Inc., 217 USPQ 859 (TTAB
1981); In re Duofold Inc., 184 USPQ 638 (TTAB 1974). We
further note that the list does not include the services
for which these marks are registered or an indication if
Ser No. 76636335
6
they are registered on the Supplemental Register or on the
Principal Register based on a showing of acquired
distinctiveness. Finally, as has often been stated, each
case must be considered on its own merits based on evidence
of record at the time registration is sought. See In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir.
2001); and In re Scholastic Testing Service, Inc., 196 USPQ
517 (TTAB 1977).
In this case, we are persuaded that the unitary phrase
SETTLE YOUR CLAIM when used in connection with the recited
services would immediately inform the potential users of a
significant aspect of those services, i.e., the provision
of claim settlement services. Nothing requires the
exercise of imagination, cogitation, mental processing or
gathering of further information in order for prospective
users of applicant’s services to perceive readily the
merely descriptive significance of the phrase SETTLE YOUR
CLAIM as it pertains to applicant’s services.

Decision: The refusal to register under Section 2(e)(1) of
the Trademark Act is affirmed.