Direct Response Corp.

Trademark Trial and Appeal Board

Mar 8, 2005

No. 76121702 (T.T.A.B. Mar. 8, 2005)

Mailed:
March 8, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Direct Response Corporation
________

Serial No. 76121702
_______

William R Hansen of Lathrop & Gage L.C. for Direct Response
Corporation.

Amos T. Matthews, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______

Before Hanak, Bucher and Rogers,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

Direct Response Corporation has applied to register
TEACHERS' INSURANCE PLAN as a mark for services identified,
after amendment, as "insurance services, namely
underwriting insurance in the fields of property, casualty
and automobile insurance; insurance claims administration
and processing; insurance consultation and insurance
brokerage services," in Class 36.
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 76121702
2
The application originally sought registration of the
proposed mark on the Principal Register and was based on
applicant's intention to use the mark in commerce. The
examining attorney refused registration under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on
the ground that the proposed mark, when used in connection
with the services, would be merely descriptive.1 Such
refusal was later made final. Applicant then filed an
amendment alleging use of the mark and, in view of the
examining attorney's refusal to allow the mark on the
Principal Register, an amendment to seek registration on
the Supplemental Register. The amendment to allege use
asserts that the proposed mark was first used, and first
used in commerce, "at least as early as October 2000."
When the application was filed, it included a
disclaimer of "'Insurance' and 'Plan' apart from the mark
as shown." In its response to the first office action,
applicant voluntarily, i.e., without a request from the
examining attorney, amended the disclaimer statement to

1 The initial office action also included a refusal of
registration under Trademark Act Section 2(d), 15 U.S.C. §
1052(d), but applicant responded by noting that it had obtained
an assignment of the cited registration; and it subsequently
recorded the assignment, thereby obviating this refusal.

Ser No. 76121702
3
disclaim "Insurance Plan" apart from the mark as shown.2
Applicant did not seek to withdraw its disclaimer of
"Insurance Plan" when it amended its application to seek
registration of TEACHERS' INSURANCE PLAN on the
Supplemental Register.
The examining attorney refused registration of the
proposed mark on the Supplemental Register under Section 23
of the Trademark Act, 15 U.S.C. § 1091, on the ground that
TEACHERS' INSURANCE PLAN "is incapable of identifying the
applicant's services and distinguishing them from others."
In response, applicant argued that its proposed mark is
"not primarily descriptive of the services." Though
applicant acknowledged, "the words may be commonly used in
the insurance industry in separate contexts," it asserted
that "the combination formed by the union of the terms
renders the mark either suggestive or distinctive."
Applicant also asserted that it did not think grant of a
registration "would preclude others in the insurance
industry from using the terms 'teachers' insurance plan' in

2 In correspondence between the examining attorney and applicant,
there are certain references to a disclaimer of "Teachers," but
this has neither been requested by the examining attorney nor
offered by the applicant, and the references appear to have
seeped into correspondence related to this application from
correspondence about applicant's separate application to register
TEACHERS.COM.
Ser No. 76121702
4
an ordinary descriptive sense to convey a descriptive
meaning."
In the final refusal of registration, the examining
attorney again stated that the proposed mark was
"incapable," referred to evidence purportedly showing use
of the phrase "in a highly descriptive manner," and
concluded that the phrase is generic because "TEACHER
identifies the consumers of applicant's services and
INSURANCE PLAN is the genus of the services," and the
combination "would have no separate or distinct commercial
impression."
During prosecution of the application after its
amendment to seek registration on the Supplemental
Register, applicant and the examining attorney continued to
present arguments about whether the proposed mark is
descriptive or only suggestive (applicant) or highly
descriptive (the examining attorney). Notwithstanding
these arguments, it is clear from applicant's request for
reconsideration and the examining attorney's denial of that
request, that both the examining attorney and the applicant
consider the ultimate legal question presented by the final
refusal to be whether TEACHERS' INSURANCE PLAN is generic
or merely descriptive and capable.
Ser No. 76121702
5
When a proposed mark is refused registration as
generic, the examining attorney has the burden of proving
genericness by "clear evidence" thereof. See In re Merrill
Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1143 (Fed. Cir. 1987). The critical issue is
to determine whether the record shows that members of the
relevant public primarily use or understand the term sought
to be registered to refer to the category or class of goods
or services in question. H. Marvin Ginn Corp. v.
International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228
USPQ 528, 530 (Fed. Cir. 1986). Making this determination
“involves a two-step inquiry: First, what is the genus of
goods or services at issue? Second, is the term sought to
be registered ... understood by the relevant public
primarily to refer to that genus of goods or services?”
Id. Evidence of the public’s understanding of a term may
be obtained from any competent source, including testimony,
surveys, dictionaries, trade journals, newspapers and other
publications. See Merrill Lynch, supra, 4 USPQ2d at 1143,
and In re Northland Aluminum Products, Inc., 777 F.2d 1556,
227 USPQ 961, 963 (Fed. Cir. 1985).
The examining attorney asserts in his brief that the
"genus or category of services at issue herein consists of
programs to indemnify purchasers against specified losses
Ser No. 76121702
6
in return for [a] premium paid" and this is more succinctly
"referred to as [an] insurance plan." Applicant appears to
consider the genus of services to be much broader, as it
asserts in its brief that "the mark TEACHERS' INSURANCE
PLAN covers a variety of services …. The range of services
covers much more than just insurance for teachers as the
Examining Attorney suggests is the case." In advancing its
argument, applicant essentially analogizes the collection
of services it offers to those offered by the "American
Society for Reproductive Medicine," see In re American
Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir.
1999), and it asserts in its reply brief that "[t]he
educational community regularly relies on TEACHERS'
INSURANCE PLAN … similar to how members of the American
Fertility Society would rely on their membership for
information." In particular, applicant notes in its brief
that it offers, "besides casualty insurance, an education
newsletter, school calendar, referral program, scholarship
program, and … state approved defensive driving programs."
These services are, however, beyond the scope of the
identification of services listed in applicant's
application. While we find the examining attorney's
description of the involved genus too narrow, insofar as it
does not encompass all the services identified in the
Ser No. 76121702
7
application, and we find the applicant's references to non-
insurance services to expand improperly the genus or class
of services involved herein, we find the identification of
services in the application an appropriate description of
the class of services. See In re American Institute of
Certified Public Accountants, 65 USPQ2d 1972, 1981-82 (TTAB
2003). This identification encompasses insurance products
offered to customers in need of such widely available forms
of insurance as property, casualty and auto policies;
insurance claims administration and processing services
that could be offered, for example, on a contract basis to
other insurers, including self-insurers; and, finally,
insurance consultation and brokerage services, that could
be offered, for example, to customers as diverse as
individuals seeking a package of different types of
insurance or to companies or government agencies seeking
insurance products to offer in benefits packages.
Given this description of the class or genus of
services, we find that the relevant public is broader than
either the examining attorney or applicant has
acknowledged. The examining attorney has focused only on
teachers as the class of purchasers of applicant's
services, while applicant has focused on a broader
description including not just teachers but also "various
Ser No. 76121702
8
non-teaching employees of schools, universities and school
districts and their families, such as cafeteria workers and
janitors." (Brief, p. 9) As discussed above, however, in
our discussion of the involved genus or class of services,
applicant offers, according to its identification, services
that could be bought by, for example, companies, school
districts, unions or associations of employees, government
agencies as well as the various types of individuals
described by applicant. Thus, we must review the evidence
of record to determine what the likely perception would be
of TEACHERS' INSURANCE PLAN by a relatively broad "relevant
public."
We note that certain classes of customers within this
broadly construed relevant public may be more likely than
others to have been reached by applicant's advertising and
promotion, or its collateral services offered to members of
the educational community. Thus, it is unlikely that the
record will reveal a singular perception of the proposed
mark. See Certified Public Accountants, 65 USPQ2d at 1983-
84.
The record includes dictionary definitions of each of
the words "teacher," "insurance" and "plan"; excerpts of
articles retrieved from the Nexis research database;
reprints of web pages from applicant's Internet web site;
Ser No. 76121702
9
and the "search results" listings of searches of the
Internet utilizing the Google search engine, one search
each done by both the applicant and the examining attorney.
As for the "search results" listings, we note that the
examining attorney conducted a search that effectively
retrieved web pages that have on them "teacher" or
"insurance" or "plan." Applicant in contrast, notes that
it searched for web pages that have on them the composite
"teachers' insurance plan," i.e., applicant's proposed
mark. It is not surprising, therefore, that the examining
attorney has argued that his search results support the
refusal of registration, while applicant has argued that
the results of its search show recognition of "teachers'
insurance plan" as a mark. We find neither of the search
results lists particularly probative, as the excerpts that
appear in such lists are extremely truncated and we do not
have the web pages themselves from which to examine the
context within which the search terms are used. Moreover,
the searches that were conducted are the equivalent of
extremely leading questions or biased surveys, intended not
to shed light on patterns of usage among the relevant
public but to highlight particular types of usage that
support, respectively, the examining attorney's and the
applicant's arguments.
Ser No. 76121702
10
Turning to the reprints of web pages accessed by
visiting applicant's Internet web site, we note that the
examining attorney and applicant both have put into the
record certain pages. The totality of these pages shows,
not surprisingly, that applicant frequently uses "teachers"
in generic fashion to signify a subset of the larger group
that it refers to as the education community or education
employees, that applicant uses the term "insurance plan" in
a generic manner, as in the phrase "auto insurance plan,"
and that applicant uses its proposed mark TEACHERS'
INSURANCE PLAN. Applicant's web pages do not contain any
self-defeating uses of "teachers' insurance plan," i.e.,
use in a way that would be perceived as generic, but its
use of the phrase as a mark is not determinative of the
ultimate issue in this case. Any business could present a
descriptive or generic term on its web pages in the same
manner of presentation or display that it would employ for
displaying a trademark, and such a self-serving use would
not reveal the likely perception of the relevant public
when the term was displayed in a normal fashion.
We turn, then, to the dictionary definitions and Nexis
excerpts of record as more probative evidence of the
understanding of the relevant public. We agree with the
examining attorney that the words teacher (and its plural,
Ser No. 76121702
11
possessive form teachers'), insurance and plan, when
combined as "teachers' insurance plan," would retain their
ordinary dictionary meanings. There is nothing about their
combination that results in any ambiguity, incongruity,
double entendre, or other effect that would make the whole
greater than its parts. When, however, words are combined
in a phrase, although we still consider the dictionary
definitions of the individual words as evidence of the
likely perception of the whole phrase, the examining
attorney must present additional evidence establishing
generic use of the phrase. American Fertility, 51 USPQ2d
at 1836-37.
In this case, the only source of such evidence is the
collection of Nexis excerpts put into the record.3 We note

3 Apart from the Nexis evidence of use of "teachers' insurance
plan," and variations thereof, the examining attorney has also
put into the record various Nexis excerpts showing generic use of
"insurance plan(s)," including the following:

…transplants performed last year, 97 percent were, in
fact, covered by private insurance, HMOs, PPOs, or
government insurance plans.
CNN DayBreak, July 17, 2002.

Aetna is offering a new health insurance plan for
employers with as few as 51 employees in an expansion
of its consumer-directed products.
The Atlanta Journal and Constitution, July 17, 2002

…However, she gets no health coverage, vacation pay or
other job benefits. But Brent is covered by her
husband's insurance plan.
The Dallas Morning News, July 17, 2002

Ser No. 76121702
12
that the examining attorney and applicant have conducted
separate searches of the Nexis database, but neither has
put in all the obtained results. Understandably, each has
put in results asserted to favor its position. In
addition, there is a good deal of duplication in the
record, which we have attempted to ferret out. Finally, we
note that applicant contends that the Nexis excerpts put
into the record by the examining attorney but which do not
show use of the exact phrase "teachers' insurance plan"
should be considered "mis-hits" and not probative. In
essence, applicant discounts use of such slight variations
as "teacher insurance plan" or "teachers' insurance plans."

Also driving up costs are consumers who are abandoning
their HMOs and turning toward more traditional
insurance plans, Flores said.
The Pueblo Chieftain (Colorado), July 17, 2002

HEADLINE: Senator at center of drug industry debate
Holmer said the drug industry favored Medicare
coverage of prescription drugs, "offered through
competing private insurance plans that rely on
marketplace competition to control costs."
Chicago Tribune, July 17, 2002

HEADLINE: UPS talks to resume on contract in Chicago
In addition, the company will be offering a long-term
care insurance plan for full-time retirees.
Chicago Tribune, July 17, 2002

Though these, of course, are not evidence of generic use of
"teachers' insurance plan," we have considered these excerpts,
just as we have considered the dictionary definitions of record.
In addition, we have considered the third party registrations
which the examining attorney has made of record and which include
either "insurance plan" or "insurance plans" in their
identifications of services.
Ser No. 76121702
13
We find the distinction inappropriate. Evidence of use of
variations on the phrase which utilize the same basic three
words, in the same order, and differ only in terms of the
use of singular or plural forms of "teacher" or "plan," or
in terms of the use of the possessive apostrophe, are
highly probative of the likely perception of the relevant
public of "teachers' insurance plan."
Nexis excerpts of record introduced by the examining
attorney and which are most supportive of the refusal
include the following:
…Consider better benefits; did you know that
child immunizations aren't even covered by the
Mat-Su teachers insurance plan?
Anchorage Daily News, August 13, 2002

Starting July 1, the teachers' insurance plan
will switch to a Preferred Provider Organization
(PPO) network with higher deductibles and higher
out-of-pocket expenses….
Chronicle Tribune (Marion, IN), April 30, 2002

…said the Legislature should consider levying a
tax above the basic $1.40 level to fully fund a
state-paid teacher insurance plan.
Fort Worth Star Telegram, April 7, 2002

HEADLINE: Retired teachers insurance plan is
saved
Chicago Daily Herald, December 21, 2001

…set a priority list for spending the state
money, starting with copier paper for every
school, a wage boost for the system's lowest-paid
employees and extra money for the teacher
insurance plan.
The Tennesseean, October 4, 2001

Ser No. 76121702
14
HEADLINE: Teachers raises offset by rising
insurance costs State won't absorb premium
increase
John Greet, executive directive of the State and
Public School Life and Health Insurance Board,
which oversees state employee and teacher
insurance plans, blames the cost increases on
prescription drugs.
The Arkansas Democrat-Gazette, July 30, 2001

Creating a statewide teachers insurance plan is
one of the session's top issues. Texas' teacher
shortage is blamed in part on the lack of
affordable health insurance.
San Antonio Express-News, May 9, 2001

Teachers' insurance plan modified
The Senate Education Committee unanimously
approved their school employee health insurance
plan Wednesday night….
Austin-American Statesman, May 3, 20014

On Tuesday, Sadler said a tax increase would keep
the teacher insurance plan from having the same
problems as the state's insurance program for
retired school employees.
Austin-American Statesman, March 21, 2001

…Insurance: An effort to let DeSoto and other
school districts opt out of the state's public
employee and teacher insurance plan and use the
state dollars to buy their own insurance was
viewed as a threat to the solvency of the plan.
The Commercial Appeal (Memphis, TN), January 31,
2001

HEADLINE: Teacher health plan gaining momentum …
[sub-head:] Area teachers' insurance plans vs.
state employees' plans
Teacher groups are pushing for a statewide
insurance plan….

4 There is a similar excerpt of the same date, and apparently
discussing the same piece of legislation, from the Fort Worth
Star Telegram. In addition, there are two excerpts from May 2,
2001 in the Star Telegram that discuss early steps in the
legislative process. Two of these three excerpts use "teacher
insurance plan," while the third uses "teachers' insurance plan."
Ser No. 76121702
15
Austin-American Statesman, January 29, 2001

…only $300 million will be available for new
programs this session, far less than the $1.4
billion needed for the teacher insurance plan.
San Antonio Express-News, January 26, 2001

HEADLINE: By waiving health benefit, teachers
qualify for payout
…who forfeited their insurance likely were
receiving health benefits from another source,
such as a spouse's employer. By going without
the teachers' insurance plan, they saved the
school district thousands of dollars in premiums
over the years.
The State Journal-Register (Springfield,
Illinois), October 30, 2000

HEADLINE: Teachers' insurance rates soar…
…Pete Laney formed an interim committee on
teacher health insurance in December to study
options for teacher insurance plans.
Corpus Christi Caller-Times, January 19, 2000

…said that simply funding priorities important to
teachers – a pay hike, increased retirement
benefits and creation of a statewide teacher
insurance plan – would cost more than $5 billion.
The Fort Worth Star-Telegram, April 20, 1999

HEADLINE: Report: Texas teachers' insurance plan
to fail in 2000
The Houston Chronicle, December 4, 1998

Swanson is expected to address the issues of the
retired teachers' insurance plan and an ad hoc
increase in retirement benefits for currently
retired teachers.
Chicago Daily Herald, August 20, 1998

HEADLINE: Arbitrators Rule on Teachers Insurance
The changes made by the second arbitration panel
focus on the teachers' insurance plan, Erdmann
said Thursday.
The Hartford Courant, March 6, 1998

Ser No. 76121702
16
Bromm said he introduced the bill to elicit
information about the teachers' insurance plan.
"Perhaps bringing the teachers into the state
plan is not the most efficient means of providing
insurance to teachers, but I…."
Omaha World Herald, January 24, 1997

The Senate also preserved Allen's teacher
insurance plan, which the governor says is needed
to help teachers instill classroom discipline.
Daily Press (Newport News, VA), February 23, 19965

HEADLINE: Health crisis for retired teachers;
Insurance fund may need a state bailout
Officials hope to persuade the legislature to
kick in state funding for the retired teachers'
insurance plan, on grounds that the teachers
should have the same security as other public
employees.
The State Journal-Register (Springfield,
Illinois), December 6, 1994

It also adds $75,000 for a teachers' insurance
plan over three years.
Chicago Tribune, November 19, 1986

Nexis excerpts of record that identify applicant and
associate it with insurance products of the type listed in
its application include the following:
HEADLINE: Drivers, trick-or-treaters
…can be overly excited and stray from the careful
safety practices they already know, said Ray
Palermo, director of Public Relations with
Teachers' Insurance Plan, an insurance company
which provides safe driving tips.
The Marshfield News (Marshfield, WI), October 30,
20036

5 A similar excerpt, from the same publication, is dated February
19, 1996.

6 A similar excerpt, from the Fort Wayne News Sentinel, is dated
two days earlier.
Ser No. 76121702
17
HEADLINE: CAREER LADDER
Stephen T. Zerio was named Connecticut manager of
the newly formed Teacher Agent Network, part of
the Teachers' Insurance Plan, Meriden.
Hartford Courant (Connecticut), October 5, 2003

The Teachers' Insurance Plan aims to make sure
drivers around the country, no matter their level
of driving acumen, drive safely and sanely.
AutoWeek, June 2, 2003

…deer foraging near roadsides – it's a very
dangerous combination," said Ray Palermo, the
director of public education for Teachers'
Insurance Plan.
Statesman Journal (Salem, OR), November 27, 2002

…deer foraging near roadsides – it's a very
dangerous combination," said Ray Palermo, the
director of Public Education for Teachers'
Insurance Plan, an auto insurance program based
in Connecticut.
The Virginian-Pilot (Norfolk, VA), October 24,
2002

… Response operates the Teachers' Insurance Plan,
which offers auto and home insurance to educators
so it researches auto and home-related issues for
its customers.
Connecticut Post (Bridgeport, CT), May 23, 2002

HEADLINE: School Vouchers Get Low Grades
…
The telephone survey of 1,046 respondents was
sponsored by Teachers' Insurance Plan, an
insurance program tailored exclusively for
educators and their families. Nearly two-thirds
of those surveyed (65%) said….
New York Voice Inc./Harlem USA, April 17, 2002

… Teacher's [sic] Insurance Plan, which caters to
the specific needs of educators and their
families, is providing its fraud prevention
"Accident Action Pack" to all of its
policyholders.
Ser No. 76121702
18
Best's Review, December 1, 20017

HEADLINE: Harrisburg, Pa.-Area Educators Get
Car-Insurance Price Break
…a 9-year-old auto insurance company, which is
about to market discounted coverage to
Pennsylvania educators.
"Actuarially, teachers are better than average
risks," said John Brooks, national program
manager for Teachers' Insurance Plan, based in
White Plains, N.Y. …
Teachers' Insurance Plan first offered policies
in New York in 1992. The company is also rolling
out coverage in Florida and Connecticut.
The Patriot-News, November 2, 2001

HEADLINE: Insurers Market to Teachers; Brief
Article
Two insurance companies are reaching out to the
educators market because of the high marks they
earn in risk evaluation.
Teachers' Insurance Plan is a direct auto
insurance program designed specifically for
teachers. …
Farmers Insurance Group of Cos., the nation's
third-largest home and auto insurer, launched a….
Best's Review, October 1, 2001

…growing number of states, including California,
have begun to tackle class size, and a national
poll last month by the Teachers' Insurance Plan
found class-size reduction the top priority among
parents.
The Arizona Republic, October 1, 2001

…another school year and elected officials
debating the fate of "failing schools," a newly
released national survey by Teachers' Insurance
Plan reveals that public school parents have
their own set of answers that runs counter to
some of the solutions currently on the table.
New York Voice Inc./Harlem USA, September 19,
2001

7 Also of record are excerpts from what appear to be distinct
publications titled Claims Magazine and Claims, each of which
also reported in December 2001 of applicant's development of the
"Accident Action Pack."
Ser No. 76121702
19

HEADLINE: Direct Response Acquires Teachers
[sic] Insurance Plan
Direct Response Corp., the holding company of a
group of national automobile insurance companies,
has purchased the assets of Teachers [sic]
Insurance Plan, a direct program marketed to
teachers in New York and New Jersey. The
acquisition includes exclusive rights to the
Teachers Insurance Plan name (except Teachers
Insurance Plan of New Jersey), and does not
include staff, licences, infrastructure or any of
the company's New Jersey business.
Claims, June 1, 2000

… He paid $1,828 for the prior year's coverage,
through Lancer's Teachers' Insurance Plan, for a
package that included $500,000 worth of liability
coverage.
Newsday (New York), January 12, 1997

HEADLINE: SCHOOL VOTERS GUIDE 96 / SEAFORD
… He is the vice president of the Teachers [sic]
Insurance Plan, which is part of Lancer
Insurance.
Newsday (New York), May 19, 1996

HEADLINE: NEW POSITIONS
…INSURANCE
… Teachers [sic] Insurance Plan, a provider of
auto and homeowners insurance for education
professionals based in Long Beach, has hired Bill
Lentino of …
Newsday (New York), April 11, 1994

HEADLINE: NEW POSITIONS
…INSURANCE
Teachers' Insurance Plan, a Long Beach-based auto
insurer for educational professionals, has
appointed John E. Brooks of Seaford as director
of operations. Teachers' Insurance Plan is a
division of Lancer Insurance Co.
Newsday (New York), December 6, 1993

HEADLINE: NEW POSITIONS
…INSURANCE
Ser No. 76121702
20
Teachers' Insurance Plan, a Long Beach-based auto
insurer for educational professionals, has hired
Karen Danza of New Hyde Park as…
Newsday (New York), November 8, 1993

There are additional Nexis excerpts which include
applicant's proposed mark, but which are only listings of
the "Teachers' Insurance Plan" trade name and contact
information in directories or are only attributions of
survey reports or graphs to Teachers' Insurance Plan, e.g.,
"Survey sponsor: Teachers [sic] Insurance Plan."
We also note that there are numerous references to
Teachers' Insurance Plan in Nexis excerpts from wire
service-distributed reports or press releases. These wire
services include BestWire, Business Wire, and PR Newswire.
Typically, the wire service excerpts bear a legend
indicating targeted distribution, e.g., "Distribution:
Business Editors" or "Distribution: To Education,
Political and Family Editors." Excerpts of wire service
reports or releases, in appropriate circumstances, can be
accorded some probative value. See In re Cell Therapeutics
Inc., 67 USPQ2d 1795 (TTAB 2003). However, there is
nothing in the record to indicate that these wire service
reports have been distributed any wider than to particular
groups of editors for possible reprinting in various
publications, i.e., there is nothing to indicate that they
Ser No. 76121702
21
have been "picked up and 'broadcast' on the Internet," so
as to reach more members of the relevant public. Id.
Accordingly, we have given the wire excerpts of record
decidedly less value than the excerpts appearing in
newspapers and magazines.8
In Merrill Lynch, the Federal Circuit noted that there
was "a mixture of usages unearthed by the NEXIS
computerized retrieval service" and held that CASH
MANAGEMENT ACCOUNT was not a generic or common descriptive
term because, inter alia, there was "recognition in a
substantial number of publications that the source of the
CASH MANAGEMENT ACCOUNT was the appellant." Merrill Lynch,
4 USPQ2d at 1143. While there is a mixture of usages in
this case, too, we find it distinguishable from Merrill
Lynch.
In Merrill Lynch, the Board decision that was appealed
to, and ultimately reversed by, the Federal Circuit,
acknowledged that the applicant was a pioneer in offering

8 Where reports or press releases put out on wire services have
been reprinted in newspapers or magazines, they then are
retrievable from the Nexis database as newspaper or magazine
articles. In this case, for example, the results of a Teachers'
Insurance Plan National Education Survey were released via the PR
Newswire service on September 5, 2001 and were reprinted in
substantial part in New York Voice Inc./Harlem USA on September
19, 2001. Thus, while we have accorded little weight to the PR
Newswire release because of its targeted distribution, we have
accorded normal weight to the subsequent reprinting of that
release in a publication.
Ser No. 76121702
22
the type of account at issue and was the first user of the
term CASH MANAGEMENT ACCOUNT to designate such an account.
Merrill Lynch, 4 USPQ2d at 1142. The Board, however,
concluded that the evidence of record showed that the term
subsequently was adopted by a major segment of the
financial industry as the name for the type of account at
issue. Id. at 1143. In short, the Board essentially held
that CASH MANAGEMENT ACCOUNT, though first used by the
applicant, had subsequently been widely adopted as the name
of a type of account and, therefore, had become generic.
The Federal Circuit, however, as noted above, found the
evidence mixed and therefore insufficient to constitute
clear evidence of generic use.
In the case before us, we find a different situation.
We have considered the plain, dictionary meanings of the
words that form the involved phrase; and the evidence of
record showing generic use of "insurance plan" (the
disclaimed portion of applicant's proposed mark); and the
Nexis evidence that shows discussion of insurance plans for
teachers by school boards, legislatures and others, and we
find that "teachers' insurance plan," has been a name for
insurance plans for teachers since well prior to
applicant's first use of the proposed mark in October 2000,
in conjunction with applicant's attempts to expand what was
Ser No. 76121702
23
a business conducted in a limited area under a composite
word and design mark that included a disclaimer of the
words now proposed to be separately registered as a mark.9
The Nexis excerpts which support the examining
attorney's refusal include at least ten instances of
generic use of the proposed mark during the time period
preceding applicant's first use of the phrase, apart from
its use in the composite registration wherein the phrase
was disclaimed. Such prior generic use has continued, as
shown by the record. Unlike Merrill Lynch, this is not a
case in which applicant has pioneered a product or service
and only later has had to deal with generic uses of its
proposed mark by others.
In In re American Institute of Certified Public
Accountants, 65 USPQ2d 1972 (TTAB 2003), the Board also
contemplated a record with mixed usages, but held "CPA
Examination" generic and affirmed a refusal to register
UNIFORM CPA EXAMINATION under Section 2(f) of the Trademark
Act in the absence of a disclaimer of the generic part. In
particular, the Board found that, notwithstanding
recognition among the relevant public that the applicant

9 Registration No. 2331524 for the composite mark resulted from
application serial no. 75574881, which claimed first use of the
composite on March 1, 1992, but first use in commerce only as of
December 1, 1996.

Ser No. 76121702
24
therein was the source of the UNIFORM CPA EXAMINATION,
there was clear evidence of use by the relevant public of
"CPA exam" and "CPA examination" in a generic manner. Id.
at 1983-84.
In the case at hand, applicant's recent use of its
proposed mark, its expansion into numerous states from its
beginnings in New York, and its marketing to the
educational community, may very well have resulted in some
recognition of applicant as a source of the identified
services. It is equally clear, however, that many members
of the relevant public use "teachers' insurance plan," or
the equivalents, in a generic manner to refer to various
types of insurance plans for teachers. Even applicant
expects that they will continue to use the phrase, as it
has stated that it does not believe grant of a registration
"would preclude others in the insurance industry from using
the terms 'teachers' insurance plan' in an ordinary
descriptive sense to convey a descriptive meaning."10 We do
not see how others in the insurance industry could use

10 In regard to the subject of use by others in the insurance
industry, we note the Nexis excerpt from the June 1, 2000 issue
of Claims, which reports applicant's acquisition of the Teachers'
Insurance Plan business and states: "The acquisition includes
exclusive rights to the Teachers Insurance Plan name (except
Teachers Insurance Plan of New Jersey), and does not include
staff, licences, infrastructure or any of the company's New
Jersey business." This indicates that a separate entity may be
using Teachers' Insurance Plan in New Jersey.
Ser No. 76121702
25
"teachers' insurance plan" in a manner that would be merely
descriptive but not generic, or why applicant, if others
can use the phrase, should be entitled to an exclusive
registration, albeit on the Supplemental Register. When
used by others, "teachers' insurance plan" could not be
perceived as anything but the name of insurance plans for
teachers. See Filipino Yellow Pages Inc. v. Asian Journal
Publications Inc., 198 F.3d 1143, 53 USPQ2d 1001 (9th Cir.
1999) ("In light of the evidence presented by [defendant],
it would seem that under the 'who-are-you/what-are-you'
test, the term 'Filipino Yellow Pages' is generic. …
Giving [plaintiff] exclusive rights to the term 'Filipino
Yellow Pages' might be inappropriate because it would
effectively" grant a monopoly). See also, Blinded Veterans
Association v. Blinded American Veterans Foundation, 872
F.2d 1035, 10 USPQ2d 1432 (D.C. Cir. 1989) (Ginsburg,
R.B., J.) (Court held "'blinded veterans' is generic when
used to refer to once-sighted persons who served in the
armed forces" and the BLINDED VETERANS ASSOCIATION name
therefore was not entitled to trademark protection).
Decision: The examining attorney's refusal to approve
registration of TEACHERS' INSURANCE PLAN on the
Supplemental Register is affirmed.