First Security Capital, L.L.C.

Trademark Trial and Appeal Board

Jan 9, 2001

No. 75450558 (T.T.A.B. Jan. 9, 2001)

1/9/01
Hearing: Paper No. 13
September 7, 2000 HWR
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re First Security Capital, L.L.C.
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Serial No. 75/450,558
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William J. Mason of Rhodes & Mason, PLLC
for First Security Capital, L.L.C.
Robert Clark, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
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Before Hairston, Chapman and Wendel, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
First Security Capital, L.L.C. has filed an
application to register the mark 90% STOCK LOAN for
“financial services, namely, making nontaxable loans
secured by stock.”1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act on the ground that the mark is
1 Serial No. 75/450,558, filed March 16, 1998, claiming first use
dates of August 1997.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/450,558
2
merely descriptive. The refusal has been appealed. Both
applicant and the Examining Attorney have filed briefs and
both participated in an oral hearing.
A term or phrase is merely descriptive within the
meaning of Section 2(e)(1) if it immediately conveys
information about a characteristic or feature of the goods
or services with which it is being used. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
Whether or not a particular term or phrase is merely
descriptive is determined not in the abstract, but rather
in relation to the goods or services for which registration
is sought, the context in which the designation is being
used, and the significance the designation is likely to
have to the average purchaser as he or she encounters the
goods or services bearing the designation, because of the
manner in which it is used. See In re Bright-Crest, Ltd.,
204 USPQ 591 (TTAB 1979). It is not necessary that the
term or phrase describe all the characteristics or features
of the goods or services in order to be merely descriptive;
it is sufficient if the term or phrase describes one
significant attribute thereof. See In re Pennzoil Products
Co., 20 USPQ2d 1753 (TTAB 1991).
In the present case, applicant’s financial services
have been identified as the making of nontaxable loans
Ser No. 75/450,558
3
secured by stock. As noted by the Examining Attorney, the
specimens of record are brochures which describe these
services as the provision of “90% non-recourse stock
loans.” Further statements found in the brochures include,
in relevant part:
We provide 90% loans against most free-trading
securities ...;
If you decide to borrow against your stock ...
You get a 90% loan ...
With a 90% stock loan though, you realize $90,000
in cash.
The Examining Attorney maintains that the mark 90%
STOCK LOAN is merely descriptive of financial services such
as applicant’s in which customers are being loaned up to
90% of the value of their stock using the stock as
collateral.
Applicant counters with the argument that the term
“stock loan” has two known meanings in the financial world
and the initial reaction of purchasers would be to ascribe
one of these ordinary meanings to the term as used in
applicant’s mark. Applicant points to the Nexis excerpts
introduced by the Examining Attorney for the purpose of
showing use of the term “stock loan” in the financial field
as evidence that the term may either be used to describe a
program in which companies loan money to their executives
Ser No. 75/450,558
4
for the purpose of purchasing stock of the corporation or
to describe an aspect of “short selling” of stocks in which
the trader “borrows” stock in order to make a trade.
Applicant insists that purchasers’ immediate impression
would be that applicant is using the term “stock loan” in
one of these two senses and would only conclude after some
thought that the term, when combined with “90%,” has a
connotation unrelated to either usage.
We find sufficient evidence of record to establish
that purchasers, upon encountering applicant’s services
bearing the mark 90% STOCK LOAN, would immediately be
apprised of the nature of the services. As earlier pointed
out, the mark is not to be considered in the abstract, but
rather in relation to the services identified in the
application. While we agree that the Nexis excerpts show
that the term “stock loan” has other known meanings in the
financial world, this fact is irrelevant. Those meanings
attach to totally different services or activities, not the
services being offered by applicant.
On the other hand, evidence of the context in which an
applicant is using the mark in brochures or other
advertising materials is clearly probative of the reaction
of prospective purchasers to the mark. See In re
Pharmaceutical Innovations, Inc., 217 USPQ 365 (TTAB 1983).
Ser No. 75/450,558
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Here, applicant’s specimens show descriptive uses of the
entire phrase sought to be registered as well as of the
term “stock loan” such that it is clear that, in this
context, the term is being used to describe a loan in which
the purchaser is borrowing against his or her stock.
Contrary to applicant’s arguments, there is no incongruity
in the manner in which applicant is using the term.
Instead, it is readily apparent that prospective purchasers
would immediately grasp the informational significance of
the term “90% stock loan” as it is being used in connection
with applicant’s services.
Accordingly, we find the mark 90% STOCK LOAN to be
merely descriptive when used in connection with applicant’s
financial services of making nontaxable loans secured by
stock.
Decision: The refusal to register under Section
2(e)(1) is affirmed.
Ser No. 75/450,558
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