Hartford Life Insurance Co.

Trademark Trial and Appeal Board

Mar 28, 2001

No. 75467064 (T.T.A.B. Mar. 28, 2001)

03/28/01
Paper No. 11
JQ
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Hartford Life Insurance Company
________
Serial No. 75/467,064
_______
John R. Garber of Cooper & Dunham for applicant.
Rodney Dickinson, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______
Before Hanak, Quinn and Drost, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by Hartford Life Insurance
Company to register the mark STABLE PORTFOLIO for services
ultimately identified as “investment of funds for others
through annuity contracts by pension plan sponsors.”1
The Trademark Examining Attorney refused registration
under Section 2(e)(1) of the Trademark Act on the ground
that applicant’s mark, when used in connection with
1 Application Serial No. 75/467,064, filed April 13, 1998,
alleging dates of first use of January 1998.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/467,064
2
applicant’s services, is merely descriptive of them. The
Examining Attorney also refused registration based on
applicant’s noncompliance with a requirement for new
specimens. The Examining Attorney maintains that the
specimens, which show use of the mark STABLE PORTFOLIO ONE,
are unacceptable to support registration of the mark STABLE
PORTFOLIO as shown in the drawing.
When the refusals were made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs. An
oral hearing was not requested.
We first turn to the requirement for new specimens
based on the Examining Attorney’s view that the drawing
(STABLE PORTFOLIO) is an incomplete representation or
mutilation of the mark as actually used as shown by the
specimens of record (STABLE PORTFOLIO ONE). When this
requirement was made initially, applicant responded by
contending that the specimens are sufficient to show use of
the mark as it appears on the drawing. Applicant contended
that “the suffix ONE is merely descriptive of an indication
that it is the first of a series of STABLE PORTFOLIO
contracts” and, as such, “it is not an integral element of
the mark, which is STABLE PORTFOLIO.” The Examining
Attorney then issued a final refusal, clearly stating that
“[t]he requirement for acceptable specimens showing the
Ser No. 75/467,064
3
mark as reflected in the drawing is maintained and made
FINAL.” Applicant’s request for reconsideration solely
addresses the mere descriptiveness refusal under Section
2(e)(1); no mention is made relative to the outstanding
final requirement for new specimens. In denying the
request for reconsideration, the Examining Attorney
indicated that the “final refusal pursuant to Section
2(e)(1) of the Trademark Act and the final requirement for
acceptable specimens showing use of the proposed mark in
connection with the services are continued.” Applicant’s
appeal brief is curious for what it omits. The “FACTS”
section of the brief, which comprises a chronology of the
prosecution history of the application, makes no mention of
the requirement for new specimens. The “ISSUE” identified
by applicant is solely mere descriptiveness. Further,
applicant’s five-page brief otherwise does not include a
single reference to the specimen requirement. The
Examining Attorney, in his brief, noted that “applicant has
failed to offer any argument” against this portion of the
final refusal. Applicant did not file a reply brief.
This review shows that applicant, after the Examining
Attorney’s issuance of a final refusal based on applicant’s
noncompliance with the requirement for new specimens, made
absolutely no response to this requirement. Although
Ser No. 75/467,064
4
applicant filed an initial response to the requirement, we
are compelled to find, in view of applicant’s total lack of
response to the requirement in either its request for
reconsideration or its appeal brief (and no reply brief was
filed), that applicant has waived its appeal with respect
to the requirement for new specimens. On this basis alone,
the refusal to register is affirmed.
We find that, in any event, the requirement for new
specimens is well taken on the merits. As indicated above,
the only response from applicant is that the term “one”
denotes the first in a series of STABLE POTFOLIO contracts
to be offered by applicant and that, therefore, the term is
not an integral element of the mark.
Nothing in the record supports the statement that
STABLE PORTFOLIO is used or is intended to be used in
connection with a series of goods and/or services.
Further, the specimens show the mark STABLE PORTFOLIO ONE
appearing on one line in identical type. The specimens
consistently refer to the mark as “SP1,” identified by
applicant as an abbreviation for STABLE PORTFOLIO ONE. The
mark, as shown on the specimens, is the unitary mark STABLE
PORTFOLIO ONE; thus, the specimens do not support
registration of STABLE PORTFOLIO standing alone.
Ser No. 75/467,064
5
We next turn to the refusal based on mere
descriptiveness to which the entirety of applicant’s
arguments in its request for reconsideration and appeal
brief is addressed. Applicant contends that its mark is
only suggestive and not merely descriptive. The main
thrust of applicant’s arguments relates to the prosecution
history of another application, now abandoned, filed by
applicant to register the mark STABLE PORTFOLIO ONE.2
Applicant asserts that the same Examining Attorney in that
case3 determined that the mark was registrable with a
disclaimer of the word “Portfolio,” and essentially argues
that it should be able to rely on this prior determination
when seeking registration herein.4
2 Applicant has stated that the application “was abandoned for
other reasons completely unrelated to the issues in this case.”
3 The two applications were originally assigned to the same
Examining Attorney who since has left the Office. The current
Examining Attorney assumed responsibility over the present
application at the time of issuance of the final refusal.
4 During the prosecution of the application involved herein,
applicant based its arguments primarily on the prosecution
history of its earlier application. It was not until its appeal
brief, however, that applicant furnished any underlying evidence
relating to the earlier application. With its appeal brief,
applicant submitted a copy of an Office action in the earlier
application wherein the Examining Attorney, inter alia, requested
a disclaimer of the term “Portfolio.” The Examining Attorney has
objected to this submission, correctly pointing out that it is
untimely. Trademark Rule 2.142(d). Given the particular nature
of this evidence, and the fact that a TRAM printout was earlier
made of record by the Examining Attorney, however, we have
elected to exercise our discretion and consider the untimely
evidence.
Ser No. 75/467,064
6
The Examining Attorney maintains that the mark is
merely descriptive because it immediately tells the
relevant purchasing public that applicant’s investment
services provide a group of relatively safe and non-
volatile funds. The Examining Attorney contends that the
term “stable portfolio” is commonly used among
institutional investors to refer to the fact that certain
investments are non-volatile and relatively safe. In
support of this contention, the Examining Attorney
submitted excerpts retrieved from the NEXIS database
showing descriptive uses of the term “stable portfolio” in
the financial investment field. The Examining Attorney
also submitted a dictionary definition of the word
“portfolio,”5 and a TRAM printout relating to applicant’s
earlier application which shows it to be abandoned.
It is well settled that a term is considered to be
merely descriptive of services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it immediately
describes a quality, characteristic or feature thereof or
if it directly conveys information regarding the nature,
5 The term is defined as “a group of investments.” The American
Heritage Dictionary of the English Language (3rd ed. 1992). We
take judicial notice of the dictionary definition of the word
“stable”: “not subject to sudden change; subject to relatively
limited fluctuation.” Webster’s Third New International
Dictionary (unabidged ed. 1993).
Ser No. 75/467,064
7
function, purpose or use of the services. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a term describe all of the
properties or functions of the services in order for it to
be considered to be merely descriptive thereof; rather, it
is sufficient if the term describes a significant attribute
or feature about them. Moreover, whether a term is merely
descriptive is determined not in the abstract but in
relation to the services for which registration is sought.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
A review of applicant’s specimen of record is
revealing. Applicant states that it “offers qualified
retirement plan sponsors a simple, new way to increase the
diversity of their stable value funds,” by “buy[ing] units
in some of America’s best-run stable value pooled funds.”
Applicant claims that its services are designed for those
who are “seeking greater diversity and stability” by virtue
of its “diverse stable value assets.” The specimen
indicates that applicant’s investments are allocated
equally among eight “stable value pooled funds,” one of
which is the Norwest Stable Return Fund.
The NEXIS excerpts include the following examples of
descriptive uses of the term “stable portfolio” in the
financial investment field:
Ser No. 75/467,064
8
One of his largest holdings in a stable
portfolio is Washington-based Fannie
Mae...
The Washington Post, January 17, 1999
He said the AFP-RSBS made no investment
in stable portfolios like Treasury
bills and bonds, which should be the
primary choice of pension fund
managers.
BusinessWorld, August 21, 1998
This fund is ideal for investors
seeking a stable portfolio and for
those who are more concerned with “not
losing their money versus making huge
gains.”
The Palm Beach Post, December 20, 1997
We find that, when used in connection with applicant’s
“investment of funds for others through annuity contracts
by pension plan sponsors,” the term STABLE PORTFOLIO
immediately describes, without conjecture or speculation, a
significant characteristic or feature of the services,
namely, that applicant’s investments in stable value pooled
funds result in a “stable portfolio,” that is, one that
increases stability and reduces volatility. As applicant’s
specimen clearly states, one of the benefits of applicant’s
services is to create increased stability in a portfolio or
group of investments. To consumers of applicant’s
investment services, there is nothing in the term STABLE
PORTFOLIO which, in the context of applicant’s specific
Ser No. 75/467,064
9
services, would be ambiguous, incongruous or susceptible to
any other plausible meaning.
Although the term “stable portfolio” may be used to
describe a variety of financial investments, the term is no
less descriptive as used in connection with the specific
services recited in the application. See: In re Analog
Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d without pub.
op., 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989).
Applicant’s reliance on its earlier-filed application,
now abandoned, is of little moment. While uniform
treatment under the Trademark Act is an administrative
goal, our task in this appeal is to determine, based on the
record before us, whether applicant’s particular mark
sought to be registered here is merely descriptive. As
often stated, each case must be decided on its own merits.
Neither the current Examining Attorney nor the Board is
bound by the prior action of the Examining Attorney in the
now-abandoned application. See: In re Nett Designs Inc.,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
Decision: The refusal to register under Section
2(e)(1) is affirmed. The refusal to register based on
applicant’s noncompliance with the requirement for new
specimens is affirmed.
Ser No. 75/467,064
10