Objective Review, Inc.

Trademark Trial and Appeal Board

Oct 17, 2008

No. 78891465 (T.T.A.B. Oct. 17, 2008)

Mailed:
October 17, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Objective Review, Inc.
________

Serial No. 78891465
_______

Thomas F. Bergert of Williams Mullen, PC for Objective
Review, Inc.

Asmat Kahn, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Walsh, Bergsman and Wellington, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Objective Review, Inc. (“applicant”) filed a use-based
application to register the mark OBJECTIVIEW THE LIFE
INSURANCE PROPERTY MANAGEMENT SYSTEM, in standard character
format, for services ultimately identified as follows:
Insurance consultation and underwriting
for life and annuity insurance;
insurance services, namely financial
advisory and consulting services
relating to insurance as investments,
and investment management of annuities
and life insurance, in Class 36; and,

Educational services, namely providing
on-line classes on insurance and
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78891465
2
insurance services for underwriters and
consultants, in Class 41.

Applicant disclaimed the exclusive right to use the terms
“Life Insurance” and “Property Management.”
The Trademark Examining Attorney issued a final
requirement that applicant disclaim the exclusive right to
use the unitary term “The Life Insurance Property
Management System” because it is merely descriptive of
applicant’s services (i.e., a method or procedure for the
management of life insurance as property investments).
Section 6(a) of the Trademark Act of 1946, 15 U.S.C.
§1056(a). Pursuant to Section 2(e)(1) of the Trademark Act
of 1946, 15 U.S.C. §1052(e)(1), merely descriptive matter
in a mark is unregistrable; it therefore is subject to
disclaimer under Section 6(a). The Office may refuse
registration of the entire mark if the applicant fails to
comply with a proper disclaimer requirement. See In re
Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859, 1861
(Fed. Cir. 1987); In re Grass GmbH, 79 USPQ2d 1600, 1602
(TTAB 2006). Moreover, disclaimers of individual
components of complete descriptive phrases are improper.
Unitary expressions should be disclaimed in their entirety,
not as separate words. In re Grass GmbH, 79 USPQ2d at
Serial No. 78891465
3
1602, and the cases cited therein. The Trademark Manual of
Examining Procedure states as follows:
Unregistrable matter must be disclaimed
in its entirety. For example, when
requiring a disclaimer of terms that
form a grammatically or otherwise
unitary expression (e.g. “SHOE FACTORY,
INC.”), the examining attorney must
require that they be disclaimed in
their entirety. … This standard should
be construed strictly; therefore,
disclaimer of individual words
separately will usually be appropriate
only when the words being disclaimed
are separated by registrable wording.

TMEP §1213.08(b) (5th ed. 2007). Accordingly, the issues
in this appeal are whether the term “The Life Insurance
Property Management System” is merely descriptive and
whether it is a unitary expression.
To support her disclaimer requirement, the Examining
Attorney submitted the dictionary definitions of the
individual components comprising the term at issue.
1. “Life Insurance” is defined as “insurance that
guarantees a specific sum of money to a
designated beneficiary upon the death of the
insured or to the insured if he or she lives
beyond a certain age.”1

2. “Property” is defined as “something owned; a
possession. . . . c. Something tangible or
intangible to which its owner has legal title:
properties such as copyrights and trademarks.”2

1 The American Heritage Dictionary of the English Language (4th
ed. 2000) attached to the first Office action.
2 Id.
Serial No. 78891465
4
3. “Management” is defined as “the act, manner, or
practice of managing; handling, supervision, or
control.”3

4. “System” is defined as “an organized and
coordinated method; a procedure.”4

On the other hand, applicant contends that the term
“The Life Insurance Property Management System” is not a
unitary descriptive phrase; rather, it is an incongruous
word combination without any meaning or significance in the
insurance or investment management field. To support this
contention, applicant submitted the results of a search for
the term on the Google search engine in which the relevant
results reference applicant.
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the products it identifies.
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987). Whether a particular term is merely descriptive is
determined in relation to the services for which
registration is sought and the context in which the term is
used, not in the abstract or on the basis of guesswork. In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB

3 Id.
4 Id.
Serial No. 78891465
5
2002). In other words, the question is not whether someone
presented only with the mark could guess what the services
are. Rather, the question is whether someone who knows
what the services are will understand the mark to convey
information about them. In re Tower Tech, Inc., 64 USPQ2d
1314, 1316-1317 (TTAB 2002); In re Patent & Trademark
Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home
Builders Association of Greenville, 18 USPQ2d 1313, 1317
(TTAB 1990); In re American Greetings Corp., 226 USPQ 365,
366 (TTAB 1985).
“On the other hand, if one must exercise mature
thought or follow a multi-stage reasoning process in order
to determine what product or service characteristics the
term indicates, the term is suggestive rather than merely
descriptive.” In re Tennis in the Round, Inc., 199 USPQ
496, 497 (TTAB 1978). See also, In re Shutts, 217 USPQ
363, 364-365 (TTAB 1983); In re Universal Water Systems,
Inc., 209 USPQ 165, 166 (TTAB 1980).
Even where individual terms are descriptive, combining
them together may evoke a new and unique commercial
impression. However, if each component retains its merely
descriptive significance in relation to the services,
without the combination of terms creating a unique or
incongruous meaning, then the resulting combination is also
Serial No. 78891465
6
merely descriptive. In re Tower Tech., Inc., 64 USPQ2d at
1317-1318.
Accordingly, we start our analysis of the
registrability of THE LIFE INSURANCE PROPERTY MANAGEMENT
SYSTEM by inquiring whether that term describes a
characteristic, quality, function or purpose of financial
advisory and consulting services relating to insurance as
investments, investment management of annuities and life
insurance, as well as for providing online classes in the
field of insurance for consultants and underwriters, not
whether we can guess what the services are by looking at
the mark. THE LIFE INSURANCE PROPERTY MANAGEMENT SYSTEM
directly conveys, without conjecture or speculation, that
applicant’s services relate to a system or procedure for
the management of life insurance as an asset or property.
Applicant’s specimen of record (shown below in
relevant part) shows the term “The Life Insurance Property
Management System” used as a “tagline” to describe
applicant’s services (i.e., ObjectiView – brand – Life
Insurance Property Management System). The language below
the term at issue, “A New Way to Look at Life Insurance,”
further emphasizes the descriptiveness of the term. In
other words, it highlights that, “The Life Insurance
Property Management System,” describes a feature of
Serial No. 78891465
7
applicant’s services, albeit a feature involving a novel or
non-traditional approach to life insurance.

Applicant’s own use of the term at issue shows that
applicant is advancing the consumer perception that
applicant is rendering services related to managing life
insurance as one would any other property. See In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001) (applicant’s specimen used to find the mark
merely descriptive); See also In re Stereotaxis Inc., 429
F.3d 1039, 77 USPQ2d 1087, 1090 (Fed. Cir. 2005) (any
competent source may be used to show consumer perception).
In the composite term THE LIFE INSURANCE PROPERTY
MANAGEMENT SYSTEM, the individual words retain their
ordinary meanings and do not form a unique or incongruous
meaning.
Applicant argues that THE LIFE INSURANCE PROPERTY
MANAGEMENT SYSTEM is not descriptive because the only use
of the term references applicant. The fact that applicant
is the first and only user of a merely descriptive term
Serial No. 78891465
8
does not justify registration if the only significance
conveyed by the term is one that is merely descriptive. See
In re National Shooting Sports Foundation, Inc., 219 USPQ
1018 (TTAB 1983) (SHOOTING, HUNTING, OUTDOOR TRADE SHOW AND
CONFERENCE held apt descriptive name for conducting and
arranging trade shows in the hunting, shooting and outdoor
sports products field).
Also, applicant contends that the Examining Attorney
failed to meet her burden of proof because, in part, she
has not shown any uses of the term in any dictionaries or
other online references. However, the fact that a term is
not found in a dictionary is not controlling on the
question of registrability if the term at issue is merely
descriptive. See In re Orleans Wines, Ltd., 196 USPQ 516,
517 (TTAB 1977) (BREADSPRED held merely descriptive of
jellies and jams). See also In re Planalytics Inc., 70
USPQ2d 1453, 1456 (TTAB 2004) (“the presence of a term in
the dictionary is not a condition precedent for a finding
that a term is merely descriptive”).
Finally, we find that “The Life Insurance Property
Management System” is a unitary term because it is a
coherent and complete phrase. See the excerpt from
applicant’s specimen, supra. Unlike our finding in Grass
GmbH, “The Life Insurance Property Management System” is
Serial No. 78891465
9
not composed of separable elements. In this case, the
words comprising the term at issue merge to form a single
unitary phrase.
In view of the foregoing, a disclaimer of the term
“The Life Insurance Property Management System” is
appropriate.
Decision: The refusal to register the mark
OBJECTIVIEW THE LIFE INSURANCE PROPERTY MANAGEMENT SYSTEM
based on applicant’s refusal to disclaim the exclusive
right to use “The Life Insurance Property Management
System” is affirmed. However, if applicant submits the
required disclaimer of “The Life Insurance Property
Management System” to the Board within thirty days of the
mailing date of this decision, this decision will be set
aside as to the affirmance of the disclaimer requirement.5
See Trademark Rule 2.142(g).

5 The standard printing format for the required disclaimer text
in this application is as follows: “No claim is made to the
exclusive right to use ‘The Life Insurance Property Management
System’ apart from the mark as shown.” TMEP §1213.08(a)(i) (5th
ed. 2007).