PNC Bank, N.A.

Trademark Trial and Appeal Board

Jan 16, 2007

No. 78492942 (T.T.A.B. Jan. 16, 2007)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: January 16, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re PNC Bank, N.A.
________

Serial No. 78492942
_______

Andrew J. Cornelius of Andrew J. Cornelius, P.C. for PNC
Bank, N.A.

Zhaleh Delaney, Trademark Examining Attorney, Law Office
116 (Michael W. Baird, Managing Attorney).
_______

Before Holtzman, Drost, and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

PNC Bank, N.A. filed an intent-to-use application to
register the mark GREEN BRANCH for “financial services,
namely, banking services featuring checking, savings and
investment account services; financial wealth management;
consumer lending services; investment brokerage services;
pension valuation services; administration of employee
pension plans; insurance agency services; life, health,
accident and fire insurance underwriting; investment
Serial No. 78492942
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banking services; funds investment and fund investment
consultation” (as amended)(hereinafter “financial and
banking services”).1
Registration was refused on the ground that GREEN
BRANCH proposed for use in connection with financial and
banking services is merely descriptive. Section 2(e)(1) of
the Lanham Act, 15 U.S.C. §1052(e)(1). When the refusal
was made final, applicant appealed. Both the applicant and
the examining attorney filed briefs.
The examining attorney contends that the mark is
merely descriptive because it describes financial and
banking services offered in “branches” that have
environmentally friendly (i.e., “green”) features. The
examining attorney supported her refusal with the following
evidence:
1. A March 14, 2004 press release posted on three
websites referencing applicant’s “green branch” in
connection with environmentally friendly buildings (“The
construction cost of a ‘green branch’ is the same as a
traditional branch”);
2. Definitions of the word “green” from two online
dictionaries:

a. Encarta.msn.com

1 Application Serial No. 78492942, filed October 1, 2004.
Serial No. 78492942
3
grass colored

having edible green leaves

grassy or leafy

advocating protection of the environment

made with little environmental harm

not ripe

jealous

sickly-looking

innocent

new

unseasoned (woodwork)

untanned (industry)

unfired (ceramics)

b. Infoplease.com

of the color of growing foliage

covered with herbage or foliage

unseasoned

immature

environmentally sound or beneficial

money; greenbacks

fresh leaves or branches of trees

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3. Article in the Pittsburgh Post Gazette, November
10, 2005:
PNC banks on being greener

You’ve heard of greenbacks and Green
Stamps, and if you’ve been in
Pittsburgh long enough, the Green
Weenie. Now get ready for green bank
branches.

PNC Financial Service Group, which in
the last few years has built a handful
of environmentally friendly “green”
branches, now hopes to become a Green
Giant of sorts by building at least 90
more green offices over the next three
years.

* * * *
Overall, the green branches, which
range from about 3,200 to 3,600 square
feet, will cost around $1.4 million, or
roughly $100,000 less than competitors
are paying for similar-sized
traditional branches, Saulson said.

Applicant argues that GREEN BRANCH is not merely
descriptive for the following reasons:
1. The term green could have several meanings,
including money and green growth or foliage;
2. Financial and banking services do not imply or
suggest environmental protection; and,
3. The combination of “green” and “branch” has a
wide range of potential meanings that does not
immediately convey information regarding
financial and banking services.
Serial No. 78492942
5
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the goods or services with
which it is used, or intended to be used. In re Gyulay,
820 F.2d 1216, 3 USPQ 1009 (Fed. Cir. 1987). Whether a
particular term is merely descriptive is determined in
relation to the goods or services for which registration is
sought and the context in which the term is used, or is
intended to be 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 USPQ 1222,
1224 (TTAB 2002). In other words, the issue is whether
someone who knows what the goods or services are will
understand the mark to convey information about them. In
re Tower Tech, Inc., 64 USPQ 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 UPSQ 365, 366 (TTAB 1985).
When two or more merely descriptive terms are
combined, the determination of whether the composite mark
also has a merely descriptive significance turns on the
question of whether the combination of terms evokes a new
and unique commercial impression. If each component
Serial No. 78492942
6
retains its merely descriptive significance in relation to
the goods or services, the combination results in a
composite that is itself merely descriptive. See, In re
Tower Tech, Inc., supra (SMARTTOWER merely descriptive of
commercial and industrial cooking towers); In re Sun
Microsystems Inc., 59 USPQ 1084 (TTAB 2001) (AGENTBEANS
merely descriptive of computer programs for use in
developing and deploying application programs); In re
Putnam Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD &
BEVERAGE ONLINE merely descriptive of new information
services in the food processing industry).
“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. [Internal citations omitted]. . . incongruity
is a strong indication that a mark is suggestive rather
than merely descriptive.” In re Tennis in the Round, Inc.,
199 USPQ 196, 197 (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).
In many instances, such as this case, the line between
descriptive and suggestive marks is not clear. Determining
whether a mark is merely descriptive or suggestive may
Serial No. 78492942
7
require the drawing of fine lines similar to making
distinctions among many shades of gray. In any given
situation, this process may be hazy, subjective, and
difficult to articulate. Accordingly, doubts as to
registrability are resolved in favor of applicants. In re
American Standard Inc., 223 USPQ 353, 355 (TTAB 1984); In
re Micro Instrument Corp., 222 USPQ 252, 255 (TTAB 1984);
In re The Officers’ Organization, 221 USPQ 184, 186 (TTAB
1983).
Applicant’s mark GREEN BRANCH does not evoke an
immediate association with financial and banking services
because such services are not generally associated with
environmentally friendly or ecologically efficient
characteristics. The rendering of such services in
environmentally friendly or ecologically efficient
facilities does not affect the basic principles of the
financial and banking business. Insofar as the record in
this case shows, the placement of applicant’s financial and
banking services in environmentally friendly buildings,
rather than traditional buildings, serves no particular
purpose in the performance of those activities.
When GREEN BRANCH is used (or proposed for use) in
connection with financial and banking services, we think
that some level of thought is necessary to make the
Serial No. 78492942
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connection between the mark and the services. Therefore,
the connection between the mark GREEN BRANCH and
applicant’s financial and banking services (even those
rendered in an environmentally friendly facility) is too
indirect or remote to find the mark merely descriptive.
Accordingly, we find that applicant’s mark GREEN BRANCH if
used in connection with financial and banking services is
suggestive, rather than merely descriptive.
Decision: The refusal to register is reversed.