Restoration Capital , LLC

Trademark Trial and Appeal Board

Jun 30, 2015

No. 85972840 (T.T.A.B. Jun. 30, 2015)

This Opinion is not a
Precedent of the TTAB

Oral Hearing: May 20, 2015 Mailed: June 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Restoration Capital, LLC
_____

Serial No. 85972840
_____

Rebeccah Gan of Young & Thompson,
for Restoration Capital, LLC
James MacFarlane, Trademark Examining Attorney, Law Office 104,
Chris Doninger, Managing Attorney.
_____

Before Wellington, Greenbaum and Gorowitz,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Restoration Capital, LLC (“Applicant”) seeks registration on the Principal
Register of the mark (CAPITAL disclaimed) for
“residential mortgage origination” services in International Class 36.1

1 Application Serial No. 85972840 was filed on July 2, 2013, based upon Applicant’s claim of
first use anywhere and use in commerce since at least as early as July 29, 2010. The
application includes the following description of the mark: “The mark consists of a house
inside a curved design element paired with the wording ‘RESTORATION CAPITAL,’ all of
the foregoing in the color green.” The color green is claimed as a feature of the mark.
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The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), based on
Applicant’s failure to comply with the requirement to disclaim the exclusive right to
use RESTORATION with respect to the identified services, on the ground that it is
an unregistrable component of Applicant’s mark, because it is merely descriptive of
Applicant’s services within the meaning of Section 2(e)(1) of the Trademark Act, 15
U.S.C. § 1052(e)(1).
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed, and an oral hearing was held on May 20,
2015. We affirm the refusal to register in the absence of a disclaimer.
I. Applicable Law
The Director of the USPTO “may require the applicant to disclaim an
unregistrable component of a mark otherwise registrable.” Trademark Act Section
6(a). Merely descriptive terms are unregistrable under Trademark Act Section
2(e)(1), and, therefore, are subject to disclaimer if the mark is otherwise registrable.
Failure to comply with a disclaimer requirement is grounds for refusal of
registration. See In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir. 2006); In
re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087 (Fed. Cir. 2005); In re Omaha
National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson
Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re National Presto Industries,
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Inc., 197 USPQ 188 (TTAB 1977); and In re Pendleton Tool Industries, Inc., 157
USPQ 114 (TTAB 1968).
“A mark is merely descriptive if it ‘consist[s] merely of words descriptive of the
qualities, ingredients or characteristics of’ the goods or services related to the
mark.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed.
Cir. 2004), quoting Estate of P.D. Beckwith, Inc. v. Comm’r, 252 U.S. 538, 543
(1920). See also In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778,
1780 (Fed. Cir. 2003). The determination of whether a mark is merely descriptive
must be made in relation to the goods or services for which registration is sought. In
re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed.
Cir. 2012); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978) (determination of mere descriptiveness must be made not in the abstract, but
in relation to the goods or services for which registration is sought, the context in
which the mark is used, and the impact that it is likely to make on the average
purchaser of such goods or services).
The test for determining whether a term is merely descriptive is whether it
immediately conveys information concerning a significant quality, characteristic,
function, ingredient, attribute or feature of the product or service in connection with
which it is used, or intended to be used. In re Engineering Systems Corp., 2 USPQ2d
1075 (TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not
necessary, in order to find a term merely descriptive, that the term describe each
feature of the goods or services, only that it describe a single, significant ingredient,
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quality, characteristic, function, feature, purpose or use of the goods or services. In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Where a mark consists of multiple words, the mere combination of descriptive
words does not necessarily create a nondescriptive word or phrase. In re Associated
Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988) (GROUP SALES BOX
OFFICE unregistrable for theater ticket sales services). If each component retains
its merely descriptive significance in relation to the goods or services, the
combination results in a composite that is itself merely descriptive. Oppedahl, 71
USPQ2d at 1371. However, a mark comprising a combination of merely descriptive
components is registrable if the combination of terms creates a unitary mark with a
unique, nondescriptive meaning, or if the composite has an incongruous meaning as
applied to the goods or services. See In re Colonial Stores Inc., 394 F.2d 549, 157
USPQ 382 (CCPA 1968); In re Shutts, 217 USPQ 363 (TTAB 1983); and TMEP §
1209.03(d) (January 2015).
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II. Analysis
CAPITAL is defined as “relating to money, machines, products, or property that
can be used to create more wealth.”2 There is no question that the word CAPITAL is
merely descriptive of Applicant’s “residential mortgage origination” services.
Applicant appropriately has disclaimed CAPITAL, and does not now argue that
CAPITAL is not merely descriptive of the identified services. The questions are
whether Applicant must amend the disclaimer to include the word RESTORATION
because that word also is merely descriptive of the identified services, as the
Examining Attorney contends, or whether the wording RESTORATION CAPITAL
is an incongruous, unitary phrase that could be viewed as a double entendre, such
that a disclaimer of RESTORATION is not appropriate, as Applicant contends.3

2 Longman Dictionary of American English (1997), attached to Applicant’s Brief. 8
TTABVUE 27. Citations to Applicant’s and the Examining Attorney’s briefs in this opinion
also include citations to the TTABVUE docket entry number, and the electronic page
number where the argument appears. TTABVUE is the Board’s electronic docketing
system.
Both the Examining Attorney and Applicant submitted dictionary definitions for the first
time as attachments to their briefs. The Board may take judicial notice of dictionary
definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594
(TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online
dictionaries that exist in printed format or have regular fixed editions. In re Red Bull
GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). We have done so here.
3 For this and other propositions, Applicant relies heavily on non-precedential decisions
from this Board. Although parties may cite to non-precedential decisions, the practice is not
encouraged. Inter Ikea Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1742 n.24 (TTAB 2014),
citing Corporacion Habanos SA v. Rodriguez, 99 USPQ2d 1873, 1875 n.5 (TTAB 2011); In
re the Procter & Gamble Co., 105 USPQ2d 1119, 1120-21 (TTAB 2012). Moreover, a
decision that is not designated as precedential is not binding on the Board. Proctor &
Gamble, 105 USPQ2d at 1120-21. Further, because they have no precedential effect, the
Board generally will not discuss them in other decisions, a practice that we follow in this
opinion. In re Luxuria s.r.o., 100 USPQ2d 1146, 1151 n.7 (TTAB 2011).

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We agree with the Examining Attorney that the term RESTORATION is merely
descriptive of the “residential mortgage origination” services identified in the
application and must be disclaimed. The record shows that the term
RESTORATION, as used in Applicant’s mark and in the context of the identified
services, immediately informs consumers of a significant purpose of such services,
namely, that Applicant originates mortgages for use in the restoration of distressed
residential properties.
“Restoration” is defined as “the process of putting something such as a piece of
art or a building back into its original condition so that it looks cleaner and better,”4
and “[s]omething, such as a renovated building, that has been restored.”5
Applicant’s website confirms that Applicant offers “residential mortgage
origination” services for distressed properties that require restoration before they
are resold. In particular, under the heading “Traditional Rehab & Resale” and
subheading “Recently Funded Loan,” Applicant provides the following case study
from Alexandria, VA:
A real estate investor secured a contract to buy a
distressed single family home for $105,000. The property
did not qualify for a conventional bank financing because
the house needed some repairs including replacing broken
windows. The investor was approved for an $85,000 loan
to acquire the property and the investor used her own
money for upgrades and repairs.
Loan Conclusion

4 MacMillan Dictionary (American) , attached to October 16,
2013 Office Action.
5 The American Heritage Dictionary , attached to the Examining
Attorney’s Brief. 10 TTABVUE 25.
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The investor completed rehab and sold the property for
$161,000 just three months into the project. After
financing and rehab costs, the investor made over $40,000
in profits.6
The website also displays the following exchange:
How to Qualify for a Rehab Loan!
… Many of our clients can be found every week at the
courthouse steps buying foreclosures … Be sure you have
a good exit strategy that you can communicate to the
lender. It doesn’t have to be fancy. Something as simple
as ‘My plan is to put $10,000 of my money into updating
the property which will take 3 weeks, then place back on
the market for sale at $_____. Attached is a copy of my
bank statement showing that I have the cash to rehab the
property.7
“Rehab” is defined as “a thing, especially a building, that has been rehabilitated
or restored.”8 Various dictionary definitions of record of the word “rehabilitation”
confirm that the words “restoration,” “rehabilitation,” “rehab,” and “repair” are
virtually synonymous. The definitions include, for example, the following: “to
restore to good condition: rehabilitate a storefront …”9, and “to repair an existing
building to good condition with minimal changes to the building fabric; may include
adaptive use, restoration. Also known as rehab”.10

6 Attached to December 13, 2014 Office Action, 5 TTABVUE 7-8.
7 Id. at 9-10.
8 Oxford Dictionaries (American) , attached to the Examining
Attorney’s Brief. 10 TTABVUE 16.
9 The American Heritage Dictionary , attached to the Examining
Attorney’s Brief. 10 TTABVUE 30.
10 Dictionary of Building Preservation (1996), attached to the Examining Attorney’s Brief.
10 TTABVUE 29.
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Applicant makes much of the absence of the words “restore” and “restoration”
from the text of Applicant’s website. However, that Applicant uses the word “rehab”
instead of the virtually synonymous words “restore” or “restoration” in the text of its
website does not persuade us that “restoration” is not merely descriptive of a
significant feature or purpose of Applicant’s identified services.
The Examining Attorney also made of record printouts from several third-party
websites that discuss mortgages and rehabilitation or restoration of properties,
showing that others use the word “restoration” in a descriptive manner to refer to
mortgages for distressed properties.
In particular, the Section 203(k) program of the Federal Housing Administration
(FHA) division of the U.S. Department of Housing and Urban Development (HUD)
is HUD’s “primary program for the rehabilitation and repair of single family
properties,” designed to “facilitate the restoration and preservation of the Nation’s
housing stock.”11 The SFGate website explains that FHA 203(k) mortgages:
make[] restoring of homes more accessible and affordable
by allowing the borrower to get a fully financed long-term
loan, upfront at the acquisition of the property. By
contrast, conventional mortgages will only do this after all
the restoration construction is complete. The conventional
arrangement requires prior separate and short-term
acquisition and construction loans, which are more costly.
The FHA 203(k) loan can be for up to 110 percent of the
property’s value after the restoration.12

11 , attached to October 16, 2013 Office Action.
12 , attached to October 16, 2013 Office Action.
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In addition, “203(k) is also available for restoration of residential units in a FHA
approved condominium project” with a limit on the number or percent of units “of
any particular condo project” that “can be undergoing restoration at a time.”13
Likewise, under the heading “Restoration loan,” an article from CNNMoney
states:
If there’s a loan that’s custom-made for restoration
projects, it the FHA 203K. It allows the purchase of a
home that’s unlivable at the time of purchase but will be
renovated. The loan amount can go up to 97 percent of the
value of the home with the improvements. That lets you
include the cost of the restoration in the loan.14
The record also includes a printout from the iQ Credit Union website concerning
different mortgages, including a “Restoration Mortgage” for “distressed homes” that
“can now more easily be renovated and lived in.”15 The printout further states:
“With an innovative iQ Restoration Mortgage, you get the funding you need to
purchase a house that needs some work and pay for the remodeling or
improvements – all in one loan.”16
“Restoration” also has a specific meaning with respect to the preservation of
historic properties: “[t]he act or process of returning a building to a state of utility
through repair or alteration which makes possible an efficient contemporary use
while preserving those portions or features of the property which are significant to

13 Id.
14 attached to August 17, 2014 Office Action.
15 attached to August 17, 2014 Office Action.
16 Id.
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its historical, architectural, and cultural values.”17 According to the National Park
Service of the U.S. Department of the Interior, restoration of historic properties
requires the accurate depiction of “the form, features, and character of a property as
it appeared at a particular period of time by means of the removal of features from
other periods in its history and reconstruction of missing features from the
restoration period.”18
The record includes webpages from several websites discussing the different
standards for rehabilitation, reconstruction and restoration of historic properties.19
This evidence indicates that in the field of preservation of historic properties,
rehabilitation and restoration are closely related, but not synonymous.
Notwithstanding the foregoing, and despite Applicant’s argument that it provides
its services to house “flippers,” who are the “antithesis” of those who seek to
preserve historic properties, Applicant’s identification of services is worded broadly
enough to include “residential mortgage origination” services for the restoration of
historic homes, as that term is understood in the field of historic property
preservation.
Given the dictionary definitions, the term RESTORATION would be perceived
as a primary or significant purpose of Applicant’s “residential mortgage origination”
services. The additional evidence further supports this finding. The evidence from

17 Dictionary of Building Preservation (1996), quoting, Secretary of the Interior’s Standards
for Rehabilitation, attached to the Examining Attorney’s Brief. 10 TTABVUE 29..
18 , attached to December 13, 2014 Office Action.
19 See, e.g., , , , all attached to
December 13, 2014 Office Action.
Serial No. 85972840
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third-party websites demonstrates that “restoration” is a readily used and
commonly understood term in the residential mortgage industry, and that
“restoration loans” and “restoration mortgages” are provided to customers who seek
loans designed specifically for distressed properties that require restoration.
That Applicant calls its loans “rehab loans” instead of “restoration loans” or
“restoration mortgages” is of no moment, as “rehab” and “restoration” are virtually
synonymous, at least as to non-historic properties, as discussed above. Moreover,
Applicant’s broadly-worded identification of services encompasses “residential
mortgage origination” for restoration of historic properties as well.
We find that the Examining Attorney has made a prima facie case that the word
RESTORATION is merely descriptive when used in connection with Applicant’s
“residential mortgage origination” services. The record demonstrates that the word
RESTORATION clearly and unambiguously describes a significant feature of the
services, namely, that Applicant provides “residential mortgage origination”
services for distressed properties that require restoration before they are resold.
We agree with Applicant that the terms RESTORATION CAPITAL, which are
physically joined in Applicant’s mark, form a unitary expression.20 However,
Applicant argues that in the context of Applicant’s residential mortgage origination
services, the wording RESTORATION CAPITAL is incongruous and need not be
disclaimed because it “could refer to, inter alia, restoring one’s balance or

20 App. Br. pp. 13-16, 8 TTABVUE 18-21.
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creditworthiness,”21 and “because it suggests, e.g., that one’s investment or
investment capital could be restored to a specific time period, which does not
comport with the assumption of additional debt created in mortgage origination
services.”22 Applicant also contends that consumers could view RESTORATION
CAPITAL as a double entendre because, in the context of financial services,
RESTORATION CAPITAL could refer to many things, for example, “providing
money or property to consumers in order to retrofit their historic homes to period-
correct condition for the purpose of restoring one’s original capital investment.”23 In
addition, Applicant argues that “the double nature of ‘CAPITAL’ in the compound
expression also creates a double entendre. Arguendo, a consumer could view
‘RESTORATION CAPITAL’ in the context of financial services as providing
‘CAPITAL’ (funds or property) to retrofit historic homes to period-correct condition
in order to recoup one’s ‘CAPITAL’ (funds or property).”24
Applicant’s various arguments concerning the purported incongruities of the
term RESTORATION CAPITAL are unpersuasive. Instead, we find that the unitary
expression RESTORATION CAPITAL does not create an incongruous meaning, or
double entendre, separate from the meaning of the terms individually. Based on the
above-discussed record evidence, we find that each component of the composite term
retains its merely descriptive significance in relation to Applicant’s “residential

21 App. Br. p. 11, 8 TTABVUE 16.
22 App. Br. pp. 12-13, 8 TTABVUE 17-18.
23 App. Br. pp. 14-15, 8 TTABVUE 19-20.
24 App. Br. p. 15, 8 TTABVUE 20.
Serial No. 85972840
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mortgage origination” services, thus resulting in a composite that is itself merely
descriptive. DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., 695 F.3d
1247, 103 USPQ2d 1753 (Fed. Cir. 2012) (SNAP SIMPLY SAFER is merely
descriptive for “medical devices, namely, cannulae; medical, hypodermic, aspiration
and injection syringes”); and Oppedahl, 71 USPQ2d 1370 (PATENTS.COM is
merely descriptive of computer software for managing a database of records that
could include patents for tracking the status of the records by means of the
Internet). No imagination is required by a prospective purchaser or user to discern
that Applicant’s services feature “capital” for “restoration” of a distressed
residential property, as those terms commonly are understood.
Finally, we note Applicant’s argument that it need not disclaim RESTORATION
in this application because the Examining Attorney did not require Applicant to
disclaim RESTORATION in a related, now abandoned, application. In addition to
not being of record in this proceeding, there is no way to tell whether the Examining
Attorney would have required such a disclaimer if Applicant continued to prosecute,
rather than abandon, the other application. Thus, Applicant’s “consistency”
argument fails. Moreover, as is often stated, each case must stand on its own record
and, in any event, the Board is not bound by the actions of prior examining
attorneys. See Nett Designs, 57 USPQ2d at 1566 (“Even if some prior registrations
had some characteristics similar to [applicant’s] application, the PTO’s allowance of
such prior registrations does not bind the board or this court.”). See also In re
International Taste Inc., 53 USPQ2d 1604, 1606 (TTAB 2000) (“With respect to
Serial No. 85972840
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third-party registrations which include disclaimers…we do not have before us any
information from the registration files as to why an Examining Attorney required
and/or why the applicant/registrant offered such disclaimers.”).
Applicant correctly states that in cases of refusals under Section 2(e)(1), we must
resolve doubt in favor of Applicant; however, having carefully considered all of
Applicant’s arguments, including those that are not specifically addressed above, we
have no such doubt in this case.
Decision: The refusal to register Applicant’s mark based on
the requirement, made under Trademark Act § 6(a), for a disclaimer of
RESTORATION is affirmed. However, this decision will be set aside if Applicant
submits the required disclaimer to the Board within thirty days from the date of
this decision.25 Trademark Rule 2.142(g), 37 CFR § 2.142(g).

25 As noted above, Applicant already has disclaimed CAPITAL. The standardized printing
format for the required disclaimer text is as follows: “No claim is made to the exclusive
right to use RESTORATION CAPITAL apart from the mark as shown.” TMEP
§1213.08(a)(i).