Robert Wienke

Trademark Trial and Appeal Board

Feb 23, 2001

No. 75479625 (T.T.A.B. Feb. 23, 2001)

2/23/01
Paper No. 13
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UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Robert Wienke
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Serial No. 75/479,625
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Mark J. Liss, Lynn A. Sullivan and Tamara A. Miller of
Leydig, Voit & Mayer, Ltd. for Robert Wienke.
Angela Micheli, Trademark Examining Attorney, Law Office
108 (David E. Shallant, Managing Attorney).
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Before Hanak, Holtzman and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Robert Wienke has filed an application to register the
words "ACCESS GLOBAL" as a trademark for "financial
services, namely insurance brokerage and underwriting,
banking, real estate finance, investment brokerage,
investment management and financial transactions related
thereto, offered electronically and through traditional
methods."1
1 Serial No. 75/479,625, filed on May 5, 1998, which alleges
applicant has a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/479,625
2
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
basis that, when used in connection with applicant's
services, the words "ACCESS GLOBAL" will be merely
descriptive of such goods.2
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register on the ground of mere descriptiveness.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning
of Section 2(e)(1) of the Trademark Act, if it immediately
describes an ingredient, quality, characteristic or feature
thereof or if it directly conveys information regarding the
nature, function, purpose or use of the goods or services.
See In re Abcor Development Corp., 588 F.2d 811, 200 USPQ
215, 217-18 (CCPA 1978). It is not necessary that a term
2 The Examining Attorney also argues that registration should be
refused because the applicant has not complied with a requirement
that he submit advertisements or promotional materials
illustrating how the mark will be used. In her order denying
applicant's request for reconsideration, the Examining Attorney
states that this requirement was part of the earlier final
refusal. Our review of the final, however, reveals no mention of
this requirement. Accordingly, the requirement was never made
final and neither the Examining Attorney's restatement of the
requirement in the order denying applicant's request for
reconsideration nor her argument regarding the requirement in her
appeal brief are sufficient to place the issue before us in this
appeal.
Moreover, the applicant's response to the first office action
was accompanied by, in applicant's words, "a copy of a draft
promotional sheet for the ACCESS GLOBAL mark." Accordingly,
applicant complied with the requirement in the initial office
action; at least the Examining Attorney never stated that
applicant's submission was insufficient.
Ser. No. 75/479,625
3
describe all of the properties or functions of the goods or
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 aspect about them.
Moreover, whether a term is merely descriptive is determined
not in the abstract but in relation to the goods or services
for which registration is sought, the context in which it is
being used or is to be used in connection with those goods
or services and the possible significance that the term
would have to the average purchaser of the goods or services
because of the manner of its use. See In re Bright-Crest,
Ltd., 204 USPQ 591, 593 (TTAB 1979). Consequently,
"[w]hether consumers could guess what the product [or
service] is from consideration of the mark alone is not the
test." In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
The evidence made of record by the Examining Attorney
includes two dictionary definitions for the word "access"
and NEXIS articles illustrating use of either the phrase
"global access" or, in the same article, "access" and
"global." The evidence made of record by applicant includes
"a draft promotional sheet," which is reproduced below, a
list of numerous registered marks which include the term
"access," and copies of many of these registrations,
obtained from the Office's web-based search system.
Ser. No. 75/479,625
4
In his request for reconsideration of the final
refusal, applicant contended that the Examining Attorney's
reliance on the banking dictionary definition of "access" is
misplaced because "the mark is not targeted to the banking
industry, nor is the mark used exclusively in connection
with banking services." Applicant further contends that his
broad based services are offered to general consumers "who
associate many meanings with the term 'ACCESS'," but would
Ser. No. 75/479,625
5
"not [be] familiar with the definitions in a specialty
dictionary such as a banking dictionary."3 Whether general
consumers would be familiar with the dictionary definition
is irrelevant. Instead, what is relevant is whether
consumers of banking services, which are among the services
identified in applicant's application, would consider
"access," in the context of applicant's use of that term in
"ACCESS GLOBAL," to refer to such routine banking
transactions as making deposits, withdrawals, verifying
account balances or making electronic transfers. In this
context, we find the Examining Attorney's reliance on the
banking dictionary definition entirely proper and
applicant's objection thereto misplaced.
The Examining Attorney has objected to applicant's
submission, with his brief, of evidence regarding
registrations and applications including the terms "access"
or "global." The applicant, however, has correctly noted
that the list of approximately 200 registrations including
the term "access" and copies of some of those registrations
were first introduced with applicant's request for
reconsideration and are properly of record.4 Accordingly,
3 The banking dictionary defines "Access" as the "right to use
banking services. Specifically, the right to make deposits to or
withdrawals from a banking account, verify an account balance,
use a safe deposit box, or make electronic transfers using a bank
card or other ACCESS DEVICE."
4 In her action denying the request for reconsideration, the
Examining Attorney did not object to the list of registrations
and considered both it and the copies of registrations on the
merits.
Ser. No. 75/479,625
6
we have considered these materials, submitted as exhibit A
to applicant's request for reconsideration and again with
his appeal brief.
In contrast, we have not considered evidence introduced
by applicant for the first time through his appeal brief.
This includes a list of registrations of marks including the
term "global" and copies of pages from the Office's Official
Gazette (the copies submitted as exhibit B to applicant's
brief). The Examining Attorney's objection is well taken in
regard to these items. See Trademark Rule 2.142(d).
Further, despite applicant's assertion to the contrary, a
list of 122 registrations for marks including the term
"global" and copies of representative registrations from
that list were not included with the request for
reconsideration or as an attachment to his brief.
Based on the evidence properly of record, we have no
doubt that "access" is merely descriptive. In regard to
applicant's banking services, it will signify that consumers
will have the type of access to their accounts that is
typical of the relationship between any bank and its
customers. In regard to all of applicant's services, the
term will signify that applicant's customers will be able to
access applicant's services electronically via the Internet.
The registrations for marks including the term "access"
do not persuade us otherwise. As the Examining Attorney has
correctly observed, some of them are not probative because
the registrations are on the Supplemental Register or issued
Ser. No. 75/479,625
7
under Section 2(f) of the Trademark Act. Others do not
involve services similar to applicant's services. In any
event, as the Examining Attorney has noted, each case must
be determined on its own record and the Board is not bound
by decisions made by other Examining Attorneys in regard to
other applications.
As with the term "access," we have no doubt that the
term "global" too is descriptive. It will signify that
applicant's customers will have worldwide or global access
to his services. Applicant's own proposed promotional
literature reveals that the services are available
"Anytime[,] Anywhere."
We are not persuaded otherwise by applicant's argument
that "global" "is vague and has many meanings," as the
argument is without support in the record. We find
inapposite applicant's argument that the term "global" "does
not relate to the place of origin of the services or the
bounds within which the Applicant functions" and, therefore,
the term "cannot be a basis for a geographically descriptive
or misdescriptive rejection." Those are not the bases for
refusal.
Applicant acknowledges the NEXIS evidence which shows
that "global access" is a descriptive phrase5, yet applicant
5 The NEXIS evidence establishes that "global access" is used
descriptively in connection with banking services. See, for
example:
"…new technology and global access are reshaping the future of
private banking…." Private Banker International (June 1997).
Ser. No. 75/479,625
8
argues that "[b]y inverting the order of the terms and not
using intervening words between the terms, Applicant
created a mark that is not merely descriptive but rather
suggests to consumers the expansive nature of the
services." We disagree with applicant's assessment.
When merely descriptive terms are combined, "the key
issue is whether the combination invokes a new and unique
commercial impression." In re Uniroyal, Inc., 215 USPQ
716, 718 (TTAB 1982) ("We find nothing here to indicate
that the term "STEELGLAS" means anything to consumers other
than a combination of "steel" and "glass".). Accord, In re
Copytele Inc., 31 USPQ2d 1540, 1542 (TTAB 1994) ("While
applicant is correct that a non-descriptive trademark may
be fashioned from the incongruous combination of several
words that are, individually, merely descriptive of an
applicant's goods, we fail to see anything incongruous in
the combination of the words "SCREEN FAX PHONE."). See
also, In re Quik-Print Copy Shop, Inc., 205 USPQ 505, 507
(CCPA 1980) (Court rejected appellant's argument that
"With Internet banking, consumers can access their accounts using
any computer that has Internet access and a Web browser. For
consumers it offers convenience; for the banks it offers cheaper
transactions and global access to customers." The Plain Dealer
(October 19, 1998).
"His complaint to state banking officials revealed that New
Jersey banking statutes are woefully inadequate when it comes to
global access accounts." Asbury Park Press (November 27, 1998).
Ser. No. 75/479,625
9
combination of "mundane words" "quick" and "print" created
fanciful and distinctive term.).
Applicant's reliance on the decision of In re
Hutchinson Technology, 858 F.2d 552, 7 USPQ2d 1490 (Fed.
Cir. 1988), is misplaced. Applicant asserts that, like the
term "technology" in the Hutchinson case, "ACCESS GLOBAL"
is vague and consumers considering the mark "would have no
idea what types of services the Applicant offers." As
stated earlier, however, in any analysis under Section
2(e)(1) of the statute, a mark proposed for registration is
not considered in the abstract but in relation to the
identified goods or services.
When applicant's "ACCESS GLOBAL" mark is considered in
conjunction with its identified services, which include
banking and other financial transactions services available
electronically, the terms are not vaguely suggestive;
rather, they immediately inform the consumer that for
applicant's services, access is global. Applicant's
transposition of the descriptive phrase "global access"
does not create a double entendre, imbue the resulting
phrase with any new meaning or incongruity, or create any
vagueness in meaning that would require a consumer to
engage in any mental reasoning to discern the significance
of "ACCESS GLOBAL" for applicant's services.
Ser. No. 75/479,625
10
See In re Away Chemical Corp., 217 USPQ 275, 276 (TTAB
1982) ("the transposition of 'tablets for pans' to 'pan-
tablets'" is insufficient to overcome "basic descriptive
cast" of the involved mark); and In re Dairimetrics, Ltd.,
169 USPQ 572, 573 (TTAB 1971) (ROSE MILK, though not found
in any dictionaries, is synonymous in meaning to
"recognized descriptive name" "Milk of Roses" for a rose
scented cosmetic preparation).
In short, we see nothing in either the combination or
ordering of the terms "access" and "global," in applicant's
proposed "ACCESS GLOBAL" mark, that would lead consumers to
think of the designation as anything other than an
indicator that applicant's services are accessible
worldwide.
Decision: The refusal of registration is affirmed.