The Prudential Insurance Company of America

Trademark Trial and Appeal Board

Jan 19, 2006

No. 78373988 (T.T.A.B. Jan. 19, 2006)

Mailed: January 19, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Prudential Insurance Company of America
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Serial No. 78373988
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Sue J. Nam for The Prudential Insurance Company of America.

Amos T. Matthews, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
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Before Hairston, Grendel and Kuhlke, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark EXPERIENCE RESEARCH DISCIPLINE (in standard
character form) for services recited in the application as
“mutual fund investment, brokerage and distribution
services; investment management services; investment
advisory services; portfolio management services; purchase
and sale of assets and securities for others; fiduciary
representative services; financial valuation of assets and
THIS OPINION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 78373988
2
securities for others; financial research services;
providing financial account and investment information by
means of a global computer network” in International Class
36.1
In the application, applicant, in response to the
first Office action, disclaimed the exclusive right to use
the word RESEARCH apart from the mark as shown. The
examining attorney also required applicant to disclaim the
word DISCIPLINE, on the ground that it is merely
descriptive of applicant’s services. Trademark Act Section
2(e)(1), 15 U.S.C. §1052(e)(1). Pursuant to Trademark Act
Section 6, the Trademark Examining Attorney has issued a
final refusal of registration pending applicant’s
submission of such disclaimer. 15 U.S.C. §1056.
Applicant has appealed and briefs have been filed.
Applicant did not request an oral hearing. After carefully
reviewing the evidence of record and the arguments made by
applicant and the examining attorney, we reverse.
An examining attorney may require an applicant to
disclaim an unregistrable component of a mark otherwise
registrable. Trademark Act Section 6. Merely descriptive
terms are unregistrable, Trademark Act Section 2(e)(1), and

1 Application Serial No. 78373988, filed under Section 1(a) of
the Trademark Act, claiming a date of first use and first use in
Ser. No. 78373988
3
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 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 (C.C.P.A. 1975); In re National Presto Industries,
Inc., 197 USPQ 188 (TTAB 1977); In re Pendleton Tool
Industries, Inc., 157 USPQ 114 (TTAB 1968).
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. See, e.g., In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). A term need not immediately convey an idea of each
and every specific feature of the applicant’s goods or
services in order to be considered merely descriptive; it
is enough that the term describes one significant
attribute, function or property of the goods or services.
See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re
MBAssociates, 180 USPQ 338 (TTAB 1973). On the other hand,
if imagination, thought or perception is required to reach

commerce on June 1, 2003. 15 U.S.C. §1051(a).
Ser. No. 78373988
4
a conclusion on the nature of the goods or services, the
mark is suggestive and registrable. See In re Nett
Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001); and In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987). It has long been acknowledged that there is a
thin line between terms that are merely descriptive and
those that are suggestive. See In re Atavio Inc., 25
USPQ2d 1361 (TTAB 1992).
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 on or 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. That a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
The burden is initially on the PTO to make a prima
facie showing that the mark or word in question is
descriptive from the vantage point of purchasers of
applicant’s services and where doubt exists as to whether a
term is descriptive, such doubt should be resolved in favor
of the application. In re Merrill Lynch, Pierce, Fenner,
Ser. No. 78373988
5
and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1144 (Fed.
Cir. 1987).
In support of the refusal, the examining attorney made
of record the following dictionary definition of the word
“discipline”:
2. Controlled behavior resulting from
disciplinary training; self-control.
3. a. Control obtained by enforcing compliance or
order. b. A systematic method to obtain
obedience: a military discipline. c. A state of
order based on submission to rules and authority.

The American Heritage Dictionary of the English Language
(3d ed. 1992).
In addition, the examining attorney submitted excerpts
of articles from the LEXIS/NEXIS database based on searches
for the phrases “investment discipline” and “financial
discipline,” and the words “investment discipline” and
“experience research discipline” appearing in the same
articles. The examining attorney argues that the evidence
shows that “others use DISCIPLINE in the financial and
investment industries to indicate that it is necessary to
proceed with a systematic plan or method in order to
achieve the objectives. In view of this record, the term
DISCIPLINE tells prospective customers that applicant will
provide a systematic approach for its investment and
financial services.” Brief p. 5. Below is a
Ser. No. 78373988
6
representative sample of the excerpts highlighted in the
examining attorney’s brief:
...From that, we undertake in-depth research into
[sic] wide range of areas, including manager
experience and tenure, the level of expenses, the
discipline of the investment process, and the
availability to retail investors.

Business Week Online, March 28, 2005;

...We created working groups to focus on
governance, assessing communications
effectiveness, improving financial discipline and
transparency.

Mergers & Acquisitions, January 14, 2005;

...Saving money is not about how much you earn,
but is the result of financial discipline,
attitude and patience.

The Lebanon Daily News (Pennsylvania), January 9,
2005;

...We pursue opportunities with integrity and
with rigorous investment discipline, and our
financial capabilities are unmatched.

Business Wire, January 11, 2005;

...Money managers are generally judged by how
closely they adhere to a consistent investment
discipline and are carefully monitored to “style
drift.”

Journal of Accountancy, January 1, 2005.

The examining attorney also points to applicant’s
specimens of use to show “how purchasers are likely to view
the term in relation with the services.” Brief p. 6.
Applicant’s specimen of use includes the following excerpt:
Ser. No. 78373988
7
“Our diversified fixed income team offers a disciplined
investment and risk management process, in-depth sector
expertise, and one of the most sophisticated research
organizations in the industry.” The examining attorney
argues that from the specimen of use it is shown that
“applicant provides a system that ‘develops and coordinates
investment strategy within the framework of the firm’s
market outlook and the mutual fund’s investment objective,
restrictions, policies, and benchmark’ to achieve
satisfactory results of its services. Applicant develops a
systematic plan or method for its customers to achieve the
financial objectives.” Brief p. 7. The examining attorney
concludes that the term DISCIPLINE is “descriptive because
it conveys a feature of applicant’s services, which is to
provide a system or process of order for successfully [sic]
financial and investment services.” Brief p. 7.
Finally, the examining attorney argues that
applicant’s evidence of third-party registrations that do
not contain a disclaimer for the word DISCIPLINE for
similar services is not “conclusive on the question of
descriptiveness,” noting that each case must be considered
on its own merits. Brief p. 7.
In response, applicant argues that the word DISCIPLINE
“is a highly abstract word with numerous meanings in the
Ser. No. 78373988
8
financial or investment arena” and “[i]n the context of
applicant’s mark EXPERIENCE RESEARCH DISCIPLINE, the term
DISCIPLINE does not describe with reasonable specificity a
quality or characteristic of applications services.” In
the context of applicant’s services the word “discipline
could suggest that applicant purchases and sells assets and
securities in strict accordance with the client’s
directives, or it could suggest that applicant follows its
own principles irrespective of the client’s wishes” or
“that applicant provides conservative investment advice or
that applicant acts in a thorough, researched manner or
that applicant is particularly careful about controlling
its fees or that applicant adheres closely to legal rules
and regulations.” Brief p. 5. In support of its position,
applicant submitted printouts of third-party applications
and registrations from the USPTO Trademark Electronic
Search System (TESS) and excerpts of articles retrieved
from the LEXIS/NEXIS database based on searches of the
phrases “sound investment,” “financial experience” and
“investment experience.”
As noted above, a term is suggestive if, when applied
to the goods or services, it requires imagination, thought
and perception to reach a conclusion as to the nature of
the goods or services. In the present case, we find that
Ser. No. 78373988
9
the examining attorney has not established that DISCPLINE
is merely descriptive of applicant’s services. We agree
with applicant that the word DISCIPLINE alone and as it
appears in the mark is more of an abstract term and is
suggestive. In re Nett Designs, Inc., supra (a term may
slide along the continuum between suggestiveness and
descriptiveness depending on usage, context, and other
factors that affect the relevant public’s perception of the
term). The evidence of record fails to show that it
describes a feature, characteristic, etc. of the services
with any degree of particularity, and, in fact, supports
applicant’s position that the term has a multitude of
meanings in applicant’s field. See e.g., The Lebanon Daily
News (Pennsylvania), January 9, 2005 (“Saving money is not
about how much you earn, but is the result of financial
discipline, attitude and patience” implying reigning in of
costs or to save); Mergers & Acquisitions, January 14, 2005
(“...We created working groups to focus on governance,
assessing communications effectiveness, improving financial
discipline and transparency” implying compliance with
financial regulations); Business Week Online, March 28,
2005 (“From that, we undertake in-depth research into [sic]
wide range of areas, including manager experience and
tenure, the level of expenses, the discipline of the
Ser. No. 78373988
10
investment process, and the availability to retail
investors” implying a conservative or focused investment
approach); and Journal of Accountancy, January 1, 2005
(“...Money managers are generally judged by how closely
they adhere to a consistent investment discipline and are
carefully monitored to “style drift” implying a specific
type of strategy.)
In view of our finding that the term DISCIPLINE is not
merely descriptive of applicant’s services, a disclaimer
pursuant to Trademark Act Section 6 is not required.
Decision: The refusal to register based on
applicant’s failure to disclaim DISCIPLINE is reversed.