The Society of Certified Insurance Counselors

Trademark Trial and Appeal Board

Oct 24, 2000

No. 75284126 (T.T.A.B. Oct. 24, 2000)

Paper No. 12
10/24/00 HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Society of Certified Insurance Counselors
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Serial No. 75/284,126
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H. Dale Langley, Jr. of Akin, Gump, Strauss, Hauer & Feld,
L.L.P. for applicant.
Patricia A. Horrall, Trademark Examining Attorney, Law
Office 106 (Mary Sparrow, Managing Attorney).
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Before Walters, Chapman and Wendel, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
The Society of Certified Insurance Counselors has
filed an application to register the mark depicted below
for “educational services, namely, conducting classes,
seminars and conferences in the field of insurance and risk
management and distributing course materials in connection
therewith.”1

1 Serial No. 75/284,126, filed April 30, 1997, with a claimed
first use date and first use in commerce date of August 1996.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/284,126
2
Registration has been finally refused under Section
6(a) of the Trademark Act, 15 USC § 1056(a), on the basis
of applicant’s failure to comply with the requirement that
a disclaimer be entered of the words THE NATIONAL ALLIANCE
FOR INSURANCE EDUCATION & RESEARCH apart from the mark as a
whole.
The refusal has been appealed and both applicant and
the Examining Attorney have filed briefs. No oral hearing
was requested.
The Examining Attorney maintains that the word portion
of applicant’s mark is merely descriptive of applicant’s
services and accordingly not registrable standing alone.
She argues that this combination of terms immediately
informs consumers of the nature, scope and subject matter
of the services at hand, namely, that applicant’s services
originate from a national alliance formed to advance
education and research in the insurance industry. To
support her position, she had made of record a dictionary
definition of “alliance”2 and copies of several third-party

2 The definition relied upon from The American Heritage
Dictionary of the English Language (3rd ed. 1992) reads in
relevant part:
alliance 1. a. a close association of nations or other
groups, formed to advance common interests
or causes: an alliance of labor unions
opposing the bill.
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registrations in which the terms “national” and “alliance”
have been disclaimed.
Applicant insists that the wording is at most
suggestive of applicant’s services; that the separate terms
“national,” “alliance,” “insurance,” “education” and
“research” have general meanings which are subject to wide
variation and thus the language could be perceived as
relating to many types of services. Applicant further
argues that the mark must be considered in its entirety and
as such the words must be considered in context with the
fanciful design portion of the mark.
A term or phrase is merely descriptive within the
meaning of Section 2(e)(1) if it immediately conveys
information about a characteristic or feature of the goods
or services with which it is being used. Whether or not a
particular term is merely descriptive is not determined in
the abstract, but rather in relation to the goods or
services for which registration is sought, the context in
which the designation is being used, and the significance
the designation is likely to have, because of the manner in
which it is used, to the average purchaser as he encounters
the goods or services bearing the designation. See In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA
1978).
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We find the evidence made of record by the Examining
Attorney, together with the specimens, fully adequate to
establish that the wording THE NATIONAL ALLIANCE FOR
INSURANCE EDUCATION & RESEARCH is merely descriptive when
used in connection with applicant’s educational services.
The statements are made in the specimens that “The Society
of Certified Insurance Counselors (CLC), along with the
Society of Certified Insurance Service Representatives
(CISR), Certified Risk Managers (CRM) International, and
The Academy of Producer Insurance Studies, comprise The
National Alliance for Insurance Education & Research” and
that “We are national in scope.” Taking these statements
along with the dictionary definition of the term “alliance”
as a “ close association ... of groups, formed to advance
common interests,” we find that the term NATIONAL ALLIANCE
immediately and directly conveys information with respect
to the nature of the organization from which applicant’s
services originate. The third-party registrations relied
upon by the Examining Attorney merely corroborate the
descriptive nature of the term “alliance, ” particularly
when used in connection with groups offering educational
services. The remaining terms INSURANCE EDUCATION &
RESEARCH clearly refer to the specific topics and scope of
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programs and resources offered by applicant in connection
with its educational services.
Applicant’s arguments that the individual terms in
this wording have various general meanings, and that, even
when used in this combination, the wording could have
various interpretations carry little weight. We set forth
the general principle above that descriptiveness is not
determined in the abstract, but rather as the term or
phrase is being used in connection with the particular
services involved. As pointed out by the Examining
Attorney, the present language is merely descriptive if it
immediately conveys information to purchasers as to the
nature of applicant’s services, when they encounter the
mark being used with these services. The question is not
whether these purchasers would be able to decipher what the
services are upon viewing the wording alone. We have no
doubt that purchasers would immediately grasp the
descriptiveness of the wording as being used by applicant.
Applicant’s further argument that since a mark must be
considered in its entirety, the wording must be viewed in
the context of the design, is equally unpersuasive.
Clearly the design has no impact on the connotation of the
wording which is being used therewith. The design is
purely ornamental. Thus, we fail to see how the design
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could have any effect on the determination of the
descriptive nature of the wording in itself.
Accordingly, the refusal to register applicant’s mark
on the basis that a disclaimer of the wording THE NATIONAL
ALLIANCE FOR INSURANCE EDUCATION & RESEARCH must be entered
is affirmed. Pursuant to Trademark Rule 2.142(g), this
decision will be set aside and applicant’s mark will be
published for opposition if applicant, no later than thirty
days from the mailing date hereof, submits a disclaimer of
the wording THE NATIONAL ALLIANCE FOR INSURANCE EDUCATION &
RESEARCH apart from the mark as a whole.
Decision: The refusal to register without the entry of
a disclaimer, as set forth above, is affirmed.
C. E. Walters
B. A. Chapman
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board
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