The Society of Certified Insurance Counselors

Trademark Trial and Appeal Board

Jul 12, 2001

No. 75284182 (T.T.A.B. Jul. 12, 2001)

7/12/01
Paper No. 19
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re The Society of Certified Insurance Counselors
________
Serial No. 75/284,182
_______
H. Dale Langley, Jr. of The Law Firm of H. Dale Langley,
Jr., P.C. for The Society of Certified Insurance
Counselors.
Craig D. Taylor, Managing Attorney, Law Office 111.
_______
Before Seeherman, Chapman and Holtzman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
The Society of Certified Insurance Counselors has
filed an application to register CERTIFIED RISK MANAGER on
the Principal Register as a collective membership mark “to
indicate membership in an association of certified risk
managers” in International Class 200.1 The method-of-use
clause reads “the collective membership mark is used on
1 Application Serial No. 75/284,182, filed April 30, 1997.
Applicant claims first use by a member of applicant on October
30, 1995, and first use in interstate commerce of October 30,
1995.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/284182
2
decals, plaques and signs displayed on the premises of
applicant’s members and on its members’ letterheads.”
The original specimens of record are photocopies of a
news release by Certified Risk Managers International
titled “National Alliance2 Names Director of Certified Risk
Manager Program.”3 In response to the Examining Attorney’s
request for specimens which show use by members, applicant
submitted three substitute specimens, each of which is a
certificate indicating that an individual has met the
requirements and has been granted the degree or designation
“Certified Risk Manager.” (In the final Office action, the
Examining Attorney accepted the substitute specimens.)
Registration has been finally refused on the basis
that, when used as a collective membership mark, the
applied-for mark is merely descriptive under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1); that
applicant’s alternative claim of distinctiveness under
2 “National Alliance” is identified within the news release as
The National Alliance for Insurance Education & Research.
3 The Examining Attorney never questioned the relationship
between either The National Alliance for Insurance Education &
Research or Certified Risk Managers International and applicant.
While there is information in the Nexis stories of record
indicating that The National Alliance for Insurance Education &
Research includes several member organizations, including The
Society of Certified Insurance Counselors (applicant), The
Society of Certified Insurance Service Representatives, Certified
Risk Managers International, and The Academy of Producer
Insurance Studies, there is no indication of the legal
relationship between these entities.
Ser. No. 75/284182
3
Section 2(f), 15 U.S.C. §1052(f), is insufficiently
supported; and on the basis that the applied-for mark does
not function as a collective membership mark under Sections
4 and 45 of the Trademark Act, 15 U.S.C. §§1054 and 1127.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested.
The issues before the Board are (1) whether
applicant’s applied-for mark CERTIFIED RISK MANAGER is
merely descriptive as a collective membership mark; (2) if
it is merely descriptive, whether applicant has submitted
sufficient evidence of acquired distinctiveness under
Section 2(f) to overcome the refusal to register under
Section 2(e)(1); and (3) whether applicant’s applied-for
mark functions as a collective membership mark.
Turning first to the refusal to register on the ground
of mere descriptiveness, we note that the analysis
regarding mere descriptiveness of a collective membership
mark is the same as that with respect to a trademark or
service mark. See Racine Industries Inc. v. Bane-Clene
Corp., 35 USPQ2d 1832, 1837 (TTAB 1994). Thus, a
collective membership mark is merely descriptive, and
therefore unregisterable pursuant to Section 2(e)(1), if it
immediately conveys knowledge or information about a
Ser. No. 75/284182
4
significant attribute or aspect or a meaningful idea or
information about the organization or association, such as
its composition or membership. See In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); and Racine
Industries Inc. v. Bane-Clene Corp., supra. Of course,
whether a term or phrase is merely descriptive as a
collective membership mark is determined not in the
abstract, but in relation to the organization or
association involved, the context in which the term or
phrase is being used by the group’s members, and the
possible significance that the term or phrase would have to
the average person because of the manner of its use by
members of the group. See In re Bright-Crest, Ltd., 204
USPQ 591 (TTAB 1979); and In re Consolidated Cigar Co., 35
USPQ2d 1290 (TTAB 1995). That is, the question is not
whether someone presented with only the mark could guess
exactly what the member organization is or does. Rather,
the question is whether someone who knows what the member
organization is will understand the mark to convey
information about it. See In re Home Builders Association
of Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re
American Greetings Corp., 226 USPQ 365 (TTAB 1985).
Applicant acknowledges that the term “certified”
connotes “some degree of capability, experience, expertise,
Ser. No. 75/284182
5
or achievement” (brief, p. 3). However, applicant contends
that the term “risk manager” does not immediately inform
the average consumer “of the exact subject matter and scope
of the membership organization or the member’s certified
endeavors” (brief, p. 2), and could relate to a number of
businesses, for example, safety, quality control, financial
analysis or human resources; and that while CERTIFIED RISK
MANAGER suggests something about the member’s proficiency
and general field of endeavor, it does not describe any
specific meaning about a particular field of endeavor.
The identification for applicant’s collective
membership reads “to indicate membership in an association
of certified risk managers.” (Emphasis added.) Moreover,
the original specimens, the substitute specimens and
applicant’s website printout,4 all indicate that applicant
4 Despite the fact that the Examining Attorney had accepted
applicant’s substitute specimens in the final Office action dated
June 24, 1998, and referred to them in his February 9, 1999
decision on applicant’s request for reconsideration; applicant,
in its August 9, 1999 response, requested that the Examining
Attorney accept the prior substitute specimens. And, in the
alternative, applicant submitted a third set of specimens.
Applicant describes the newest specimens as being from
applicant’s website and showing use of CERTIFIED RISK MANAGER in
connection with membership in applicant’s organization. Inasmuch
as the Examining Attorney accepted the substitute specimens, this
alternative request is moot. However, this material is still of
record, and we have considered the page from this website in
making our decision herein. We note that this website is titled
“Certified Risk Managers (CRM) International” and begins,
“Certified Risk Managers International, a member of The National
Alliance for Insurance Education & Research, is a non-profit
organization which offers risk management practitioners the
Ser. No. 75/284182
6
is an organization consisting of certified risk managers
who have completed the program referred to in applicant’s
materials as either the “Certified Risk Management (CRM)
Program” or “Certified Risk Manager (CRM) Program.” These
materials show that “certified risk manager” is a
recognized term to describe people involved with risk
management. Thus, we agree with the Examining Attorney
that this mark immediately and directly conveys information
about a significant aspect of the organization, namely that
the members are certified risk managers.
The primary question in mere descriptiveness is how
relevant consumers perceive the mark, when considered as a
whole. In this case the relevant consumers or target
audience for applicant’s organization would include not
only members or potential members of the organization, but
also, those people in the public seeking a certified risk
manager; and they would readily understand that this
mark, as used, merely describes the composition of the
membership of the organization. See In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Accordingly, we find
that applicant’s mark is merely descriptive.5
premier educational opportunity available today. ...” Although
applicant has asserted that the excerpt is from applicant’s
website, there is no reference to applicant on this website page.
5 In its reply brief applicant essentially argues that its “mark,
as a whole, is not generic, notwithstanding that the Examiner
Ser. No. 75/284182
7
Turning now to the merits of applicant’s alternative
position that the mark CERTIFIED RISK MANAGER has acquired
distinctiveness, applicant has the burden of establishing
that its applied-for mark has become distinctive. See
Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840
F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988). The
question of acquired distinctiveness is one of fact which
must be determined based on the evidence of record. As the
Board stated in the case of Hunter Publishing Co. v.
Caulfield Publishing Ltd., 1 USPQ2d 1996, 1999 (TTAB 1986):
[e]valuation of the evidence requires a
subjective judgment as to its
sufficiency based on the nature of the
mark and the conditions surrounding its
use.
There is no specific rule as to the exact amount or
type of evidence necessary to prove acquired
distinctiveness but, generally, the more descriptive the
term, the greater the evidentiary burden to establish
acquired distinctiveness. See In re Bongrain International
(American) Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir.
considers certain terms, alone, generic” (p. 2); states that the
disclaimer required by the Examiner is inappropriate; and cites
the then-recent decision of the Court of Appeals for the Federal
Circuit of In re The American Fertility Society, 188 F.3d 1341,
51 USPQ2d 1832 (Fed. Cir. 1999). In the case now before this
Board there is no refusal to register based on genericness, (and
there has been no requirement for a disclaimer); accordingly, the
American Fertility case is inapposite.
Ser. No. 75/284182
8
1990); and Yamaha, supra at 1008. See also, 2 J. McCarthy,
McCarthy on Trademarks and Unfair Competition, §15:28 (4th
ed. 2001).
In support of its claim of acquired distinctiveness,
applicant asserts that the mark has been in use since
October 1995; that some of the articles from Nexis
submitted by the Examining Attorney refer to applicant; and
that a third-party (The Crider Group, Inc.) website shows
use of CERTIFIED RISK MANAGER as indicating membership in
applicant’s organization. On this basis, applicant
concludes that its mark has acquired distinctiveness.
Inasmuch as the involved mark is highly descriptive,
the evidentiary burden on applicant to establish acquired
distinctiveness, is concomitantly higher. The use of the
collective membership mark for a few years, by itself, is
not sufficient. Further, the excerpted Nexis stories to
which applicant makes general reference do not use the
words “certified risk manager,” but rather use the words
“Certified Risk Managers International” and, moreover, none
of the excerpted stories relates those words to applicant,
The Society of Certified Insurance Counselors. The
photocopy of a page from the third-party website does not
show the words “certified risk manager,” but rather the
words are “Certified Risk Manager Institute” and “Risk
Ser. No. 75/284182
9
Management and Insurance,” and again there is no
information relating those words to applicant’s
organization. Applicant submitted no direct evidence of
the purchasing public’s recognition of the applied-for
collective membership mark as identifying applicant.
In the instant case, the overall evidence falls far
short of establishing a prima facie showing that
applicant’s merely descriptive mark has acquired
distinctiveness as a collective membership mark. See In re
Thacker, 228 USPQ 961 (TTAB 1986); In re Mortgage Bankers
Association of America, 226 USPQ 954 (TTAB 1985); and In re
International Association for Enterostomal Therapy, Inc.,
218 USPQ 343 (TTAB 1983).
Turning now to the refusal to register under Sections
4 and 45 of the Trademark Act, the Examining Attorney
contends that as applicant uses the term, CERTIFIED RISK
MANAGER merely denotes that an individual has been
conferred with a specific title, degree or designation,
rather than indicating membership in a specific
organization, and thus the applied-for mark fails to
function as a collective membership mark.
Applicant contends that a person must complete certain
study and examination to become a member; that applicant
maintains certain requirements and indicators of
Ser. No. 75/284182
10
proficiency of its members; and that members of applicant’s
organization use the applied-for mark to indicate their
membership in the organization, and not only as a title or
degree.
The sole purpose of a collective membership mark is to
indicate that the user is a member of a particular
organization, rather than to identify and distinguish any
goods or services. See Sections 4 and 45 of the Trademark
Act; Daimler-Benz Aktiengesellschaft v. Consulting
Engineers Council, 353 F.2d 539, 147 USPQ 528, 530 (CCPA
1965); and In re International Institute of Valuers, 223
USPQ 350 (TTAB 1984). See also, 3 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition, §§19:98 and
19:101 (4th ed. 2001).
The question of whether this type of term or phrase
serves as a mark must be determined on the basis of the
manner and context in which the term or phrase is used, as
revealed by the specimens and other literature of record,
and the significance the term or phrase is likely to have
to the public because of the manner in which it is used.
See In re Institute for Certification of Computer
Professionals, 219 USPQ 372 (TTAB 1983).
The substitute specimen in this case is a blank
certificate which is to be filled in with an individual’s
Ser. No. 75/284182
11
name, and it reads, in relevant part, as follows:
“Certified Risk Managers International, in association with
The National Alliance hereby recognizes that all
requirements having been fulfilled, grants (blank space
for individual’s name) the designation Certified Risk
Manager and is hereby entitled to all honors, rights,
privileges, and responsibilities pertaining thereto.” This
language indicates that the holder has been awarded the
designation of “Certified Risk Manager.” It does not
indicate membership in any specific organization. In fact,
applicant is not named thereon at all. Stated another way,
this certificate merely denotes that the individual is the
recipient of the award of the designation of Certified Risk
Manager and does not refer to membership in any
organization, including applicant. See In re Institute for
Certification of Computer Professionals, supra; and In re
The National Society of Cardiopulmonary Technologists,
Inc., 173 USPQ 511, (TTAB 1972).
As explained in our discussion of applicant’s Section
2(f) claim, the excerpted Nexis stories, the third-party
website and applicant’s website do not evidence use of the
phrase CERTIFIED RISK MANAGER as a collective membership
mark indicating membership in applicant. Considering the
overall evidence, we agree with the Examining Attorney that
Ser. No. 75/284182
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the phrase CERTIFIED RISK MANAGER is a designation and does
not function as a collective membership mark indicating
membership in applicant organization.
Decision: The refusal to register under Section
2(e)(1) is affirmed (and applicant has failed to prove the
applied-for mark has acquired distinctiveness under Section
2(f)); and the refusal to register under Sections 4 and 45
is affirmed.