Wade Charles Barnett

Trademark Trial and Appeal Board

Feb 23, 2001

No. 75255424 (T.T.A.B. Feb. 23, 2001)

2/23/01
Paper No. 16
EWH/KRD
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Wade Charles Barnett
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Serial No. 75/255,424
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Timothy D. Pecsenye of Blank, Rome, Comisky & McCauley, LLP
for Wade Charles Barnett.
Wm. Patrick Shanahan, Trademark Examining Attorney, Law
Office 113 (Odette Bonnet, Managing Attorney).
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Before Seeherman, Hanak and Rogers, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
Wade Charles Barnett (applicant) seeks to register
LENDING SOLUTIONS FOR CREDIT UNION MEMBERS in typed drawing
form for “financial services, namely relationship
investment banking.” The intent-to-use application was
filed on March 11, 1997.
Citing Section 2(e)(1) of the Trademark Act, the
examining attorney has refused registration on the basis
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/255,424
2
that applicant’s mark is merely descriptive of applicant’s
services.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the examining
attorney filed briefs. Applicant did not request a
hearing.
As has been stated repeatedly, “a term is merely
descriptive if it forthwith conveys an immediate idea of
the ingredients, qualities or characteristics of the goods
[or services].” In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978) (emphasis added);
Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4,
189 USPQ 759, 765 (2nd Cir. 1976). Moreover, the immediate
idea must be conveyed forthwith with a “degree of
particularity.” In re TMS Corp. of the Americas, 200 USPQ
57, 59 (TTAB 1978); In re Entenmann’s Inc., 15 USPQ2d 1750,
1751 (TTAB 1990), aff’d 90-1495 (Fed. Cir. February 13,
1991).
Applicant’s services are investment banking.
Applicant has made of record excerpts from the Dictionary
of Investment Terms (1998). This dictionary defines
“investment banking” as “what an investment bank does.”
The term “investment bank” is defined as “an individual or
institution which acts as an underwriter or agent for
Ser No. 75/255,424
3
corporations and municipalities issuing securities, but
which does not accept deposits or make loans.”
Thus, by definition investment banking services do not
include the making of loans. Hence, the term LENDING
SOLUTIONS in applicant’s mark LENDING SOLUTIONS FOR CREDIT
UNION MEMBERS creates a degree of ambiguity when said mark
is used in connection with investment banking services. It
is only by means of using a lengthy reasoning process that
one discerns how applicant provides lending solutions to
credit unions and their members. In a paper dated July 20,
1999, applicant explained how his services were rendered in
the following fashion: “In layman’s terms, an investment
banker will take several loans that are owned and issued by
a [financial institution] and bundle them and sell them to
another investor. ... Applicant’s targeted customer base
consists of credit unions that make loans to consumers.
Applicant’s service purchases the loans from credit unions
and sells them to sophisticated investors. ... This service
provides credit unions with immediate money, instead of
having to wait for the borrower to repay the loan over the
life of the loan. Also, it provides investors with a
stable stream of income for a set number of years. In the
end both parties get what they desire; the credit union
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4
gets paid immediately and the investor has acquired a
stable security.”
At page four of his brief, the examining attorney has
acknowledged that the forgoing explanation of applicant’s
investment banking services is an accurate explanation.
The examining attorney then argues that because applicant
acknowledges that it provides services to credit unions
that will help solve their lending problems, that therefore
applicant’s mark LENDING SOLUTIONS FOR CREDIT UNION MEMBERS
is merely descriptive of investment banking services.
We simply disagree. In our view, even very
sophisticated credit union officers and investors, upon
seeing the mark LENDING SOLUTIONS FOR CREDIT UNION MEMBERS
used in connection with investment banking services, would
have to give considerable thought to the mark before
arriving at some idea as to the nature or characteristic of
applicant’s particular investment banking services.
Indeed, because investment banks do not make loans, some
sophisticated officers and investors may never understand
what characteristic or feature of investment banking
services is conveyed forthwith by applicant’s mark. As
noted earlier, the presence of the term “lending solutions”
in applicant’s mark would cause many sophisticated credit
union officers and investors to view applicant’s mark as
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being incongruous when applied to investment banking
services.
Decision: The refusal to register is reversed.