Thursday, August 05, 2010

WYHA? TTAB Affirms Mere Descriptiveness Refusal of "COLLEGIATE COMMUNITY FINANCIAL" for Credit Union Services

In an enervating ruling, the Board affirmed a Section 2(e)(1) refusal to register the mark COLLEGIATE COMMUNITY FINANCIAL, finding it merely descriptive of "credit union services." Would you have appealed? In re Florida State University Credit Union, Serial No. 77415033 (July 12, 2010) [not precedential].

Examining Attorney Matt Einstein relied on dictionary definitions of the constituent words and on third-party registrations containing disclaimers of one or more of those words, in arguing that the subject mark immediately describes the intended users and the function of FSU's services: "the mark merely describes that applicant offers financial services to a collegiate community."

FSU argued that the mark is a coined term, that the three words are not normally used together, and that there is no evidence of any third-party use of the phrase COLLEGIATE COMMUNITY FINANCIAL. It pointed to several third party registrations in the financial services field, for marks that include at least one of the constituent words but with no disclaimer or 2(f) claim.

The Board sided with the Examining Attorney, concluding that "[t]he mark immediately describes the fact that applicant’s financial services, namely credit union services (obviously a type of financial service) are offered to a collegiate community, that is, a community affiliated with a college." It found the "competing evidence" of third-party registrations to be of little probative value, since each case must be decided on its own record. Moreover, the fact that FSU may be the first and/or only user of the mark "does not justify registration if the only significance conveyed by the term is merely descriptive."

Anyone marketing financial services, including credit union services, to a community affiliated with a college might well have occasion to use the words “collegiate community financial” to describe their services.

TTABlog comment: You certainly cannot call this a Seminole decision.

Text Copyright John L. Welch 2010.


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