Offc Action Outgoing

Applicant is seeking registration on the Principal Register of the proposed mark “THE RELOCATION MORTGAGE PROGRAM” as applied to services identified as “mortgage lending services.” The examining attorney issued a final refusal under Section 2(e)(1) of the Trademark Act and applicant’s claim for registration under Section 2(f) of the Trademark Act was deemed insufficient to overcome the refusal under Section 2(e)(1). Evidence showing competitors use of the proposed mark as a highly descriptive informational designation or a generic designation, was made of record in the Office actions mailed 07/21/2005, 01/31/2006 and 08/02/2006. On 7/31/2006, applicant both appealed the refusal of record and submitted a request for reconsideration that included attachments of various evidence in support of registration. On 08/02/2006, applicant’s request for reconsideration was denied and additional evidence in support of the refusal under Section 2(e)(1) was made of record. On appeal, Applicant is claiming the proposed mark is distinctive of its services and since the Trademark Office has not met its burden in proving that the proposed mark is generic, registration should be allowed on the Principal Register.

ARGUMENT

The proposed mark “THE RELOCATION MORTGAGE PROGRAM” is merely descriptive of applicant’s services, and applicant’s claim of acquired distinctiveness is insufficient to overcome the refusal. Trademark Act Sections 2(e)(1) and 2(f), 15 U.S.C. §§1052(e)(1) and 1052(f); In re Kalmback Publishing Co., 14 USPQ2d 1490 (TTAB 1989).

The crux of Applicant’s argument is that the Trademark Office has not proven that the proposed mark is generic as applied to the services, and therefore registration of the proposed mark must be allowed on the Principal Register. See applicant’s appeal brief, page nine, where applicant states, “Nonetheless, this evidence is not sufficient to meet the high burden the Examining Attorney faces in showing that the Mark is generic.” However, the proposed mark was not refused under Trademark Act Section 23. The sole refusal of record is under Section 2(e)(1) and applicant’s claim for registration under Section 2(f) was deemed insufficient to overcome the refusal under Section 2(e)(1). Under Section 2(f) it is the applicant, not the Trademark Office, who has the burden of proving the acquired distinctiveness of the mark. See Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988). To establish this acquired distinctiveness, a manufacturer must show that, in the minds of the public, the primary significance of a proposed mark is to identify the source of the product or service rather than to identify the product or service itself. See TMEP §§1212.01 and 1212.03. This has not been done in the present case. Applicant’s claim of distinctiveness is insufficient because the evidence of record shows many instances where applicant’s competitors have used the wording “relocation mortgage programs” as a highly descriptive informational designation or a generic designation. For example, below are excerpts from Google searches attached to the Office actions mailed 1/31/06 and 8/2/06 (emphasis added)—

HomeServices Lending has a unique relocation mortgage program that simplifies the relocation process… .”

GMAC Mortage: “The Corporate Relocation Mortgage Program.”

Wachovia: “Relocation Mortgage Programs for Companies.”

“While there, Mr. Cunliffe also developed relocation mortgage programs for Banco Mortgage.”

AdventNet: “…a leader in providing corporate and relocation mortgage programs…”

“Mortgage Assistance – Mayflower can assist the transferee with the financing of their new home while helping them control their costs. Special features such as pre-approvals, buy-downs, and closing specials may be available to your employees through specific relocation mortgage programs.”

“The $168 million in mortgages were originated by Prudential Home Mortgage, under its relocation mortgage program for companies that transfer employees.”

The Trademark Trial and Appeal Board has held that materials obtained through computerized text searching are competent evidence to show the descriptive use of terms under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1). In re National Data Corp., 222 USPQ 515, 517 n.3 (TTAB 1984); TMEP §710.01(a).

It is clear from the evidence of record that others in applicant’s field use the proposed mark as a highly descriptive informational designation or a generic designation to describe mortgage lending services known as relocation mortgage programs. The amount and character of evidence needed to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered. See In re Gammon Reel, Inc., 227 USPQ 729 (TTAB 1985). More evidence is needed where a mark is so highly descriptive that purchasers seeing the matter in relation to the named goods and/or services would be less likely to believe that it indicates source in any one party. See, In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984). The burden of proving that a mark has acquired distinctiveness is on applicant. See Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988). Applicant must establish that the purchasing public has come to view the proposed mark as an indicator of origin. Allegations of sales and advertising expenditures cannot per se establish that a term has acquired significance as a mark. It is necessary to examine the advertising material to determine how the term is used, the commercial impression created by such use, and the significance the term would have to prospective purchasers. The ultimate test in determining acquisition of distinctiveness under Trademark Act Section 2(f) is not applicant’s efforts, but applicant’s success in educating the public to associate the claimed mark with a single source. In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984).

That fact that applicant has high sales of the relevant goods or services and has significant advertising expenditures does not mean that the proposed mark has achieved distinctiveness. Standing alone, the sales figures and advertising expenditures demonstrate the success of applicant’s goods and/or services, but not that relevant consumers have come to view the proposed mark as applicant’s mark for such goods and/or services. These statements and exhibits merely tend to show that applicant has undertaken extensive promotions and has achieved commercial success. See In re Busch Entertainment Corp., 60 USPQ2d 1130 (TTAB 2000). Similarly, applicant’s advertising expenditures are merely indicative of its efforts to develop distinctiveness, not evidence that the mark has acquired distinctiveness. See In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991).

The evidence of record supporting the refusal under Section 2(e)(1) of the Trademark Act shows many competitors using the wording “relocation mortgage program” as a highly descriptive informational designation or a generic designation. Thus consumers would not believe that proposed mark “THE RELOCATION MORTGAGE PROGRAM” indicates source in any one entity. Therefore, Applicant’s evidence of distinctiveness under Section 2(f) of the Trademark Act is insufficient.

Generic terms for goods or services are incapable of functioning as registrable trademarks denoting origin or any specific source. No amount of purported proof that a generic term has acquired secondary meaning can transform that term into a registrable trademark. Such a designation cannot become a trademark under any circumstances. See Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 195 USPQ 281 (7^th Cir. 1977), cert. denied, 434 U.S. 1025, 196 USPQ 592 (1978). The Court of Appeals for the Federal Circuit set forth the test to determine whether a designation is generic in H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986). The test comprises two inquiries: (1) What is the class of goods or services at issue? (2) Does the relevant public understand the designation primarily to refer to that class of goods or services? In most cases the examining attorney must present evidence to establish the generic meaning of a designation in the application of the two-pronged test. See In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff'd, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (ANALOG DEVICES held a generic designation for devices having analog capabilities).

Applicant’s services “mortgage lending services,” encompass relocation mortgage programs, as a specific type of mortgage lending, e.g.” mortgage lending services, namely, relocation mortgage programs.” The evidence of record from various competitors in the relevant field shows that consumers would understand that a relocation mortgage program is merely a specific type of mortgage lending service and that the designation “the relocation mortgage program” is generic for applicant’s services.

Applicant’s own specimens of record show informational/generic use of wording in the proposed mark. See the first page of the specimens filed 12/15/04, where applicant states that: “A comprehensive mortgage program designed especially for transferees.” and “Wells Fargo Home Mortgage is committed to making home financing convenient and easy. Recognized as the premier relocation lender in the industry, we've established a relationship with your company and have helped thousands of relocating employees like you since 1981. Our relocation mortgage package is designed with features to specifically meet your unique needs as a transferee.” (Emphasis added.)

Applicant, on page nine of its appeal brief states that: “The Examining Attorney does not cite one instance where Applicant has used its whole mark in a merely informational or generic way.” (Emphasis added.) However, it is evident that Applicant itself uses the extremely similar wording “relocation mortgage package” generically to identify its services, yet applicant wishes to register the designation “the relocation mortgage program” on the Principal Register, thus inhibiting competitors from even describing their services properly. The two major reasons for not protecting descriptive marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services; and (2) to avoid the possibility of costly infringement suits brought by the registrant. This thus enables businesses and competitors to have the freedom to use common descriptive language when merely describing their own goods or services to the public in advertising and marketing materials. In re Styleclick.com Inc., 58 USPQ2d 1523, 1526-1527 (TTAB 2001). (Emphasis added.)

CONCLUSION

For the above reasons applicant’s claim of distinctiveness under section 2(f) should be held

insufficient and the refusal under section 2(e)(1) should be affirmed.

Respectfully submitted,

/Fred Mandir/

Examining Attorney

Law Office 105

(571) 272-9192

Thomas G. Howell

Managing Attorney

Law Office 105