This Opinion is not a Precedent of the TTAB · Precedent of the TTAB Case: 16-2306 Document: ......

Mailed: May 17, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE

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Trademark Trial and Appeal Board ________

In re Modern Woodmen of America

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Serial No. 86125313 _______

Thomas J. Moore of Bacon & Thomas PLLC for Modern Woodmen of America. Kristina Morris, Trademark Examining Attorney, Law Office 116 (Christine Cooper, Managing Attorney).

_______

Before Cataldo, Taylor and Greenbaum, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Applicant, Modern Woodmen of America, has applied to register on the Principal

Register the term FRATERNAL FINANCIAL (in standard characters) as a mark for

annuity underwriting; banking; financial administration of retirement plans; financial advice; financial analysis and consultation; financial forecasting; insurance agencies in the field of life insurance; insurance agency and brokerage; investment advisory services; issuance and administration of annuities; life insurance underwriting in International Class 36.1

1 Application Serial No. 86125313 was filed on November 21, 2013 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s allegation of use of the mark anywhere and in commerce since January 1, 2008.

This Opinion is not a Precedent of the TTAB

Case: 16-2306 Document: 1-2 Page: 5 Filed: 07/07/2016 (6 of 24)

Serial No. 86125313

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The application includes a claim that FRATERNAL FINANCIAL has acquired

distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), as a

result of Applicant’s substantially exclusive and continuous use in commerce “for at

least five years immediately before the date of this statement.”2 Applicant also claims

ownership of U.S. Registration Nos. 3963749 and 4332086; however, these

registrations do not form a basis for Applicant’s claim of acquired distinctiveness.3

The Trademark Examining Attorney refused registration under Section 2(e)(1) of

the Trademark Act on the ground that Applicant’s mark is merely descriptive of a

feature or quality of Applicant’s services, and that Applicant’s showing of acquired

distinctiveness under Section 2(f) is insufficient. In addition, the Examining Attorney

required applicant to disclaim FINANCIAL apart from the mark as shown. Applicant

presented arguments in response to the Examining Attorney’s refusal to register and

submitted the required disclaimer of FINANCIAL. The Examining Attorney

subsequently issued a final Office action on the ground that the proposed mark is

merely descriptive under Section 2(e)(1) and that Applicant’s showing under Section

2(f) is insufficient.4 Applicant requested reconsideration and filed an appeal. After

the Examining Attorney denied the request for reconsideration, the appeal was

2 November 21, 2013 application at 2. Citations to the briefs refer to TTABVUE, the Board’s online docket system, by page number. Citations to the examination record refer to the Trademark Office’s online Trademark Status and Document Retrieval system (TSDR), by page number. 3 Neither Applicant nor the Examining Attorney made of record copies of these registrations, and the Board does not take judicial notice thereof. UMG Recordings Inc. v. O’Rourke, 92 USPQ2d 1042, 1046 (TTAB 2009). 4 The issue of the registrability of the applied-for mark on the Supplemental Register is not before us.


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resumed. Applicant and the Examining Attorney filed briefs and presented

arguments on the issue under appeal at an oral hearing held before this panel on

March 15, 2016.

Issue on Appeal

Applicant, having filed the involved application seeking registration under Section

2(f), has conceded that the mark is merely descriptive under Section 2(e)(1). See

Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d

1001, 1005 (Fed. Cir. 1988); The Cold War Museum, Inc. v. Cold War Air Museum,

Inc., 586 F.3d 1352, 92 USPQ2d 1626 (Fed. Cir. 2009). Thus, the sole issue on appeal

is whether Applicant has carried its burden of establishing, by a preponderance of

the evidence, a prima facie case that its merely descriptive designation has acquired

distinctiveness as a mark indicating source under Section 2(f). See Yamaha, 6

USPQ2d at 1005; In re Rogers, 53 USPQ2d 1741 (TTAB 1999).

Applicant argues in its reply brief that the “burden of proof and the burden of

persuasion should be on the Examining Attorney given the decision in B & B

Hardware, which includes:

The Eighth Circuit likewise erred by concluding that Hargis bore the burden of persuasion before the TTAB. B & B, the party opposing registration, bore the burden, see 37 C.F.R. § 2.116(b); TTAB Manual § 702.04(a), just as it did in the infringement action.

135 S.Ct. at 1309. The Court has instructed that the burden of persuasion should be

on the party opposing registration, which in the present appeal is the Examining

Attorney.”5

5 10 TTABVUE 5-6.


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The Supreme Court in B & B Hardware, Inc. v. Hargis Industries, Inc., 135 S.Ct.

1293, 113 USPQ2d 2045 (U.S. 2015), found this tribunal’s decision in an inter partes

opposition proceeding to have preclusive effect in a later infringement action

involving the same parties. However, the application involved herein is subject to an

ex parte refusal of registration. Applicant cites to no authority, either in the Supreme

Court’s decision in B & B Hardware or otherwise, for its apparent position that the

Examining Attorney in an ex parte appeal of a refusal to register stands in the

position of a plaintiff in an inter partes proceeding before this tribunal. To the

contrary, our primary reviewing Court recently held that, unlike an inter partes

proceeding before the Board, “there is no suggestion in B&B Hardware that an

examiner’s decision to register a mark or to refuse registration satisfies the

traditional requirements of issue preclusion.” In re Cordura Restaurants, Inc., 15-

1432 (Fed. Cir. May 13, 2016) n2, citations omitted.

Furthermore, Applicant does not point to any language in the B & B Hardware

decision or elsewhere that shifts the burden of persuasion on the issue of acquired

distinctiveness in an ex parte appeal from Applicant to the Examining Attorney.

Indeed, “Applicant acknowledges the Federal Circuit precedence to the contrary.”6 As

a result, we find that it remains Applicant’s burden of demonstrating that a proposed

mark has acquired distinctiveness under Section 2(f).7

6 Id. at 6. 7 We further observe that acquired distinctiveness of a designation under Section 2(f) is not a “static target,” and an adverse decision by the Board on the issue of acquired distinctiveness does not preclude an applicant from the opportunity to later show that its proposed mark has acquired distinctiveness under Section 2(f) at a future date on a different record.


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Acquired Distinctiveness

A mark which is merely descriptive of the identified goods may nonetheless be

registered if it has “acquired” distinctiveness. Trademark Act § 2(f). “To establish

acquired distinctiveness, applicant must show that the primary significance of the

[mark] in the minds of consumers is not the product but the producer.” In re Ennco

Display Sys. Inc., 56 USPQ2d 1279, 1284 (TTAB 2000). As discussed above, Applicant

bears the burden of demonstrating that its mark has acquired distinctiveness. See

Yamaha, 6 USPQ2d at 1006; and In re Hollywood Brands, Inc., 214 F.2d 139, 102

USPQ 294, 295 (CCPA 1954) (“[T]here is no doubt that Congress intended that the

burden of proof [under Section 2(f)] should rest upon the applicant”). “[L]ogically that

standard becomes more difficult as the mark’s descriptiveness increases.” Yamaha, 6

USPQ2d at 1008.

Acquired distinctiveness may be shown by direct or circumstantial evidence. Direct

evidence includes actual testimony, declarations or surveys of consumers as to their

state of mind. Circumstantial evidence is evidence from which consumer association

might be inferred, such as years of use, extensive amounts of sales and advertising,

and any similar evidence showing wide exposure of the mark to relevant consumers.

We determine whether a mark has acquired distinctiveness on the basis of all

competent evidence, including “advertising expenditures, sales success, length and

exclusivity of use, unsolicited media coverage, and consumer studies (linking the

name to a source).” In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424

(Fed. Cir. 2005).


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There is no fixed rule for the amount of proof necessary to demonstrate acquired

distinctiveness; the evidence required is in proportion to the degree of non-

distinctiveness of the mark at issue. Yamaha, 6 USPQ2d 1001 at 1008. “The greater

the degree of descriptiveness the term has, the heavier the burden to prove it has

attained secondary meaning.” In re Bongrain Int’l Corp., 894 F.2d 1316, 13 USPQ2d

1727, 1728 n.4 (Fed. Cir. 1990) (citing Yamaha, 6 USPQ2d 1001 at 1008). Thus, even

long periods of substantially exclusive use may not be sufficient to demonstrate

acquired distinctiveness when the term in question is highly descriptive.

In support of her position that “the applicant’s mark is highly descriptive of the

identified services,”8 and thus requires a greater evidentiary showing to demonstrate

acquired distinctiveness, the Examining Attorney made of record the following

dictionary definitions:

“fraternal” – “belonging to brothers, or between brothers, between friends or

people who share the same interests or opinions fraternal feelings, fraternal

organizations are formed by people who share the same interests a fraternal

association/order;”9 and

“financial” – “involving money banks and other financial institutions.”10

8 9 TTABVUE 5. 9 March 14, 2014 first Office action at 5, retrieved from Macmillandictionary.com/dictionary/american. 10 Id. at 7, retrieved from Macmillandictionary.com/dictionary/british. We note that the American English definition is identical.


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In further support of her position, the Examining Attorney made of record evidence

from various third-party Internet websites:11

Thrivent Financial Our Organization We are a Fortune 500 financial services organization with a unique blend of financial expertise, shared values and steadfast service that truly sets us apart. We’re a faith-based organization, called to care for others. We are the largest fraternal benefit society in the United States. As such, we have a unique ability to work with and through our members to carry out our mission of improving lives.12

13

11 All highlights reproduced below appeared in the original postings or were supplied by the Examining Attorney. 12 Id. at 11. Thrivent.com/aboutus/ourorganization 13 Id. at 9-10. fraternalalliance.org/benefit-society


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14

15 About Modern Woodmen of America (Applicant) Modern Woodmen of America is a member-owned fraternal financial services organization. We secure futures with financial guidance and products. We touch lives with fraternalism. Since 1883, Modern Woodmen has brought people together, supported families and

14 Id. at 14. Catholicfinanciallife.org 15 Id. at 16. Foresters.com


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strengthened communities nationwide.16 The Ohio Masonic Home Testimonials

17 South Dakota: Financial Services Representative. Pierre: South Dakota Department of Labor has issued the following job announcement: Openings: 1 … Description: Employer is one of the nations’ largest fraternal financial services providers. They are looking for self motivated sales people with or without experience in the Madison and surrounding areas. …18 Catholic United Financial We are a not-for-profit, fraternal benefit company serving more than 84,000 members in Minnesota, North Dakota, South Dakota, Wisconsin and Iowa.

19 Catholic Order of Foresters

16 October 6, 2014 final Office action at 5. Modern-woodmen.org 17 Id. at 7-8. Ohiomasonichome.org 18 Id. at 9. News.advisen.com 19 Id. at 11. Catholicunitedfinancial.org


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20 Polish Falcons of America The Strong, Friendly, Family Fraternal

21

22

20 Id. at 12. Catholicforester.org 21 Id. at 16. Polishfalcons.org 22 Id. at 14. Gleanerlife.org


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23

In this case, Applicant’s proposed mark is FRATERNAL FINANCIAL for various

financial and insurance services. The Examining Attorney’s record evidence

demonstrates that fraternal benefit societies provide financial services as part of their

core mission. Thus the relevant consumers�—�including those seeking financial

services from fraternal benefit societies�—�would immediately understand

FRATERNAL FINANCIAL to describe a feature or characteristic of such services,

23 Id. at 22. Wflains.org


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namely, that they are financial services provided by fraternal benefit societies. As to

such services, Applicant’s proposed mark is, if not highly descriptive, at best merely

descriptive.

To demonstrate that its mark has acquired distinctiveness, Applicant introduced

with its September 12, 2014 communication the following declaration of its Counsel,

Peter C. Doyle:


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24

With its April 6, 2015 request for reconsideration, Applicant submitted the following

second declaration of Peter C. Doyle, with an attached exhibit:

24 September 12, 2014 communication at 4.


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25

Mr. Doyle’s second declaration was accompanied by the following exhibit:

25 April 6, 2015 request for reconsideration at 3.


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26

26 Id. at 4.


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Included in the September 12, 2014 and April 6, 2015 declarations of Mr. Doyle are

statements that Applicant’s mark has acquired distinctiveness as a result of use since

January 1, 2008. However, the statute does not say that a declaration of five or more

years’ use must be considered prima facie evidence of distinctiveness; the statute

explicitly invests the USPTO with the discretion to accept or reject such a declaration

as prima facie evidence of distinctiveness. And in practice, a mere claim of five years’

use will often be insufficient proof that a descriptive mark has acquired

distinctiveness. In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262

(Fed. Cir. 2015) (the statute does not require the USPTO to accept five years’ use as

prima facie evidence of acquired distinctiveness). See also TRADEMARK MANUAL OF

EXAMINING PROCEDURE (TMEP) § 1212.05 (October 2015) and authorities cited

therein. Mr. Doyle’s April 6, 2015 declaration includes the additional statement that

Applicant’s mark has been in prominent use on its Internet website since January 1,

2008, and an evidentiary printout in the form of a webpage from the website.

However, neither the additional statement nor the copy of Applicant’s webpage

contains supplementary information to support Applicant’s claim of acquired

distinctiveness. Applicant submitted no additional evidence of acquired

distinctiveness.27

Applicant argues that its use of FRATERNAL FINANCIAL as a mark since 2008

establishes the acquired distinctiveness thereof. However, Applicant did not submit

any evidence of sales or marketing figures, examples of advertisements placed in

27 We observe that Applicant’s specimen of record, submitted with its application, does not contain information that would support Applicant’s Section 2(f) claim.


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magazines or newspapers, marketing at trade shows or direct marketing to its

members, or any evidence of recognition by third parties of FRATERNAL

FINANCIAL as a mark. Moreover, there is no evidence to put any such marketing

efforts into context, i.e., to indicate Applicant’s market share or the proportion of

relevant consumers exposed to Applicant’s mark.

Similarly, Applicant’s evidence in the form of a printout from its own website is

hardly probative of whether the consuming public has come to recognize

FRATERNAL FINANCIAL as a source identifier for Applicant’s services. The only

third-party website evidence of record was submitted by the Examining Attorney,

and this evidence, as discussed above, certainly does not establish that FRATERNAL

FINANCIAL has acquired distinctiveness as a mark.

In light of the foregoing, we find that Applicant’s evidence falls short of establishing

that FRATERNAL FINANCIAL has acquired distinctiveness as a mark used in

connection with the recited financial and insurance-related services under Section

2(f).

Decision: The refusal to register under Trademark Act Section 2(e) (1) on the

ground that the mark is merely descriptive of the services and has not acquired

distinctiveness is affirmed.


This Opinion is not a Precedent of the TTAB · Precedent of the TTAB Case: 16-2306 Document: ......

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