IP Law Daily, TRADEMARK—TTAB: Proposed TRUST CHECK mark is deceptively misdescriptive for insurance services, (Sep 29, 2022)

By Cheryl Beise, J.D.

Consumers would misunderstand the mark to involve payment of insurance benefits by a trust check.

A trademark examining attorney properly refused to register the proposed mark TRUST CHECK on the ground that the mark was deceptively misdescriptive of the applicant’s administration and underwriting services in the field of life insurance, the Trademark Trial and Appeal Board has determined. According to the Board, the relevant consumers were likely to believe the proposed mark’s misrepresentation that the “legacy benefits payable according to schedule dictated by insured” are made by checks issued by a trust, even though they were not (In re HoldingVIP LLC, September 8, 2022, Larkin, C.).

HoldingVIP LLC filed an intent-to-use application to register on the Principal Register the proposed standard-character mark TRUST CHECK for services that were ultimately identified as “administration and underwriting services in the field of life insurance, namely, insurance policies designed with legacy benefits payable according to schedule dictated by insured” in International Class 36. The trademark examining attorney refused registration of the proposed mark on the grounds that TRUST CHECK is “merely descriptive” or, alternatively, “deceptively misdescriptive,” of the services identified in the application within the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). The applicant appealed.

Deceptive misdescriptiveness. The Board affirmed the refusal based on deceptive misdescriptiveness. A mark is considered deceptively misdescriptive if (1) the mark misdescribes a quality, feature, function, or characteristic of the goods or services with which it is used; and (2) consumers would be likely to believe the misrepresentation.

Plausible descriptiveness. The Board first considered whether the proposed mark TRUST CHECK was plausibly descriptive of a significant feature of the identified services, which the services did not in fact possess.

The applicant did not dispute that the word CHECK would be understood by consumers to describe a payment instrument. As used in connection with the identified services, the Board found that CHECK would be understood to describe the instrument by which the administrators of the life insurance policies pay the legacy benefits payable according to a schedule dictated by the insured.

The applicant and examining attorney disputed the meaning of TRUST in the proposed mark. The examining attorney provided a definition from the MERRIAM-WEBSTER DICTIONARY of a “trust” as “an arrangement in which someone’s property or money is legally held or managed by someone else or by an organization.” That dictionary also defined “insurance trust” as “a trust in which the principal consists of an insurance policy.” The applicant admitted that its mark did not describe a “trust” or a “check paid by a trust.” The applicant instead argued that in the context of its particular insurance policies, TRUST meant something that could be relied upon by the insured for its beneficiaries.

The Board agreed with the examining attorney, explaining that life insurance trusts are common vehicles to reduce or avoid estate taxes and to effectuate an insured’s intent with respect to the payment of legacy benefits. The Board determined that the word TRUST in the applicant’s proposed mark would most likely be understood by consumers as “a financial and legal term describing a feature of the administration services regarding life insurance policies ‘designed with legacy benefits payable according to schedule dictated by insured,’ namely, that the legacy benefits are paid by or through a trust, and not as an adjective modifying the word CHECK to signify reliability.”

After finding that both TRUST and CHECK were plausibly descriptive of the applicant’s identified services, the Board further found that the combination TRUST CHECK did not convey any distinctive source-identifying impression contrary to the descriptiveness of the individual parts. In the Board’s view, this determination was straightforward given that “trust check” generally means a check paid by a trust.

The Board determined that the proposed mark TRUST CHECK “immediately conveys information about a plausible significant feature of the services, namely, that the identified life insurance “legacy benefits payable according to schedule dictated by insured” will be paid by a check issued by an insurance trust.” The applicant offered no other plausible meaning of the mark in the context of the identified services. Further, because the applicant admitted that its services did not involve payment of benefits by a trust check, the Board concluded that the proposed mark misdescribes the services under the first part of the test for deceptive misdescriptiveness.

Consumer belief. The second and final question for the Board was whether reasonably prudent consumers were likely to believe the misrepresentation. The applicant contended that its customers were sophisticated about insurance and insurance purchases and unlikely to be deceived about the misdescription of its services. However, the applicant offered no record evidence to support this argument and the applicant’s identification of services was not limited to sophisticated customers. “It is common knowledge that life insurance policies are purchased by members of the general public,” the Board observed. The Board concluded that the relevant consumers were likely to believe the proposed mark’s misrepresentation that the “legacy benefits payable according to schedule dictated by insured” were made by checks issued by a trust, even though they were not.

Finding that the applicant’s proposed mark TRUST CHECK was deceptively misdescriptive within the meaning of Section 2(e)(1), the Board affirmed the refusal to register.

The case is Serial No. 88697613.

Attorneys: H. Dale Langley, Jr. (Law Firm of H. Dale Langley, Jr., PC) for Holding VIP LLC. John E. Michos for the USPTO.

Companies: Holding VIP LLC

Cases: Trademark USPTO