In re Cigna Intellectual Property, Inc.

• Decision Date: 23 December 2020
• Docket Number: 86842483
• Parties: In re Cigna Intellectual Property, Inc.
• Court: Trademark Trial and Appeal Board

In re Cigna Intellectual Property, Inc.

No. 86842483

United States Patent and Trademark Office, Trademark Trial and Appeal Board

December 23, 2020

This Opinion is not a Precedent of the TTAB

Lynn E. Rzonca, Jessica Watkins ^[1] and Corinne Militello, Ballard Spahr LLP, for Cigna Intellectual Property, Inc.

Gretta Yao, Trademark Examining Attorney, Law Office 118, Michael W Baird, Managing Attorney. ^[2]

Before Zervas, Adlin and Dunn, Administrative Trademark Judges.

OPINION

ZERVAS, ADMINISTRATIVE TRADEMARK JUDGE

Cigna Intellectual Property, Inc. ("Applicant") seeks registration on the Principal Register of the proposed mark LEVEL FUNDING (in standard characters) for "Administration of employee benefits plans, namely administration of employer-based self-funded or partially-funded group health plans, with stop loss insurance, featuring predictable monthly fees and costs" in International Class 36.^[3]

After the October 17, 2016 Office Action in which the Examining Attorney made final her merely descriptiveness refusal under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1) Applicant timely appealed and submitted a request for reconsideration. In its request, Applicant argued against the refusal and claimed acquired distinctiveness under Trademark Act Section 2(f), 15 U.S.C. § 1052(f), in the alterna-tive.^[4] The Board suspended the appeal and remanded the application to the Examining Attorney for consideration of the request for reconsideration.

After further prosecution, the Examining Attorney issued a second Final Office Action on December 5, 2017, refusing registration under (i) Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052, 1127, on the basis that the proposed mark generic; and (ii) in the alternative, under Section 2(e)(1), on the basis that the proposed mark is merely descriptive of Applicant's services and Applicant's showing of acquired distinctiveness under Section 2(f) is insufficient.

Applicant filed another request for reconsideration on June 5, 2018, which the Board construed as a request for remand and granted. The Examining Attorney denied the request and maintained the refusals. Thereafter, on August 31, 2018, Applicant requested another remand of the application to the Examining Attorney to submit additional evidence, which the Board granted. The Examining Attorney denied the August 31, 2018 request and, after further prosecution - including Applicant's July 9, 2019 Response requesting registration on the Supplemental Register if its showing of acquired distinctiveness is not accepted - the Examining Attorney issued a third Final Office Action on July 31, 2019, maintaining the genericness and, in the alternative, the mere descriptiveness refusals, and finding insufficient Applicant's showing of acquired distinctiveness.

Subsequently, the Board resumed the appeal, and allowed Applicant time to file a Supplemental Brief which Applicant did not do. The Examining Attorney then filed her brief and Applicant later filed a reply. The Board conducted an oral argument on October 29, 2020.^[5]

We affirm the refusals to register Applicant's proposed mark and approve the decision of the Examining Attorney not to accept Applicant's showing under Section 2(f).

1. Genericness

A generic term "is the common descriptive name of a class of goods or services." Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 U.S.P.Q.2d 1827, 1830 (Fed. Cir. 2015) (quoting H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986)); see also USPTO v. Booking.com B.V., 140 S.Ct. 2298, 2020 U.S.P.Q.2d 10729, *1 (2020). Because generic terms "are by definition incapable of indicating a particular source of the goods or services," they cannot be registered as trademarks. Id. (quoting In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 U.S.P.Q.2d 1807, 1810 (Fed. Cir. 2001)). "The critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question." Id. (quoting Marvin Ginn, 228 U.S.P.Q. at 530).

Making this determination "involves a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered ... understood by the relevant public primarily to refer to that genus of goods or services?" Marvin Ginn, 228 U.S.P.Q. at 530. See also Princeton Vanguard, 114 U.S.P.Q.2d at 1829 ("there is only one legal standard for genericness: the two-part test set forth in Marvin Ginn"). "An inquiry into the public's understanding of a mark requires consideration of the mark as a whole." Id. at 1831 (quoting In re Steelbuilding.com, 415 F.3d 1293, 75 U.S.P.Q.2d 1420, 1421 (Fed. Cir. 2005)).

A term may be generic if it refers to part of the claimed genus of services. In re Cordua Rests., Inc., 823 F.3d 594, 118 U.S.P.Q.2d 1632, 1638 (Fed. Cir. 2016) states:

[A] term is generic if the relevant public understands the term to refer to part of the claimed genus of goods or services, even if the public does not understand the term to refer to the broad genus as a whole. Thus, the term "pizzeria" would be generic for restaurant services, even though the public understands the term to refer to a particular sub-group or type of restaurant rather than to all restaurants. See, e.g., [In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 227 U.S.P.Q. 961 (Fed. Cir. 1985)] (affirming the TTAB's determination that BUNDT is generic "for a type of ring cake"); In re Analog Devices, Inc., 6 U.S.P.Q.2d 1808, 1810, 1988 WL 252496, at *3 (TTAB 1988) ("There is no logical reason to treat differently a term that is generic of a category or class of products where some but not all of the goods identified in an application fall within that category."), aff'd, 871 F.2d 1097 (Fed. Cir. 1989) (unpublished); see also Otokoyama Co., Ltd. v. Wine of Japan Imp., Inc., 175 F.3d 266, 271 (2d Cir.1999) ("Generic words for sub-classifications or varieties of a good are [ ] ineligible for trademark protection."). "A registration is properly refused if the word is the generic name of any of the goods or services for which registration is sought." 2 McCarthy § 12:57. A "term need not refer to an entire broad species, like 'cheese' or 'cake,' in order to be found generic." 1-2 Anne Gilson LaLonde, Gilson on Trademarks § 2.02[7][a] (2011).

In an ex parte appeal, the USPTO has the burden of establishing by clear evidence that a mark is generic and, thus, unregistrable. In re Hotels.com, 573 F.3d 1300, 91 U.S.P.Q.2d 1532, 1533 (Fed. Cir. 2009); In re Gould Paper Corp., 834 F.2d 1017, 5 U.S.P.Q.2d 1110, 1111 (Fed. Cir. 1987); In re Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d 1567, 4 U.S.P.Q.2d 1141 (Fed. Cir. 1987).

a. The Genus of Services

"[O]ur first task is to determine, based upon the evidence of record, the genus of Applicant's [services] …." In re ActiveVideo Networks, Inc., 111 U.S.P.Q.2d 1581, 1600 (TTAB 2014). Lauren Stoddard, Applicant's Marketing Product Manager for its LEVEL FUNDING service, explains in her November 9, 2017 Declaration:

8. There are two types of self-funded health insurance plans:

(1) administrative services only plans ("ASO"), and (2) partially self-funded plans. ASO plans require the employer to pay the full amount of medical claims incurred by their en-rollees. They pay a third party only for certain administrative costs to manage the health plan.

9. The other type of self-funded health insurance plan is known as a partially self-funded plan. In partially self-funded insurance plans, employers pay for employee claims up to a threshold amount. Employers on such plans use "stop-loss" insurance to protect against "catastrophic" and higher-than-expected enrollee medical claims.

10. Applicant's LEVEL FUNDING solution falls under the category of partially self-funded health plans and services. This service incorporates stop-loss insurance which helps customers avoid coverage gaps that can result from using an outside or third-party insurer for stop-loss protection. The service also facilitates stop-loss claim processing. Other key features of Applicant's LEVEL FUNDING service include predictable monthly costs, and the ability of the employer to share in the surplus if medical claims are lower than expected.^[6]

In the oral hearing, the Managing Attorney consented to the genus proposed by Applicant, self-funded or partially self-funded insurance plans.^[7] We agree with Applicant and the Managing Attorney that the genus is self-funded or partially self-funded insurance plans.

b. The Relevant Purchasing Public's Understanding of LEVEL FUNDING

We turn now to the second inquiry under Marvin Ginn, whether LEVEL FUNDING is understood by the relevant public primarily to refer to "self-funded or partially self-funded insurance plans." Any competent source, including dictionary excerpts, research databases, webpages, newspapers and other publications, may serve as evidence to show the relevant public's understanding of the wording at issue. In re Reed Elsevier Props. Inc., 482 F.3d 1376, 82 U.S.P.Q.2d 1378, 1380 (Fed. Cir. 2007); In re Merrill Lynch, Pierce, Fenner, & Smith, 4 U.S.P.Q.2d at 1143.

Applicant and the Examining Attorney disagree on the relevant public. Applicant maintains that "Applicant's LEVEL FUNDING^SM service has been sold to more than 6 000 clients (employers sponsoring health plans), reaching approximately 825, 000 enrollees across the United States, "^[8] and that "sophisticated insurance brokers are the relevant class of consumers of Applicant's LEVEL FUNDING^SM insurance product."^[9] The Examining Attorney maintains that "the relevant public comprises ordinary...