The Board affirmed a Section 2(e)(2) refusal to register the marks WA529, in standard character and design form (below), for "Pre-paid educational financial services, namely, allowing purchasers to make advance payments towards future continuing education, and providing information relating to education financing," finding the marks to be primarily geographically descriptive of the services. Applicant maintained that WA529 is a "whimsical or fanciful mark or, alternatively, at least only suggestive of" its services. The Board disagreed. In re Committee on Advanced Tuition Payment, Serial Nos. 88079982 and 88079989 (September 30, 2020) [not precedential] (Opinion by Judge George C. Pologeorgis).
The Board first observed that "the geographical significance of the mark is to be assessed as it is used on or in connection with the goods [or services]." Newbridge Cutlery, 113 USPQ2d at 1448. "[T]he addition of highly descriptive matter to a geographic term does not detract from the mark's primary significance as being geographically descriptive." See In re U.S. Cargo, Inc., 49 USPQ2d 1702 (TTAB 1998).
Examining Attorney Obieze Mmeje submitted dictionary definitions of the abbreviation/acronym "WA", defined as the State of Washington, a Columbia Gazetteer entry for the state, website excerpts defining a "529 plan" as a "tax-advantaged savings plan designed to encourage saving for future education costs," third-party registrations that include disclaimers of "529", and excerpts from the websites www.nc529.org, www.az529.gov, www.pa529.com, www.hi529.com; and www.virginia529.com, discussing the available 529 plans in the states of North Carolina, Arizona, Pennsylvania, Hawaii, and Virginia, respectively. Applicant's own website demonstrated that it is a state agency domiciled in the state of Washington.
The Examining Attorney therefore contended that applicant's marks "immediately and directly convey to consumers that Applicant provides 529 prepaid tuition plans in the state of Washington for residents of Washington and, thus, the marks, in their entireties, are primarily geographically descriptive of Applicant's identified services."
Applicant argued that "WA529" is a whimsical or fanciful mark, that the mark as a whole does not suggest a geographical location, and that the Examining Attorney's dissection of the mark ""disrupts the singular, unnatural and whimsical commercial impression of the subject term." The Board found those assertions to be "inconsistent with the record."
The evidence of record leaves no doubt that the term "WA 529" (two-word term) is, at the very least, primarily geographically descriptive of Applicant's services. The mere alteration of "WA 529" to form the designation "WA529" does not result in an inherently distinctive or fanciful mark. In considering the evidence of record we recognize that there is no use of "WA529" as one term. Nonetheless, the clear and, in fact, only connotation of the applied-for designation is as an equivalent to "WA 529" when viewed in the context of the identified services.
Applicant pointed to several registered marks containing the term 529 or WA, but each mark also included other wording that produced a distinctive commercial impression (e.g., SMART529 and WALRAA). In any event, "the bare fact that the USPTO allowed six marks to register is of little persuasive value and does not dictate the result in this case." Each application must be considered in view of the record evidence. The Board is not "estopped or precluded from applying the statute because in a prior application an examining attorney (or attorneys) may have overlooked a relevant statutory provision and, perhaps erroneously, allowed an application to register."
The Board concluded that the proposed marks "identify a well-known geographic location from where Applicant's services originate" and that "purchasers would make a services/place association between Applicant's services and the place named in the mark." "The addition of the descriptive, if not generic, terms '529,' and 'Washington College Savings Plans' in the composite mark, does not detract from the marks' primary significance as being geographically descriptive."
And so the Board affirmed the refusal to register.
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