MBNA forfeits MONTANA SERIES and PHILADELPHIA CARD

In In Re MBNA America Bank NA, the US Court of Appeals for the Federal Circuit has upheld the Trademark Trial and Appeal Board's (TTAB) refusal to register the marks MONTANA SERIES and PHILADELPHIA CARD for credit cards on the grounds that the marks were merely descriptive of MBNA America Bank's 'regional affinity' credit card services.

MBNA applied to register the marks MONTANA SERIES and PHILADELPHIA CARD for credit card services. The application for MONTANA SERIES covered "credit card services featuring credit cards depicting scenes or subject matter of or relating to the state of Montana", while the PHILADELPHIA CARD application covered "credit card services featuring credit cards depicting scenes or subject matter of or relating to the city of Philadelphia". The TTAB rejected the applications on the grounds that they were descriptive. MBNA appealed.

The Federal Circuit dismissed the appeal and upheld the TTAB's ruling. It noted that a mark is merely descriptive if it immediately conveys information concerning a quality or characteristic of the product or service to which it relates. In the case at hand, the Federal Circuit affirmed the TTAB's finding that MBNA was offering 'regional affinity' credit card services, which are financial services offered in conjunction with satisfying a social or lifestyle association with a particular state. It said that "MBNA offers not simply financial services, but affinity credit card services providing both credit services and a feeling of social pride or connection through the particular affinity card with words and images identifying a particular state".

The Federal Circuit further affirmed the TTAB's finding that the MONTANA SERIES and PHILADELPHIA CARD marks were merely descriptive of a significant feature or characteristic of MBNA's affinity credit card services. In support of its conclusion, it stated that:

"[t]he appeal to regional pride and loyalties is a significant feature of MBNA's method of promoting and marketing these affinity credit cards as well as the services themselves. Thus, to consumers, MONTANA SERIES and PHILADELPHIA CARD immediately convey information about the specific regional affinity, or the user group to which these services are directed."

Susan Natland, Knobbe Martens Olson & Bear LLP, Newport Beach

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