dissenting.
Because I believe the board’s finding that MBNA’s MONTANA SERIES and PHILADELPHIA CARD marks are merely descriptive of the recited services is not supported by substantial evidence, I dissent.
Both of MBNA’s initial service mark registration applications for MONTANA SERIES and PHILADELPHIA CARD requested the registration of marks for credit card services. Statement and Declaration for Service Mark Registration, Serial Nos. 74/417,538 (July 21, 1993) and 74/472,908 (Nov. 23, 1993). Relying on MBNA’s recitation of services in its two applications, the board' determined that the recited services covered credit card services depicting scenes of subject matter of, or relating to, the state of Montana (or the city of Philadelphia). In re MBNA Am. Bank, N.A., Serial Nos. 74/417,538 and 74/472,908, 2002 WL 1285938 (TTAB June 11, 2002). However, the record is replete with arguments from MBNA that it was seeking to register its marks for credit card services, not credit cards depicting scenes of Montana (Serial No. 74/417,538) or some geographical designation of its credit card services. Statement and Declaration for Service Mark Registration (July 21, 1993); Amendment to Allege Use (Apr. 4, 1994); Response to Office Action dated January 10, 199k at 4 (July 5, 1994); Response to Office Action dated November 22, 199k at 4 (May 22, 1995); Request for Reconsideration at 4 (Jan. 24, 1996). It was not until the August 30, 1999, office action that the recitation of services that the board relied on in its decision materialized. Office Action at 1 (Aug. 30,1999). In that office action the examining attorney agreed to withdraw the geographically descriptive and geographically deceptively misdescriptive refusals, if MBNA agreed to amend its recitation of services to read: “depicting scenes or subject matter of, or relating to the state of Montana.” The examining attorney did note, however, that an amendment to the recitation of services would not negate a refusal under 15 U.S.C. § 1052(e)(1). But, such a refusal was not pending in the application at that time; it had been withdrawn earlier during prosecution. Priority Action/Examiner’s Amendment (June 29, 1994). Although MBNA agreed to the examiner’s amendment in order to expedite the registration, it asseverated that its marks were not merely descriptive of credit card services. Response to Office Action dated August SO, 1999 at 2-3 (Feb. 29, 2000).
Guided by the record, I disagree that MBNA’s marks are merely descriptive of a significant feature or characteristic of affinity credit card services. Accordingly, I would reverse the board’s refusal to register under section 1052(e)(1) of the Lanham Act.