Tuesday, September 16, 2014

Precedential No. 36: TTAB Reverses Refusal of Service Mark Specimen for Financial Services

The Board has re-designated as precedential its ruling in In re McGowan Publishing Company, Inc.,, wherein the Board reversed a refusal to register the mark CASHFLOW UNITS for "investment products, namely, wealth management and performance tracking, and providing financial advisory and financial portfolio management services." The Examining Attorney had deemed the specimen web page (shown below) unacceptable because it did not display the mark in association with the recited services. The Board, however, found that links labeled with the mark, for documents used in the rendering of the services, supplied the required association. In re McGowan Publishing Company, Inc., 111 USPQ2d 2000 (TTAB 2013) [precedential].

According to the Trademark Examining Attorney, the specimen "contains only general information about The McGowan Group Asset Management Company (the Applicant), and makes no specific reference to ‘wealth management and performance tracking’ or the provision of ‘financial advisory and financial portfolio management services.'" Applicant argued that the web page "features links to two of Applicant's specific investment products ... offered clearly under the mark CASHFLOW UNITS." 

The question for the Board was "whether consumers will associate CASHFLOW UNITS with such services." The Board noted that there was, "unfortunately," no evidence regarding the reaction of consumers to applicant's use of the mark.

Reviewing the specimen web page, the Board observed that the disclosures at the bottom of the page inform the reader that applicant is a "federally Registered Investment Advisory Firm," which means that it is registered with the SEC as an entity that, according to several financial dictionaries, "for compensation, engages in the business of advising others, either directly or through publications or writings, as to the value of securities or as to the advisability of investing in, purchasing or selling securities." The wording "McGowan Group Asset Management" at the top of the page "informs the viewer that CASHFLOW UNITS are part of an asset management service."

Immediately below CASFLOW UNITS appear (1) the "MGAM Wrap Program Assets Discretionary Advisory Agreement" and (2) the "MGAM RIA Disclosure." The agreement is applicant's contract with the investor, and the disclosure notifies the client that applicant has complied with conflict of interest rules. "In other words," said the Board, "these are documents used by applicant in rendering its services."

The Examining Attorney contended that the specimen web page displays only links to the two documents, not the documents themselves. Moreover, the agreement is merely a document used in the normal course of business, and providing such an agreement is not a service. The document is not disseminated to the public as advertising, and it shows only potential use (when the blanks are filled in). In short, it is not an "investment product."

The Board, however, concluded that "a client or prospective client of applicant's investment advisory services would view the mark on the web page in close proximity to links for documents used in rendering those services." The link to the agreement "functions as an offer to enter into an arrangement for the provision of 'Advisory' services relating to the client's assets. Thus the links to these documents creates an association between the mark and the offered services activity."

The Board therefore reversed the refusal to register.

Read comments and post your comment here;

TTABlog comment:  Doesn't make much sense to me. Looking at the specimen, I have no idea what CASHFLOW UNITS is supposed to refer to. There is no indication that the mark CASHFLOW UNITS appears on the contract or on the disclosure document. The service mark for the advisory services seems to me to be McGowanGroup or maybe "MGAM." CASHFLOW UNITS seems to refer to some particular fund that the company is peddling. Note the "TM" next to CASHFLOW UNITS, not "SM."

BTW: take a gander at the USPTO's new Examination Guide for Service Mark specimens (here). This case appears as example no. 17. Perhaps when the Examination Guide was promulgated, the Board decided to go back and make this decision precedential.

Text Copyright John L. Welch 2014.


At 10:53 AM, Anonymous Elizabeth said...

A small counterpoint regarding your comment in the "BTW": "Note the 'TM' next to CASHFLOW UNITS, not 'SM.'" I agree that SM is technically correct for designating a service mark, but I tend not to quibble when clients use a TM instead (initially, I'm pleased they're using anything!). But as to TM/SM, my sense is that most consumers are unaware of the difference between SM and TM, and are much more familiar with TM. Since the purpose of marking is to provide notice, it may be more effective to use the symbol - TM - the public understands. Thank you again for the always timely updates!

At 11:00 AM, Blogger John L. Welch said...

I agree with you, Elizabeth. Actually, I'm a bit surprised the Board didn't mention the "TM" as an (attempted) indicator that the applicant regarded CASHFLOW UNITS as a mark.


Post a Comment

<< Home