Friday, March 08, 2013

Precedential No. 8: TTAB Finds Investment Report to Be a Mere Sales Document, Not a Good in Trade

The Board affirmed a refusal to register the mark EMPOWERING THE INVESTOR, in standard character form [INVESTOR disclaimed], for "Electronic publications, namely, reports featuring investment management and investment research information, and financial research and equity research information recorded on computer media" in Class 9. The Board agreed with Examining Attorney Chrisie Brightmire King that the specimen of use comprises a report that is merely incidental to Applicant's own business, and does not constitute a "good in trade." Consequently, "the specimen is unacceptable to support registration of the mark for the identified goods." In re Thomas White Int'l, Ltd., 106 USPQ2d 1158 (TTAB 2013) [precedential].

The specimen of use was a 52-page "pdf" entitled "Annual Report" for investment funds named "Thomas White Funds," for which applicant is the advisor. The Board accepted applicant's assertion that the document is not an "annual report," as that term is normally understood. In any case, the Board found that the report is not a "good in trade."

The report explains applicant’s role as the advisor to the funds, provides an outlook for 2010, describes the "portfolio strategy," provides a performance review of two funds, lists the specific holdings in each fund, and sets forth investment, financial and equity research information regarding various markets. The funds' accounting firm confirms that the report presents fairly and accurately the financial details of the funds.

In the case at hand, the specimen shows applicant is using the mark only on an item incidental to conducting its own business. The annual investment report is a common and necessary adjunct to the rendering of applicant’s investment management and research services, that is, it is one of the means through which it provides investment services. For customers who have invested in the funds, it serves the purpose of a status report on the customers’ investments; there is no evidence in the record that applicant charges for the report. Such customers do not solicit or purchase such reports for their intrinsic value; rather, they merely are being provided a report on the status of their investments. With regard to prospective investors, the report is tantamount to a sales document; the answer to the fundamental question, “what is being offered for sale,” is the opportunity to invest in the funds and receive the investment management services of applicant. The annual report provides advertising for the services, rather than being a product in itself. The report is not sold separately from the services, and the report has no viable existence or independent value separate and apart from the services. The publications are part and parcel of the services.

The Board concluded that the specimen report merely "serves as a conduit to applicant’s services; is inextricably tied to and associated with the services so as to have no viable existence apart therefrom; and is neither sold separately from nor has any independent value apart from the services. See, Inc. v. 1-800 Contacts, Inc. , 103 USPQ2d at 1676." [TTABlogged here]

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog note: This decision seems to be a companion to the Board's Ameritox decision of 2011 [TTABlogged here], which held that reports featuring medical laboratory results were merely "part and parcel" of Applicant's laboratory testing services, and were not separate goods in trade.

Text Copyright John L. Welch 2013.


At 7:08 AM, Anonymous Anonymous said...

One has to wonder why they did not apply to register the mark as a service mark for the investment services instead of applying to register it as a trademark for investment reports?

At 8:23 AM, Anonymous Anonymous said...

I was looking for this TTAB decision to show up on your blog. It seems to me that over the years (and in parallel with the migrating from paper to electronic submissions) PTO's treatment of specimens has evolved from checking on a 'formality' (the example of use attached to the applicant's sworn statement of use) to assessing the applicant's compliance with a substantive requirement (use). Your thoughts?

At 8:39 AM, Blogger John L. Welch said...

See footnote 2 regarding whether the application should have filed for services rather than goods.

At 8:41 AM, Blogger John L. Welch said...

There does seem to be a growing number of specimen of use cases. This one, though, is more of a misclassification case: applicant should have filed for a service mark registration.

At 10:53 AM, Blogger TMAttorneyHeller said...

I agree that this is a misclassification and should have been filed as a service mark.

At 10:54 AM, Blogger TMAttorneyHeller said...

I agree that this is a misclassification and should have been filed as a service mark.


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