IP Law Daily, TRADEMARK—TTAB: Trademark for Investment Reports Not Registrable Because Applicant’s Reports Were Not Goods in Trade, (Mar 14, 2013)

By Mark Engstrom, J.D.

An investment management company (Thomas White International, Ltd.) could not register the standard character mark EMPOWERING THE INVESTOR, for electronic publications in International Class 9, because its specimen of use—an annual investment report—did not constitute an independent “good in trade,” the Trademark Trial and Appeal Board has ruled (In re Thomas White International, Ltd., February 28, 2013, Quinn, T.). Because the Board concluded that the proposed mark was used on investment reports that were incidental to the applicant’s investment services, a trademark examining attorney’s refusal to register the mark was affirmed.

The applicant stated that its reports were “sold, transported or distributed in commerce for use by others (e.g., investors, potential investors, and others such as brokers) and provide a use or utility to others (e.g., the reports are used to help investors or potential investors decide whether to invest in the funds, or used to help brokers decide if they would recommend the funds to their clients).” The examining attorney found that the applicant’s specimen of use was a 52-page annual report of corporate activity for the applicant’s family of mutual funds, and thus was incidental to the applicant’s business.

The Board noted that articles of use were unlikely to qualify as independent “goods in trade” if they simply provided a “conduit” for an applicant’s services and possessed no independent value apart from those services. In this case, the applicant’s specimen of use showed that the applicant was using its proposed mark on annual investment reports that were incidental to the applicant’s business.

The reports were a “common and necessary adjunct” to the applicant’s investment management and research services, according to the Board. For the applicant’s customers, the reports informed them about the status of their investments. The reports were not purchased for their intrinsic value; the reports were provided to customers to inform them about their investments.

With respect to prospective investors, the annual investment report was not a product in itself. Rather, it was “tantamount to a sales document” because the report provided advertising for the applicant’s services. Ultimately, the annual reports were “part and parcel” of the applicant’s services. They had no viable existence or independent value apart from those services.

The Board accepted the applicant’s assertion that its annual investment reports were not the type of “annual reports” that were issued by companies and provided to shareholders. Nevertheless, the investment reports were “merely … incidental” to the applicant’s business. The Board thus found that the reports did not constitute “goods in trade.” Rather, they served as a conduit to the applicant’s services. They were “inextricably tied to and associated with the [applicant’s] services so as to have no viable existence apart therefrom.”

The case is Serial No. 77080379.

Attorneys: Charles T. Riggs, Jr. (Patula & Associates) for Thomas White International, Ltd.. Chrisie Brightmire King, Trademark Examining Attorney, USPTO.

Companies: Thomas White International, Ltd.

Cases: Trademark USPTO