Altavest Worldwide Trading, Inc.

Trademark Trial and Appeal Board

Apr 19, 2001

No. 75342976 (T.T.A.B. Apr. 19, 2001)

4/19/01 Paper No. 12
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Altavest Worldwide Trading, Inc.
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Serial No. 75/342,976
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Curtis L. Harrington of Curtis L. Harrington & Associates
for Altavest Worldwide Trading, Inc.
Kelly F. Boulton, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
_______
Before Walters, Chapman and Holtzman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Altavest Worldwide Trading, Inc. has filed an
application to register on the Principal Register the mark
PAPERTRADER for the following goods, as amended: “computer
software used for computational data base manipulation, for
simulating transactions and not for actual performance of
trading and not related to commercial paper” in
International Class 9.1
1 Application Serial No. 75/342,976, filed August 18, 1997, based
on applicant’s assertion of a bona fide intention to use the mark
in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 75/342976
2
Citing Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), the Examining Attorney has finally refused
registration on the ground that applicant’s mark, when used
on its goods, is merely descriptive thereof.
Applicant has appealed, and both applicant and the
Examining Attorney have filed briefs. Applicant did not
request an oral hearing.
As evidence in support of the refusal to register, the
Examining Attorney relies upon the dictionary definitions
from The American Heritage Dictionary (1992) of the words
“paper” defined as “commercial documents that represent
value and can be transferred from owner to owner;
negotiable instruments considered as a group...”; and
“trader” defined as “one that trades; a dealer: a gold
trader; a trader in bonds.” The Examining Attorney also
relies upon several excerpted stories from the Nexis
database, some of which show “paper trader(s)” referring to
those who actually trade in futures, commercial paper, and
the like; and other Nexis stories which show the term
referring to simulated or mock trading, such as that in
applicant’s identification of goods. Examples of both
references follow (emphasis added):
Ser. No. 75/342976
3
(1) Headline: Trust your gut when you
finally invest in an IPO
...Ms. Rosanoff advises new investors
to practice with paper traders to build
up their confidence while validating
their intuitive ‘buy’ feelings. Then
they can recognize the urgency of
timing, and act on that recognition by
calling their broker (sic – to) place
the order...., “The Business Journal,”
January 14, 2000;
(2) Headline: Shell Blast Rocks
Olefin’s Markets Plans to Enter Paper
Market
...largest natural gas traders, and
we’re getting into the retail power
market, so this is a logical extension.
Even the other paper traders are
pleased that we are going to be getting
in, because what you really need to
have in a paper market is volume...,’
“Chemical Week,” July 2-9, 1997;
(3) Headline: Credit Markets: Short-
term Borrowing Up Sharply
...recent sharp rise has not led to a
widening in interest rate differentials
between commercial paper and other
short-term market instruments. ‘When
you look at the good names, things look
pretty much normal,’ one commercial
paper trader said late last week, “The
New York Times,” March 19, 1990; and
(4) Headline: Fuld’s Gold
...One of the few bright spots at
Lehman in those dark days was the
fixed-income division, run by Fuld, who
had joined the firm in 1969 as a
commercial paper trader....,
“Institutional Investor,” July 1998.
Additional examples of descriptive uses of the terms
“paper trader,” “paper trading,” and “paper trades” were
Ser. No. 75/342976
4
submitted by the Examining Attorney in the form of pages
downloaded from three websites, including applicant’s
website, as well as two third-party websites. The
following are quotes from applicant’s website (emphasis
sometimes in original and sometimes added):
(1) Paper Trading, Introduction to
Paper Trading, ALTAVEST Paper Trading
Log..., Charts & Quotes
...If any of these questions apply to
you, the solution is simple and
available to you through ALTAVEST! It’s
called Paper Trading, a method which
allows you the luxury of learning about
the markets without having to invest a
penny!...Paper trading is the simple
process of ‘executing’ mock trades and
tracking those trades as if you were in
the market with real money....Of
course, as the phrase goes, there is no
substitute for the real thing. It is
important to remember that paper
trading is a process for learning, and
it does not totally reflect real-world
trading conditions....We recommend that
you start your paper trading account
with the same amount of money that you
intend to commit (sic – to) the
markets. Use the ALTAVEST Paper
Trading Log (Get the Adobe Acrobat
Reader) to keep track of your paper
trades....
altavest.com, page 1 of 1, 8-26-99;
(2) ALTAVEST: Your full-service futures
& options brokerage, Introducing the
much anticipated PaperTrader Online,
Track your real and mock commodity
futures and options trades using the
PaperTrader Online system.
altavest.com, pages 1 and 2 of 2, 5-12-
00; and
Ser. No. 75/342976
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(3) Paper Trading the Commodity
Markets, Paper trading is the simple
process of “executing” mock futures
trades and tracking those trades as if
you were in the markets with real
money.
altavest.com/papertrading, page 1 of 2,
5-12-00.
The following are quotes from the third-party websites
(emphasis added), the first an analogous system to that of
applicant’s but for tracking stocks, and the latter a
company apparently involved in actual paper trading:
(1) Five Ways to Buy Stock: 1. Paper
Trading: This involves following a
stock in the paper without actually
ever buying the stock. It’s a good way
to get some experience picking a
company and tracking a stock before
risking your hard-earned cash.
When you begin to make paper trades,
you won’t actually use any real money
to invest in the market. Instead you
use fake money, hence the term paper
trading. As a paper trader, you won’t
go to a broker or open an account,
instead you may watch stock reports on
TV or read newspaper articles on
investing and learn to follow certain
sectors like technology or
pharmaceuticals.
Investit at
zacks.com/mag/investit_stock (page 1 of
4, 7-24-00); and
(2) Paper Trading Getting Started
...As a brokerage, we have received
many calls in the past regarding paper
trading.... That’s the reason we came
Ser. No. 75/342976
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up with this ‘Paper Trader’s Survival
Kit.’...
Great Pacific Trading Company
gptc.com (page 1 of 2, 7-24-00); and
The test for determining whether a mark is merely
descriptive under Section 2(e)(1) of the Trademark Act is
whether the term immediately conveys information concerning
a quality, characteristic, function, ingredient, attribute
or feature of the product or service in connection with
which it is used. See In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215 (CCPA 1978); In re Venture
Associates, 226 USPQ 285 (TTAB 1985); and In re Bright-
Crest, Ltd., 204 USPQ 591 (TTAB 1979).
Further, it is well-established that the determination
of mere descriptiveness must be made not in the abstract or
on the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the term or phrase is being or will be used on or in
connection with those goods or services, and the impact
that it is likely to make on the average purchaser of such
goods or services. See In re Consolidated Cigar Co., 35
USPQ2d 1290 (TTAB 1995); and In re Pennzoil Products Co.,
20 USPQ2d 1753 (TTAB 1991). The question is not whether
someone presented with only the mark could guess what the
goods or services are. Rather, the question is whether
Ser. No. 75/342976
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someone who knows what the goods or services are will
understand the mark to convey information about them. See
In re Home Builders Association of Greenville, 18 USPQ2d
1313 (TTAB 1990); and In re American Greetings Corp., 226
USPQ 365 (TTAB 1985).
We agree with the Examining Attorney that the applied-
for mark PAPERTRADER immediately and directly conveys
information about both (i) a significant function or
purpose of applicant’s goods (computer software for
computational data base manipulation for simulating
transactions, and not for actual performance of trading and
not related to commercial paper), which is to allow the
customer to simulate trading through mock or “paper
trades,” and (ii) the intended users of the goods, i.e.,
people who seek to learn about futures and options trading
by engaging in mock “paper trading.” A significant
function of applicant’s goods, as identified, is to carry
out simulated transactions or “paper trades” for the
intended users of the software, the “paper traders,” who
seek to learn the business before investing real money.
That is, applicant’s mark PAPERTRADER immediately conveys
to potential customers what applicant’s computer software
is designed to do, and the mark also describes software for
those who in fact engage in “paper trading.”
Ser. No. 75/342976
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Specifically, the dictionary definition of “trader”
establishes that the term refers to one who trades, which
is precisely what applicant’s computer software allows
people to do. Further, the Nexis and website evidence
establishes that the terms “paper trading,” “paper trades,”
and “paper trader” are associated with a method of
executing mock trade transactions without investing; and
applicant’s own website shows that applicant’s computer
software is or will be a simulated trading program, whereby
participants trade commodity futures and options through
fictitious transactions without yet investing money. Even
though applicant’s computer software does not involve
actual trades of commercial paper2, the purchasing public
would clearly understand that applicant’s software, for the
goods as identified, is intended to allow simulated or
“paper trades.” See In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987); In re Omaha National Corporation,
819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re
Intelligent Instrumentation Inc., 40 USPQ2d 1792 (TTAB
2 The fact the there are references in the Nexis evidence showing
that “paper trader” may also refer to a person carrying out
actual trades of commercial paper does not negate the distinct
meaning of the term “paper trader” (or “papertrader”) in the
context of applicant’s goods, relating to simulated or mock paper
trades. Merely merging the two words “paper” and “trader” into a
single word “papertrader” does not change the commercial
impression created thereby.
Ser. No. 75/342976
9
1996); and In re Time Solutions, Inc., 33 USPQ2d 1156 (TTAB
1994).
In addition, when the mark PAPERTRADER is viewed in
the context of applicant’s goods, the purchasing public
would immediately, without imagination or conjecture,
understand not only the function or purpose of the goods,
but also, that the person who caries out such simulated or
paper trades is a “paper trader” (“papertrader”). See
Hunter Publishing Co. v. Caulfield Publishing Ltd., 1
USPQ2d 1996 (TTAB 1986). See also, In re Camel
Manufacturing Company, Inc., 222 USPQ 1031 (TTAB 1984), and
cases cited (and distinguished) therein.
Suffice it to say that, based on the record before us,
applicant’s arguments to the contrary do not persuade us of
a different result herein.
Finally, even if applicant is the first (and/or only)
entity to use the term PAPERTRADER in relation to computer
software for computational data base manipulation for
simulating transactions (but not for actual trading and not
related to commercial paper), such is not dispositive
where, as here, the term unquestionably projects a merely
descriptive connotation. See In re Tekdyne Inc., 33 USPQ2d
1949, 1953 (TTAB 1994), and cases cited therein. We
believe competitors would have a competitive need to use
Ser. No. 75/342976
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this term. See 2 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, §11:18 (4th ed. 2000).
Decision: The refusal to register under Section
2(e)(1) is affirmed.