Charles Schwab & Co., Inc.

Trademark Trial and Appeal Board

Sep 24, 2007

No. 78416656 (T.T.A.B. Sep. 24, 2007)

Mailed: 9/24/07

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Charles Schwab & Co., Inc.
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Serial No. 78416656
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Elizabeth R. Gosse and John A. Hughes of Townsend and
Townsend and Crew for Charles Schwab & Co., Inc.

Timothy J. Finnegan, Trademark Examining Attorney, Law
Office 104 (Chris Doninger, Managing Attorney).
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Before Quinn, Grendel and Mermelstein, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
An application was filed to register the designation
ON INVESTING for the following goods and services, as
amended:
Providing downloadable publications via the
Internet about news, research, investments,
finance, financial planning, and investment
strategy (Class 9);

Periodical publications pertaining to news,
research, investments, finance, financial
planning, and investment strategy (Class 16); and

Providing information via the Internet about
financial news, research, investments, finance,
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78416656
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financial planning, and investment strategy
(Class 36).1

Applicant claimed, in the application as originally filed,
that its mark has acquired distinctiveness under Section
2(f) of the Trademark Act.
The trademark examining attorney refused registration
on the ground that the Section 2(f) evidence in support of
the claim of acquired distinctiveness is insufficient given
the highly descriptive nature of applicant’s designation
sought to be registered.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Before turning to the issue of acquired
distinctiveness, we direct our attention to the examining
attorney’s perceived problem with the identification of
goods and services. In the first Office action, the
examining attorney indicated that the identification was
indefinite in all three classes, and suggested acceptable
terminology. Applicant’s response was completely silent
regarding the identification. In the next Office action,
the examining attorney made no mention of any problems
relating to the identification. It was not until the final

1 Application Serial No. 78416656, filed March 11, 2004, alleging
first use anywhere and first use in commerce on March 13, 1999.
Ser No. 78416656
3
refusal that the examining attorney again raised any
problem with the identification. In the final refusal, the
examining attorney indicated that the identification in
Class 36 required clarification; no mention was made
regarding any problem in the other two classes. Applicant,
in its request for reconsideration, amended the Class 36
services in accordance with the examining attorney’s
earlier suggestion. The examining attorney denied the
request for reconsideration pertaining to the issue of
acquired distinctiveness; however, no mention was made
about applicant’s amended identification or any remaining
problems regarding the identification. It was not until
the examining attorney’s appeal brief that the
identification was mentioned again. After noting that the
identification was found to be indefinite in the first
Office action, the examining attorney stated “[t]he
applicant subsequently adopted the suggested recitation for
International Class 036 but failed to amend the remaining
classes, 009 and 016. They remain indefinite.” (Brief, p.
2).
We view the examining attorney’s failure, in the final
refusal, to maintain any requirement regarding the
identification in Classes 9 and 16 to be a waiver thereof.
The only mention in the final refusal pertained to the
Ser No. 78416656
4
other class, and applicant subsequently adopted the
suggested identification. Accordingly, we deem the
examining attorney’s position in his brief that the
identifications in Classes 9 and 16 are “indefinite” to be
waived, and not an issue on appeal. In this connection, we
also note that the examining attorney, in setting forth the
issue on appeal in his brief, did not specify the
indefiniteness of the identification as an issue.
We now turn to the matter of acquired distinctiveness.
By seeking registration pursuant to Section 2(f), applicant
has conceded that the designation sought to be registered
is merely descriptive. In essence, applicant’s Section
2(f) claim of acquired distinctiveness is a concession that
the designation is not inherently distinctive and that it,
therefore, is not registrable on the Principal Register
absent a sufficient showing of acquired distinctiveness.
See Yamaha International Corp. v. Hoshino Gakki Co. Ltd.,
840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988)
[“Where, as here, an applicant seeks a registration based
on acquired distinctiveness under Section 2(f), the statute
accepts a lack of inherent distinctiveness as an
established fact.”] [emphasis in original]; and In re
Leatherman Tool Group, Inc., 32 USPQ2d 1443 (TTAB 1994).
Thus, the issue of mere descriptiveness is not an issue in
Ser No. 78416656
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this appeal. Nonetheless, it is necessary to determine, at
the outset, the degree of descriptiveness of ON INVESTING
for the goods and services, given that this determination
will have a direct bearing on the amount of evidence
necessary to show acquired distinctiveness. Yamaha
International Corp., 6 USPQ2d at 1008; and In re Merrill,
Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141 (Fed. Cir. 1987).
The examining attorney submitted dictionary
definitions of the words comprising applicant’s designation
ON INVESTING. The term “on” is defined as “concerning,
touching, regarding as to, as regards.” The Original
Roget’s Thesaurus of English Words and Phrases
(Americanized Version 1994). The term “investing” means
“to commit (money or capital) in order to gain a financial
return: invested their savings in stocks and bonds.” The
American Heritage Dictionary of the English Language (3d
ed. 1992).
The examining attorney also introduced excerpts of
third-party websites and NEXIS articles showing highly
descriptive, if not generic, uses of the term “investing”
in the financial field. The uses include examples of “on
investing.” (see, e.g., www.btonline.com: “The best tip
Ser No. 78416656
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we can give you on investing is to consult a financial
advisor.”).
In view thereof, we have no hesitation in finding that
the designation ON INVESTING, for goods and services
regarding investing, is highly descriptive.
Under Section 2(f), applicant has the burden of
proving that its designation has acquired distinctiveness.
In re Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294,
295 (CCPA 1954) (“There is no doubt that Congress intended
that the burden of proof [under Section 2(f)] should rest
upon the applicant”). “Logically that standard becomes
more difficult as the mark’s descriptiveness increases.”
Yamaha International Corp., 6 USPQ2d at 1008. In this case
that standard is extremely difficult to meet in view of the
highly descriptive nature of ON INVESTING for applicant’s
goods and services relating to investing.
Applicant relies on its use since 1999 of the
designation in connection with its goods and services. The
only other evidence relied upon by applicant to show
acquired distinctiveness is the affidavit (with related
exhibits) of applicant’s Director of Marketing
Communications, Kristine Dixon.2

2 We note that applicant also claims ownership of Registration
Nos. 2439620 and 2503211 of the designation ON INVESTING. This
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In her declaration, Ms. Dixon states that applicant is
“one of the largest and most successful nationwide
brokerage firms...[and] offers a wide variety of financial
and investment information and analysis goods and
services...[S]ince 1999, [applicant] has published a
magazine under the ON INVESTING mark as a premium client
benefit for [applicant’s] top tier clients.” Further, Ms.
Dixon declares that during the past seven years, applicant
“has spent nearly $3.5 million producing and promoting its
ON INVESTING publication, which it promotes to eligible
customers through [applicant’s] website...” According to
Ms. Dixon, approximately 700,000 people receive ON
INVESTING printed publications every year and approximately
20,000 people review the online version of ON INVESTING
magazine each year.”3 Ms. Dixon contends that through these
“efforts to expose the mark to the public and its reception
by the industry and investors, consumers have come to

evidence is of no help to applicant. Claims of acquired
distinctiveness cannot be based on ownership of registrations on
the Supplemental Register. See In re Canron, Inc., 219 USPQ 820,
822 (TTAB 1983); see also TMEP §1212.04(d).
3 In its request for reconsideration and brief, applicant states
that in the second and third quarters of fiscal year 2007, a
greater number of customers will receive the ON INVESTING
magazine. The updated figures are not supported by any
additional declaration or any other evidence. Accordingly, these
figures have no probative value. Even if applicant had submitted
evidence to establish that a greater number of customers received
ON INVESTING magazine in the second and third quarters of 2007,
it would not alter the outcome of this decision.
Ser No. 78416656
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recognize ON INVESTING as a mark and use it to identify
[applicant] as the source of its investment information and
analysis publications.”
Applicant’s total magazine recipients of approximately
720,000 suggest that the designation ON INVESTING has
received some degree of exposure to investors. However, we
cannot accurately gauge the level of this exposure in the
publication or financial fields in the absence of
additional information, such as applicant’s market share or
how it ranks in terms of subscribers in the industry.
Standing alone, the figures appear to be less than
impressive considering the large publication and financial
fields. Moreover, the customer figures show only the
popularity (to the extent that such even exists) of
applicant’s goods and services, not that relevant customers
of such goods and services have come to view ON INVESTING
as applicant’s source-identifying mark. In re Bongrain
International Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed.
Cir. 1990); and In re Recorded Books Inc., 42 USPQ2d 1275
(TTAB 1997). The issue here is the achievement of
distinctiveness, and the evidence falls well short of
establishing this.
Likewise, the total production and promotion
expenditures of $3.5 million do not appear to be
Ser No. 78416656
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considerable. According to the evidence of record, this
figure encompasses both production of the publications and
their promotion combined. Applicant argues that as a
result of its expenditures, approximately 720,000 people
have received applicant’s ON INVESTING print and electronic
publications. (Brief, p. 4). That applicant has expended
$3.5 million to produce and publish a magazine to reach
720,000 customers does not show that those customers
identify ON INVESTING as a source indicator for applicant’s
goods and services. In any event, this figure only
suggests the efforts made to acquire distinctiveness, and
do not demonstrate that the efforts have been successful.
In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991).
Applicant argues that “the Trademark Manual of
Examining Procedure makes clear that ‘evidence showing the
duration, extent and nature of the applicant's use of a
mark in commerce that may lawfully be regulated by
Congress, advertising expenditures in connection with such
use’ are sufficient evidence to support a claim of acquired
distinctiveness.” (Brief pp. 5-6) [emphasis added].
Section 1212.06 of the TMEP specifically states that
certain types of evidence, e.g., affidavits and
declarations, are appropriate and probative when used to
demonstrate applicant’s efforts to establish acquired
Ser No. 78416656
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distinctiveness. Providing such limited evidence alone,
however, as applicant has done here, is not always
sufficient to establish acquired distinctiveness,
particularly in the case of a highly descriptive mark like
applicant’s.
Applicant’s evidence relating to a relatively short
eight-year span fails to show that ordinary consumers have
come to view the highly descriptive designation ON
INVESTING as a source-identifying mark for applicant’s
goods and services. The issue here is the achievement of
distinctiveness, and the evidence falls far short of
establishing this. Simply put, the record lacks sufficient
evidence demonstrating that consumers and prospective
consumers view ON INVESTING as a distinctive source
indicator for applicant’s goods and services.
Accordingly, given the highly descriptive nature of
the designation ON INVESTING, more evidence (especially in
the form of direct evidence from customers) than what
applicant has submitted is necessary to show that the
designation has become distinctive of applicant’s goods and
services. The greater the degree of descriptiveness, the
greater the evidentiary burden on the applicant to
establish acquired distinctiveness. Yamaha International
Corp., 6 USPQ2d at 1008.
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We agree with the examining attorney's finding that
applicant’s Section 2(f) evidence is insufficient to
demonstrate that its proposed mark, ON INVESTING, has
acquired distinctiveness so as to permit registration on
the Principal Register.
Decision: The refusal to register is affirmed.