Financial Network Investment Corp.

Trademark Trial and Appeal Board

Aug 6, 1998

No. 74585132 (T.T.A.B. Aug. 6, 1998)

Ex parte appeal
Applicant’s mark: PREFERRED ASSET MANAGEMENT for
“financial advisory services.”
Issue: Mere descriptiveness under
Section 2(e)(1)
Decision: REVERSED
Paper No. 018
EWH/CV
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Financial Network Investment Corporation
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Serial No. 74/585,132
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Paul D. Supnik for Financial Network Investment
Corporation.
Mary Magner, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
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Before Seeherman, Hanak and Walters, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
Financial Network Investment Corporation (applicant)
seeks registration of PREFERRED ASSET MANAGEMENT in typed
capital letters for “financial advisory services.” The
intent-to-use application was filed on October 12, 1994.
The Examining Attorney refused registration pursuant
to Section 2(e)(1) of the Lanham Trademark Act on the basis
that applicant’s mark is merely descriptive of applicant’s
services.
When the refusal was made final, applicant appealed to
this Board. Applicant and the Examining Attorney filed
briefs and were present at the hearing held on November 25,
1997.
It is the position of the Examining Attorney that
“preferred asset” is a “well-known financial term.”
(Examining Attorney’s brief page 8). Citing the Dictionary
of Finance and Investment Terms, the Examining Attorney
notes that the word “management” is defined as “combined
fields of policy and administration and the people who
provide the decisions and supervision necessary to
implement the owner’s business objectives.” (Examining
Attorney’s brief page 7). Accordingly, it is the position
of the Examining Attorney that the mark PREFERRED ASSET
MANAGAMENT, when applied to financial advisory services,
would be understood to mean either “the supervision,
guidance and decisions relating to the customer’s preferred
assets (preferred stocks and dividends, or any assets
preferred by the customer)” or “financial advice on how the
customer can manage their [sic] own preferred assets.”
(Examining Attorney’s brief page 8). In support of her
position, the Examining Attorney has made of record
excerpts from 15 stories appearing in the NEXIS data base
wherein the term “preferred asset(s)” appears.
It is the position of the applicant that the term
“preferred asset” does not appear in any dictionary, and
that this term does not have “any recognized meaning.”
(Applicant’s supplemental brief page 3). Moreover,
applicant notes that its identification of services is not
“asset management services,” but rather “financial advisory
services.” Continuing, applicant points out that financial
advisory services involve the “providing of information,”
and not the management of assets. According to applicant,
asset management “occurs [for example] when a mutual fund
is purchased.” (Applicant’s supplemental brief page 4).
As has been stated repeatedly, “a term is merely
descriptive if it forthwith conveys an immediate idea of
the ingredients, qualities or characteristics of the goods
[or services].” In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978) (emphasis added);
Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4,
189 USPQ 759, 765 (2nd Cir. 1976). Moreover, the immediate
idea must be conveyed forthwith with a “degree of
particularly.” In re TMS Corp. of the Americas, 200 USPQ
57, 59 (TTAB 1978); In re Entenmann’s Inc., 15 USPQ2d 1750,
1751 (TTAB 1990), aff’d 90-1495 (Fed. Cir. February 13,
1991).
As previously noted, the term “preferred asset,”
unlike, for example, the term “preferred stock,” does not
appear in any dictionary. Moreover, a review of the
fifteen NEXIS excerpts made of record by the Examining
Attorney reveals that the term “preferred asset” does not
have any particular meaning. At page six of her brief, the
Examining Attorney quotes from five of the fifteen
excerpts. In the first excerpt, the term “preferred asset”
is used to indicate mutual funds. In the second excerpt,
the term “preferred asset” is used to indicate cash. In
the third excerpt, the term “preferred asset” is used to
indicate foreign stocks. In the fourth excerpt, the term
“preferred asset” is used to indicate European stocks.
Finally, in the fifth excerpt, the term “preferred asset”
is used to indicate a mix of equities and bonds. Thus,
because of the ambiguity surrounding the term “preferred
asset,” we find that applicant’s mark PREFERRED ASSET
MANAGEMENT simply does not describe with the required
“degree of particularity” any quality or characteristic of
financial advisory services.
Moreover, we concur with applicant that the dictionary
definition of the term “management” relied upon by the
Examining Attorney demonstrates that this word is simply
not descriptive of financial advisory services, which as
previously noted, involve the providing of financial
information.
In sum, neither the PREFERRED ASSET portion of
applicant’s mark nor the MANAGEMENT portion of applicant’s
mark is merely descriptive of financial advisory services.
In addition, when the two portions are combined to form
PREFERRED ASSET MANAGEMENT, the resulting combination is
likewise not merely descriptive of any quality or
characteristic of financial advisory services. To the
extent that someone may have doubts on the issue of mere
descriptiveness, said doubts must be resolved in
applicant’s favor. In re The Stroh Brewery Co., 34 USPQ2d
1796, 1797 (TTAB 1995).
Decision: The refusal to register is reversed.
E. J. Seeherman
E. W. Hanak
C. E. Walters
Administrative Trademark Judges
Trademark Trial and Appeal Board