Hannon Armstrong Sustainable Infrastructure Capital, Inc.

Trademark Trial and Appeal Board

Nov 3, 2015

No. 86975346 (T.T.A.B. Nov. 3, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: November 3, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Hannon Armstrong Sustainable Infrastructure Capital, Inc.
_____

Serial No. 86975346
_____

Robin C. Vance, Melanie C. Holloway, and Amanda L. DeFord of McGuire Woods
LLP for Hannon Armstrong Sustainable Infrastructure Capital, Inc.

Tamara Frazier, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.
_____

Before Cataldo, Wolfson and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Hannon Armstrong Sustainable Infrastructure Capital, Inc. (“Applicant”) seeks
registration on the Principal Register of the mark SUSTAINABLE YIELD (in
standard characters) for
financial asset management, financial management,
financial portfolio management, financial risk
management, financing of industrial activities, financing
of loans, financing services, real estate investment trust
services, financing renewable energy development
Serial No. 86975346
- 2 -
projects; lease securitization; leasing of real estate;
leasing of real property, in International Class 36.1
The Trademark Examining Attorney has refused registration of Applicant’s
proposed mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1),
on the ground that it is merely descriptive of the identified services.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
A term is merely descriptive if it immediately conveys knowledge of a quality,
feature, function, or characteristic of the goods with which it is used. In re Chamber
of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012);
see also In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987).
Descriptiveness determinations are made in relation to an applicant’s identified
goods or services, the context in which the proposed mark is being used, and the
possible significance the term would have to the average consumer because of the
manner of its use or intended use. Chamber of Commerce, 102 USPQ2d at 1219.
Descriptiveness is not considered in the abstract. In re Bayer Aktiengesellschaft, 488
F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007).

1 Application Serial No. 86059448 was filed on September 9, 2013, based on Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. On January 9, 2015, Applicant amended to allege use anywhere and in
commerce at least as early as June 26, 2013. On the same date, Applicant filed a request to
divide the Class 36 services from services recited in classes 38, 39, and 40, which remained
in the parent application. The divisional request was granted on February 25, 2015, and
only the child Application, Serial No. 86975346, is now before us.
Serial No. 86975346
- 3 -
A term need not describe all of the purposes, functions, characteristics, or
features of a product to be considered merely descriptive; it is enough if the term
describes one significant function, attribute, or property. In re Oppedahl & Larson
LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (“A mark may be
merely descriptive even if it does not describe the ‘full scope and extent’ of the
applicant’s goods and services.”). Terms that are merely descriptive must be left free
for competitive use. See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB
2001) (finding VIRTUAL FASHION merely descriptive of shopping software and
electronic fashion retailing services).
Services identified in the application include financial asset management,
financial management, financial portfolio management, and financial risk
management. The Examining Attorney made of record at least eight instances of
the phrase “sustainable yield” used descriptively by third parties in association with
similar types of financial services. These include:
• The first page of an article titled “7 Investments With Generous And
Sustainable Yields” listing “8 investments that all pay generous yields,
yields that are sustainable.”2
• A post on the FMD Capital Management blog titled “3 Closed End Funds
with Sustainable Yield,” discussing funds “from managers that have long
histories of generating excellent returns and providing their shareholders
with a nice cushion of investment income in excess of distributions.”3
• A reference to a “Dividend Harvest” portfolio “for high but sustainable
yields.”4

2 July 10, 2014 Final Office Action at 2-4 (from http://seekingalpha.com/article/1312741-7-
investments-with-generous-and-sustainable/yields).
3 Id. at 11-13 (from http://fmdcapital.com/3-closed-end-funds-sustainable-yield/).
4 Id. at 35-36 (from Morningstar DividendInvestor Newsletter, http://mdi.morningstar.com/
purchase.aspx).
Serial No. 86975346
- 4 -
• An article discussing the launch of two funds stating that “by actively
managing asset class exposures according to interest rate, credit and
equity conditions, we can better manage capital risk and sustainable yield
. . .”5
• A description of the investment strategy of the Lazard Global Equity
Income Portfolio, which includes the following under “Investment
Strategy:” “Draws on the depth and breadth of Lazard’s equity analysts
and portfolio management teams around the world, leveraging a range of
investment ideas to identify stocks with sustainable yield”6
• LifeBionix investment company states that its “custom-tailored portfolios
emphasize liquidity while seeking to achieve sustainable yield without
accepting untoward risk.”7
• Schroders Investment Management North America Inc. states the
following as one of the “Key features” of its “Global Multi-Asset Income”
investment product: “Focus on quality: we do not chase the highest yields,
but rather seek investments that generate sustainable yield and are
backed by stable fundamentals, while also offering capital growth”8
• Thornburg Investment Management states, regarding the investment
strategy of the “Thornburg Strategic Income Fund”: “The Fund is a global,
income-oriented fund with a flexible mandate focused on paying an
attractive, sustainable yield.”9
These uses of the phrase “sustainable yield” descriptively in association with
financial services intended to produce a continuing return10 are consistent with
dictionary definitions of record for the individual terms “sustainable” and “yield.”
These include:

5 March 3, 2015 Denial of Request for Reconsideration at 8 (from www.investmentexecutive.
com/-/blumont-capital-launches-two-funds) (quotation omitted).
6 Id. at 11 (from Lazard Asset Management, www.lazardnet.com/LAM/us/funds/global_
equity_income_inst.shtml).
7 Id. at 13 (from lifebionix.com).
8 Id. at 14 (from https://www.schroders.com/en/us/professional-investor/product-range/
multi-asset-investments/global-multi-asset-income/).
9 Id. at 19 (from www.thornburg.com/products-performance/mutual-funds/fund-facts.aspx?
id=FSI).
10 Although we analyze Applicant’s services as identified in the application, we note that
Applicant states in its brief that its focus includes “assets that generate long-term,
recurring and predictable cash flows.” Appeal Brief at 5, 8 TTABVUE 6.
Serial No. 86975346
- 5 -
• Sustainable: “able to be maintained or kept going, as an action or process”
and “able to be supported as with the basic necessities or sufficient funds”
• Yield: “to produce or furnish (payment, profit, or interest): a trust fund
that yields ten percent interest annually; That investment will yield a
handsome return.”11
The record thus shows SUSTAINABLE YIELD to be merely descriptive in
association with at least Applicant’s financial asset management, financial
management, financial portfolio management, and financial risk management
services. Because the term is unregistrable as to at least some of the identified
Class 36 services, it is unregistrable in that class. In re Positec Group Ltd., 108
USPQ2d 1161, 1171 (TTAB 2013) (“[I]f the mark is descriptive of some identified
items – or even just one – the whole class of goods still may be refused by the
examiner.”).
The crux of Applicant’s argument for reversal is that, because “sustainable yield”
has alternative definitions, the matter it seeks to register is a double entendre. In
particular, Applicant relies on the “Ecological Definition” of “sustainable yield,”
meaning “the extraction level of the [natural] resource which does not exceed the
growth” or “the ecological yield that can be extracted without reducing the base of
capital itself.”12 Applicant argues that it invests in sustainable infrastructure
projects and programs, but not ecological “sustainable yield” projects, and thus, this
second meaning of the phrase is not descriptive in association with its services:

11 December 21, 2013 Office Action at 6, 8 (from Dictionary.com unabridged, based on the
RANDOM HOUSE DICTIONARY (2013)).
12 Reply Brief at 3-4, 13 TTABVUE 4-5; December 21, 2013 Office Action at 2 (“Glossary of
Statistical Terms” from stats.oecd.org, discussing timber) and July 10, 2014 Final Office
Action at 34 (same); December 21, 2013 Office Action at 12 (“Sustainable Yield” from
Wikipedia.org, discussing timber, fisheries, and groundwater).
Serial No. 86975346
- 6 -
More importantly, [Applicant] Hannon Armstrong is not
in the business of investing in ecological sustainable yield
projects or programs – i.e., projects or programs that
temper the rate at which they extract natural resources to
ensure that the rate of depletion does not exceed the
natural rate of regeneration. Instead, as the Examining
Attorney noted in her prior decision and as Hannon
Armstrong’s specimen of use demonstrates, Hannon
Armstrong “focus[es] on profitable projects that increase
energy efficiency, provide cleaner energy, positively
impact the environment or make more efficient use of
natural resources.” Put differently, Hannon Armstrong
invests in projects and programs that are designed to
reduce the carbon-footprint and to promote less wasteful
uses of the nation’s resources; it is not investing in
companies that abide by the principle that one should not
overfish or cut so much lumber that the ecosystem is
unable to naturally recover (i.e. sustainable yield).13
(citations omitted).
We agree that the “Ecological Definition” of the phrase “sustainable yield” is not
merely descriptive of Applicant’s services. For the reasons identified by Applicant in
the preceding quote, however, we also find that it does not create a double entendre
as applied to Applicant’s financial services. In relation to the identified services, it is
simply irrelevant. That a term may have different meanings in other contexts is not
controlling. In re RiseSmart Inc., 104 USPQ2d 1931, 1933 (TTAB 2012).
SUSTAINABLE YIELD immediately conveys knowledge of a feature, function,
or characteristic of the financial services identified in the application. Therefore, it
is merely descriptive under Trademark Act Section 2(e)(1).
Decision: The refusal to register Applicant’s mark SUSTAINABLE YIELD is
affirmed.

13 Appeal Brief at 9, 8 TTABVUE 10.