Needles & Powers, Inc.

Trademark Trial and Appeal Board

Aug 24, 2000

No. 75519155 (T.T.A.B. Aug. 24, 2000)

Paper No. 10
DEB
8/24/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Needles & Powers, Inc.
________
Serial No. 75/519,155
_______
William T. McGrath and Kevin A. Thompson of Davis Mannix &
McGrath for Needles & Powers, Inc.
Tracy Cross, Trademark Examining Attorney, Law Office 103,
(Michael A. Szoke, Managing Attorney).
_______
Before Cissel, Bucher and McLeod, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Applicant filed the above-referenced application to
register the words “FINANCIAL CONSEQUENCES MODEL” on the
Principal Register for “computer multimedia software used as
teaching materials demonstrating a visual model for
understanding financial statements,” in International Class
9.1
Registration was refused under Section 2(e)(1) of the
Trademark Act on the ground that the words sought to be
registered are merely descriptive of applicant’s product.

1 Serial No. 75/519,155, filed on July 15, 1998, was based upon
applicant's claim of first use of the mark on May 29, 1998, and
first use of the mark in interstate commerce on the same day.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/519,155
2
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs. An
oral hearing was not requested.
We affirm the refusal to register.
The Examining Attorney took the position that the
designation sought to be registered is merely descriptive of
a significant feature or function of applicant’s software
product. In particular, the Examining Attorney noted that:
In this case, the goods are described as
“Computer multimedia software used as
teaching materials demonstrating a visual
model for understanding financial statements”
[Emphasis added]. One can readily conclude
from a plain language reading of the
identification that the goods generate visual
financial models. Upon closer inspection of
the specimens of record, one can conclude
that these models depict the financial
consequences of selections made by the user.
[Trademark Examining Attorney’s appeal brief,
p. 2]
Attached to the Office Actions were copies of excerpts
from stories retrieved from the LEXIS/NEXIS® database of
published articles. The stories illustrate the fact that
computerized models often predict the likely future
financial consequences of current decisions:
Agnew said special computer software can be used to
project the financial consequences of alternative
divorce settlements five, 10 or 15 years into the
future… The Des Moines Register, “Softening divorce’s
fiscal blow,” March 12, 1998, p. 12.
Serial No. 75/519,155
3
Risk modeling is a decision-making aid to CPAs and
their clients. Models may be used in analyzing risks
while financial models can evaluate the financial
consequences arising from accidents or other adverse
developments… The CPA Journal, “Risk analysis and
management software and the CPA,” December 1997, p. 65.
The software approaches [home] buying from three
angles. The analysis mode helps you determine
financial consequences … The New York Times,
“Peripherals: A Resume Road Map,” May 16, 1995, p. C-
6.
… [Featured companies] identified major national trends
in information technology and linked them to building
needs. They then devised a rating system that guides
companies planning expansion, renovation or
reorganization. With it, a computerized model helps
determine the financial consequences of any move…
Engineering News-Record, “Charting a course: Big firms
back new method to plan smart buildings,” October 24,
1985, p. 13.
The newer E&O [errors and omissions insurance]
professional liability forms respond in cases of lack
of performance and the financial consequences of faulty
software… Computerworld, “Insuring against data
processing losses,” December 5, 1983, p. ID-19.
These and other excerpted articles submitted by the
Trademark Examining Attorney show that there are indeed a
variety of computerized “models” designed to determine the
“financial consequences” of various scenarios or decisions.
Responsive to the refusal to register, applicant
submitted argument and additional evidence. The argument is
basically that the Trademark Examining Attorney
misunderstands the nature of the software and has
mischaracterized the goods:
Serial No. 75/519,155
4
The primary purpose of the software is to act as a
teaching tool in conjunction with the printed materials
for the course. It does not provide modeling of all
possible financial situations. Rather the software
works only in the context of fictional corporations and
companies that are described in the printed material.
The software is not a general purpose financial
calculator or spreadsheet, but rather is a multimedia
tool used in conjunction with the [university-level
accounting] course. The mark cannot be “merely
descriptive” of a multimedia teaching tool. Instead,
the mark brings to mind the financial nature of the
teaching tool but does not simply describe the goods or
even its principal feature as the Examiner believes.
[Applicant'’ reply brief, pp. 1-2.]
The evidence submitted with the response consisted of
an excerpt of a computer screen print from the program,
graphically demonstrating the effects of an infusion of cash
on the asset, liability and owner’s equity portions of the
balance sheet of a hypothetical firm, Café Caliente.
Applicant also points out that in examining a companion
application, another Trademark Examining Attorney permitted
publication of “FINANCIAL CONSEQUENCES” for integrally
related goods -- applicant’s printed course materials in
International Class 16.2 Applicant argues that this fact too
is probative of the conclusion that this matter, at most, is
suggestive of this multimedia computer software.
A term is merely descriptive of goods, within the
meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C. §

2 Reg. No. 2,228,961 issued on March 2, 1999.
Serial No. 75/519,155
5
1052(e)(1), if it immediately describes a quality,
characteristic or feature thereof or if it directly conveys
information regarding the nature, function, purpose or use
of the goods. In re Quik-Print Copy Shops, Inc., 616 F.2d
523, 205 USPQ 505 (CCPA 1980), citing In re Abcor
Development Corp., 588 F.2d 811, 813-14, 200 USPQ 215, 217-
18 (CCPA 1978). It is not necessary that a term describe
all of the properties or functions of the goods in order for
it to be considered to be merely descriptive thereof;
rather, it is sufficient if the term describes a significant
attribute of them. In re Gyulay, 820 F.2d 1216, 1218, 3
USPQ2d 1009, 1010 (Fed. Cir. 1987). Furthermore, whether a
term is merely descriptive is determined not in the
abstract, but in relation to the goods for which
registration is sought. Abcor Development, 588 F.2d at 814,
200 USPQ at 218; In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979).
After careful review of the entire record, we agree
with the Trademark Examining Attorney that the term
“FINANCIAL CONSEQUENCES MODEL,” when used in connection with
the identified goods, immediately describes a significant
feature or function of applicant’s product – namely, that
this computerized model demonstrates visually the financial
Serial No. 75/519,155
6
consequences of business decisions. As seen various places
on the specimens of record:
The Financial Consequences Model provides users with a
practical, intuitive approach for recording
transactions. It demonstrates how business decisions
affect a firm’s financial position and how the three
financial statements interrelate. The model is
included on the disc and can be launched as an Excel
spreadsheet for customized use by selecting “Financial
Consequences Model” from the menu bar…
p. 2 of software documentation.
… Select “Financial Consequences Model” from the menu
bar at the top of the screen. Doing so will launch a
spreadsheet version of the Financial Consequences Model
linked to the three financial statements. Use the
spreadsheet model to look at alternatives to the
transactions you just completed. For example, increase
inventory purchases and create a large credit sale but
delay collection of the accounts receivable. Determine
when Café Caliente will run out of cash. Enjoy the
learning experience!
p. 6 of software documentation.
Applicant argues that the instant software does not
explain all “financial consequences” of financial decisions.
However, for this alleged mark to be found merely
descriptive under Section 2(e)(1) of the Trademark Act, it
is not necessary that the software must be able to
demonstrate every conceivable impact of any imaginable
business decision.
In addition to the LEXIS/NEXIS® entries cited above, the
Trademark Examining Attorney has also introduced entries
Serial No. 75/519,155
7
from two different financial dictionaries showing that in
the general area of “corporate planning models,” the subset
of “financial models” (or “financial modeling”) is a readily
understood designation “ … for mathematical models showing
the financial interrelationships among financial variables
of the firm.”3 Usually these complex models are used by
executives in an actual organization. When decisions have
significant financial impacts, advanced financial models
enable the decision-makers easily to evaluate multiple
scenarios. The executive will instantly see the effects,
numerically and with charts and graphs, and can reach
optimal decisions quickly. The executive might use
financial models to develop a business plan, to do
feasibility studies, to complete a merger and acquisition
analysis, or other advanced uses. Similarly, in the case of
applicant’s goods, the model is used by students who can
learn by quickly evaluating a number of different “what if”
scenarios, with the advantage of observing instantly the
effects of changing multiple factors.
Furthermore, the LEXIS/NEXIS® entries show that the term
“financial consequences” is repeatedly used in the
traditional print media in the context of complex

3 “Dictionary of Accounting Terms,” Second Edition, by Joel G.
Siegel and Jae K. Shim, 1995.
Serial No. 75/519,155
8
computerized models. The examples cited above show this
terminology used in the context of a wide variety of
computerized modeling: for individuals evaluating divorce
settlements or making home-buying decisions; for executives
planning major changes in their corporate plants; by
accountants in projecting the cost of accidents or other
adverse developments; or by insurance underwriters in
assessing the potential liability of manufacturers who
market complex electronic components.
Hence, logic tells us that a “financial consequences
model” is a further subset of generic “financial models.”
To the college student studying financial accounting, this
term immediately conveys an understanding of the features or
functionalities of this software. The record shows a screen
print of this “Introduction to Financial Accounting”
software. Judging from the menu bar, a student of financial
accounting using this product has the option of clicking on
the button labeled “Financial consequences model and
financial statements.” The same menu bar offers other
choices like “profitability and liquidity” and “valuation.”
At that early juncture in using this program, it is readily
apparent to the student/consumer that what lies beyond this
particular menu tab is exactly the type of software listed
in the instant identification of goods.
Serial No. 75/519,155
9
Finally, as to the fact that another Trademark Examining
Attorney approved for publication the mark “FINANCIAL
CONSEQUENCES” for applicant’s printed course materials, we
do not find that registration controlling herein. First,
prior determinations by other Trademark Examining Attorneys
have no precedential effect. Even if we assume (and we do
not) that publication of the mark in this companion case was
contrary to the proscriptions of the Lanham Act and/or the
examination policies of the United States Patent & Trademark
Office, that fact is not determinative in the present case.
While uniform treatment under the Trademark Act is
desirable, our task on this appeal is to determine whether
applicant’s mark is registrable based upon the factual
record before us. The record of this companion file,
wherein the mark has been published and registered, is not
before us. See In re Pennzoil Products Co., 20 USPQ2d 1753,
1758 (TTAB 1991). Rather, each case that comes before this
Board must be resolved on its own merits. See In re
Citibank, N.A., 225 USPQ 612, 616 (TTAB 1985); In re Hunter
Publishing Co., 204 USPQ 957, 961 (TTAB 1979); and In re
Half Price Books, Records, Magazines, Inc., 225 USPQ 219,
221 (TTAB 1984). In any event, we should note that the
marks are somewhat different, and the identifications of
goods covered by the two marks are also different.
Serial No. 75/519,155
10
Moreover, as the Examining Attorney correctly notes, a
merely descriptive mark is not registrable simply because
another similar (or arguably so) mark appears on the federal
register or in the Trademark Official Gazette. See In re
Consolidated Foods Corp., 200 USPQ 477, 481 (TTAB 1977) and
In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB
1977).
Decision: The refusal to register is affirmed.
R. F. Cissel
D. E. Bucher
L. K. McLeod
Administrative Trademark
Judges, Trademark Trial and
Appeal Board