NGAM Advisors L.P.

Trademark Trial and Appeal Board

Mar 4, 2014

No. 76710462 (T.T.A.B. Mar. 4, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 4, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
________

In re NGAM Advisors L.P.
________

Serial No. 76710462
_______

Stephen J. Jeffries and Birte Hoehne Mahyera of Holland & Knight for NGAM
Advisors L.P.

Kristina Morris, Trademark Examining Attorney, Law Office 116 (Michael W.
Baird, Managing Attorney).
_______

Before Quinn, Bucher and Hightower,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
NGAM Advisors L.P. (“applicant”) filed, on January 30, 2012, an application to
register the proposed mark MANAGED PORTFOLIO ADVISORS (in standard
characters; “ADVISORS” disclaimed) for “investment management services” in
International Class 36. The application was filed pursuant to Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging first use anywhere and first use in
commerce on May 6, 2005. Applicant claims that the applied-for mark has acquired
distinctiveness for applicant’s services under Section 2(f), 15 U.S.C. § 1052(f).
Applicant also claims ownership of Registration No. 3099528 (issued May 30, 2006
Serial Number 76710462

2

on the Supplemental Register; Section 8 affidavit accepted) of the mark MANAGED
PORTFOLIO ADVISORS (in standard characters; “ADVISORS” disclaimed) for
“investment management services” in International Class 36.
The trademark examining attorney refused registration on the ground that
applicant’s proposed mark, when used in connection with applicant’s services, is so
highly descriptive that applicant’s Section 2(f) showing is insufficient.
When the refusal was made final, applicant filed a request for reconsideration.
The request was denied, and applicant appealed. Applicant and the examining
attorney filed briefs.
The Arguments and Evidence
Applicant
concedes that Applicant’s Mark may be characterized as
highly descriptive for purposes of determining whether
Applicant’s Mark has acquired distinctiveness. However,
it is Applicant’s belief that the facts and evidence
submitted in support of its Trademark Act § 2(f) claim are
sufficient to establish a prima facie case of acquired
distinctiveness regardless thereof.
(Brief, pp. 4 and 6)

Applicant points out that the record is devoid of evidence showing any third-party
uses of the exact wording “managed portfolio advisors,” and notes its disclaimer of
the word “Advisors.”1 More specifically, applicant points to its eight years of use,
high value of assets under management, publicity about applicant in the media,

1 See In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986) (“it is
within the discretion of an Examining Attorney to require the disclaimer of an
unregistrable component (such as a common descriptive, or generic, name) of a composite
mark sought to be registered on the Principal Register under the provisions of Section
2(f)”). The disclaimer, along with the Section 2(f) claim, was included in the application as
originally filed.
Serial Number 76710462

3

significant number of customers, and the sophistication of these customers. On the
last point, applicant asserts that it caters to sophisticated clientele, including
institutional investors such as banks, insurance companies, pension funds and
hedge funds; with respect to individual investors, they must have a net worth of at
least $50 million. Applicant argues:
Clearly, applicant’s customers are highly sophisticated,
well versed in financial matters and know the investment
market. The selection of investment management services
in Applicant’s industry is almost exclusively – and
necessarily – tied to past performance. Institutional
investors typically carefully research and evaluate several
investment management service providers before
transferring highly valuable asset portfolios to Applicant.
Banks, hedge funds and insurance companies will not
entrust their customers’ funds to Applicant without
knowing who Applicant is, what types of services
Applicant provides, and how well Applicant provides same
services. In this environment where reputation is critical
to differentiating the investment management services of
many competing providers, it is Applicant’s mark and
name MANAGED PORTFOLIO ADVISORS that
immediately informs investors that Applicant is the
source of its particular services.
(Request for Reconsideration, p. 3, May 17, 2013)

Applicant submitted the declaration of one of its officers, together with related
exhibits. Also of record are excerpts of third-party websites.
The examining attorney maintains the evidence of acquired distinctiveness is
insufficient in view of the highly descriptive nature of the proposed mark. The
examining attorney submitted dictionary definitions, and excerpts of third-party
websites.
Serial Number 76710462

4

The Law
Section 2(e)(1) provides that a mark (or portion thereof) is unregistrable on the
Principal Register if, “when used on or in connection with the goods of the applicant
[it] is merely descriptive or deceptively misdescriptive of them … .”
Pursuant to Section 2(f), matter which is merely descriptive under Section
2(e)(1) may nonetheless be registered on the Principal Register if it “has become
distinctive of the applicant’s goods [or services] in commerce.” Thus, the mark may
be registered on the Principal Register if the applicant proves that the merely
descriptive matter has acquired distinctiveness (also known as “secondary
meaning”) as used on the applicant’s goods and/or services in commerce. See In re
Chopper Indus., 222 USPQ 258 (TTAB 1984).
The applicant seeking registration of a mark under Section 2(f) bears the
ultimate burden of establishing acquired distinctiveness. See 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 for registration….”). See also Yamaha Int’l Corp. v. Hoshino
Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988). Applicant’s
burden is to prove acquired distinctiveness by a preponderance of the evidence. See
In re Noon Hour Food Products Inc., 88 USPQ2d 1172, 1181 (TTAB 2008). “Finally,
the applicant’s burden of showing acquired distinctiveness increases with the level
of descriptiveness; a more descriptive term requires more evidence of secondary
Serial Number 76710462

5

meaning.” In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir.
2005). As the Board has explained:
That is to say, the greater the degree of descriptiveness,
the greater the evidentiary burden on the user to
establish acquired distinctiveness. The sufficiency of the
evidence offered to prove acquired distinctiveness should
be evaluated in light of the nature of the designation.
Highly descriptive terms, for example, are less likely to be
perceived as trademarks and more likely to be useful to
competing sellers than are less descriptive terms. More
substantial evidence of acquired distinctiveness thus will
ordinarily be required to establish that such terms truly
function as source-indicators.

In re Greenliant Systems Ltd., 97 USPQ2d 1078, 1085 (TTAB 2010) (internal
citations omitted).
Degree of Descriptiveness
The initial question before us in our analysis of whether MANAGED
PORTFOLIO ADVISORS has acquired distinctiveness is the degree of
descriptiveness of that wording as applied to applicant’s services. As noted above,
applicant readily concedes that its proposed mark is “highly descriptive.” However,
for the sake of completeness, and so as to better appreciate “how high is high,” we
think it is best to recount the record on this point. As noted above, the higher the
degree of descriptiveness of the designation in question, the higher the burden
applicant faces in proving acquired distinctiveness.
A term is considered to be merely descriptive under Section 2(e)(1) if it
immediately conveys knowledge of a quality, feature, function, or characteristic of
Serial Number 76710462

6

the goods or services with which it is used. See In re Chamber of Commerce of the
United States of America, 675 F.3d 1297, 102 USPQ2d 1217 (Fed. Cir. 2012).
By seeking registration of its proposed mark MANAGED PORTFOLIO
ADVISORS pursuant to Section 2(f), applicant has conceded that this wording is at
the least merely descriptive of its services, under Section 2(e)(1). See In re
RiseSmart Inc., 104 USPQ2d 1931, 1932 (TTAB 2012) (“…when an applicant
responds to a refusal based on mere descriptiveness of a mark, or portion of a mark,
by claiming acquired distinctiveness, such amendment to seek registration under
Section 2(f) of the Trademark Act is considered an admission that the proposed
mark is not inherently distinctive.”). See also The Cold War Museum, Inc. v. Cold
War Air Museum, Inc., 586 F.3d 132, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009). In
fact, as just indicated above, applicant concedes that its proposed mark is highly
descriptive.
The examining attorney introduced dictionary definitions. The term “manage” is
defined as “to take charge or care of: to manage my investments.” (dictionary.com).
The term “portfolio” means “the complete investments held by an individual
investor or by a financial organization.” (collinsdictionary.com). The term “advisor”
means “person who advises.” Id.
The record includes third-party uses of the terminology “managed portfolio” or
“portfolio management” as follows:
An Untraditional Approach to Portfolio Management
A different kind of managed portfolio solution … using a
proactive approach, investment manager Windhaven

Serial Number 76710462

7

dynamically adjusts portfolio allocations…
(schwab.com)

Managed Portfolio Investing
Our unique style of Managed Portfolio investing brings
some advantages of institutional scale investing directly
to an individual investor.
In a managed portfolio, each individual account will
reflect the specific securities holdings and buy prices
unique to the history of that account.
Managed Portfolio investing is not a passive buy-and-hold
approach.
A managed portfolio can, and likely will, contain mutual
funds, individual securities, or even ETFs (exchange
traded funds), but it is in the careful blending of the
components in a model allocation, and the on-going
management of those holdings, that we seek to deliver
maximum value to the individual investor.
(verityinvest.com)

Managed Portfolio Services in One Investment Account
Our unified managed account program offers a
strategically allocated combination of professionally
managed portfolios in one brokerage account.
(wellsfargoadvisors.com)

Managed portfolio investment entails direct investment in
the AVI selected stocks by an individual investor and
allows the investor easy entry and exit in a typical stock
broking model.
(avi-investors.com)

Overlay Portfolio Management is an investment
management service that allows multiple investment
products to be combined and customized to the needs of
an individual investor.
(placemark.com)

Centralized Portfolio Management
The job of the centralized portfolio manager is to
coordinate and implement trading.
(parametricportfolio.com)

What is Overlay Portfolio Management?
Serial Number 76710462

8

Overlay is an approach to portfolio management where
every account replicates…
(smartleaf.com)

Ongoing Management of Your Portfolio
Your overlay portfolio manager is responsible for much of
the portfolio management that you would consider
customized to your needs.
(piperjaffray.com)

Professionally Managed Portfolios
Using several industry-leading investment solutions, we
offer professionally managed portfolios to individuals,
families, businesses, and institutional clients.
(rjlwm.com)

A single professional portfolio manager overseeing both
the managed portfolio and the overlay in real time, with
the ability to increase liquidity in the separate account as
needed.
(pimco.com)

Applicant describes its services as “an investment management service that
allows multiple investment products to be combined and customized to the needs of
an individual client.” (Response, November 2, 2012). According to applicant, its
service “includes investment product development, portfolio construction and
investment management where investment recommendations from multiple money
managers are implemented in a single, integrated portfolio.” Id. As shown by the
evidence, overlay management is a type of managed portfolio service for investors.
The record shows the following statements by applicant in its literature:
MPA offers robust fixed-income implementation services.
Through us you have access to experienced income
traders and portfolio managers.

Our portfolio managers have extensive experience in
multi-discipline investing.
Serial Number 76710462

9

Multi-strategy portfolios benefit from being managed,
rather than merely administered.
Portfolio rebalancing, tax management, trade execution,
account transactions.

The portfolio managers will be discussing it in their
research meeting tomorrow.

Subadvisor manages client portfolios using MPA’s
technology and trading platform

You need not compromise your choice of investment
managers when building portfolios.

Based on the dictionary and Internet evidence, as well as applicant’s literature,
we find that the wording MANAGED PORTFOLIO ADVISORS is at the very least
highly descriptive of applicant’s “investment management services.” Applicant’s
services involve managed portfolios under the direction of advisors. Evidence
showing that the wording comprising applicant’s proposed mark is commonly
understood and recognized, and that third parties in applicant’s field use wording
similar to that of applicant’s proposed mark, tends to indicate that the proposed
mark is highly descriptive. This wording consists simply of the admittedly generic
(and disclaimed) terminology ADVISORS, modified by the highly descriptive
designation MANAGED PORTFOLIO. The mark sought to be registered is highly
descriptive of investment management services involving managed portfolios. See In
re King Koil Licensing Co., 79 USPQ2d 1048 (TTAB 2006) (finding that, as applied
to mattresses, the combination of the highly descriptive word BREATHABLE with
the generic word MATTRESS into the composite BREATHABLE MATTRESS
results in a composite that itself is highly descriptive); In re Half Price Books,
Serial Number 76710462

10

Records, Magazines, Inc., 225 USPQ 219 (TTAB 1984) (finding the designation
HALF PRICE BOOKS, RECORDS, MAGAZINES to be highly descriptive of and
indeed the “apt descriptive name” of “retail book and record store services,” because
it merely combines the generic words BOOKS, RECORDS, MAGAZINES with the
highly descriptive modifier HALF PRICE).
Acquired Distinctiveness
We turn now to the question of whether applicant has established that the
highly descriptive designation MANAGED PORTFOLIO ADVISORS has acquired
distinctiveness for purposes of Section 2(f), such that the designation is registrable
on the Principal Register. As noted above, applicant bears the ultimate burden of
proving acquired distinctiveness, by a preponderance of the evidence.
Because we have found that the wording MANAGED PORTFOLIO ADVISORS
is highly descriptive of applicant’s services, applicant’s burden of establishing
acquired distinctiveness under Section 2(f) likewise is very high. See In re
Steelbuilding.com, 75 USPQ2d at 1424; In re Bongrain Int’l Corp., 894 F.2d 1316,
13 USPQ2d 1727, 1729 (Fed. Cir. 1990); In re Greenliant Systems Ltd., 97 USPQ2d
at 1085.
“To show that a mark has acquired distinctiveness, an applicant must
demonstrate that the relevant public understands the primary significance of the
mark as identifying the source of a product or service rather than the product or
service itself.” In re Steelbuilding.com, 75 USPQ2d at 1422. See also Coach Services
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1721, 1729 (Fed. Cir.
Serial Number 76710462

11

2012). Our ultimate Section 2(f) analysis and determination in this case will be
based on all of the evidence considered as a whole.
In support of its Section 2(f) claim of acquired distinctiveness, applicant
submitted the declaration of Beatriz Pina Smith, applicant’s executive vice
president and chief financial officer. The declaration is accompanied by several
exhibits, all relating to applicant’s services rendered under the proposed mark. In
pertinent part, Ms. Smith alleges that applicant uses the proposed mark through a
business unit which specializes in flexible, customized overlay management.
According to Ms. Smith, overlay management is an investment management service
that allows multiple investment products to be combined and customized to the
needs of an individual client. More specifically, applicant uses the mark in
connection with a comprehensive suite of services, including investment product
development, portfolio construction and investment management where investment
recommendations from multiple money managers are implemented in a single,
integrated portfolio. To perform these services, Ms. Smith states that applicant
implements a wide variety of investment disciplines, including more than 150
strategies from over 70 different investment management firms. The proposed mark
is also used in connection with trade execution services through applicant’s trade
desk. Ms. Smith states that MANAGED PORTFOLIO ADVISORS has been used in
connection with applicant’s investment management services since 2005, and that
applicant’s clients consist primarily of bank trusts, consultants and institutional
clients, managed account sponsors and wealth advisors. Applicant’s clients range in
Serial Number 76710462

12

number from a low of 18,455 in 2011 to a high of 28,994 in 2008 (averaging 22,400
customers annually for the years 2007-2011). Assets under applicant’s management
range from a low of $1.53 billion in 2010 to a high of $4.67 billion in 2007 (averaging
about $2.8 billion annually for the years 2007-2011). According to Ms. Smith,
applicant promotes its services under the applied-for mark by distributing
brochures, executive biographies, and other related print and electronic marketing
pieces, as well as through its website, and that applicant also engages in
presentations directed to clients and potential clients. Applicant’s services have
been referenced in print and online business publications such as FundFire,
Markets Media, Wealth Briefing, Financial Planning, BBR, Money Management
Executive, Fund Action and CPI Financial. Ms. Smith concludes by stating the facts
demonstrate that MANAGED PORTFOLIO ADVISORS has become distinctive of
applicant’s investment management services.
Although we have considered applicant’s advertising and promotional efforts,
applicant has not submitted any numbers relating to its actual expenditures. Thus,
we are at some disadvantage to gauge how extensive applicant’s promotional efforts
have been. In saying this, we recognize, however, that proof of an expensive and
successful advertising campaign is not in itself enough to demonstrate acquired
distinctiveness. See In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056
(Fed. Cir. 1999). The ultimate test in determining whether a designation has
acquired distinctiveness is applicant’s success, rather than its efforts, in educating
the public to associate the proposed mark with a single source.
Serial Number 76710462

13

We also have taken into account the unsolicited publicity in a variety of
publications, keeping in mind the popularity of these publications. None of the
articles, however, highlight applicant or its services as the feature of the article;
rather, there are merely short blurbs about applicant or its business, many of which
deal with personnel moves. More importantly, although the evidence may show
exposure of the proposed mark to the relevant public, we have no information as to
whether the exposure has paid off, that is, that ultimate investors have been
conditioned to recognize and use the designation MANAGED PORTFOLIO
ADVISORS as an indicator of the source of applicant’s services. In this connection,
the record is devoid of any direct evidence on point, such as declarations from
ultimate investors attesting to their recognition of ACTIVE INVESTMENT
ADVISORS as a source indicator for applicant’s services.
We have considered applicant’s statement that it has used the designation
MANAGED PORTFOLIO ADVISORS since 2005. This length of use, however, is
outweighed by the other evidence showing that the wording is highly descriptive,
and the absence of any direct evidence showing recognition of the wording as a
source indicator for applicant’s services. Cf. In re Packaging Specialists, Inc., 221
USPQ 917, 920 (TTAB 1984) (use of mark for sixteen years deemed “a substantial
period but not necessarily conclusive or persuasive on the Section 2(f) showing”).
The amount of assets managed by applicant, on its face, is impressive, and
provides support for applicant’s claim of acquired distinctiveness. However, the
probative value of the amount of money under applicant’s management is
Serial Number 76710462

14

diminished by the fact that the amounts are raw numbers, providing no context
showing applicant’s market share and whether the stated amount of such assets is
significant in the industry. See Target Brands Inc. v. Hughes, 85 USPQ2d 1676,
1681 (TTAB 2007) (“The sales figures for 14 years, standing alone and without any
context in the trade, are not so impressive as to elevate applicant’s highly
descriptive designation to the status of a distinctive mark.”). Further, the raw
numbers, although showing the success of applicant’s endeavors, do not necessarily
evidence consumers’ recognition of the proposed mark as a source indicator. See In
re Boston Beer Co. L.P., 53 USPQ2d at 1057. Applicant has undertaken an analysis
comparing its assets under management to the annual revenues of companies such
as Facebook, Groupon and Office Depot. This analysis misses the mark, however,
inasmuch as none of the information relates to entities in the financial investment
field.
We have considered applicant’s claim that its customers are sophisticated and
that they necessarily would recognize the proposed mark as indicating the source or
origin of applicant’s services. The main problem with this argument is that the
recitation of services does not reflect this sophistication. We recognize that the
evidence shows that applicant’s customers comprise high net worth individuals and
institutional investors who undoubtedly are very well informed and discerning
customers when it comes to making their investment decisions. However,
applicant’s recitation of services reads simply “investment management services,”
and in determining the scope of registration sought by applicant, it is the
Serial Number 76710462

15

application (not actual use) that we must look to in determining applicant’s right to
register. Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). Because the services are broadly worded with
no limitations, we must presume that the services include all types of “investment
management services,” and that they are offered to all normal customers. In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981). Thus, applicant’s services could be
offered to, and consumed by, anyone with money to invest, including ordinary
consumers seeking investment management services for what might be modest
portfolios. Further, as broadly worded in the application, applicant’s services do not
necessarily involve a careful purchase. While some consumers, if not most choose
their investment managers with care, others may not, especially when lesser
amounts of investments are concerned. See Amalgamated Bank of New York v.
Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305, 1308 (Fed.
Cir. 1988).
Applicant points out that no one else in the industry uses the specific descriptor
“managed portfolio advisors” in connection with the same or similar services.
However, even assuming that applicant may be the first and/or only user of the
exact wording MANAGED PORTFOLIO ADVISORS in the financial industry, we
find that this fact does not negate the highly descriptive nature of the wording or
suffice to establish acquired distinctiveness in this case. See J. Kohnstam, Ltd. v.
Louis Marx & Co., 280 F.2d 437, 126 USPQ 362, 364 (CCPA 1960); In re Greenliant
Systems Ltd., 97 USPQ2d at 1083; In re Mortg. Bankers Ass’n of Am., 226 USPQ
Serial Number 76710462

16

954, 956 (TTAB 1985); In re Nat’l Shooting Sports Found., Inc., 219 USPQ 1018
(TTAB 1983).
Lastly, we note Ms. Smith’s statement that applicant’s proposed mark has
become distinctive of applicant’s investment management services. This statement
is merely a conclusory opinion about source recognition among relevant consumers,
without any probative and corroborating evidence from consumers themselves. That
is to say, Ms. Smith’s statement is merely opinion and she has not been established
as competent to testify as to what others think about the source-indicating function
of applicant’s proposed mark MANAGED POTFOLIO ADVISORS. We find in the
overall context of the evidence in this case that Ms. Smith’s statement is entitled to
very little probative weight on the question of acquired distinctiveness.
In short, we find that applicant has failed to establish that the designation
MANAGED PORTFOLIO ADVISORS has acquired distinctiveness as a source-
indicator for applicant’s services, rather than merely as highly descriptive wording
which identifies a significant feature of the services, that is, managed portfolios
directed by applicant’s advisors. Given that the proposed mark is highly descriptive,
much more evidence, especially in the form of direct evidence from the relevant
purchasing public, than what applicant has submitted would be necessary to show
that the designation MANAGED PORTFOLIO ADVISORS has become distinctive
for applicant’s investment management services. See, e.g., In re Country Music
Assoc. Inc., 100 USPQ2d 1824, 1834 (TTAB 2011) (“Teflon” consumer survey showed
Serial Number 76710462

17

85% of respondents believed term COUNTRY MUSIC ASSOCIATION is a brand
name and, thus, is probative evidence of acquired distinctiveness).
As discussed above, the designation MANAGED PORTFOLIO ADVISORS is
highly descriptive as applied to investment management and advisory services, a
point conceded by applicant and shown by the evidentiary record. Accordingly,
applicant’s burden of proving acquired distinctiveness is likewise very high. See In
re Steelbuilding.com, 75 USPQ2d at 1424 (“The proposed mark is highly descriptive.
Therefore, applicant had the burden to show a concomitantly high level of secondary
meaning.”). We find that applicant has failed to carry that burden.
Decision: The refusal to register is affirmed.