Omega Research, Inc.

Trademark Trial and Appeal Board

Jul 9, 1997

EX (T.T.A.B. Jul. 9, 1997)

Paper No. 15
EJS
THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB JULY 9, 1997
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Omega Research, Inc.
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Serial No. 74/546,080
_______
Martin P. Michael of Rubin Baum Levin Constant & Friedman
for Omega Research, Inc.
Robert M. Feeley, Trademark Examining Attorney, Law Office
102 (Myra Kurzbard, Managing Attorney)
_______
Before Seeherman, Hanak and Hohein, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Omega Research, Inc. has appealed from the final
refusal of the Trademark Examining Attorney to register WALL
STREET ANALYST as a trademark for "computer software to
assist in making investment decisions."1 Registration has
been refused pursuant to Section 2(e)(1) of the Trademark
Act, 15 U.S.C. 1052(e)(1), on the ground that applicant's
mark is merely descriptive of its identified goods.

1 Application Serial No. 74/546,080, filed June 30, 1994, based
on an asserted bona fide intention to use the mark in commerce.
Ser No. 74/546,080
2
The case has been fully briefed; an oral hearing was
not requested.
It is the Examining Attorney's position that WALL
STREET ANALYST is merely descriptive because it identifies
the primary audience for applicant's software. In support
of his position, he has made of record excerpts of articles
from the NEXIS database,2 some of which we quote below:

2 Several of these excerpts were inadvertently omitted from the
Examining Attorney's final Office action. Applicant stated that
prior to filing its brief on appeal an attorney for applicant
contacted the Examining Attorney, and advised him that no
evidence had been attached to the final Office action.
Subsequently, the Examining Attorney was able to locate this
material, and when the file was forwarded to the Examining
Attorney for his appeal brief, the Examining Attorney requested
remand for the purpose of making this material of record. The
Board granted the request for remand on May 24, 1996, and
allowed applicant an opportunity, which applicant took, to
address the additional evidence in a supplemental appeal brief.
In its supplemental appeal brief, and again in its reply
brief, applicant has objected to the consideration of this
evidence. This objection is not well taken. Although applicant
is correct that Trademark Rule 2.142(d) states that the record
should be complete prior to the filing of an appeal, the rule
also provides that the applicant or Examining Attorney may
request remand in order to submit additional evidence. We
further reiterate the finding in the May 24, 1996 Board decision
that the Examining Attorney has shown good cause for the request
for remand. Attempting to make of record evidence which was
inadvertently omitted from the Office action is not an attempt
to make of record evidence which should have been obtained by
the Examining Attorney during examination. This evidence was,
in fact, obtained earlier, and was not made of record simply
because of a clerical error. Thus, this is not a situation
where an Examining Attorney is seeking through remand to remedy
a lack of diligence during the examination of the application.
Moreover, we note that applicant failed to apprise the Examining
Attorney that the evidence had not been received until after the
appeal was filed. As we stated in our May 24, 1996, action, the
better practice would have been for applicant, upon receipt of
the August 16, 1995 Office action, to contact the Examining
Attorney about the missing materials, so that the oversight
could have been corrected in a timely manner.
Ser No. 74/546,080
3
Wall Street analysts spent the rest of
the day questioning whether the offer
was real or simply an elaborate game of
"greenmail"....
"The Washington Post," April 13, 1995
However, the experience at Spartanburg
as well as other problems looming for
Standard have shaken the confidence of
some Wall Street analysts and investors.
"The Plain Dealer," April 4, 1995
For the next few years, Bethlehem's
earning could be red hot. One Wall
Street analyst says, "The stock is a
compelling buy."
"The Baltimore Sun," March 30, 1995
Since early February, News Corp.'s stock
price has risen 25% as several Wall
Street analysts have upgraded the stock
to a "buy," citing improving prospects
for Star TV in Asia....
"Daily Variety," March 20, 1995
Most Wall Street analysts feel banks
cannot begin a sold rally until rates
have clearly peaked.
"The American Banker," March 6, 1995
...Quantum Health Resources fell 6 3/4
to 22 after reporting earning that
disappointed Wall Street analysts.
"Los Angeles Times," March 1, 1995
In a presentation to Wall St. analysts
of the company's third-quarter
performance....
"Platt's Oilgram News," Nov. 3, 1994
Moreover, Wall St. analysts looked
closely at the decline of gross profit
margins during the last quarter.
"The New York Times," Oct. 18, 1994
...merger between Alta Energy Corp. and
Devon Energy Corp. was completed May 18,
a move that one Wall St. analyst called
"a very logical fit."
"Platt's Oilgram News, May 20, 1994
Ser No. 74/546,080
4
Wall St. analysts have long considered
CBS, with its billion-dollar-plus
surplus from sale of its record and
publishing arms, prime takeover
target....
"Communications Daily," July 1, 1994
The Examining Attorney also quoted, in his first Office
action, dictionary definitions for "Wall Street" ("the main
financial center of the United States," and "analyst" ("a
person who analyzes").3
A mark is merely descriptive if it immediately conveys
information concerning a quality, characteristic, function,
ingredient, attribute or feature of a product or service.
In re Venture Lending Associates, 226 USPQ 285, 286 (TTAB
1985). In In re Gentex Corp., 151 USPQ 435 (TTAB 1966), the
Board stated that a mark which describes the intended users
of a particular product is merely descriptive of such goods
within the meaning of Section 2(e)(1). In In re Camel
Manufacturing Co., Inc., 222 USPQ 1031, 1032 (TTAB 1984),
the Board again "embrace[d] the holding that a mark is

3 The Examining Attorney stated that these definitions were
obtained from Webster's New World Dictionary of the American
Language." Although the relevant excerpts were not in fact
submitted, applicant did not object to consideration of them
during prosecution, and we therefore deem the definitions to
have been submitted by stipulation. In its brief, applicant
points out that the Second College Edition of this dictionary
also includes other definitions for these terms, and that the
particular definition for Wall Street provided by the Examining
Attorney reads, in its entirety, "a street in lower Manhattan,
New York City: the main financial center of the U.S." We have
considered the definition presented by applicant, but would
point out that, even if the dictionary relied on by the
Ser No. 74/546,080
5
merely descriptive if it describes the type of individuals
to whom an appreciable number or all of a party's goods or
services are directed."
The Examining Attorney asserts, based on the NEXIS
evidence, that WALL STREET ANALYST has a well-understood
meaning in the world of finance, describing a professional
investor. The Examining Attorney further asserts that
applicant's identified computer software to assist in making
investment decisions would be used by Wall Street analysts,
and hence that the mark is merely descriptive.
Applicant, on the other hand, argues that the intended
consumers for its software are not professional investors,
but are non-professional individuals interested in investing
in securities. It is applicant's position that, at most,
WALL STREET ANALYST may be suggestive of a possible
professional level of results for one using the goods.
The Examining Attorney does not disagree that WALL
STREET ANALYST does not describe non-professional investors
in securities. Examiner's brief, p. 7. However, he asserts
that the software must be presumed to be used by
professional investors as well as non-professionals, and
that, with respect to the former group, the mark describes
this audience for applicant's goods.

Examining Attorney did not contain the prefatory language, it
would have no effect on our decision herein.
Ser No. 74/546,080
6
Both applicant and the Examining Attorney have cited a
number of cases in which the particular mark involved
appears to refer to the users of the goods or services. In
those cases cited by the applicant, the term has been found
to be not merely descriptive, while those cited by the
Examining Attorney have reached the opposite result.
For example, in In re Gentex Corp., supra, PARADER was
found to be merely descriptive of protective helmets because
the word was defined as "one who parades," and applicant's
advertising material showed paraders wearing the hats, and
referred to the headgear as being used in parades. The
Board concluded, therefore, that the mark immediately
indicates the primary or intended users of these hats and
would be so recognized by the average purchaser of such
goods.
Similarly, in In re Camel Manufacturing Co., Inc.,
supra, MOUNTAIN CAMPER was found to be merely descriptive of
retail and mail order services in the field of outdoor
equipment and apparel because applicant's catalogs showed
that an appreciable number of the products sold by applicant
were directed toward mountain campers, and that the group
described by the term MOUNTAIN CAMPER is a category of
purchaser to whom applicant specifically directs its camping
equipment.
Ser No. 74/546,080
7
Applicant has relied on In re John Berg Mfg. Co., 164
USPQ 607 (TTAB 1970), in which MILLWRIGHT was found to be
not merely descriptive of ladders, despite a dictionary
definition of "millwright" as a "workman who erects the
shafting...in a workshop, mill, or plant." The Board said
that although MILLWRIGHT is suggestive of the fact that the
ladder is one that could be used by a millwright, this did
not make the term merely descriptive.
In In re Chesebrough-Pond's Inc., 163 USPQ 244 (TTAB
1969, the word MANICURIST in the mark MANICURIST BY CUTEX
was held not to be merely descriptive for nail polish, the
Board stating that the average woman purchaser would not
conclude that the mark signified a nail polish specifically
for use by manicurists, while a professional would not
assume that the product was intended only for her use.
Thus, the Board concluded that the mark was merely
suggestive that the product would give professional results.
It is not always easy to reconcile the results in these
cases and to determine on which side of the line the present
case falls. As the Board has previously recognized, the
distinctions between the various cases are indeed subtle
ones. See In re Camel Manufacturing Co., Inc., supra. In
the present situation, after considering all the evidence of
record, the case law, and the arguments, we find that the
Office has not made the necessary showing that WALL STREET
Ser No. 74/546,080
8
ANALYST is merely descriptive of computer software to assist
in making investment decisions. WALL STREET ANALYST, when
applied to computer software to assist in making investment
decisions, suggests that the software provides the user with
the skills of professional investment analysts. It appears
that this type of suggestiveness, i.e., a meaning separate
from that of describing the purchasers of the goods, is one
of the points that distinguishes those cases in which
purchaser identifier marks were found merely descriptive
from those which were not. Moreover, in this case the
Examining Attorney has acknowledged that WALL STREET ANALYST
is not descriptive of non-professional individuals seeking
investment advice, and applicant has asserted that these
individuals are the primary customers for its software, a
point which the Examining Attorney has not disputed.
Finally, we have resort to the well-established
principle that, when there is doubt as to whether a mark is
merely descriptive, that doubt must be resolved in
applicant's favor. See In re The Gracious Lady Service,
Inc., 175 USPQ 380 (TTAB 1972).
Ser No. 74/546,080
9
Decision: The refusal of registration is reversed.
E. J. Seeherman
E. W. Hanak
G. D. Hohein
Administrative Trademark Judges
Trademark Trial and Appeal Board