Thomas White International, Ltd.

Trademark Trial and Appeal Board

Feb 28, 2013

No. 77080379 (T.T.A.B. Feb. 28, 2013)

Mailed: February 28, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Thomas White International, Ltd.
________

Serial No. 77080379
_______

Charles T. Riggs Jr. of Patula & Associates for Thomas White
International, Ltd.

Chrisie Brightmire King, Trademark Examining Attorney, Law
Office 109 (Dan Vavonese, Managing Attorney).
_______

Before Quinn, Ritchie and Masiello,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Thomas White International, Ltd. filed, on January 10,
2007, an intent-to-use application to register the mark
EMPOWERING THE INVESTOR (in standard characters) (INVESTOR
disclaimed) for
Electronic publications, namely, reports
featuring investment management and
investment research information, and
financial research and equity research
information recorded on computer media (in
International Class 9).

THIS OPINION IS
A PRECEDENT OF THE
TTAB
Ser. No. 77080379

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Applicant subsequently filed a statement of use, alleging first
use anywhere and first use in commerce on October 31, 2009. The
specimen supporting the statement of use is a 52-page electronic
document, as discussed more fully below, captioned “Annual
Report” for investment funds named “Thomas White Funds,” for
which applicant is the advisor.
The trademark examining attorney refused registration under
Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C. §§ 1051,
1052 and 1127, on the ground that applicant’s mark is not used
in connection with “goods in trade.” The examining attorney
also refused registration based on applicant’s failure to comply
with the requirement to submit an acceptable specimen showing
use of the mark in commerce in connection with the identified
goods.
When the refusal to register was made final, applicant
appealed. Applicant and the examining attorney filed briefs.
Applicant argues that the Office has miscomprehended the
nature of applicant’s specimen, which it states is not an annual
report:
The Office continues to erroneously assume
and believe that a report on investment
funds published annually, hence an “annual
report” on the funds, which is provided to
investors, prospective investors, and the
consuming public in general, somehow equates
to an “annual report” of the company itself
provided internally to the shareholders of
the company as part of routine corporate
Ser. No. 77080379

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activity.... The specimen is not an annual
report on Applicant’s company, is not an
incidental item used to conduct daily
business, does not provide utility only to
Applicant, is not a publication provided to
Applicant’s own shareholders, and is not an
internal report. (Appeal Brief, pp. 6-7).

The specimen of use, according to applicant, is an electronic
pdf (portable document format) publication published on
applicant’s website, and is available as a download or by email.
According to applicant, the publication features investment and
financial information relating to specific investment funds, and
not to applicant’s company which manages the funds; the reports
are specifically prepared and distributed to the public to
provide financial and investment information to others for their
use in deciding whether or not to purchase the funds or whether
or not to recommend the purchase of the funds to others.
Because the report is published once a year, the report is
captioned as an “Annual Report.” Applicant states that its
reports “are sold, transported or distributed in commerce for
use by others (e.g., investors, potential investors, and others
such as brokers) and provide a use or utility to others (e.g.,
the reports are used to help investors or potential investors
decide whether to invest in the funds, or used to help brokers
decide if they would recommend the funds to their clients).”
(Brief, p. 9).
Ser. No. 77080379

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The examining attorney maintains that the specimen is an
annual report of corporate activity for applicant’s family of
mutual funds, and is incidental to conducting applicant’s own
business. In this connection the examining attorney requests
the Board to take judicial notice of the legal dictionary
definition of the word “annual report”;1 the examining attorney
notes that the content of applicant’s report is identical to the
content usually found in an “annual report,” and that
applicant’s report has been reviewed, as is legally required for
a company’s annual report, by an outside auditor. These types
of reports, like other incidental items used to conduct daily
business, are not goods in trade where an applicant is not
engaged in the actual sale of reports, but rather engaged solely
in furnishing services which are documented in the reports; that
is, the reports are merely conduits through which services are
rendered. In the examining attorney’s words:
The purpose of the report is to promote and
provide information about applicant’s own
investment funds. Although the applicant
argues in its brief that it includes
additional information about global markets,
the examining attorney urges that this is
merely background information regarding the
portfolio strategy for applicant’s
investment services. Therefore, this mark

1 The request in the examining attorney’s brief is granted inasmuch as
the definition is taken from a dictionary existing in a printed
format. In re Hotels.com, L.P., 87 USPQ2d 1100, 1103 (TTAB 2007),
aff’d, 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009); and In re
Jonathan Drew, Inc., 97 USPQ2d 1640, 1642 n.4 (TTAB 2011).

Ser. No. 77080379

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is being used in the report to promote
applicant’s investment fund services, rather
than being used as a trademark for
electronic publications. (Brief, unnumbered
p. 10).2

The record shows that applicant, Thomas White
International, Ltd., is the advisor to Thomas White Fund Family;
as advisor, applicant manages the funds by way of making
investment decisions with the monies invested by the funds’
customers. The specimen comprises a 52-page document; the cover
is captioned with “Thomas White Funds,” and below that with
“Annual Report October 31, 2009.” On page 2 is a “Message to

2 Applicant, in its brief, “notes that if this entire appeal could be
mooted by simply amending the Class 9 goods to related Class 41 [sic]
services, then Applicant would be open to such an amendment.” (Brief,
p. 12, n.2). In this regard we note that the application earlier
included not only the electronic publications in Class 9, but also
services identified in Class 36 as follows: “investment management
services, including management of asset and mutual funds; investment
research services; financial research services; providing investment
research information; financial research, namely, equity research.”
In its response filed October 27, 2008, applicant deleted Class 36
from the application. The examining attorney has stated that “[t]he
first specimen page shows the mark used as a service mark” and that on
two other pages “[t]he use of the mark...appear[s] to be
advertisements for the applicant’s investment services.” (Brief,
unnumbered p. 9). In saying this, the examining attorney also noted
applicant’s use of “SM” after the proposed mark. No request to remand
was filed and there is no basis upon which to address applicant’s
suggestion. Even if a request for remand had been filed, at this late
juncture applicant would not be able to show good cause. See TBMP
§ 1209.04 (3d ed. rev. 2012) (in determining whether good cause has
been shown, the Board will consider both the reason given and the
point in the appeal at which the request for remand is made). In any
event, applicant should note that once the identification has been
amended to restrict the goods or services, it cannot be expanded
later. See In re Swen Sonic Corp., 21 USPQ2d 1794 (TTAB 1991). We
note, however, that nothing in this opinion precludes applicant from
filing another application seeking to register the mark for the
services it provides or intends to provide.
Ser. No. 77080379

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Shareholders” (from Thomas S. White, Jr., identified as “the
Fund’s President and Portfolio Manager”), explaining applicant’s
role as the advisor to the Thomas White Funds. Mr. White states
that “[W]e feel it is important that you are kept informed about
our progress as a business.” Mr. White gives “Our 2010
Outlook,” entailing several forward-looking statements about the
economy, and concludes the report with “Our Portfolio Strategy.”
The report includes a section captioned “Performance Review” of
two individual funds, namely Thomas White American Opportunities
Fund and Thomas White International Fund, indicating the
specific return on investment. In connection with each fund,
the specific stock holdings in publically-traded companies are
listed by sector. The table of contents also lists other
sections, including “Statements of Assets and Liabilities,”
“Statement of Changes in Net Assets,” “Notes to Financial
Statements,” “Tax Information,” “Financial Highlights,”
“Disclosure of Fund Expenses,” “Quarterly Portfolio Schedule and
Proxy Voting Policies,” and “Report of Independent Registered
Public Accounting Firm.” Applicant’s report provides financial
and investment information apart from the two identified mutual
funds that it manages. The report provides investment,
financial and equity research information relating to global
markets in China, India and Russia, information relating to
multinational corporations, charts relating to various data of
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developed and emerging markets, discussions of growth in both
emerging markets and developed countries, growth in the
economies of Europe, Japan, China and India, assessments of the
risks in U.S. dollar denominated assets, and charts providing
data relating to the growth of world stock markets. The
accounting firm auditing the funds’ activities indicated that
the “accompanying statements of assets and liabilities,
including the investment portfolios, and the related statements
of operations and changes in net assets and the financial
highlights present fairly, in all material aspects, the
financial position of [Thomas White funds]...the results of each
of their operations for the year ended, the changes in each of
their net assets for each of the two years in the period then
ended and the financial highlights for each of the five years in
the period then ended, in conformity with accounting principles
generally accepted in the United States of America.”
We find that the document captioned “Annual Report” does
not constitute a “good in trade” and, thus, affirm the refusal.
Our reasons follow.
Section 45 of the Trademark Act, 15 U.S.C. § 1127, defines
“use in commerce” as:
The bona fide use of a mark in the ordinary
course of trade...[A] mark shall be deemed
to be in use in commerce –
(1) On goods when –
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(A) It is placed in any manner on goods or
their containers or the displays
associated therewith or on the tags or
labels affixed thereto, or if the
nature of the goods makes such
placement impracticable, then on
documents associated with the goods or
their sale, and
(B) The goods are sold or transported in
commerce.

Section 45 also defines a “trademark” as a “word, name, symbol,
or device, or any combination thereof” that is used or intended
to be used in commerce by a person “to identify and distinguish
his or her goods (emphasis added).” Before rights in a term as
a trademark can be established, the subject matter to which the
term is applied must be “goods in trade.” Incidental items that
an applicant uses in conducting its business (such as
letterhead, invoices, and business forms), as opposed to items
sold or transported in commerce for use by others, are not
“goods in trade.” See In re Shareholders Data Corp., 495 F.2d
1360, 181 USPQ 722 (CCPA 1974) (finding that reports are not
goods in trade, where applicant is not engaged in the sale of
reports, but solely in furnishing financial reporting services,
and reports are merely conduit through which services are
rendered); In re Ameritox Ltd., 101 USPQ2d 1081, 1085 (TTAB
2011) (finding no evidence that applicant was engaged in selling
printed reports apart from its laboratory testing services and
that the reports were part and parcel of the services); In re
Ser. No. 77080379

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MGA Entm’t, Inc., 84 USPQ2d 1743 (TTAB 2007) (applicant’s
trapezoidal cardboard boxes for toys, games, and playthings held
to be merely point of sale containers for applicant’s primary
goods and not separate goods in trade, where there was no
evidence that applicant is a manufacturer of boxes or that
applicant is engaged in selling boxes as commodities in trade);
In re Compute-Her-Look, Inc., 176 USPQ 445 (TTAB 1972) (finding
that reports and printouts are not goods in trade, where they
are merely the means by which the results of a beauty analysis
service is transmitted and have no viable existence separate and
apart from the service); Ex parte Bank of Am. Nat’l Trust and
Sav. Ass’n, 118 USPQ 165 (Comm’r Pats. 1958) (mark not
registrable for passbooks, checks, and other printed forms,
where forms are used only as "necessary 'tools' in the
performance of [banking services], and [applicant] is not
engaged either in printing or selling forms as commodities in
trade.").
The determination of whether applicant’s investment reports
are independent goods in trade, or merely incidental to the
investment services, is a factual determination to be made on a
case-by-case basis. See Lens.com, Inc. v. 1-800 Contacts, Inc.,
686 F.3d 1376, 1381-82, 103 USPQ2d 1672, 1676 (Fed. Cir. 2012).
Factors to consider include whether the investment report:
(1) is simply the conduit or necessary tool useful only to
Ser. No. 77080379

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obtain applicant’s services; (2) is so inextricably tied to and
associated with the services as to have no viable existence
apart therefrom; and (3) is neither sold separately from nor has
any independent value apart from the services. Id. A more
detailed review of some of the relevant case law referenced
above (none of which is cited or addressed in applicant’s brief)
will be helpful in making such determination.
The predecessor of our primary reviewing court established
that an article does not qualify as a good in trade when that
article is “simply the conduit through which [the applicant]
renders services,” i.e., is “the essence or gist of [the
applicant's] services.” In re Shareholders Data, 181 USPQ at
722. The court also stated that when an article “has no
independent value apart from the services,” such article is not
likely to be an independent good in trade. Id. In Shareholders
Data, the applicant applied to register the trademark
PERSONALYST in connection with “periodic, computer-prepared
reports on the valuations of subscribers’ securities
portfolios.” The report contained information reflecting the
high and low prices of securities as well as dividend rates,
current yields and price earning ratios and listed the
performance of leading market indicators for various periods of
time. The applicant already owned a registration for the
service mark PERSONALYST in connection with its financial
Ser. No. 77080379

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reporting services. The court held that the applicant was not
entitled to a trademark because the reports were not goods or
commodities in trade: “[A]ppellant's reports are a far cry from
constituting goods in trade but are simply the conduit through
which it renders services limited to individual subscribers.
The reports are the essence or gist of appellant's services as
they are unique to each subscriber.” Id.
In Compute-Her-Look, the Board considered whether an
applicant was entitled to a registration for the trademark
COMPUTE-HER-LOOK for use on computer printouts reflecting beauty
advice tailored to particular customers. The applicant already
owned a registration for “COMPUTE-HER-LOOK” as a service mark
for computerized beauty analysis and beauty reporting services.
The Board stated that the applicant’s “reports and computer
printouts do not constitute merchandise and goods that are
solicited or purchased in the market place for their intrinsic
value.” Compute-Her-Look, 176 USPQ at 446. The Board went on
to hold that the applicant was not entitled to register the
trademark because “[t]hese reports and similar material are
merely the means by which applicant transmits the results of its
beauty analysis service, and they are so intricably [sic] tied
to and associated with this service that they have no viable
existence or marketable value separate and apart therefrom.”
Id. at 446-47.
Ser. No. 77080379

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In the case of Ameritox Ltd., the Board found that printed
reports featuring medical laboratory results provided to medical
practitioners for record keeping purposes were not “goods in
trade.” In that case, the Board stated the following:
The fundamental question in this case is
what is being offered for sale under the RX
GUARDIAN mark? The product that is being
offered for sale constitutes the “goods in
trade” for which registration is intended to
provide protection and which should be
listed in the description of goods and
services. See In re SCM Corp., 209 USPQ
278, 280 (TTAB 1980). In this regard, there
is no evidence applicant is engaged in
selling RX GUARDIAN printed reports apart
from its services; rather the reports are
part and parcel of applicant’s services.
There is no evidence regarding applicant’s
advertising of RX GUARDIAN printed reports.

Ameritox Ltd., 101 USPQ2d at 1085.
In the case at hand, the specimen shows applicant is using
the mark only on an item incidental to conducting its own
business. The annual investment report is a common and
necessary adjunct to the rendering of applicant’s investment
management and research services, that is, it is one of the
means through which it provides investment services. For
customers who have invested in the funds, it serves the purpose
of a status report on the customers’ investments; there is no
evidence in the record that applicant charges for the report.
Such customers do not solicit or purchase such reports for their
intrinsic value; rather, they merely are being provided a report
Ser. No. 77080379

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on the status of their investments. With regard to prospective
investors, the report is tantamount to a sales document; the
answer to the fundamental question, “what is being offered for
sale,” is the opportunity to invest in the funds and receive the
investment management services of applicant. The annual report
provides advertising for the services, rather than being a
product in itself. The report is not sold separately from the
services, and the report has no viable existence or independent
value separate and apart from the services. The publications
are part and parcel of the services.
Applicant’s argument based on the difference between
applicant as a financial advisor rather than applicant as a
family of funds is a distinction without a difference. One does
not exist without the other, and the investment services
rendered by the funds and the funds’ advisor are inextricably
intertwined. In this case, the report is part and parcel of the
investment services, whether rendered by the fund or by the
advisor.3
Applicant also argues that its report is not an “annual
report” as that term is commonly recognized and understood in

3 We would point out that the specimen raises a question as to whether
the mark is being used by applicant at all. The annual report would
appear to be issued by the fund, and not by applicant as the advisor
to the fund. We hasten to add, however, that this issue was not
raised by the examining attorney and, thus, is not before us.
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the trade. An “annual report” is defined in Black’s Law
Dictionary (9th ed. 2009) as meaning:
A report for shareholders and other
interested parties prepared by corporations
once a year; includes a balance sheet, an
income statement, a statement of changes in
financial position, a reconciliation of
changes in owner’s equity accounts, a
summary of significant accounting
principles, other explanatory notes, the
auditor’s report, and often comments from
management about the year’s business and
prospects for the next year.

Most, if not all of this type of information appears in the
specimen of record. Nevertheless, we accept applicant’s
assertion that its particular “annual report” is not the type of
“annual report,” as that term is understood in the trade, issued
by a company about itself and provided to shareholders.
However, in either case, the report is merely an item incidental
to conducting one’s own business.
We find that applicant’s “Annual Report” does not
constitute a “good in trade.” Rather, it serves as a conduit to
applicant’s services; is inextricably tied to and associated
with the services so as to have no viable existence apart
therefrom; and is neither sold separately from nor has any
independent value apart from the services. See Lens.com, Inc.
v. 1-800 Contacts, Inc., 103 USPQ2d at 1676. As such, the
specimen is unacceptable to support registration of the mark for
the identified goods.
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Decision: The refusal to register is affirmed.