Alpha Analytics Investment Group, LLC

Trademark Trial and Appeal Board

Mar 26, 2002

No. 75829220 (T.T.A.B. Mar. 26, 2002)

3/26/02

Paper No. 11
Bottorff

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Alpha Analytics Investment Group, LLC
________

Serial No. 75/829,220
_______

Willmore F. Holbrow III of Blakely Sokoloff Taylor & Zafman
LLP for Alpha Analytics Investment Group, LLC.

Wendy B. Goodman, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Hairston, Bottorff and Drost, Administrative
Trademark Judges.

Opinion by Bottorff, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark ALPHA ANALYTICS DIGITAL FUTURE FUND (in typed
form) for “financial services, namely, investment advisory
services and mutual fund investment services.”1 Applicant
has disclaimed FUND apart from the mark as shown.

1 Serial No. 75/829,220, filed October 22, 1999. The application
is based on intent-to-use under Trademark Act Section 1(b).

THIS DISPOSITION
IS CITABLE AS PRECEDENT
OF THE T.T.A.B.

Ser. No. 75/829,220
2
Applicant has appealed the Trademark Examining
Attorney’s final requirement that applicant disclaim ALPHA
ANALYTICS apart from the mark as shown, and her final
refusal to register the mark absent compliance with the
disclaimer requirement. See Trademark Act Section 6, 15
U.S.C. 1056; see also TMEP §§1213 and 1213.01(b).
Applicant and the Trademark Examining Attorney filed main
briefs, and applicant filed a reply brief. No oral hearing
was requested.
Underlying the Trademark Examining Attorney’s
disclaimer requirement is her contention that ALPHA
ANALYTICS is merely descriptive of applicant’s recited
services under Trademark Act Section 2(e)(1), 15 U.S.C.
§1052(e)(1). Applicant disputes that contention, arguing
that ALPHA ANALYTICS is, at most, suggestive of applicant’s
services, and that it therefore need not be disclaimed.
In support of her mere descriptiveness argument, the
Trademark Examining Attorney has submitted various types of
evidence which show, she contends, the merely descriptive
significance of “alpha” and “analytics” as those terms are
applied to applicant’s services. With respect to “alpha,”
this evidence includes dictionary definitions, definitions
from online financial glossaries, and articles from online
publications addressed to the investing public in which
Ser. No. 75/829,220
3
“alpha” is used descriptively. We shall discuss each of
these types of evidence in turn.
The American Heritage Dictionary of the English
Language (3d ed. 1992)(electronic version licensed by INSO)
defines “alpha” as follows:

alpha noun
1. The first letter of the Greek alphabet.
2. The first one; the beginning.
3. Chemistry. The first position from a
designated carbon atom in an organic molecule
at which an atom or radical may be substituted.
4. Astronomy. The brightest or main star in a
constellation.
5. The mathematical estimate of the return on
a security when the return on the market as a
whole is zero. Alpha is derived from ...
[mathematical formula omitted].

adjective
1. First in order of importance.
2. Chemistry. Closest to the functional group
of atoms in an organic molecule.
3. Alphabetical.

The Trademark Examining Attorney cites to the fifth-listed
noun definition of “alpha,” i.e., “the mathematical
estimate of the return on a security when the return on the
market as a whole is zero,” as the definition which is most
pertinent in this case. She also has made of record
excerpts from various online glossaries of financial and
investment terms, which provide similar definitions of
Ser. No. 75/829,220
4
“alpha.” For example, the online glossary provided by
washingtonpost.com has the following entry for “alpha”:2

Alpha A measure of selection risk (also known
as residual risk) of a mutual fund in relation
to the market. A positive alpha is the extra
return awarded to the investor for taking a
risk, instead of accepting the market return.
For example, an alpha of 0.4 means the fund
outperformed the market-based return estimate
by 0.4%. –0.6 means a fund’s monthly return
was 0.6% less than would have been predicted
from the change in the market alone.

The online glossary at Find a Fund (which touts itself as
“the most complete source of mutual fund information”)3
includes this entry for “alpha”:

Alpha A measure of risk adjusted performance
used to quantify the difference between the
security’s actual performance and the
performance anticipated in light of the
security’s risk (beta) and the market’s
(relative market index) behavior. In short,
alpha tells how much better, or worse, a
security did relative to what it was expected
to do based on its risk posture. A positive
alpha indicates a security’s return has been
more than commensurate with its risk posture.
Higher numbers are better than lower.

Similar entries for “alpha” are of record from the
following online glossaries: investorwords (which touts

2 http://www.washingtonpost.com/wp-
srv/business/longterm/glossary/a_m/alpha.htm

3 http://findafund.com/glossary.htm

Ser. No. 75/829,220
5
itself as “the biggest, best investing glossary on the
web”);4 Wall Street Directory;5 and Campbell R. Harvey’s
Hypertextual Finance Glossary.6
In addition to the online glossaries mentioned above,
the record includes articles from various online
publications which discuss “alpha.” For example, an
article from Morningstar.com entitled “How Alpha Works”7
includes the following discussion:

However, mutual funds don’t necessarily produce
the returns predicted by their beta values.
That’s where alpha comes in. Essentially,
alpha is the difference between the return you
would expect from a fund, given its beta, and
the return that it actually produced. If a
fund returns more than its beta would predict,
it has a positive alpha, and if it returns less
than the amount predicted by beta, the fund has
a negative alpha ... Morningstar calculates
alpha based on a fund’s monthly returns for the
past 36 months ... Alpha is sometimes referred
to as the “value added” by the portfolio
manager ... Ideally, you’d like to see a
positive alpha for all of the funds you own.
This would indicate that your fund managers
were all producing better-than-expected risk-
adjusted returns.

4 http://www.investorwords.com/a3.htm
5 http://www.wsdinc.com/glossary/g104.shtml

6 http://www.duke.edu/%7echarvey/Classes/wpg/bfglosa.htm

7 http://news.morningstar.com/news/ms/Investing101/GradeSeries/
gradeseries2.html

Ser. No. 75/829,220
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An article from PASCO Research entitled “Alpha Magic – Your
LINK to Better Investment Returns”8 includes the following
discussion:

... Alpha is a measure of stock (or fund)
performance independent of the market. In
other words, funds with a positive alpha are
invested in equities which are outperforming
the general stock market or they may be
invested in a sector of the market which is
currently outperforming the market as a whole.
... Therefore, it is important to know which
funds currently have a mix of stocks that have
a positive alpha. Using conventional means of
performance analysis this is not readily
apparent as alpha can be masked by beta
... So how does a mutual fund investor know
which funds currently have the most favorable
alpha tendencies and are truly outperforming
the market? We have developed a report which
should make it fairly easy. Every day we
calculate two alpha ratings: a Fast Alpha (A1)
and a Slow Alpha (A2). These alphas are
reported on our daily Mutual Fund Alpha Report.
...

Additional online articles of record discussing “alpha” are
“Performance evaluation using conditional alphas and
betas,” from Northern Light Technology Inc.’s Journal of
Portfolio Management;9 “Navallier Tops with ‘high-Alpha’
Strategy,” from Investor’s Business Daily;10 “The Alpha and

8 http://www.pasco-res.com/amallpha.htm

9 http://library.northernlight.com/PN19991214130022544.html

10 http://anasazi.umsl.edu/fin455/Anomoly/Alphas.htm

Ser. No. 75/829,220
7
Beta Connection,” from pickomo.com;11 and “Which Mutual Fund
Risk Measures Really Matter,” from TheStreet.com.12
The record also includes a “profile” of an actual
mutual fund, obtained from the website of The Internet
Closed-End Fund Investor.13 Among the categories of data
supplied in the profile is “Modern Portfolio Theory
Statistics,” which includes the fund’s “Alpha Coefficient”
and its “Alpha Overall %ile Rank.” The record also
includes an advertisement (from the web page of the
American Association of Individual Investors14) for a
“Portfolio Performance Calculator” software product
available from Boston Investment Services, LLC. The
advertisement states, inter alia, that the software enables
its user to “track and measure investment performances of
stock, bond, mutual fund, and 401(k) accounts and calculate
risk measures such as beta, alpha, Sharpe ratio, R-squared,
and standard deviation.”
As evidence that “analytics” is merely descriptive of
applicant’s services, the Trademark Examining Attorney has
made of record dictionary excerpts wherein the term is

11 http://www.pickomo.com/beta.htm

12 http://www.wsaccess.com/theStreet/basics/schoolhouse/31848.html

13 Http://www.icefi.com/icefi/info/profile.htm

14 http://aaii.com/dloads/index.shtml
Ser. No. 75/829,220
8
defined as “the branch of logic dealing with analysis”15 and
as “the method of logical analysis.”16 She also has made of
record printouts (from the Office’s automated database) of
nine third-party registrations which cover various
financial and investment services and/or software products
for use in the investment field and in which the word
ANALYTICS appears. In each of those registrations,
ANALYTICS was disclaimed, or the mark was registered on the
Supplemental Register, or was registered on the Principal
Register pursuant to the acquired distinctiveness
provisions of Section 2(f).
Finally, the record includes excerpts from five
articles the Trademark Examining Attorney obtained from the
NEXIS automated database.17 None of the five articles show
use of “alpha analytics,” per se. Four of the five
articles appear to relate to fields other than the
financial/investment field, and thus are of no probative
value. However, in the one article pertaining to the

15 The American Heritage Dictionary of the English Language (3d
ed. 1992)(electronic version licensed by INSO).

16 Merriam-Webster’s Collegiate Dictionary (10th ed. 1998), at 42.

17 The Trademark Examining Attorney’s search request was “alpha
w/10 analytics” in the ALLNWS file of the NEWS library. It
appears that the search retrieved twenty-six stories, five of
which were printed out in excerpted form by the Trademark
Examining Attorney.

Ser. No. 75/829,220
9
investment field (story no. 5, from the May 29, 2000 issue
of Pensions and Investments), “alpha” and “analytics” are
used as follows (emphasis added):

Money managers getting in bed with competitors.
Portfolio managers lifting the veil of mystery
cloaking their investment processes to enable
even individual investors to perform
sophisticated analytics on their portfolios.
Equity managers managing embedded alpha as
carefully as fixed-income managers in order to
squeeze every quarter basis point of return.
Planned obsolescence for the mutual fund
vehicle for all but the least sophisticated
tier of investors. Those are some of the
seismic shifts of attitude and process that
will be required of the successful money
manager in the new century...

In determining whether this evidence suffices to
establish that ALPHA ANALYTICS is merely descriptive of
applicant’s recited services, and therefore must be
disclaimed, we apply the following legal principles. A
term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). A term need not immediately convey an
Ser. No. 75/829,220
10
idea of each and every specific feature of the applicant’s
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987); Meehanite Metal Corp. v. International
Nickel Co., 262 F.2d 806, 120 USPQ 293 (CCPA 1959); In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates,
180 USPQ 338 (TTAB 1973). Whether a term is merely
descriptive is determined not in the abstract, but in
relation to the goods or services for which registration is
sought, the context in which it is being used on or in
connection with those goods or services, and the possible
significance that the term would have to the average
purchaser of the goods or services because of the manner of
its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979).
The Trademark Examining Attorney argues that the
evidence of record establishes that ALPHA is a term of art
in the investment industry in which applicant is rendering
its services, and that this specific definition of the term
therefore is the operative and most pertinent definition of
the term for purposes of determining mere descriptiveness.
She further argues that ANALYTICS, which is defined as “the
Ser. No. 75/829,220
11
method of logical analysis” and as “the branch of logic
dealing with analysis,” and which is uniformly treated as
being non-distinctive in the third-party registrations of
record, merely describes applicant’s investment and
advisory services, which require and are based on
applicant’s analysis, or analytics, of pertinent investment
factors. Finally, she argues that the composite term ALPHA
ANALYTICS specifically and merely describes a salient
feature or characteristic of applicant’s investment
advisory services and mutual fund investment services, in
that it directly informs purchasers that applicant, in the
course of rendering those services, will be performing
“analytics” of the “alpha” of potential investment
vehicles.
Applicant, for its part, notes that there is no
evidence that any third party, in any field, has used the
term ALPHA ANALYTICS, nor is there any evidence that the
term as a whole has any recognized meaning in connection
with services such as applicant’s. Applicant contends that
the “term of art” meaning of ALPHA relied upon by the
Trademark Examining Attorney is an obscure meaning with
which potential purchasers are unlikely to be familiar.
Rather, applicant argues, purchasers viewing applicant’s
mark are likely to ascribe to ALPHA its more commonly-
Ser. No. 75/829,220
12
understood dictionary meaning of “first” or “brightest,”
and that the existence of this arbitrary (or at most
suggestive) significance of ALPHA as applied to applicant’s
services precludes a finding that the term is “merely”
descriptive. Applicant further contends that even if
purchasers are aware of the specialized meaning of “alpha”
as it pertains to the investment field, they will view the
term as descriptive only of the mathematical and
statistical measure itself; a multi-stage reasoning process
still would be required in order to understand the term’s
significance as applied to applicant’s recited services.
Applicant also argues that the Trademark Examining
Attorney’s refusal is based on an impermissible dissection
of the term into its component parts, and that ALPHA
ANALYTICS, when considered as a whole, is a unique,
incongruous combination of terms which presents an
inherently distinctive commercial impression as applied to
applicant’s services. At most, applicant contends, the
term simply suggests to purchasers that applicant’s fund
may yield a positive return. Finally, applicant notes that
any doubts as to whether ALPHA ANALYTICS is merely
descriptive as applied to applicant’s services must be
resolved in favor of applicant in this ex parte proceeding.
Ser. No. 75/829,220
13
We have carefully considered the evidence of record
and the arguments made by applicant and by the Trademark
Examining Attorney, and we conclude that ALPHA ANALYTICS is
merely descriptive as applied to applicant’s services, and
that it therefore must be disclaimed. We find that each of
the words ALPHA and ANALYTICS is merely descriptive of the
services, and that the composite term ALPHA ANALYTICS
likewise is merely descriptive, not inherently distinctive.
The evidence of record establishes that ANALYTICS
merely describes a feature or characteristic of applicant’s
services, i.e., that applicant’s services involve the
performance of analysis or “analytics” with respect to
investments. The dictionary definitions of “analytics” in
the record support this conclusion, as does the above-
quoted NEXIS excerpt from the Pensions and Investments
article, which refers to investors who perform
“sophisticated analytics on their portfolios.”
Additionally, the above-referenced third-party
registrations for similar goods and services in which the
registrants have either disclaimed ANALYTICS or sought to
register it under Section 2(f) or on the Supplemental
Register, although not conclusive evidence, are probative
evidence of mere descriptiveness at least to the extent
that they may suggest that ANALYTICS has been deemed and/or
Ser. No. 75/829,220
14
acknowledged to be not inherently distinctive by the Office
and/or by the prior registrants.
Likewise, we find that ALPHA is merely descriptive of
applicant’s services. It is clear from the evidence of
record that “alpha” is a term of art in the investment
field. It is the name of a statistical measure which would
be used by the investor, and by applicant as the investor’s
professional advisor, in determining the desirability of a
particular investment vehicle. Given this specific meaning
of “alpha” which is directly relevant to applicant’s
services, we are not persuaded by applicant’s contention
that purchasers encountering applicant’s mark are more
likely to understand “alpha” in its more general sense of
“first” (or in its astronomical sense of “brightest”). We
must determine whether the term is merely descriptive as it
is used in connection with the recited services, not in the
abstract. In re Bright-Crest Ltd., supra. Moreover, the
mark’s use of the word ANALYTICS immediately after ALPHA
increases the probability that purchasers will understand
ALPHA in its specialized financial sense, rather than in
any more generalized sense. As the mark is constructed,
ANALYTICS clearly refers to and is modified by ALPHA.
Because “analytics” could readily be performed as to the
statistical measure “alpha,” but not as to the generalized
Ser. No. 75/829,220
15
concept of “first,” it is the former meaning that
purchasers are more likely to ascribe to ALPHA in
applicant’s mark.
Nor are we persuaded by applicant’s contention that
this relevant specialized meaning of “alpha” in the
investment field is so obscure or arcane that potential
purchasers, i.e., general, non-professional investors,
would be unaware of it or unlikely to understand its
significance as applied to applicant’s services. Cf. In re
Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987). Not only is this definition of the term
included in a standard dictionary, but the financial
glossaries and publications in the record which use and
discuss the term “alpha” in its specialized sense are
directed to and read by such investor/purchasers. The
evidence does not support applicant’s (implicit) contention
that only professionals in the investment field would be
aware of this significance of “alpha.”
Finally, we are not persuaded by applicant’s
contention that the Trademark Examining Attorney’s mere
descriptiveness finding is based on an impermissible
dissection of ALPHA ANALYTICS. We find, instead, that the
composite of these merely descriptive words is likewise
merely descriptive as applied to applicant’s services.
Ser. No. 75/829,220
16
Applicant asserts summarily that ALPHA ANALYTICS is an
incongruous composite term, but does not explain or show
wherein such incongruity lies. We perceive no incongruity;
applicant’s services involve the performance of analytics
as to the alpha of potential investments. As for the
asserted “uniqueness” of the designation ALPHA ANALYTICS,
it is well settled that the fact that an applicant may be
the first or only user of a term does not justify
registration of the term where the only significance
projected by the term is merely descriptive, as we find to
be the case here. See In re National Shooting Sports
Foundation, Inc., 219 USPQ 1018 (TTAB 1983).
In summary, we find that ALPHA ANALYTICS directly and
immediately informs the investor/purchaser of applicant’s
investment advisory and mutual fund investment services
that a salient feature or characteristic of those services
is that applicant, in determining the desirability of a
potential investment for the investor/purchaser and in
order to maximize the investor/purchaser’s return on
investment, performs “analytics” of the “alpha” of the
potential investment. We find, therefore, that ALPHA
ANALYTICS is merely descriptive of applicant’s services,
and that the Trademark Examining Attorney’s disclaimer
Ser. No. 75/829,220
17
requirement is proper. See Trademark Act Sections 2(e)(1)
and 6(a).
Decision: The requirement for a disclaimer of ALPHA
ANALYTICS, and the refusal of registration based on
applicant’s failure to submit such disclaimer, are
AFFIRMED. However, in the event that applicant submits the
required disclaimer18 within thirty days from the date
stamped on this decision, the refusal to register will be
set aside, the disclaimer will be entered, and the
application will proceed to publication.

18 The proper format for the disclaimer is: “No claim is made to
the exclusive right to use ALPHA ANALYTICS or FUND apart from the
mark as shown.”