Fitch IBCA, Inc.

Trademark Trial and Appeal Board

Apr 18, 2002

No. 75628232 (T.T.A.B. Apr. 18, 2002)

4/18/02 Paper No. 13
CEW

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Fitch IBCA, Inc.
___________

Serial No. 75/628,232
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Ronald A. DiCerbo of McAndrews, Held & Malloy for Fitch
IBCA, Inc.

Dawn J. Feldman, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney).
____________

Before Cissel, Seeherman and Walters, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Fitch IBCA, Inc. has filed an application to
register the mark PORTFOLIO UPDATE for “financial
services, namely, providing information on securities,
research and surveillance on securities via a global
computer information network.”1

1 Serial No. 75/628,232, in International Class 36, filed January 26,
1999, based on an allegation of a bona fide intention to use the mark in
commerce.

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

Serial No. 75/628,232
2
The Trademark Examining Attorney has issued a final
refusal to register, under Section 2(e)(1) of the
Trademark
Serial No. 75/628,232
3
Act, 15 U.S.C. 1052(e)(1), on the ground that applicant’s
mark is merely descriptive of its services.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs,2 but an oral hearing
was not requested. We affirm the refusal to register.
The Examining Attorney contends that PORTFOLIO
UPDATE is merely descriptive of applicant’s services
because “the applicant may not provide exact numerical
information on the value of an individual’s portfolio;
however, the applicant provides up to date financial
information on transactions that affect the value of an
individual’s portfolio”; that the evidence shows that the
connotation of the term “portfolio update” is not limited
to information regarding numerical values of a customer’s
portfolio; and, that even if the connotation of
“portfolio update” was limited to numerical value
information, applicant’s identification of services
encompasses “both numerical data and financial news.”
In support of her position, the Examining Attorney
has submitted definitions from The American Heritage

2 Applicant submitted evidence for the first time with its brief. The
Examining Attorney’s objection to consideration of that evidence because
it is untimely is well taken and the evidence has not been considered.
Applicant did not comply with the established rule that the evidentiary
record in an application must be complete prior to the filing of the
notice of appeal. See, 37 CFR 2.142(d); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994).
Serial No. 75/628,232
4
Dictionary of the English Language (3rd ed. 1992) of
“portfolio” as “a group of investments” and of “update”
as “information that updates[;] the act or an instance of
bringing up to date.”
The Examining Attorney has also submitted excerpts
of articles retrieved from the LEXIS/NEXIS database which
show use of the term “portfolio update.”3 Representative
examples follow:
The company’s brokerage service is aimed at
active traders who complete several transactions
a week. It will provide live portfolio updates,
charts and price and news alerts. [The New York
Times, August 29, 1999.]

From Intraday account balances to automated
portfolio updates, fund companies are looking at
providing more data – so long as they can give
that data through a machine. [The Seattle
Times, April 12, 1999.]

If you use Morningstar’s site to research mutual
funds, then the site’s portfolio tool may be a
good fit. The familiar folder-like tabs,
divided into summary, performance, intraday,
fundamental and news, act as your guides.
The tool consists of portfolio updates and
“Portfolio X-Rays,” which deliver a breakdown of
each fund’s individual statistics, such as P/E
ratio, and also display your portfolio’s average
statistics, like median market cap.
[TheStreet.com, September 23, 1998.]

3 A number of the excerpts are from newswire stories. Newswire stories
are of minimal evidentiary value because it is not clear that such
stories have appeared in any publication available to the consuming
public. See, In re Manco Inc., 24 USPQ2d 1938 (TTAB 1992); and In re
Men’s International Professional Tennis Council, 1 USPQ2d 1917 (TTAB
1986). See also, In re Urbano, 51 USPQ2d 1776, 1778 fn. 3 (TTAB 1999)
and cases cited therein.
Serial No. 75/628,232
5

Additionally, the Examining Attorney submitted
copies of Internet web sites that show use of the term
“portfolio update” or similar terms, such as “update a
portfolio,” as a topic heading.
The Examining Attorney also submitted a copy of her
search results summary for the key words “portfolio
update” using the Yahoo/Google search engine. With
respect to this latter material, we note that the search
results demonstrate the use of the phrase as key words by
the search engine, which is different from evidence of
use of a phrase as headings, links or content on a web
site. Evidence of actual use of a phrase by a website
has far greater probative value than these search
summaries, which may indicate only that the two words in
an overall phrase appear separately in the website
literature. However, because both search engine results
and web site contents are equally accessible by the
consuming public (although search engine results may be
retrieved only if members of the public enter the
identical search strategy), they constitute evidence that
the public may be exposed to the phrase "portfolio
update," and the search results have therefore been
considered. Nonetheless, the probative value of search
Serial No. 75/628,232
6
engine summary results (and web site contents themselves)
will vary depending upon the facts of a particular case.
Applicant contends that “the immediately conceived
meaning of the mark is [limited to] the updating of the
price and/or value of stocks or mutual funds in a
portfolio[,] [h]owever this is not the service provided
by the Applicant.” Applicant describes its service as
follows:
More specifically Applicant’s PORTFOLIO UPDATE
service provides, in the form of direct e-mail
notification via a global computer information
network, Fitch press releases and Fitch rating
actions regarding transactions to commercial
mortgage-backed securities (‘CMBS’) which an
investor has listed in his or her personalized
CMBS portfolio. … The PORTFOLIO UPDATE service
also provides access to surveillance screens
which provide up to date information regarding
CMBS, including but not limited to original and
current ratings, credit enhancements,
delinquency information, and collateral and
certificate balances.

Applicant argues that the terms “portfolio” and “update”
are “vague and incongruent”; and that one cannot tell
what applicant’s service is from the term PORTFOLIO
UPDATE.”
The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
concerning a quality, characteristic, function,
ingredient, attribute or feature of the product or
service in connection with which it is used, or intended
Serial No. 75/628,232
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to be used. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215 (CCPA 1978). See also, In re Engineering
Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-
Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not
necessary, in order to find a mark merely descriptive,
that the mark describe each feature of the goods or
services, only that it describe a single, significant
quality, feature, etc. In re Venture Lending Associates,
226 USPQ 285 (TTAB 1985). Further, it is well-
established that the determination of mere
descriptiveness must be made not in the abstract or on
the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the mark is used or intended to be used, and the
impact that it is likely to make on the average purchaser
of such goods or services. In re Recovery, 196 USPQ 830
(TTAB 1977).
The evidence submitted by the Examining Attorney
clearly supports the conclusion that, when considered in
connection with the services identified in the
application, the term PORTFOLIO UPDATE merely describes a
significant aspect of applicant’s service, namely, that
the service is providing an update of information
relevant to a client’s securities portfolio. We do not
Serial No. 75/628,232
8
find the term to be “vague and incongruent”; on the
contrary, the usage of the phrase “portfolio update(s)”
in the NEXIS and Internet evidence shows that this term
has a readily recognized meaning.
Further, there is no need to determine whether the
common usage of the term “portfolio update” is limited to
numerical information or value data because applicant’s
recitation of services, which broadly states that
applicant provides "information on securities,"
encompasses numerical information and value data.
In conclusion, considered in connection with
applicant’s services, the term PORTFOLIO UPDATE
immediately describes, without conjecture or speculation,
a significant feature or function of applicant’s
services, namely, that applicant provides information
updates relevant to a customer’s securities portfolio.
Nothing requires the exercise of imagination, cogitation,
mental processing or gathering of further information in
order for purchasers of and prospective customers for
applicant’s services to readily perceive the merely
descriptive significance of the term PORTFOLIO UPDATE as
it pertains to applicant’s services.
Decision: The refusal under Section 2(e)(1) of the
Trademark Act is affirmed.