Thomas White International, Ltd.

Trademark Trial and Appeal BoardJan 21, 2014

No. 77080379re (T.T.A.B. Jan. 21, 2014)

Mailed: 1/21/2014 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Thomas White International, Ltd. ________ Serial No. 77080379 _______ Request for Reconsideration _______ 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: The Board, on February 28, 2013, issued a decision wherein the refusal to register was affirmed. Applicant filed a timely request for reconsideration. The delay in taking action on applicant’s request is regretted. Applicant argues that neither the facts nor the case law relied upon by the Board support the Board’s finding that applicant’s specimen is not a “good in trade,” but rather merely THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77080379 2 an item incidental to conducting applicant’s own business. Applicant attempts to distinguish the present case from the cases cited in the Board’s decision. (Request, pp. 2-4). According to applicant, “because Applicant’s Report provides Independent Research Information, and because Applicant’s Report is not tailored to a unique subscriber or a particular customer, the Board’s conclusions are misplaced and unsupported by the relevant case law.” (Request, p. 5). The sum of applicant’s arguments in response to the Board’s decision is as follows: Applicant’s reports do not serve as a conduit to Applicant’s services of managing the fund or of selling the funds. Instead, the Report merely provides investment information in general, and on two specific funds which Applicant manages. Further, Applicant’s report is not inextricably tied to and associated with the services so as to have no viable existence apart therefrom. Again, Applicant’s report is not tailored to a unique subscriber or a particular customer, and as such is not tied to the services. The Independent Research Information has a viable existence apart from Applicant’s services of managing its funds or selling its funds, and it does have value apart from the services. The Independent Research Information provides valuable investment information to the public at large, and can be used to invest in any fund or other investment. Applicant’s reports are not merely provided to customers who own Applicant’s funds. They are provided through Applicant’s website to the public at large. Anyone can download or subscribe to receive Applicant’s reports. Whether the report does or does not generate more business for Applicant Serial No. 77080379 3 does not change the fact that the Report is an electronic publication featuring investment management and investment research information and financial research and equity research information recorded, which is placed on the goods and is transported in commerce. It is noted that the information provided in Applicant’s report could very well cause consumers and the public at large to not invest in Applicant’s funds and/or to invest in some other funds. (Request, pp. 5-6). 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). We have considered the following factors, all of which weigh in favor of finding that applicant’s “Annual Report” does not constitute a “good in trade”: (1) the report is simply the conduit or necessary tool useful only to obtain applicant’s services; (2) it is so inextricably tied to and associated with the services as to have no viable existence apart therefrom; and (3) it is neither sold separately from nor has any independent value apart from the services. Id. Although we also relied upon additional case law, to which applicant takes issue, we reiterate that we have reviewed applicant’s specimen in the light of these key factors. Serial No. 77080379 4 In the case at hand, the specimen shows that 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 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 information contained in the report that is not directly about the funds managed by applicant is minimal in comparison to the large amount of detailed information relating to the funds, and is offered only to provide context for the performance of the funds. The entire document essentially is in the form of a report to existing shareholders regarding the performance of the funds. Serial No. 77080379 5 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. We reiterate an observation made in the original decision, namely 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.” The request for reconsideration is denied, and the original decision stands.