Broadview Associates LLC

Trademark Trial and Appeal Board

Nov 29, 1999

No. 75178434 (T.T.A.B. Nov. 29, 1999)

Paper No. 9
RLS/MM
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 29, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Broadview Associates LLC
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Serial No. 75/178,434
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Morton Amster of Amster Rothstein & Ebenstein for Broadview
Associates LLC.
Sophia S. Kim, Trademark Examining Attorney, Law Office 106
(Mary Sparrow, Managing Attorney).
_______
Before Simms, Cissel and Chapman, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Broadview Associates LLC (applicant), a New Jersey
limited liability company, has appealed from the final
refusal of the Trademark Examining Attorney to register the
mark INFORMATION TECHNOLOGY INDEX for written reports
rendered from time to time on the performance of
Ser No. 75/178,434
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information technology stocks.1 Relying upon dictionary
definitions, excerpts from a computerized search system and
various third-party applications and registrations, the
Examining Attorney maintains that applicant’s mark is
merely descriptive of applicant’s written reports, under
Section 2(e)(1) of the Act, 15 USC § 1052(e)(1).
Applicant has appealed and briefs have been submitted.
Applicant did not request an oral hearing.
We affirm.
Citing a number of cases where marks have been held to
be merely descriptive or generic when they described the
subject matter of the publications, the Examining Attorney
contends that “INFORMATION TECHNOLOGY” refers to “a
multifaceted area including the use of computers and
telecommunications for the purpose of advanced information
delivery,” and that the term “INDEX” in relation to
applicant’s goods refers to a statistical composite that
measures the ups and downs of stocks. Examining Attorney’s
brief, 4, 5. In this regard, the Examining Attorney has
made of record a dictionary definition of the word “index”

1 Application Serial No. 75/178,434, filed October 8, 1996, under
Section 1(b) of the Act, 15 USC § 1051(b), based upon applicant’s
assertion of a bona fide intention to use the mark in commerce.
Ser No. 75/178,434
3
meaning a “statistical composite that measures changes…”2
It is the Examining Attorney’s position that, given the
fact that applicant’s reports concern information
technology stocks, the asserted mark INFORMATION TECHNOLOGY
INDEX merely describes applicant’s reports. More
particularly, noting that a term is merely descriptive if
it describes an ingredient, quality, characteristic,
function or feature of the relevant goods, and contending
that applicant’s written reports “most likely will feature
an index of information technology company stocks,” the
Examining Attorney maintains that applicant’s mark is
merely descriptive of this feature of its goods. Examining

2 The complete definition of the word “index”, from the
Dictionary of Finance and Investment Terms (1991), is:
[S]tatistical composite that measures changes in
the economy or in financial markets, often expressed
in percentage changes from a base year or from the
previous month. For instance, the CONSUMER PRICE
INDEX uses 1967 as the base year. That index, made up
of key consumer goods and services, moves up and down
as the rate of inflation changes. By the early 1980s
the index had climbed from 100 in 1967 into the low
300s, meaning that the basket of goods the index is
based on had risen in price by more than 200%.
Indexes also measure the ups and downs of stock, bond,
and commodities markets, reflecting market prices and the
number of shares outstanding for the companies in the
index. Some well-known indexes are The New York Stock
Exchange Index, The American Stock Exchange Index, Standard
& Poor’s Index, and The Value Line Index…
Ser No. 75/178,434
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Attorney’s brief, 4.3 The Examining Attorney also refers to
third-party applications and registrations in which the
words “INFORMATION TECHNOLOGY” and the word “INDEX” have
been disclaimed or where such marks are on the Supplemental
Register. Further, the Examining Attorney has made of
record some excerpts from a computerized database in which
the phrase “information technology index” was used.
However, it appears that most of those excerpts are from
foreign publications, the extent of distribution of which
in this country is not known. See In re Men’s
International Professional Tennis Council, 1 USPQ2d 1917,
1918-19 (TTAB 1986) (“[W]e cannot –- absent other evidence
-- infer that these foreign uses have had any material
impact on the perceptions on the relevant public in this
country.”). With respect to the third-party applications
and registrations which include disclaimers of the word
“INDEX,” a number of those registrations issued for
newsletters, books and sections or columns of magazines
(and not for a statistical composite or an “index”).
Applicant, on the other hand, contends that its mark
is just suggestive of its reports because the asserted mark
does not forthwith convey an immediate idea of the goods or

3 The Examining Attorney states that applicant has not indicated
that its reports will not feature an index of information
Ser No. 75/178,434
5
any concrete or specific information concerning the goods.
According to applicant, consumers must use their
imaginations to understand the nature of applicant’s goods.
[P]rospective customers, when encountering
Appellant’s mark, may envision some type of
reference material, but the true nature of
that reference material, namely, a written
report on the performance of information
technology stocks, is not readily apparent
from the mark.
Applicant’s brief, 4. Applicant also states that there are
other definitions of the word “index” which could occur to
consumers, such as a device that serves to indicate a value
or quantity, something that leads to a particular fact or
conclusion, a list, or a number derived from a series of
observations and used as an indicator or measure.
Applicant states that its mark could just as likely be used
to identify a book listing a variety of technical products.
Brief, 4. Finally, applicant urges us to resolve all
doubts in its favor.
Upon careful consideration of this record and the
arguments of the attorneys, we conclude that applicant’s
mark is merely descriptive of a feature of its written
reports concerning the performance of information
technology stocks. First, the question of whether a

technology company stocks.
Ser No. 75/178,434
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particular term is merely descriptive must be determined,
not in the abstract, but in relation to the goods or
services for which registration is sought, the context in
which the term is or will be used on or in connection with
those goods or services and the possible significance that
the term has or will likely have to the average purchaser
of the goods or services. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979). Consequently, “[w]hether
consumers could guess what the product is from
consideration of the mark alone is not the test.” In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Consumers viewing applicant’s mark INFORMATION
TECHNOLOGY INDEX in connection with written reports
concerning the performance of information technology stocks
will immediately perceive the asserted mark as describing a
feature (an index) concerning information technology stocks
included in the reports. While this is an intent-to-use
application and there are, therefore, no specimens of use,
applicant has not argued that the Examining Attorney is
incorrect when she states that applicant’s written reports
most likely will feature an index of information technology
stocks. Accordingly, in viewing the description of goods
broadly, we conclude that applicant’s asserted mark merely
describe a feature of its goods.
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Decision: The refusal of registration is affirmed.
R. L. Simms
R. F. Cissel
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board