Innovator Capital Management, LLC

Trademark Trial and Appeal Board

Mar 18, 2022

88307931 (T.T.A.B. Mar. 18, 2022)

This Opinion is Not a Precedent of the TTAB Mailed: March 18, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Innovator Capital Management, LLC _____ Serial No. 88307931 _____ Karen S. Hwang, Esq. of KSH Law Group LLC, for Innovator Capital Management, LLC. John Sullivan, Trademark Examining Attorney, Law Office 114, Nicole Nguyen, Managing Attorney. _____ Before Zervas, Hudis, and Johnson, Administrative Trademark Judges. Opinion by Johnson, Administrative Trademark Judge: Innovator Capital Management, LLC (“Applicant”) seeks registration on the Principal Register of the term BUFFER ETF, in standard characters, for services in International Class 36 [hereinafter “Applicant’s Financial Services”] ultimately identified as: Broker-dealer financial services in the field of exchange traded funds (ETFs), exchange listed securities and portfolios; Financial advice and consultancy services; Financial advisory and consultancy services in the fields of exchange traded funds (ETFs), exchange listed securities Serial No. 88307931 - 2 - and portfolios; Financial asset management; Financial evaluation, tracking, analysis, forecasting, consultancy, advisory and research services relating to securities and other financial instruments; Financial investment services, namely, administering the issuance, underwriting and distribution of securities; Financial research; Investment services, namely, asset acquisition, consultation, development and management services; Providing financial assessment services to investors of exchange traded funds (ETFs), exchange traded funds (ETFs), exchange listed securities and portfolios; Providing financial consultation services to investors of exchange traded funds (ETFs), exchange traded funds (ETFs), exchange listed securities and portfolios; Providing financial information services to investors of exchange traded funds (ETFs), exchange traded funds (ETFs), exchange listed securities and portfolios; Providing financial services with respect to securities and other financial instruments and products, namely, trading of and investments in securities and financial instruments and products for others; Strategic financial advisory services.1 The Trademark Examining Attorney refused registration on the ground that the proposed mark is generic for the identified services under Sections 1, 2, 3, and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052, 1053, and 1127, and if not generic, it is merely descriptive of the services under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), without having acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f). When the refusals were made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for 1 Application Serial No. 88307931 (the “’931 Application”) was filed on February 20, 2019 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and first use in commerce since at least as early as August 28, 2018. The term “ETF” has been disclaimed. Serial No. 88307931 - 3 - reconsideration, the appeal resumed. The appeal has been briefed.2 We affirm the refusals to register. I. Refusal of Registration under Trademark Act Sections 1, 2, 3, and 45 The Examining Attorney contends that BUFFER ETF is incapable of distinguishing Applicant’s Financial Services because it is generic for them. “Generally, where the matter sought to be registered identifies [services] that are a primary or central focus of the [business], we have considered the term to be generic.” In re Cordua Rests. LP, 100 USPQ2d 1227, 1231 (TTAB 2014) (citations omitted) (bracketed words in original), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016). The United States Court of Appeals for the Federal Circuit has set forth a two- step inquiry to determine whether a mark is generic: ● First, what is the genus (category or class) of goods or services at issue? H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986)). The genus, in appropriate circumstances, may be defined by the services identified in the application. See, e.g., Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (“a proper genericness inquiry focuses on the identification set forth in the application or certificate of registration”); In re Reed Elsevier Props. Inc., 77 USPQ2d 1649, 1653 2 Page references to the application record are to the downloadable .pdf version of the United States Patent and Trademark Office’s (“USPTO” or “Office”) Trademark Status & Document Retrieval (TSDR) system. Citations in this opinion to the briefs and other docket entries refer to TTABVUE, the Board’s online docketing system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). The number preceding TTABVUE corresponds to the docket entry number, and any numbers following TTABVUE refer to the page(s) of the docket entry where the cited materials appear, if appropriate. Serial No. 88307931 - 4 - (TTAB 2005) (quoting Magic Wand, 19 USPQ2d at 1552), aff’d, 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007). ● Second, is the term sought to be registered understood by the relevant public primarily to refer to that genus of goods or services? Marvin Ginn, 228 USPQ at 530; see also Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1833 (Fed. Cir. 2015) (the relevant public’s perception is the principal consideration in determining whether a term is generic). The relevant public encompasses “actual [and] potential purchasers of . . . goods or services” identified in the application. The Loglan Inst. Inc. v. The Logical Language Grp. Inc., 962 F.2d 1038, 22 USPQ2d 1531, 1533 (Fed. Cir. 1992) (quoting Magic Wand, 19 USPQ2d at 1553); see Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1351 (TTAB 2013) (citing Magic Wand, 19 USPQ2d at 1553). “An inquiry into the public’s understanding of a mark requires consideration of the mark as a whole.” Princeton Vanguard, 114 USPQ2d at 1831 (quoting In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005)). “Even if each of the constituent words in a combination mark is generic, the combination is not generic unless the entire formulation does not add any meaning to the otherwise generic mark.” In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1684 (Fed. Cir. 2009) (quoting In re Steelbuilding.com, 75 USPQ2d at 1421); see also Princeton Vanguard, 114 USPQ2d at 1832. Serial No. 88307931 - 5 - Evidence of the relevant public’s understanding of a term may be obtained from “any competent source, such as consumer surveys, dictionaries, newspapers and other publications.” Princeton Vanguard, 114 USPQ2d at 1830 (quoting In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985)). A. Whether BUFFER ETF is Generic for the Recited Services We look to the evidence of record to determine whether BUFFER ETF is generic for the services recited in the application. 1. Defining the Genus of BUFFER ETF Here, the genus of BUFFER ETF is adequately defined by the services recited in the application.3 If the proposed mark is generic for any one of the services in the identification, registration is appropriately refused for that entire class of services. In re Katch, LLC, 2019 USPQ2d 233842, *10 (TTAB 2019). 2. The Relevant Public for BUFFER ETF Applicant is seeking to register BUFFER ETF for Applicant’s Financial Services. Applicant did not identify the relevant public in its brief. The Examining Attorney contends the relevant public of Applicant’s Financial Services comprises ordinary consumers.4 But “[t]he critical issue in genericness cases is whether members of the 3 Although Applicant identified the two-part factual inquiry for determining whether a term is generic discussed above, Applicant did not identify the genus of the services in its brief. See Applicant’s Brief, 6 TTABVUE 9. The Examining Attorney identified the services recited in the identification as the genus of the services. 4 See Examining Attorney’s Brief, 8 TTABVUE 6. Serial No. 88307931 - 6 - relevant public primarily use or understand the term to be protected to refer to the genus of goods or services in question.” Marvin Ginn, 228 USPQ at 530. “[T]he determination of whether a mark is generic must be made in relation to the goods or services for which registration is sought, not in the abstract.” In re Virtual Independent Paralegals, LLC, 2019 USPQ2d 111512, *2 (TTAB 2019). Since there are no restrictions or limitations to the channels of trade or classes of consumers for Applicant’s Financial Services, the services and the relevant purchasers for them may not be limited by extrinsic evidence. See Remington Prods., Inc. v. N. Am. Philips Corp., 892 F.2d 1576, 13 USPQ2d 1444, 1448 (Fed. Cir. 1990) (the mark must be considered in context, i.e., in connection with the goods); Magic Wand, 19 USPQ2d at 1553-54 (the description of services in respondent’s registration defines the relevant public); see also Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1463 (TTAB 2014) (“The question of registrability must be determined, in proceedings before the Board, on the basis of the services as set forth in the registrations, rather than in reference to the precise nature of the services on or in connection with which the marks are actually used or intended to be used.”). We find that the relevant public for BUFFER ETF are ordinary consumers seeking, and business or funds requiring, Applicant’s Financial Services. 3. Does the Relevant Public Understand BUFFER ETF Primarily to Refer to the Genus of Services? Next, we consider whether the relevant public understands the term BUFFER ETF when used in connection with Applicant’s Financial Services. Applicant has disclaimed the exclusive right to use “ETF,” which is defined in the AMERICAN Serial No. 88307931 - 7 - HERITAGE DICTIONARY as the abbreviation for “exchange traded fund.”5 “Buffer” is defined in the same dictionary as “something that lessens or absorbs the shock of an impact,”6 and in the MERRIAM-WEBSTER DICTIONARY “buffer” is defined as “a means or device used as a cushion against the shock of fluctuations in business or financial activity.”7 Consistent therewith, the record includes financial industry webpages, articles, and documents from Applicant’s own website that use the term “buffer,” “buffered,” or “buffering” to describe a key aspect of an exchange traded fund that protects investments from a predetermined level of portfolio losses.8 As mentioned above, a key aspect, central focus or feature, or main characteristic of a service may be generic for that service. In re Cordua Rests., 118 USPQ2d at 1637-38 (CHURRASCOS held generic for restaurant services where term referred to a key aspect of a class of restaurants called “churrasco restaurants” that served churrasco steak). As to the relevant public’s understanding of the entire term, BUFFER ETF, the record shows the term used to describe exchange traded funds designed to protect investments from a predetermined level of portfolio losses. For example: 5 May 2, 2019 Office Action at 7. See also June 1, 2020 Request for Reconsideration After Final Action (“RFR”) at 24-30. 6 Id. at 6. 7 June 1, 2020 RFR at 13. 8 Id. at 8-10; evidence attached to Aug. 15, 2020 Letter of Protest Memorandum (“LOP”) at 2-13, 16-27; July 19, 2021 Final Office Action at 4-7; Nov. 12, 2019 Final Office Action at 7, 10-13; June 1, 2020 RFR at 31-41, 47-52; Applicant’s June 1, 2020 Specimen at 1-2; June 28, 2021 Response to Office Action at 8-10, 15-16. Serial No. 88307931 - 8 - • Wall Street Journal (wsj.com) (emphasis added):9 Buffer Funds Lure Investors Seeking Protection in Market Turmoil “Buffer” ETFs, which seek to protect investors against a set percentage of losses over a fixed period, have taken in about $1.9 billion so far this year, FactSet data show. * * * Investment advisers say buffer ETFs offer greater liquidity and lower fees than structured notes and are easier to use. • Investopedia (Investopedia.com) (emphasis added):10 Buffer ETFs, also known as defined-outcome ETFs, provide investors with a buffer against market losses in exchange for a cap on how much investors can profit on market gains, and they are seeing inflows even as other types of U.S. stock funds are suffering massive outflows, according to Barron’s. * * * Any investment in a buffer ETF that occurs after the tracked index moves away from its initial starting value at the beginning of the outcome period will have a different effective buffer and cap than what is advertised. * * * • Barron’s (Barrons.com) (emphasis added): “Buffer” ETFs Aren’t as Great as They Sound. What to Know. 11 9 LOP at 2-5. 10 Id. at 20-27. 11 Id. at 6. Serial No. 88307931 - 9 - First, these complicated funds require some explanation: Buffer ETFs don’t own actual stocks or bonds; instead they use options to track the performance of an index. * * * Buffer ETFs are also known as defined-outcome ETFs, since this protection is in place for a specified period of time. * * * But investors shouldn’t avoid losses at any cost-and the cost of buffer ETFs can be very high, both directly and indirectly. Buffer ETFs typically charge 0.8% annually, considerably more than the index funds whose performance they track. ETFs That Limit Your Losses-for a Price12 Buffer ETFs, also called defined-outcome ETFs, work like cheaper, more liquid versions of traditional structured products: They absorb a certain amount of market losses and, in exchange, limit the gains that investors can get on various indexes. * * * So, if the S&P returns 10%, investors who chose the 30% buffer ETF will forgo more than two percentage points of gain. * * * Buffer ETFs are a meaningful improvement on structured products, which are illiquid, expensive, and opaque… . * * * If the market rises sharply in an outcome period, using up a big chunk of the potential return under the cap, investors can reset the cap by switching to a newly issued buffer ETF at the beginning of the next month. 12 Nov. 12, 2019 Final Office Action at 11-13. Serial No. 88307931 - 10 - * * * But investors aren’t always rational. They’re tempted to flee when they become fearful. Buffer ETFs can help them stay invested, while tamping down their worst impulses. * * * The market for these products is poised to expand. In July, Innovator added buffer ETFs that track two foreign stock indexes … each with 15% protection. … And this month, two other buffer ETFs were introduced … with 15% buffers and caps of 10.78% and 11.1%, respectively. BUFFER ETF is generic if ordinary consumers and businesses understand the term BUFFER ETF to refer to a genus, or category, of services when the term is used in connection with Applicant’s Financial Services. In making this determination, we assess BUFFER ETF as a whole, taking into account the meaning of the terms that comprise it: “An inquiry into the public’s understanding of a mark requires consideration of the mark as a whole. Even if each of the constituent words in a combination mark is generic, the combination is not generic unless the entire formulation does not add any meaning to the otherwise generic mark.” In re Steelbuilding.com, [75 USPQ2d at 1421]; see In re Am. Fertility Soc’y, 188 F.3d 1341, 1347 [51 USPQ2d 1832, 1837] (Fed. Cir. 1999) (“[I]f the compound word would plainly have no different meaning from its constituent words, and dictionaries, or other evidentiary sources, establish the meaning of those words to be generic, then the compound word too has been proved generic. No additional proof of the genericness of the compound word is required.”). In re 1800Mattress.com, 92 USPQ2d at 1684. As previously discussed, “ETF” is the acronym for “exchange traded fund,” and one of the definitions of “buffer” is “a means or device used as a cushion against the Serial No. 88307931 - 11 - shock of fluctuations in business or financial activity.” The combination of the two terms does not reveal any additional or changed meaning: “BUFFER ETF” identifies a key aspect of Applicant’s Financial Services, specifically, exchange traded funds designed to protect, or buffer, financial investments from volatility resulting from portfolio fluctuations. See, e.g., In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1959 (TTAB 2018) (MECHANICALLY FLOOR-MALTED held generic for a mechanized process for producing floor malt). Competitors use the term “buffer ETF” to refer to their own exchange traded funds designed to mitigate risk and lower financial portfolio volatility. For example, First Trust Cboe Vest US offers a suite of “buffer ETFs,” including the “FT Cboe Vest U.S. Equity Deep Buffer ETF” and the “FT Cboe Vest U.S. Equity Buffer ETF - April.”13 (emphasis added) Other competitors use “buffer” or “buffered” to describe their exchange traded funds also designed to mitigate risk and lower portfolio volatility.14 Use by competitors in the field is strong evidence of genericness. See, e.g., Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1048 (Fed. Cir. 2018) (“zero” used by competitors generally for soft drinks, sport drinks, and energy drinks with zero or near zero calories); BellSouth Corp. v. DataNational Corp., 60 F.3d 1565, 35 USPQ2d 1554, 1558 (Fed. Cir. 1995) (“Walking Fingers” logo, used by many competing telephone companies and directory 13 LOP at 5, 16-19; July 29, 2021 Final Office Action at 7. 14 Allianz Investment Management LLC offers two Allianz IM Buffered Outcome ETFs, the “Allianz IM U.S. Large Cap Buffer10 Apr ETF” and the “Allianz IM U.S. Large Cap Buffer20 Apr ETF.” See id. at 6-8 (emphasis added). “10 Apr” and “20 Apr” refer to the specific ETF series. Serial No. 88307931 - 12 - publishers, found informational for Yellow Pages); In re Thunderbird Prods., 406 F.2d 1389, 160 USPQ 730, 732 (CCPA 1969) (“cathedral hull” used generally and by at least one competitor to describe specific type of boat hull). Cf. In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1144 (Fed. Cir. 1987) (genericness refusal of CASH MANAGEMENT ACCOUNT reversed where evidence “showed recognition in a substantial number of publications” that appellant was the source of the CASH MANAGEMENT ACCOUNT). While the record lacks evidence of use of the term by the relevant public, it does include evidence from The Wall Street Journal, Barron’s, Investopedia, competitors’ web sites, as well as Applicant (fact sheets and a prospectus) that describes the financial terms “ETF,” “buffer ETF,” “buffer,” “buffered,” and “buffering.” Accordingly, we find that individual and business investors - here, the relevant public - would read these types of finance and investing publications to understand that the term BUFFER ETF primarily refers to exchange traded funds designed to protect, or buffer, financial investments from a predetermined level of portfolio losses. See Princeton Vanguard, 114 USPQ2d at 1830 (Evidence of the relevant public’s understanding of a term may be obtained from “any competent source, such as consumer surveys, dictionaries, newspapers and other publications.”). Applicant contends BUFFER ETF is not generic because (i) “Applicant is the first to launch an actively managed ETF fund approved by the Securities and Exchange Serial No. 88307931 - 13 - Commission (SEC),”15 (ii) its “BUFFER ETF mark “has become a source-identifier of Applicant as recognized by highly sophisticated investors and third-parties in the industry,”16 and (iii) some competitors use terms other than BUFFER ETF to describe similar financial services.17 Although Applicant may have been the first to launch a “buffer ETF,”18 that fact is not dispositive as to whether a term is generic, particularly where, as here, the evidence demonstrates that competitors offer “buffer ETFs,” and that the term “buffer ETF” is widely used to identify a specific category of exchange traded fund. See KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 72 USPQ2d 1833, 1838 (2004) (trademark law does not countenance someone obtaining “a complete monopoly on use of a descriptive term simply by grabbing it first”) (citation omitted); In re Merrill Lynch, 4 USPQ2d at 1142 (“To allow trademark protection for generic terms, i.e., names which describe the genus of goods being sold, even when these have become identified with a first user, would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.”); In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016) (citing KP Permanent Make-Up, 72 USPQ2d at 1838). 15 Applicant’s Brief, 6 TTABVUE 11. 16 Id. 17 Id. at 7-8. 18 See LOP at 20-27 (Investopedia article); May 2, 2019 Office Action at 8 (Innovator S&P 500 Power Buffer ETF July series fact sheet); Nov. 12, 2019 Final Office Action at 11-13 (Barron’s article); June 1, 2020 specimen (Innovator S&P 500 Power Buffer ETF January series fact sheet). Serial No. 88307931 - 14 - The fact that highly sophisticated investors and third-parties in the industry may recognize BUFFER ETF as a source-identifier of Applicant is not persuasive, as highly sophisticated investors and third-parties in the industry are not the only relevant consumers. As previously discussed, the relevant public includes ordinary consumers seeking to purchase Applicant’s Financial Services. And since there can be more than one generic term for a particular genus of goods or services, we are also unpersuaded that BUFFER ETF is not generic simply because some competitors may use other terms to describe similar financial services. See In re Empire Tech. Dev. LLC, 123 USPQ2d 1544, 1551 (“It is well established that the availability of other words for competitors to use does not, by itself, transform a generic term into capable matter.”) (quoting In re Trek 2000 Int’l Ltd., 97 USPQ2d 1106, 1109 (TTAB 2010)). Any term that the relevant public understands to refer to the genus is generic. See In re 1800Mattress.com, 92 USPQ2d at 1685 (“We ... disagree with Dial-A-Mattress’s assertion that there can only be one generic term, which is ‘online mattress stores.’ Instead, any term that the relevant public understands to refer to the genus of ‘online retail store services in the field of mattresses, beds, and bedding’ is generic.”); Roselux Chem. Co. v. Parsons Ammonia Co., 299 F.2d 855, 132 USPQ 627, 632 (CCPA 1962) (“[I]n considering whether ‘sudsy ammonia’ is a common descriptive name of the product we cannot fail to take into consideration the class of people who will commonly be using it and what they will commonly call it.”); Serial No. 88307931 - 15 - Clairol, Inc. v. Roux Distrib. Co., 280 F.2d 863, 126 USPQ 397, 398 (CCPA 1960) (“The same merchandise may, and often does, have more than one generic name.”). We find the term BUFFER ETF to refer to a key aspect of the class of services, i.e., Applicant’s Financial Services, and to refer specifically to exchange traded funds that protect investments from a predetermined level of portfolio losses. Hence, BUFFER ETF is a generic term for such services. See In re Cordua Rests., 100 USPQ2d at 1231 (“Generally, where the matter sought to be registered identifies [services] that are a primary or central focus of the [business], we have considered the term to be generic.” (bracketed words in original)). Consequently, we affirm the refusal of registration of Applicant’s International Class 36 services on the ground of genericness. II. Is BUFFER ETF Merely Descriptive for the Recited Services? We also consider the Examining Attorney’s alternative refusal that BUFFER ETF is merely descriptive for Applicant’s Financial Services. Implicit in our holding above that BUFFER ETF is generic, based on the evidence of record, is our finding that BUFFER ETF is not only merely descriptive of Applicant’s identified services, but is highly descriptive of them under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 2(e)(1). “The generic name of a thing is in fact the ultimate in descriptiveness.” BellSouth, 35 USPQ2d at 1557 (quoting Marvin Ginn, 228 USPQ at 530); Weiss Noodle Co. v. Golden Cracknel and Specialty Co., 290 F.2d 845, 129 USPQ 411, 413 (CCPA 1961) (“The name of a thing is the ultimate in descriptiveness.”). See also In re Automated Mktg. Sys., Inc., 873 F.2d 1451, 11 USPQ2d 1319, 1320 Serial No. 88307931 - 16 - (Fed. Cir. 1989) (after finding SALES FOLLOW-UP for soliciting repeat and referral business for automobile dealership services generic, “the highly descriptive nature of ‘SALES FOLLOW-UP’ outweighed [applicant’s] evidence of acquired distinctiveness.”); In re Noon Hour Food Prods., Inc., 88 USPQ2d 1172, 1181-82 (TTAB 2008) (despite applicant’s claim of use in commerce for almost one hundred years, as well as an “inadvertently cancelled” seventy-year-old registration of BOND- OST for cheese, Board found that current evidence clearly showed BOND- OST generic for the goods, or alternatively, that applicant failed to establish acquired distinctiveness of the highly descriptive mark); In re Waverly Inc., 27 USPQ2d 1620, 1623 (TTAB 1993) (finding MEDICINE not generic, but a highly descriptive term that had acquired distinctiveness for medical journals). Nevertheless, Applicant contends BUFFER ETF is suggestive of its services, not merely descriptive: The “Buffer ETF” mark does not immediately or directly inform a prospective purchaser of any qualities or characteristics of the variety of financial services offered, such as asset management and investment and consulting services based on the definitions provided in in Exhibits A-C of June 1, 2020, Request for Reconsideration. Rather, Applicant’s “Buffer ETF” mark requires imagination, thought and perception given the multiple dictionary meanings, and thus, Applicant submits the mark is suggestive, and requests for approval on the Principal Register.19 For completeness, we, therefore, now determine whether BUFFER ETF is merely descriptive. 19 Applicant’s Brief, 6 TTABVUE 12. Serial No. 88307931 - 17 - In the absence of acquired distinctiveness, Section 2(e)(1) of the Trademark Act precludes registration of a mark on the Principal Register that, when used in connection with an applicant’s services, is merely descriptive of them. “A mark is merely descriptive if it immediately conveys information concerning a feature, quality, or characteristic of the goods or services for which registration is sought.” Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 128 USPQ2d 1370, 1373 (Fed. Cir. 2018) (quoting In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017)). We “must consider the mark as a whole and do so in the context of the goods or services at issue.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (emphasis added); see In re Calphalon Corp., 122 USPQ2d 1153, 1162 (TTAB 2017) (citing DuoProSS, 103 USPQ2d at 1757). “Whether consumers could guess what the product is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). “Rather, the question is whether someone who knows what the goods and services are will understand the mark to convey information about them.” DuoProSS, 103 USPQ2d at 1757 (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)). The evidence discussed in our analysis of whether BUFFER ETF is generic for Applicant’s Financial Services also confirms that BUFFER ETF is merely descriptive when used in connection with them. The evidence of third-party use plainly shows that “buffer ETF” has a normally understood and recognized descriptive meaning. See Specialty Brands, Inc. v. Coffee Bean Distrib., Inc., 748 F.2d 669, Serial No. 88307931 - 18 - 223 USPQ 1281, 1285 (Fed. Cir. 1984) (“third-party usage can demonstrate the ordinary dictionary meaning of a term or the meaning of a term to those in the trade”) (citing Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976)); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978) (“Evidence of the context in which a mark is used on labels, packages, or in advertising material directed to the goods is probative of the reaction of prospective purchasers to the mark.”). Cf. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015) (third-party use and registration of a term may be an indication that a term has a suggestive or descriptive connotation in a specific industry); Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ 1030, 1036 (TTAB 2016) (evidence of third-party use in the relevant context may show that a term “may have a normally understood and well- recognized descriptive or suggestive meaning”). We find that consumers use BUFFER ETF to describe a feature of Applicant’s Financial Services, specifically, exchange traded funds that protect investments from a predetermined level of portfolio losses. Therefore, BUFFER ETF is not only merely descriptive, but it is also highly descriptive of such services. III. Has BUFFER ETF Acquired Distinctiveness? In its June 1, 2020 Request for Reconsideration, Applicant claimed, in the alternative,20 that its mark had acquired distinctiveness “based on Applicant’s 20 June 1, 2020 RFR at 11. The Examining Attorney argues in his brief, incorrectly, that “applicant’s claim of acquired distinctiveness in the response is a concession that the mark sought to be registered is merely descriptive of applicant’s services.” 8 TTABVUE 13. Applicant made its claim of acquired distinctiveness in the alternative. “Unlike the situation Serial No. 88307931 - 19 - extensive use and promotion of the mark, and how consumers directly associate Applicant’s mark with Applicant as the source of those services.”21 Under Section 2(f) of the Trademark Act, matter that is merely descriptive under Section 2(e)(1) may nonetheless be registered on the Principal Register if it “has become distinctive of the applicant’s goods [or services] in commerce.” Therefore, if Applicant proves that the merely descriptive matter has acquired distinctiveness as used in commerce in connection with Applicant’s services, the proposed mark may be registered on the Principal Register. See Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1728-30 (Fed. Cir. 2012); Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1848 (TTAB 2017). Acquired distinctiveness, or “secondary meaning,” is generally understood as a “mental association in buyers’ minds between the alleged mark and a single source of the … [service].” Apollo Med. Extrusion Techs., 123 USPQ2d at 1848 (quoting 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 15:5 (4th ed., June 2017 Update)). We have considered all of the evidence regarding the public perception of BUFFER ETF in our genericness analysis in Part I, above. in which an applicant initially seeks registration under [Trademark Act] § 2(f) or amends its application without objection, the alternative claim does not constitute a concession that the matter sought to be registered is not inherently distinctive.” TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1212.02(c) (citing In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1713 (TTAB 2011); In re E S Robbins Corp., 30 USPQ2d 1540, 1542 (TTAB 1992); In re Prof’l Learning Ctrs., 230 USPQ 70, 71 n.2 (TTAB 1986)). 21 June 1, 2020 RFR at 11. Serial No. 88307931 - 20 - An applicant seeking registration of a mark under Section 2(f) bears the ultimate burden of establishing acquired distinctiveness. In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015). A. Degree of Descriptiveness of BUFFER ETF In our acquired distinctiveness analysis of BUFFER ETF, first we consider the degree of descriptiveness of that term as it is used in connection with Applicant’s Financial Services. “[T]he Board must make an express finding regarding the degree of the mark’s descriptiveness on the scale ranging from generic to merely descriptive, and it must explain how its assessment of the evidentiary record reflects that finding.” Royal Crown, 127 USPQ2d at 1048. “[A]pplicant’s burden of showing acquired distinctiveness increases with the level of descriptiveness; a more descriptive term requires more evidence of secondary meaning.” In re Steelbuilding.com, 75 USPQ2d at 1424. As the Board has explained: [T]he greater the degree of descriptiveness, the greater the evidentiary burden on the user to establish acquired distinctiveness. The sufficiency of the evidence offered to prove acquired distinctiveness should be evaluated in light of the nature of the designation. Highly descriptive terms, for example, are less likely to be perceived as trademarks and more likely to be useful to competing sellers than are less descriptive terms. More substantial evidence of acquired distinctiveness thus will ordinarily be required to establish that such terms truly function as source-indicators. In re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1085 (TTAB 2010) (internal citations omitted) (emphasis added); see also In re La. Fish Fry Prods., 116 USPQ2d at 1265 (Board has discretion not to accept an applicant’s allegation of five years of Serial No. 88307931 - 21 - substantially exclusive and continuous use as prima facie evidence of acquired distinctiveness when the proposed mark is “highly descriptive”); In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (“[C]onsidering the highly descriptive nature of the proposed mark, [Applicant] has not met its burden to show that the proposed mark has acquired secondary meaning.”). Based on the evidence previously discussed in connection with the Examining Attorney’s genericness refusal, we find each of the terms comprising Applicant’s mark, “buffer” and “ETF,” to be highly descriptive of Applicant’s Financial Services. When combined, the proposed mark BUFFER ETF is, at a minimum, highly descriptive of those services since nothing additional is created by the combination of the two terms. See, e.g., Real Foods, 128 USPQ2d at 1374 (CORN THINS and RICE THINS held highly descriptive for the respective goods; neither mark had acquired secondary meaning); In re La. Fish Fry Prods., 116 USPQ2d at 1265 (applicant failed to meet evidentiary burden of proof that FISH FRY PRODUCTS had acquired distinctiveness); Apollo Med. Extrusion Techs., 123 USPQ2d at 1851 (MEDICAL EXTRUSION TECHNOLOGIES is highly descriptive of “polyurethanes in the form of sheets, films, pellets, granules, and tubes for use in the manufacture of medical devices, medical diagnostic devices, artificial vascular grafts, stents, pacemaker leads, artificial heart pump diaphragms, catheters, drug delivery devices, orthopedic and spinal implants, blood glucose monitors, and blood gas analyzers”); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1173 (TTAB 2013) (SUPERJAWS is merely descriptive of tools). Serial No. 88307931 - 22 - Here, no thought or imagination is required to immediately understand that the services rendered under the mark BUFFER ETF are exchange traded funds designed to protect, or buffer, financial investments from predetermined levels of losses resulting from portfolio fluctuations. Accordingly, Applicant’s proposed mark, BUFFER ETF, is highly descriptive of Applicant’s Financial Services under Section 2(e)(1) of the Trademark Act. B. Acquired Distinctiveness Since we find the term BUFFER ETF to be highly descriptive of Applicant’s Financial Services, Applicant’s burden of establishing acquired distinctiveness under Section 2(f) is commensurately high. See In re Steelbuilding.com, 75 USPQ2d at 1424 (applicant’s burden of showing acquired distinctiveness increases with the level of descriptiveness; “a more descriptive term requires more evidence of secondary meaning”) (citing In re Bongrain Int’l (Am.) Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1729 (Fed. Cir. 1990)); In re LC Trademarks, Inc., 121 USPQ2d 1197, 1199 (TTAB 2016) (same); In re Greenliant Sys., 97 USPQ2d at 1085 (same). “To show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself.” In re Steelbuilding.com, 75 USPQ2d at 1422 (citing Qualitex Co. v. Jacobson Prods. Inc., 514 U.S. 159, 34 USPQ2d 1161, 1163 (1995)). Our ultimate Section 2(f) analysis and determination in this case is based on all of the evidence considered as a whole: Serial No. 88307931 - 23 - The considerations to be assessed in determining whether a mark has acquired secondary meaning can be described by the following six factors: (1) association of the trade[mark] with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark. … All six factors are to be weighed together in determining the existence of secondary meaning. In re SnoWizard, Inc., 129 USPQ2d 1001, 1005 (TTAB 2018) (quoting Converse, Inc. v. Int’l Trade Comm’n, 909 F.3d 1110, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018)). See also In re Steelbuilding.com, 75 USPQ2d at 1424; Cicena Ltd. v. Columbia Telecomms. Grp., 900 F.2d 1546, 14 USPQ2d 1401, 1406 (Fed. Cir. 1990). No single factor is determinative; “[t]he amount and character of evidence required to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered.” In re Tires, Tires, Tires Inc., 94 USPQ2d 1153, 1157 (TTAB 2009) (citations omitted); see also Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988) (weight of evidence required under an acquired distinctiveness inquiry varies; exact kind and amount of evidence depends on the circumstances of the particular case). Applicant claims BUFFER ETF has acquired distinctiveness, emphasizing Applicant’s “extensive” use and promotion of the mark and consumers’ identification Serial No. 88307931 - 24 - of Applicant as the source of the services offered under BUFFER ETF,22 but the record does not support Applicant’s claim. The record lacks declarations, evidence of intentional copying, or any advertising, sales, or customer data. Applicant did include in the record one of its press releases discussing Applicant as the “pioneer” of BUFFER ETF funds,23 two of its press releases discussing the financial industry awards Applicant won for its BUFFER ETF funds,24 and a prospectus for one of its BUFFER ETF funds.25 Such evidence, however, does not comprise the amount or character of acquired distinctiveness necessary for us to find that Applicant has met its burden of persuasion. Furthermore, competitors in the field use the term “buffer ETF” to describe their own financial services,26 and the unsolicited media coverage of record focuses on “buffer ETFs” generally, and not necessarily on Applicant’s BUFFER ETF service.27 Thus, considering the record in its entirety and the highly descriptive nature of the term, we find overall that BUFFER ETF has not acquired distinctiveness for Applicant’s Financial Services. 22 Applicant has yet to use BUFFER ETF for five years. Applicant claimed a date of first use in commerce or anywhere since at least as early as August 28, 2018. 23 June 1, 2020 RFR at 31-37. 24 Id. at 47-50. 25 Id. at 51-52. 26 See supra pp. 11-12 (discussing similar financial services offered by First Trust Cboe Vest US and Allianz Investment Management LLC). 27 See supra pp. 7-9 (discussing articles from The Wall Street Journal, Investopedia, and Barron’s. The Investopedia article focuses on Applicant’s BUFFER ETF service because it was the only “buffer ETF” service on the market at the time the article was written. (LOP at 20-27)). Serial No. 88307931 - 25 - Decision: The refusal to register the term BUFFER ETF on the ground that it is generic is affirmed.28 The alternative refusal to register BUFFER ETF on the ground that it is merely descriptive and has not acquired distinctiveness also is affirmed. 28 As a result, BUFFER ETF does not qualify for registration on the Supplemental Registration either because it is incapable of indicating the source of Applicant’s services. See In re Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1089 (TTAB 2017) (“In order to qualify for registration on the Supplemental Register, a proposed mark ‘must be capable of distinguishing the applicant’s goods or services.’” (quoting Trademark Act Section 23(c), 15 U.S.C. § 1091(c)).