On-Site Trading, Inc.

Trademark Trial and Appeal Board

Dec 22, 2000

No. 75507347 (T.T.A.B. Dec. 22, 2000)

12/22/00 Paper No. 12
TLW
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re On-Site Trading, Inc.
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Serial No. 75/507,347
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Kevin P. Crosby of Brinkley, Mcnerney, Morgan, Solomon &
Tatum, LLP for On-Site Trading, Inc.
Kenneth Battle, Trademark Examining Attorney,
Law Office 111 (Craig Taylor, Managing Attorney)
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Before Simms, Seeherman and Bottorff, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:
On-Site Trading, Inc. (applicant), a New York
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark ON-SITE
TRADER for “providing access to a computer network on which
securities transactions can be carried out by consumers.” 1
The Examining Attorney has refused registration under
Section 2(e)(1) Of the Act, 15 USC §1052(e)(1), on the
1 Application Serial Number 75/507,347, filed June 23, 1998,
based upon applicant’s bona fide intention to use the mark in
commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/507,347
2
basis that applicant’s mark is merely descriptive of its
services. Applicant and the Examining Attorney filed
briefs but no oral hearing was requested.2
We affirm.
The Examining Attorney argues that applicant’s mark,
considered in connection with applicant’s services, is
merely descriptive because no imagination is needed to
understand the nature of applicant’s services. In this
regard, the Examining Attorney argues that applicant
provides remote “on-site trading” which is accessible to
traders and that, therefore, the mark ON-SITE TRADER is
merely descriptive of applicant’s services. The Examining
Attorney has made of record definitions of the words “on-
site” and “trader.”3 The Examining Attorney has also made
of record material from the Internet as well as the results
of a search conducted on the Nexis computer database.
While many of the references to “on-site trading” refer to
applicant, the following additional references are
noteworthy:
2 To its brief applicant has attached, for the first time, a specimen of
use of its asserted mark on a piece of promotional literature. We have
given no consideration to this piece of evidence. See Trademark Rule
2.142(d).
3 “On-site” is defined in The American Heritage Dictionary of the
English Language (3rd ed.) as “done or located at the site, as of
a particular activity: an on-site filming.” The word “trader” is
defined as “one that trades; a dealer…”
Ser. No. 75/507,347
3
Q: Do you think a suitability guideline
is needed for the most aggressive day
traders, those who go to on-site trading firms?
Los Angeles Times, May 11, 1999
* * * * *
On-site trading, more commonly called day
trading, began to take hold in the past two
years as shops have spun up to ---
On-site trading makes up about 15 percent
of the Nasdaq National Market’s daily volume,
according to the association…
The association acknowledges that on-site
trading isn’t for everyone.
The Palm Beach Post, May 10, 1999
* * * * *
…Firstrade wants to migrate its customers
to the Internet because on-site trading
requires more resources and space and the
firm wants to streamline operations…
Financial Net News, April 5, 1999
* * * * *
…Thomas Marsico, chief executive officer
of Marsico Capital Management, an asset
management firm. A state-of-the-art,
on-site trading room is now being built in
the Hill Herald business school that
ultimately will house the activity.
Chapel Hill Herald, October 16, 1998
* * * * *
The NASD Regulation reorganized its
division of market regulation in order to
increase the focus on its on-site trading
and market maker surveillance program (TMMS)…
Compliance Reporter, July 20, 1999
* * * * *
Greenberg said both the Shaw and Security
APL services will continue to be used for
accounting as Nicholas-Applegate acclimates
itself to the new on-site trading system,
which should be live in six-to-eight weeks…
Operations Management, February 26, 1996
* * * * *
Besides the due diligence library,
Berry-Shino offers a full range of brokerage
services, including on-site trading, portfolio
management and investment banking…
Arizona Business Gazette, October 26, 1995
Ser. No. 75/507,347
4
* * * * *
…Swiss American Securities, Inc., which
occupies 67,000 square feet, kept its on-site
trading desks in full operation until power was
restored by ConEd on Dec. 17.
Real Estate Weekly, February 24, 1993
* * * * *
Applicant, on the other hand, maintains that its mark
is suggestive because some imagination is required to
determine the nature of its services. In support of this
contention, applicant makes the following arguments: that
consumers do not know from applicant’s mark what
specifically is being traded; that “on-site” implies the
existence of a physical location where the activity of
trading is carried out but that applicant’s activity is
conducted remotely via a computer network and occurs “off-
site” rather than “on-site” at an office. Since
applicant’s services may be rendered at whatever location a
computer terminal is located, applicant maintains that its
asserted mark is an incongruous expression. That is to
say, a consumer using applicant’s services may conduct
securities transactions anywhere he or she has access to
the World Wide Web. Applicant maintains that the Nexis
references referring to “on-site trading” do not present
the incongruous use of applicant’s mark for its services.
Aside from noting that thirteen Nexis references refer to
applicant, applicant also notes that the references are to
Ser. No. 75/507,347
5
“on-site trading” rather than “on-site trader.”4 Because
the Nexis material does not refer to trading at a remote
location, applicant maintains that the evidence does not
support the refusal. Finally, applicant asks that we
resolve any doubts in its favor.
It is well settled that a term is considered to be
merely descriptive of goods and/or services, within the
meaning of Section 2(e)(1) of the Trademark Act, if it
immediately describes an ingredient, quality,
characteristic or feature thereof or if it directly conveys
information regarding the nature, function, purpose or use
of the goods and/or services. In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It
is not necessary that a term describe all of the properties
or functions of the goods and/or services in order for it
to be considered to be merely descriptive thereof; rather,
it is sufficient if the term describes a significant
attribute or feature about them. Moreover, whether a term
is merely descriptive is determined not in the abstract,
but in relation to the goods and/or services for which
registration is sought, the context in which it is being
4 Applicant also correctly states that some of the uses noted by
the Examining Attorney, omitted from the excerpts quoted in this
opinion, use the term “on-site trading” in different contexts
unrelated to the securities field. Other references, also
omitted, contain “noise words” and are irrelevant.
Ser. No. 75/507,347
6
used on or in connection with those goods and/or services,
and the possible significance that the term would have to
the average purchaser of the goods and/or services because
of the manner of its use. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979). Accordingly, whether consumers
could guess what the product [and/or service] is from
consideration of the mark alone is not the test. In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Marks are also merely descriptive if they describe the
type of purchasers or users of particular goods or
services. See, for example, In re Camel Manufacturing
Company, Inc., 222 USPQ 1031 (TTAB 1984)(MOUNTAIN CAMPER)
and In re Hunter Publishing Company, 204 USPQ 957 (TTAB
1979)(JOBBER AND WAREHOUSE EXECUTIVE).
From the printout of record of applicant’s Web site,
it is clear that one may use applicant’s services by
contacting applicant from a personal computer via the
Internet.
Until recently, active stock traders needed
to trade out of a professional trading firm to
get the benefits of dynamic, real-time stock
trading. Now, from any location, remote
traders can compete with other professional
traders. You will have electronic access to
dynamic real-time quotes, charts, the Dow Jones
News Service, and executions to provide you the
trading edge you want and need. This access
is essential for getting better executions.
Ser. No. 75/507,347
7
From another exhibit, made of record by the Examining
Attorney, applicant is described as follows:
Formed in 1994, On-Site Trading, Inc. is
a leading provider of stock trading services
targeted to both the on-premises and remote
trader. Our main trading floors in Great Neck,
New York are home to our proprietary traders. In
addition, we have over 300 traders in 8 branch
offices, as well as remote traders around the
country. Our business caters to active,
professional traders.
It is clear that applicant appears to offer both on-
premises and remote trading services. Also, and more
importantly, applicant’s description of services is not
limited to remote access computer services. That is to
say, as currently described, applicant’s services are
simply the providing of access to a computer network on
which securities transactions can be carried out by
consumers. Because this description is broad enough to
include on-premises securities trading, and because we must
consider applicant’s mark in relation to the services set
forth in its application and not the specific services in
connection with which it either actually uses or intends to
use the mark, applicant’s mark must be considered merely
descriptive. The mark ON-SITE TRADER merely describes the
Ser. No. 75/507,347
8
user of applicant’s computer services provided at a
particular location (on-premises).5
We note that applicant has, in its brief, offered the
alternative request for registration on the Supplemental
Register in the event that the Board finds that applicant’s
mark is not registrable on the Principal Register.6 Because
applicant raised this alternative request for the first
time in its appeal brief, we have no examination of the
merits of this alternative request. See TMEP §1212.02(c).
Moreover, applicant has not submitted an amendment to the
Supplemental Register and the required amendment to allege
use. Accordingly, this request is denied.
Decision: The refusal of registration is affirmed.
5 We make no finding as to whether the mark would be merely
descriptive if applicant’s description of services were limited
to the provision of computer services at off-premises locations,
such that one could only use applicant’s services from any
location where one could access the World Wide Web. In such a
situation, applicant’s argument about the incongruous nature of
its mark may have more persuasive weight.
6 Applicant has also offered to disclaim the word “TRADER” apart
from the mark. Because we find that applicant’s entire mark is
merely descriptive, this offer to disclaim is not appropriate.