Financial Engines, Inc.

Trademark Trial and Appeal Board

May 11, 2001

No. 75461553 (T.T.A.B. May. 11, 2001)

5/11/01
Paper No. 12
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Financial Engines, Inc.
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Serial No. 75/461,553
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Lori M. Stockton of Blakely, Sokoloff, Taylor & Zafman for
Financial Engines, Inc.
Christine M. Baker, Trademark Examining Attorney, Law
Office 106 (Mary I. Sparrow, Managing Attorney).
_______
Before Hanak, Chapman and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On April 2, 1998, Financial Engines, Inc. (applicant)
filed Trademark Application Serial No. 75/461,553 seeking
registration of the mark FORECAST ENGINE (typed drawing)
for goods ultimately identified as “computer software for
financial planning, investment analysis, portfolio
allocation and eliciting recommendations for selecting
specific financial instruments” in International Class 9.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/461,553
2
The application is based on applicant’s assertion of a bona
fide intent to use the mark in commerce.
The Examining Attorney refused to register the mark on
the ground that the mark when applied to the services is
merely descriptive. 15 U.S.C. § 1052(e)(1). After the
refusal was made final, this appeal followed. Applicant
and the Examining Attorney have filed briefs. An oral
hearing was not requested.
The Examining Attorney argues that “the proposed mark
immediately identifies the nature of applicant’s goods,
namely, computer software (i.e., an engine) that has
forecasting capabilities, specifically, the ability to
calculate and estimate financial data and figures on a
repetitive basis.” To support her refusal, the Examining
Attorney provides definitions for the words “forecast” and
“engines.”1
First, the term “forecast” is defined as “the
extrapolation of the past into the future. Usually an
objective computation involving data, as opposed to a
prediction, which is a subjective estimate incorporating
1 We take judicial notice of both the Examining Attorney’s and
applicant’s dictionary definitions submitted with their briefs as
well as our own added definition. University of Notre Dame du
Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB
1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 75/461,553
3
the manager’s anticipation of changes and new influencing
factors.” Webster’s New World of Computer Terms (4th ed.),
166. The Examining Attorney also included a definition of
“forecast” as “to estimate or calculate in advance.”
Webster’s II New College Dictionary (1995).
Similarly, the Examining Attorney made of record two
definitions of the term “engine.” The first defined
“engine” as “[t]he portion of a program that determines how
the program manages and manipulates data.” Webster’s New
World of Computer Terms (4th ed.), 144. The other defines
the term as “software that performs a primary and highly
repetitive function such as a database engine, graphics
engine or dictionary engine.” Freedman, The Computer
Glossary, (8th Ed. 1998), 140.
Based on these definitions, the Examining Attorney
concludes that the mark FORECAST ENGINE for computer
software for financial planning, investment analysis,
portfolio allocation and eliciting recommendations for
selecting specific financial instruments is merely
descriptive of the goods.2
2 At this point, while the marks are identical and the goods and
services similar, we note that the record in this case is very
different from the related case (Serial No. 75/451,194) that we
also decide today. The related case involved a mark that was in
use in commerce with specimens of use and evidence that included
applicant’s press release and LEXIS/NEXIS articles. We note that
the Examining Attorney in the instant case attempted to put in
Ser. No. 75/461,553
4
In its brief, applicant argues that the term FORECAST
ENGINE is not merely descriptive of its product and that
the term “FORECAST ENGINE is a coined term, a fanciful
combination that evokes a distinctive impression.” Brief
at 3. Applicant also argues that the Examining Attorney
“makes a mental leap from the individual definitions to an
alleged ‘clear’ meaning to the average purchaser.” Br. at
4. Its reply brief, applicant argues that the term is
incongruous and that:
Applicant’s use of “FORECAST ENGINE” may be viewed as
suggesting the power of Applicant’s software in
helping users to plan and take charge of their
financial future. The common dictionary definition of
‘engine’ supports this view:
* * *
b. A mechanical appliance, instrument, or tool:
engines of war
2. A locomotive.
Reply Br. at 3.
A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics of
the goods or if it conveys information regarding a
function, purpose, or use of the goods. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA
similar evidence after the notice of appeal was filed but her
request for a remand was denied in an order of the Board dated
September 19, 2000.
Ser. No. 75/461,553
5
1978). A term may be descriptive even if it only describes
one of the qualities or properties of the goods. In re
Gyulay, 820 F.2d 1216, 1217, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987). We look at the mark in relation to the goods or
services, and not in the abstract, when we consider whether
the mark is descriptive. Abcor, 588 F.2d at 814, 200 USPQ
at 218.
Here, we must decide if potential customers when they
encounter the term FORECAST ENGINE for software for
financial planning, investment analysis and portfolio
allocation will immediately understand that the term
describes a quality or characteristic of the software,
and/or that it conveys information regarding a function,
purpose, or use of the software.
We start by rejecting two of the arguments that
applicant makes in support of its position that the
Examining Attorney erred in refusing to register
applicant’s mark. First, we reject applicant’s argument
that the definition of “engine” as a locomotive or
mechanical appliance suggests the power of applicant’s
software and somehow demonstrates that the term is not
merely descriptive. We have no reason to believe that
“engine” would not be given its accepted computer meaning
when the term is used in connection with computer software.
Ser. No. 75/461,553
6
Second, we find nothing incongruous about the use of
the term FORECAST ENGINE on financial planning software.
The key to determining whether a term is merely descriptive
is to view the mark in relation to the goods and/or
services, not in the abstract. An engine refers to a type
of software and forecasting includes estimating or
calculating in advance. An engine would be expected to be
used in making forecasts or calculations about the future
because it would involve the repetitive function of
calculating different scenarios. Financial planning, by
definition, involves making calculations or forecasts about
the future, otherwise it would not be planning. Investing
means “to utilize for future benefit or advantage.”
Webster’s II New Riverside University Dictionary (1984),
641. It is not incongruous to use the terms “forecast” and
“engine” in these circumstances. Thus, the only question
is whether applicant’s mark is suggestive of its goods or
merely descriptive.
We admit that this is a much closer case than
applicant’s related case, which we decide contemporaneously
today. We do not have the evidence of applicant’s use and
other evidence that was in that case, and we have not
considered that evidence in reaching the result here. We
must decide if a prospective purchaser of financial
Ser. No. 75/461,553
7
planning software that makes recommendations for selecting
financial instruments, upon seeing the term FORECAST
ENGINE, would immediately understand that the term
describes a feature, function or characteristic of the
software.
From the dictionary definition of “engine,” a
potential purchaser would understand that, unless the word
was used inaccurately, the software performs a primary or
highly repetitive function such as a database engine,
graphics engine or a dictionary engine. Applicant argues
that: “Financial planning, investment analysis, portfolio
allocation and eliciting recommendations for specific
financial instruments . . . are, by their very nature,
individually tailored, and are not ‘primary and highly
repetitive functions.’” Reply Br. at 2. While that is
true of the ultimate recommendation, the underlying
economic analysis to arrive at that recommendation would
involve the highly repetitive number crunching analysis for
which computers are famous. This function is the type of
function that would be performed by a software engine.
A desirable feature of software, as described in
applicant’s identification of goods, would be the inclusion
of a feature which forecasts investments based on economic
variables that the individual or the individual’s
Ser. No. 75/461,553
8
investment advisor inputs into a computer program. Even
the computer’s ability to demonstrate potential investment
scenarios based on forecasts of long-term economic
conditions would be a highly desirable feature of the
software. Indeed, if financial planning software did not
contain a feature that made forecasts using a software
engine, there would be a question of whether the term is
deceptively misdescriptive of the goods.
We are cognizant of the prohibition against dissecting
a mark and finding it descriptive based on its individual
components. We must view the mark as a whole. At the same
time, a mark is not merely descriptive simply because the
Examining Attorney did not produce evidence showing use of
the exact term. See In re American Society of Clinical
Pathologists, Inc., 442 F.2d 1404, 169 USPQ 800, 801 (CCPA
1973). The question is whether the mark as a whole is
merely descriptive because a combined term can have a non-
descriptive meaning that the individual descriptive terms
lack. See In re Colonial Stores, 394 F.2d 549, 157 USPQ
382 (CCPA 1968) (phrase SUGAR & SPICE from nursery rhyme
not merely descriptive for bakery products). Here, we are
unaware of any non-descriptive meaning that the term
FORECAST ENGINE has, and its combined meaning is exactly
what one would expect based on the words’ individual
Ser. No. 75/461,553
9
meanings.3 When the terms are combined and used on software
for financial planning, investment analysis, portfolio
allocation and eliciting recommendations for selecting
specific financial instruments, we see no ambiguity. The
term would tell prospective purchasers that the program
contains an engine that calculates or forecasts financial
projections to assist the purchaser in making investment
decisions.
Decision: The refusal to register on the ground that
the mark FORECAST ENGINE is merely descriptive of the
involved goods is affirmed.
3 In its Reply Brief (p. 5), applicant refers to a registration
and several applications it owns. It identifies the mark in the
registration as FINANCIAL ENGINES, the mark in one pending
application as FINANCIAL ENGINES INVESTMENT ADVISOR, and the
marks in the other pending applications as FORECAST ENGINES. The
printout to which applicant refers was not attached to its brief.
However, applicant has asked the Board to take judicial notice of
these facts. The Board does not take judicial notice of
applications or registrations. In re Duofold, Inc., 184 USPQ
638, 640 (TTAB 1974). This is particularly important in a case
such as this where this information was submitted after the
Examining Attorney’s brief and, thus, after any opportunity for
her to object. We note that the relevance of this evidence is
questionable. See In re Nett Designs, 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001) (“Even if some registrations had some
characteristics similar to Nett Designs’ application, the PTO’s
allowance of such prior registrations does not bind the Board or
this court”).