Hall Financial Services, Inc. AKA adviceonly.info & marinplans.com

Trademark Trial and Appeal Board

Jul 19, 2021

88771624 (T.T.A.B. Jul. 19, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 19, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Hall Financial Services, Inc.
_____

Serial No. 88771624
_____

Charles L. Thoeming of Ascendant Legal Services/Ascendant IP for Hall Financial
Services, Inc.

K. Margaret Le, Trademark Examining Attorney, Law Office 118,
Michael W. Baird, Managing Attorney.
_____

Before Kuhlke, Cataldo and English,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Applicant, Hall Financial Services, Inc., seeks registration on the Principal
Register of the proposed standard character mark ADVICE-ONLY (in standard
characters), identifying “Financial planning and investment advisory services,” in
International Class 36.1

1 Application Serial No. 88771624 was filed on January 23, 2020 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s allegation of June 1, 2018 as a date
of first use anywhere and March 1, 2019 as a date of first use of the mark in commerce.
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The Trademark Examining Attorney has refused registration of Applicant’s
proposed mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on
the ground that the proposed mark is merely descriptive of the services identified in
the application.
When the Examining Attorney made the refusal final, Applicant appealed and
requested reconsideration, which was denied.2 Applicant and the Examining
Attorney have filed briefs.3 We affirm the refusal to register.
I. Issue on Appeal
The sole issue on appeal is whether the proposed ADVICE-ONLY mark merely
describes a function, feature or characteristic of the identified services under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1).
In her April 15, 2020 first Office Action, the Examining Attorney included
advisory language noting that the applied-for ADVICE-ONLY designation “may be
generic.”4 In her June 15, 2020 final Office Action, the Examining Attorney included
a “Generic advisory”5 indicating that inasmuch as ADVICE-ONLY appears to be
generic, she “cannot recommend that applicant amend the application to proceed

2 Citations in this opinion to the application record, including the request for reconsideration
and its denial, are to the .pdf version of the USPTO’s Trademark Status & Document
Retrieval (TSDR) system pages in the Trademark Status & Document Retrieval (“TSDR”)
database of the United States Patent and Trademark Office (“USPTO”).
3 Citations in this opinion to the briefs refer to TTABVUE, the Board’s online docketing
system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the
number preceding TTABVUE corresponds to the docket entry number, and any numbers
following TTABVUE refer to the page number(s) of the docket entry where the cited materials
appear.
4 At 3.
5 At 4.
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under Trademark Act Section 2(f) or on the Supplemental Register as possible
response options to this refusal.”6 Applicant has not amended its application to assert
a claim of acquired distinctiveness under Section 2(f), 15 U.S.C. § 1052(f). Nor has
Applicant amended its application to seek registration on the Supplemental Register.
The questions of whether Applicant’s proposed ADVICE-ONLY mark has
acquired distinctiveness under Section 2(f) or is generic, are not before us.
Accordingly, we construe Applicant’s arguments in its briefs directed toward
genericness as amplifying its arguments directed toward the refusal of registration
based upon mere descriptiveness.
II. Analysis of Refusal
Section 2(e)(1) of the Trademark Act prohibits registration on the Principal
Register of “a mark which, (1) when used on or in connection with the goods [or
services] of the applicant is merely descriptive . . . of them.”
“A mark is ‘merely descriptive’ within the meaning of Section 2(e)(1) ‘if it
immediately conveys information concerning a feature, quality, or characteristic of
the goods or services for which registration is sought.’” In re Omniome, Inc., 2020
USPQ2d 3222, *3 (TTAB 2020) (quoting In re N.C. Lottery, 866 F.3d 1363, 123
USPQ2d 1707, 1709 (Fed. Cir. 2017)). To be merely descriptive, a mark must
forthwith convey such information with a “degree of particularity.” Goodyear Tire &
Rubber Co. v. Cont’l Gen. Tire, Inc., 70 USPQ2d 1067, 1069 (TTAB 2008) (citing In re
TMS Corp. of the Ams., 200 USPQ 57, 59 (TTAB 1978) and In re Entenmann’s, Inc.,

6 Id.
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15 USPQ 2d 1750, 1751 (TTAB 1990), aff’d, 90-1495 (Fed. Cir. Feb. 13, 1991)). “A
mark need not recite each feature of the relevant goods or services in detail to be
descriptive, it need only describe a single feature or attribute.” Omniome, 2020
USPQ2d 3222 at *3 (quoting In re Chamber of Commerce of the U.S., 675 F.3d 1297,
102 USPQ2d 1217, 1219 (Fed. Cir. 2012)).
The descriptiveness of a mark must be determined by the goods or services
identified in the application. See Octocom Sys. Inc. v. Hous. Comput. Servs. Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787-88 (Fed. Cir. 1990); In re Vehicle Identification
Network, Inc., 32 USPQ2d 1542 (TTAB 1994). Whether a mark is merely descriptive
is “evaluated ‘in relation to the particular goods [or services] for which registration is
sought, the context in which it is being used, and the possible significance that the
term would have to the average purchaser of the goods [or services] because of the
manner of its use or intended use,’” Chamber of Commerce, 102 USPQ2d at 1219
(quoting In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)),7 and
“not in the abstract or on the basis of guesswork.” In re Fat Boys Water Sports LLC,
118 USPQ2d 1511, 1513 (TTAB 2016) (citing In re Abcor Dev. Corp., 588 F.2d 811,
200 USPQ 215, 218 (CCPA 1978)).
We ask “whether someone who knows what the goods and services are will
understand the mark to convey information about them.” Real Foods Pty Ltd. v. Frito-
Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1374 (Fed. Cir. 2018) (quoting

7 Registration may be refused if the proposed mark is merely descriptive of either of the
services in the same Class identified in the application. In re Stereotaxis, Inc., 429 F.3d 1039,
77 USPQ2d 1087, 1089 (Fed. Cir. 2005).
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DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d
1753, 1757 (Fed. Cir. 2012) (internal quotation omitted)). A mark is suggestive rather
than merely descriptive if it requires imagination, thought, and perception on the
part of someone who knows what the goods or services are to reach a conclusion about
their nature from the mark. See, e.g., Fat Boys, 118 USPQ2d at 1515.
Applicant’s proposed mark consists of two words, ADVICE-ONLY. We “must
consider the commercial impression of a mark as a whole.” Real Foods, 128 USPQ2d
at 1374 (quoting DuoProSS, 103 USPQ2d at 1757 (citation omitted)). “In considering
[a] mark as a whole, [we] ‘may not dissect the mark into isolated elements,’ without
‘consider[ing] . . . the entire mark,’” id. (quoting DuoProSS, 103 USPQ2d at 1757),
but we “may weigh the individual components of the mark to determine the overall
impression or the descriptiveness of the mark and its various components.” Id.
(quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed.
Cir. 2004)). Indeed, we are “required to examine the meaning of each component
individually, and then determine whether the mark as a whole is merely descriptive.”
DuoProSS, 103 USPQ2d at 1758.
If the two words in the proposed mark are individually descriptive of the identified
services, we must then determine whether their combination “conveys any distinctive
source-identifying impression contrary to the descriptiveness of the individual parts.”
Fat Boys, 118 USPQ2d at 1515-16 (quoting Oppedahl & Larson, 71 USPQ2d at 1372).
If each word instead “retains its merely descriptive significance in relation to the
goods, the combination results in a composite that is itself merely descriptive.” Id. at
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1516 (citing In re Tower Tech., Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002)); see also
In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1953-55 (TTAB 2018).
“Evidence of the public’s understanding of [a] term . . . may be obtained from any
competent source, such as purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers and other publications.” Real Foods, 128
USPQ2d at 1374 (quoting Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127
USPQ2d 1041, 1046 (Fed. Cir. 2018)). “These sources may include [w]ebsites,
publications and use ‘in labels, packages, or in advertising material directed to the
goods.’” N.C. Lottery, 123 USPQ2d at 1710 (quoting Abcor Dev., 200 USPQ at 218).
“It is the Examining Attorney’s burden to show, prima facie, that a mark is merely
descriptive of an applicant’s goods or services.” Fat Boys, 118 USPQ2d at 1513 (citing
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987)). “If such a
showing is made, the burden of rebuttal shifts to the applicant.” Id. (citing In re Pacer
Tech., 338 F.3d 1348, 67 USPQ2d 1629, 1632 (Fed. Cir. 2003)). “The Board resolves
doubts as to the mere descriptiveness of a mark in favor of the applicant.” Id. (citing
In re Stroh Brewery Co., 34 USPQ2d 1796, 1797 (TTAB 1994)).
III. Arguments and Evidence
In support of the refusal of registration, the Examining Attorney introduced into
the record dictionary definitions reflecting the common usage of the terms comprising
the mark. The evidence shows that the term “advice” is defined as: 8

8 April 13, 2020 first Office Action at 36, MERRIAM-WEBSTER DICTIONARY, merriam-
webster.com.
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Recommendation regarding a decision or course of conduct: COUNSEL;
Information or notice given –usually used in plural;
An official notice concerning a business transaction.
The dictionary definitions of record for “only” define the word, inter alia, as follows:9
Alone in a class or category: SOLE;
As a single fact or instance and nothing more or different: MERELY,
SOLELY, EXCLUSIVELY.
Based upon these definitions, ADVICE-ONLY may be defined as solely or
exclusively providing counsel or recommendations regarding a course of conduct. In
relation to Applicant’s services, ADVICE-ONLY is defined as solely or exclusively
providing counsel or recommendations regarding financial planning and investment.
“So long as any one of the meanings of a word is descriptive, the word may be merely
descriptive.” In re IP Carrier Consulting Grp., 84 USPQ2d 1028, 1034 (TTAB 2007).
The Examining Attorney also relies upon the following language from the website
pages comprising Applicant’s specimen of use:
 Advice-Only
Advice-Only is our unique methodology that all financial education and the
development of a comprehensive financial plan should never include the
discussion or suggestion of any new companies or products until the entire
process is complete. It is the fundamental belief that, for a client, a sound
financial strategy must always be isolated from any product or company bias
and that advice is only ever trustworthy if there is zero discussion, suggestion
or correlation of new companies or products injected into the process by the
advisor. The advisor’s pay must not be connected or suggested it could be
connected to any possible product sale. Payment for advice-only services is the

9 April 15, 2020 first Office Action at 42-43, MERRIAM-WEBSTER DICTIONARY, merriam-
webster.com.
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same way one pays a CPA or attorney – an invoice for the services rendered
from a licensed fiduciary.

 We Offer
Advice-Only
There are many ways to pay a financial advisor, Advice-Only is the same way
you pay your CPA or attorney – billed simply for the advice and service.10

Applicant uses the term ADVICE-ONLY on its webpage to describe a feature of
its financial planning and investment advisory services, namely, that financial
planners providing “advice-only” investment advice that is not connected to any sale
of a financial product by the advisor. ADVICE-ONLY further describes a second
feature of Applicant’s services, namely, that clients provide payment “for advice-only
services” for investment advice provided in the same manner as a CPA or attorney.
This evidence demonstrates that Applicant itself uses ADVICE-ONLY to describe one
or more aspects of its services. The Federal Circuit has held that an applicant’s own
website and marketing material may provide “the most damaging evidence”
regarding the manner in which the relevant public perceives a term. See In re Mecca
Grade Growers, LLC, 125 USPQ2d 1950, 1957 (TTAB 2018) (citing Princeton
Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1831 (Fed.
Cir. 2015); see also In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112
(Fed. Cir. 1987)).

10 Applicant’s specimen of use, webpages from AdviceOnly.info.
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The Examining Attorney further introduced evidence from the following third-
party websites that utilize the term “advice-only” to describe financial planning and
investment advisory services.11
 FiPhysican.com explains that “advice-only” financial planning stresses
providing financial advice as its central purpose as opposed to asset
management.12

 WhiteCoatInvestor.com explains that “advice-only” financial planners act as a
fiduciary for the client and do not sell financial products that pay the advisor
a commission or manage client assets. It also refers to these advisors as a
specific subset of financial advisors: “advice only advisors.”13

 AARP.org states that a “consultation with a pay-as-you-go (or advice-only)
planner is like a visit to a family doctor. You can ask about specific
concerns....” “Most pros earn their living from commissions..., so finding one
who will take on an advice-only job or who works pay-as-you-go exclusively
can be a challenge.”14

 RothchildandCo.com offers “advice only” financial advisory services building
partnerships with clients “as their trusted, independent advisor. We know that
lasting relationships depend on the quality of our advice.”15

 ObjectiveFinancialPartners.com states “We Are Fee-Only, Advice-Only
Financial Planners” offering, inter alia, advice-only financial planning to U.S.
citizens living in Canada and Canadians working in the USA.16

 AdviceOnlyFinancial.com offers to search for and screen advisors meeting
“Advice-Only criteria, stating “[f]inancial advisors who operate under the
straight and narrow Advice-Only model are the true gems.... This leaves a
tiny percentage of advisors who offer the good honest Advice-Only services.”
“ The advisor strictly offers his or her advice for a fee” and “does NOT sell
products that pay the advisor a commission.”17

11 Capitalization has been added to the website addresses to enhance readability.
12 October 16, 2020 Request for Reconsideration Denied at 4-8.
13 April 15, 2020 first Office Action at 13; June 15, 2020 final Office Action at 14-36.
14 June 15, 2020 f inal Office Action at 38-41.
15 June 15, 2020 final Office Action at 43-44.
16 June 15, 2020 final Office Action at 45-49.
17 October 16, 2020 Request for Reconsideration Denied at 46-51.
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 TheFinanceBuff.com describes “Advice-Only: The Best Model For Financial
Advice People Need And Want” as “[a]dvice-only means you only pay the
advisor for advice. It isolates the most valuable part of managing one’s
finances. You pay for advice when you need it....” “Advice-only advisors are
not easy to find.”18

 NerdWallet.com advises consumers on how to find “advice-only” financial
advisors and financial planners. The “Advice-Only Financial” section of the
webpage, discusses financial blogger, Harry Sit, who offers a service to
“connect people with fee-only advisors who just charge for advice and don’t
accept asset management fees.”19

 Investopedia.com contrasts fee-based versus commission-based investment
advisors, stating that a “fee-compensated advisor collects a pre-stated fee for
their services, which can include a flat retainer or an hourly rate for
investment advice” “ Within the fee realm of advisors, there can be a
further, subtle distinction between the advisors. In addition to fee-based
advisors, there are also fee-only advisors in which their sole source of
compensation is fees paid from the client....” A subset of “fee-only” financial
advisors is “advice-only” advisors who are paid a set fee for providing only
advice and cannot sell a client “an investment product that runs contrary to
their needs, objectives, and risk tolerance.”20

The Federal Circuit has approved the use of Internet evidence in ex parte
proceedings. See, e.g., In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir.
2007) (“Internet evidence is generally admissible and may be considered for purposes
of evaluating a trademark”) (citations omitted); see also In re Pacer Technology, 338
F.3d 1348, 67 USPQ2d 1629, 1632 (Fed. Cir. 2003) (Federal Circuit is “mindful of the
reality that the PTO is an agency of limited resources”); In re Loew’s Theatres, Inc.,
769 F.2d 764, 226 USPQ 865, 868 (Fed. Cir. 1985) (the examining attorney “does not

18 October 16, 2020 Request for Reconsideration Denied at 20-24.
19 October 16, 2020 Request for Reconsideration Denied at 40-42.
20 October 16, 2020 Request for Reconsideration Denied at 13-17.
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have means” to undertake the research, such as a marketing survey, necessary to
prove that the public would actually make the goods/place association asserted).
These third-party webpages demonstrate that ADVICE-ONLY is not Applicant’s
“unique methodology,” but rather a term used by various entities to describe a well-
regarded and uncommon method of providing financial planning and investment
advisory services, wherein the advisor is paid for advice given, without providing
recommendations regarding financial products or asset management.
The Examining Attorney also introduced into the record copies of two prior
registrations owned by Applicant.21
Reg. No. 6030933 issued on the Principal Register for the mark
identifying “educational books featuring financial planning,” in Class 16; “financial
planning and investment advisory services,” in Class 36; and “business training,” in
Class 41. Applicant disclaimed “ADVICE ONLY” apart from the mark as shown.22
Reg. No. 6004380 issued on the Supplemental Register for the mark ADVICE-
ONLY (in standard characters), identifying “educational services, namely, providing
seminars and on-line classes in the fields of financial planning and retirement,” in

21 June 15, 2020 final Office Action at 71-75, 78-81.
22 Issued April 7, 2020 with the following color statement and description of the mark: Color
is not claimed as a feature of the mark. The mark consists of the stylized letters “AO” next to
a thought bubble design over the wording “ADVICE ONLY”.
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Class 41.23 The Examining Attorney argues that “The applicant’s election to enter the
disclaimer in the record and not appeal the requirement in that registration
constitutes a concession that the matter is not inherently distinctive or registrable.”24
When combined in Applicant’s mark, the terms “advice” and “only” retain their
descriptive significance with respect to Applicant’s services. The evidence of record
demonstrates that Applicant and third parties use “advice-only” to describe a feature
or characteristic of financial planning and investment advisory services that are
based upon providing investment advice separate from asset management or
recommending financial products for a commission.
Applicant’s own descriptive use of “advice-only” to refer to financial planning and
investment advice provided independent of asset management or receiving
commissions on financial instrument recommendations is strong evidence that
Applicant’s mark is descriptive of Applicant’s services. In re Mecca Grade Growers,
LLC, 125 USPQ2d at 1957; In re Educ. Comms., Inc., 231 USPQ 787, 790 (TTAB
1986). The third-party descriptive uses of “advice-only” to describe the same type of
financial and investment services are further support that upon encountering
Applicant’s mark, prospective consumers would immediately understand ADVICE-
ONLY as descriptive of a feature or characteristic of Applicant’s services. In re Abcor
Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978).

23 Issued March 3, 2020.
24 8 TTABVUE 5.
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We find no incongruity in the wording “ADVICE-ONLY.” As discussed above, the
wording “ADVICE-ONLY” in Applicant’s mark immediately describes financial
planning and investment advisory services provided independent of offering financial
products that may benefit the advisor. Such a meaning presents no incongruity. Cf.,
e.g., In re Tennis in the Round Inc., 199 USPQ 496, 498 (TTAB 1978); In re Shutts,
217 USPQ 363, 364–5 (TTAB 1983); In re Vienna Sausage Mfg. Co., 156 USPQ 155,
156 (TTAB 1967); and In re John H. Breck, Inc., 150 USPQ 397, 398 (TTAB 1966).
We similarly are not persuaded that “ADVICE-ONLY” is a double entendre. We
find no evidence that consumers will view “ADVICE-ONLY” in Applicant’s mark as
having several connotations in connection with Applicant’s services. Cf. In re Colonial
Stores Inc., 157 USPQ at 382; In re Tea and Sympathy, Inc., 88 USPQ2d 1062 (TTAB
2008); In re Simmons Co., 189 USPQ 352 (TTAB 1976); and In re Del. Punch Co., 186
USPQ 63 (TTAB 1975).
Applicant argues at length that while the Examining Attorney’s evidence
discusses “advice-only” services provided as a subset of “fee-only” services, the
services provided by Applicant are different, separate and apart from “fee-only”
services and its underlying methodology. In support of this contention, Applicant
introduced into the record Internet evidence consisting of Venn diagram illustrations
with accompanying text, discussing the shortcomings of “fee-only” advice and the
potential for abuse by advisors, and positing out that ADVICE-ONLY methodology is
independent thereof.25

25 May 20, 2020 Response to Office Action at 31-32.
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However, even if Applicant intends its services under the proposed ADVICE-
ONLY mark to be distinct from “advice-only” financial services provided as a subset
of “fee-only” services, the Examining Attorney’s evidence nonetheless demonstrates
that consumers will recognize ADVICE-ONLY as describing a type of financial
planning or investment advisory service provided independent of asset management
or recommendation of financial products for commission. In other words, the evidence
of record demonstrates that ADVICE-ONLY describes financial planning and
investment advisory services of the type provided by Applicant, even if Applicant
provides these services under a methodology that may differ from the more common
subset of “fee-only” services.
We must consider the issue of mere descriptiveness from the perspective of the
average prospective purchaser of Applicant’s services, and that includes the segment
of the public that uses and understands the term “advice-only” as referring generally
to a type of financial planning and investment advisement, without necessarily
distinguishing its underlying methodology. In re Omaha Nat’l Corp., 819 F.2d 1117,
2 USPQ2d 1859, 1861 (Fed. Cir. 1987) (explaining that descriptiveness must be
analyzed with respect to all classes of prospective purchasers; “Descriptiveness is not
determined by its meaning only to the class of regular customers with the largest
head count.”). Additionally, even if Applicant is the first or only user of ADVICE-
ONLY in connection with its particular methodology, such use does not necessarily
render “ advice-only” incongruous, suggestive or distinctive in connection with
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Applicant’s services. See In re Fat Boys, 118 USPQ2d at 1514; In re Phoseon Tech.,
Inc., 103 USPQ2d 1822, 1826 (TTAB 2012); TMEP §1209.03(c).
Applicant further argues
26
Applicant goes on to argue that its “ADVICE-ONLY™ mark does convey several
meanings as noted above and with significant and unexplored depths impossible to
recognize.”27 In support of its position, Applicant introduced into the record evidence
from Internet websites and social media sites further discussing Applicant’s services
under its proposed mark as well as “fee-only” financial services and other forms of
financial planning and investment advisory services.28

26 6 TTABVUE 16.
27 6 TTABVUE 17.
28 May 20, 2020 Response to Office Action at 33-76.
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However, our consideration of whether a term is merely descriptive is determined
not in the abstract, but in relation to the services for which registration is sought, the
context in which it is being used on or in connection with those services, and the
possible significance that the term would have to the average purchaser of the
services because of the manner of its use. That a term may have other meanings in
different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979).
Moreover, “[t]he question is not whether someone presented with only the mark
could guess what the services are. Rather, the question is whether someone who
knows what the services are will understand the mark to convey information about
them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). See also In re
Patent & Trademark Servs. Inc., 49 USPQ2d 1537 (TTAB 1998); In re Home Builders
Assoc. of Greenville, 18 USPQ2d 1313 (TTAB 1990); In re Am. Greetings Corp., 226
USPQ 365 (TTAB 1985). In this case, the evidence of record demonstrates that
consumers encountering ADVICE-ONLY will recognize the term as describing a
particular type of financial planning or investment advisory services, regardless of
the methodology to which “advice-only” may apply.
Applicant further introduced the declaration of its President, Mr. Quincy Hall,29
along with a survey conducted by Mr. Hall30 purporting to assess familiarity of the

29 October 3, 2000 Request for Reconsideration at 12-13.
30 October 3, 2000 Request for Reconsideration at 15.
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public with “Advice-Only” in connection with financial planning. The declaration and
survey are reproduced in their entirety below.

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To the extent we may consider a properly-conducted survey as evidence of
consumer perception, we note that Mr. Hall does not appear to have conducted any
sort of “mini-course” that would include a test of the understanding of the survey
participants as to whether something is a mark or merely describes financial or
investment services. We observe Mr. Hall’s surveys are not analogous to “Teflon
surveys,” described by Professor McCarthy as “essentially a mini-course in the
generic versus trademark distinction, followed by a test.”31 In a case involving a
genericness determination, the Board “noted that we can give ‘little weight’ to a
survey where a mini-test was not performed and we do not know whether survey
participants actually understood what they were being asked.” Frito-Lay N. Am., Inc.
v. Princeton Vanguard, LLC, 124 USPQ2d 1184, 1198-99 (TTAB 2017), (quoting
Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1361-62 (TTAB 2013)),
(citing Jacob Zimmerman v. Nat’l Ass’n of Realtors, 70 USPQ2d 1425, 1436-36 n. 15
(TTAB 2004)) (flaws in the design and administration of the survey, including the
mini-test, resulted in the survey having limited probative value).
In this case, Mr. Hall did not conduct any sort of mini-test or other evaluation of
the participants’ ability to recognize an indicator of source, and we cannot determine
whether the survey respondents understand or can identify a mark. As a result of
this apparent flaw in Mr. Hall’s methodology, we discount the value of his survey
based upon the lack of proper foundation for their introduction. In addition, Mr. Hall

31 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION 12:16 (5th
ed.).
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acknowledges that participants received compensation from Google for answering
survey questions. We nonetheless consider his methodology and results for whatever
probative value they may have.32
The Hall survey purports to establish that “76% of the public was not familiar
with ‘Advice-Only’ in relation to financial planning at the time of the survey.”33 There
are several problems with Mr. Hall’s survey. First, there is no indication of how many
questions the survey asked or the content of those questions, other than the two
(numbers 3 and 4)34 of record. Furthermore, the questions are phrased in a biased
and leading manner, and do not indicate whether the survey participants understood
financial planning terms. A further problem with Mr. Hall’s survey and his
interpretation of the results thereof is that there is no indication in any of the queries
or responses that consumers did or did not recognize the proposed ADVICE-ONLY
mark as an indicator of source for Applicant’s “Financial planning and investment
advisory services.” The results establish varying degrees of association among the
surveyed group between various financial planning terms. These associations are
irrelevant to the question of whether the surveyed group associates the proposed
mark Applicant seeks to register with its services. The two survey questions of record
inquire “Which financial planning terms look the most familiar (if any)?” and “Are

32 We further note that nothing in Mr. Hall’s curriculum vitae (October 3, 2020 Request for
Reconsideration at 16) indicates that Mr. Hall possesses expertise or qualification in the
fields of surveys, trademarks or brand recognition.
33 October 3, 2000 Request for Reconsideration at 13.
34 Id. at 15.
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you familiar with ‘advice-only’?”35 Neither of these questions queried whether the
consumers associated the proposed mark as a source of origin of the identified
services.
To show that that “advice-only” serves as a source-indicator, the questions and
responses must demonstrate that the “primary significance” of the stimulus is as a
brand identifier, not just a recognized or unrecognized term in connection with
financial planning. See, e.g., Sturgis Motorcycle Rally, Inc. v. Rushmore Photo & Gifts,
Inc., 908 F.3d 313, 128 USPQ2d 1575, 1590, 1593-94 (8th Cir. 2018); Vornado Air
Circulation Sys., Inc. v. Duracraft Corp., 58 F.3d 1498, 35 USPQ2d 1332, 1334 n.7
(10th Cir. 1995).
Nowhere in the survey are the participants asked whether they associate “advice-
only” as a mark for Applicant’s services. Because Mr. Hall did not perform a mini-test
to determine whether survey participants understand or can identify a trademark,
we cannot determine whether participants even perceived the intended nature or
purpose of the applied-for mark. Similarly, participants were not given the
opportunity to respond in such a manner that associates the proposed mark with the
services. Simply put, even if we accept Mr. Hall’s methodology, his survey suggests a
weak familiarity of “advice-only” as a financial planning term, but is not probative of
the association of the applied-for ADVICE-ONLY mark with Applicant as the source
of origin of Applicant’s services. At most the survey may indicate little consumer
exposure to the term, but the fact that an applicant may be the first or only user of a

35 Id. at 15.
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merely descriptive designation does not justify registration if, as has been found
above, the only significance conveyed by the term is merely descriptive. Fat Boys, 118
USPQ2d at 1514. We therefore find no basis to conclude that his survey supports a
finding that the proposed mark is inherently distinctive or otherwise does not
describe a feature of the identified services. Cf. Frito-Lay, 124 USPQ2d at 1195-1201
(survey results entitled to only limited probative weight due, inter alia, to flaws in
methodology).
IV. Conclusion

Based on the record before us, we find that the proposed mark ADVICE-ONLY is
merely descriptive of “Financial planning and investment advisory services.”
Decision: The refusal to register Applicant’s mark under Section 2(e)(1) of the
Trademark Act is affirmed.