Nvest, Inc.

Trademark Trial and Appeal Board

Oct 8, 2008

No. 77154507 (T.T.A.B. Oct. 8, 2008)

Mailed:
October 8, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Nvest, Inc.
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Serial No. 77154507
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John S. Hale for Nvest, Inc.

Linda E. Blohm, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney).
_______

Before Zervas, Mermelstein, and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Ritchie de Larena, Administrative Trademark
Judge:

Nvest, Inc., applicant herein, seeks registration on
the Principal Register of the mark WIKINVEST, in standard
character format, for services ultimately identified as
“providing financial information, news, commentary,
analysis and consultation all in the field of finance;
providing a computer database in the field of finance;” in
International Class 36 and “hosting of digital content on
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 77154507
2
the Internet; providing news and information in the field
of finance using an interactive electronic format via the
Internet; design and development of computer software” in
International Class 42.1
The trademark examining attorney refused registration
on the ground that applicant’s mark is merely descriptive
of the identified services under Trademark Act Section
2(e)(1), 15 U.S.C. §1052(e)(1). Applicant appealed the
final refusal. Both applicant and the examining attorney
filed briefs. After careful consideration of all of the
arguments and evidence of record, we affirm the refusal to
register.2
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. See, e.g., In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor

1 Serial No. 77154507, filed on April 11, 2007, under Trademark
Act Section 1(b), 15 U.S.C. §1051(b), asserting a bona fide
intent to use in commerce. Applicant originally included other
classes of goods which it then placed in a divisional
application, Serial No. 77975506.
2 The examining attorney also issued a requirement regarding the
classification of one of the services in International Class 42.
Inasmuch as applicant has conceded the point, we affirm the
requirement. However, since we affirm the refusal to register
under 2(e)(1), the requirement is moot.
Ser. No. 77154507
3
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
is being used on or in connection with those goods or
services, 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. 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, it is settled that “[t]he question is not whether
someone presented with only the mark could guess what the
goods or services are. Rather, the question is whether
someone who knows what the goods or 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 Services Inc., 49 USPQ2d
1537 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American
Greetings Corporation, 226 USPQ 365 (TTAB 1985).
Applicant has telescoped the words “wiki” AND “invest”
to create the single word “wikinvest.” Thus, we consider
whether the meaning of the resulting telescoped word is
Ser. No. 77154507
4
merely descriptive. See In re Omaha National Corp., 819
F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987)(finding FIRSTIER
to be a telescoped word combining First and Tier, and
therefore merely descriptive of applicant’s banking
services); In re U.S. Steel Corp., 225 USPQ 750 (TTAB 1985)
(SUPEROPE merely descriptive of wire rope); and In re
Gagliardi Bros., Ind., 218 USPQ 181 (TTAB 1983) (BEEFLAKES
is merely descriptive of thinly sliced beef).
The examining attorney has submitted dictionary
definitions of “wiki” and “invest” as follows:
Invest: 1. to commit (money or capital) in order to
gain a financial return; 2.a. to spend or devote for future
advantage or benefit. American Heritage Dictionary of the
English Language (3rd ed. 1992).
Wiki: collaborative website whose content can be
edited by anyone who has access to it. American Heritage
Dictionary of the English Language (4th ed. 2000).
The examining attorney has further submitted evidence
of use of the telescoped word “wikinvest,” including
descriptions of applicant’s wiki for investments. In
response to applicant’s objection to this evidence on the
basis of hearsay, we note that we are considering it not
“to support the truth of statements in the text but to
illustrate common descriptive use of the expression.” In
Ser. No. 77154507
5
re Omaha, supra, 2 USPQ2d at 1859, citing In re Bed &
Breakfast Registry, 791 F.2d 157, 160-161, 229 USPQ 818,
819-820 (Fed. Cir. 1986); Dan Robbins & Assocs., Inc. v.
Questor Corp., 599 F2d 1009, 1014, 202 USPQ 100, 105 (CCPA
1979). Accordingly, applicant's objection is overruled.
Internet Printouts:
“Wikinvest is just as it sounds; a wiki for
investing.” CrunchBase, October 1, 2007.
“I use sites like wikinvest and wikipedia as launch
pads for my own inquiries.” CrunchBase, user content blog,
October 1, 2007.
“If you take the free-for-all financial advice of a
public message board and apply the anyone-can-edit approach
of a wiki, does it add up to a reliable source of
investment data? That’s what the founders of Wikinvest are
hoping.” Wired, September 27, 2007.
“Wikinvest is an online community where users can add
their two cents about the stock market. The community of
course operates around wikis that are created and modified
by all the users of Wikinvest.” Online blog, August 7,
2007.
“Wikinvest is a wiki destination for investors with a
wealth of in-depth and practical information on companies,
business trends and concepts.” Pod Tech, October 1, 2007.
Ser. No. 77154507
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“Wikinvest Launches Wiki for Investing, Raises Cash:
Wikinvest, a site that allows investors to collaborate by
editing pages about stocks and other opportunities, has
raised $2.5 million in a first round of capital.” Venture
Beat, October 1, 2007.
We find that the evidence submitted by the examining
attorney indicates that the relevant public understands the
term “WIKINVEST” to refer to a function or purpose of
applicant’s recited services. See In re Gyulay, 3 USPQ2d
at 1009; In re Abcor Development Corp., 200 USPQ at 217-18.
In particular, no imaginative step is required for
consumers to understand “WIKINVEST” as a wiki for
investments including “providing financial information,
news, commentary, analysis and consultation all in the
field of finance; providing a computer database in the
field of finance;” (International Class 36), and “providing
news and information in the field of finance using an
interactive electronic format via the Internet;”
(International Class 42).
Applicant’s brief asks us to consider whether
“WIKINVEST” is merely descriptive of “each and every” one
of the services in its application. However, the test is
not whether applicant’s mark is “merely descriptive” of
each and every listed service. Rather, we consider whether
Ser. No. 77154507
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applicant’s mark is “merely descriptive” of at least one
service listed in each International Class. In re Analog
Devices, Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff’d, 871
F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989)(“it is a well
settled legal principle that where a mark may be merely
descriptive of one or more items of goods in an application
but may be suggestive or even arbitrary as applied to other
items, registration is properly refused if the subject
matter for registration is descriptive of any of the goods
for which registration is sought.” (citations omitted)).
We find that to be the case here.
In sum, it is clear that a consumer would understand
“WIKINVEST” used in connection with applicant's services as
conveying information about them. See In re Tower Tech
Inc., 64 USPQ2d at 1316-17. Accordingly, we affirm the
refusal to register.

Decision: The refusal to register under Trademark Act
Section 2(e)(1) is affirmed.