Stock-system.com, Inc.

Trademark Trial and Appeal Board

Oct 15, 2001

No. 75592357 (T.T.A.B. Oct. 15, 2001)

10/15/01

Paper No. 13
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Stocksystem.com, Inc.
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Serial No. 75/592,357
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Thomas C. Saitta, P.A. for Stocksystem.com, Inc.

Tracy Cross, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______

Before Quinn, Hairston and Rogers, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

Stocksystem.com, Inc. has appealed from the Trademark
Examining Attorney’s final refusal to register POSITION
COST AVERAGING for “computer programs for automatic
investment management in the field of personal finance
recorded on discs; computer software for automatic
investment management in the field of personal finance that
may be downloaded from a global computer network.”1

1 Serial No. 75/592,357 filed November 19, 1998, alleging dates
of first use of July 18, 1998.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/592,357
2
Registration has been refused pursuant to Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
ground that applicant’s mark is merely descriptive of the
identified goods.2
Both applicant and the Examining Attorney have filed
briefs on the case, but no oral hearing was requested.
Applicant contends that the mark does not directly
convey information about its computer programs, but instead
simply suggests some sort of investment system because it
sounds similar to “dollar cost averaging,” which is a well
known strategy of investing. Further, applicant argues
that the Examining Attorney has failed to establish that
the mark is merely descriptive because there is no evidence
of record that competitors use the phrase “Position Cost
Averaging” in connection with their computer programs and
there is no dictionary entry for the phrase. Finally,
applicant argues that while each individual term in its
mark has a specific meaning, the combined mark is
“nonsensical” and has no meaning in the financial field.

2 We note that the Examining Attorney, as an alternative basis,
for the initial refusal asserted that the mark was deceptively
misdescriptive. The Examining Attorney did not pursue this
ground and, thus, we consider it withdrawn.
Ser No. 75/592,357
3
The Examining Attorney, however, maintains that the
mark POSITION COST AVERAGING describes a significant
feature of applicant’s goods, that is, applicant’s computer
software enables an investor to trade around a core
position in a stock. In support of the refusal, the
Examining Attorney made of record, inter alia, the
following definitions:
position: investor’s stake in a particular
security or market. Dictionary of Finance and
Investment Terms (3d ed. 1991); and

averaging: adding to a holding of
particular securities or commodities when
the price falls, in order to reduce the
average cost of the whole holding.
Averaging in consists of buying at various
price levels in order to build up a
substantial holding of securities or
commodities over a period. Averaging out is
the opposite process, of selling a large
holding at various price levels over a long
period. A Dictionary of Finance and Banking
(2d ed. 1997).

In addition, the Examining Attorney submitted pages
downloaded from applicant’s web site.
It is well settled that a term is considered to be
merely descriptive of goods, 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,
Ser No. 75/592,357
4
function, purpose or use of the goods. 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 in order for it to be
considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or
idea about them. Moreover, whether a term is merely
descriptive is determined not in the abstract but in
relation to the goods for which registration is sought, the
context in which the term or phrase is being used on or in
connection with those goods, and the possible significance
that the term or phrase is likely to have to the average
purchaser of the goods because of the manner in which it is
used. See In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979).
At applicant’s web site, the “theory” behind its
computer software is characterized as follows:
The Position Cost AveragingTM theory, based on
mathematics, captures stock volatility and uses
it to the investor’s advantage. It signals the
action by giving the exact price, and number of
shares, to buy or sell creating systematic
profits for an investor.

Ser No. 75/592,357
5
Small gains are methodically taken as prices are
rising and additional shares are accumulated when
prices are low. The purpose of this incremental
adjustment in the amount of stock holdings, is to
determine the level of equity based on the price
action of the equity itself. (Truly
revolutionary)

The method can best be described as trading
around a “core position” in a stock.
[emphasis and underlining in original]

After consideration of the record, we find that the
applied-for mark is merely descriptive of the primary
function of applicant’s computer software which is to
enable an investor to maintain a particular position or
“level of equity” in a stock, through programmed buying and
selling. When investors encounter the mark POSITION COST
AVERAGING, especially as used in the context of the web
page referenced above where applicant indicates that the
“[POSITION COST AVERAGING] method can best be described as
trading around a ‘core position’ in a stock”, we have no
doubt that the mark immediately conveys to them information
about the primary feature or function of applicant’s
software, namely, that the software enables investors to
maintain their core position or level of equity in a stock,
through programmed buying and selling. See In re Polo
International Inc., 51 USPQ2d 1061 (TTAB 1999) [The mark
DOC-CONTROL for computer software for document management
is merely descriptive thereof since it immediately conveys
Ser No. 75/592,357
6
information about a significant feature of such goods,
namely, that the software will assist in the management or
control of documents.].
Accordingly, applicant’s mark, when applied to
applicant’s goods, is merely descriptive of them. The fact
that applicant is apparently the first (and/or only) entity
to use the term POSITION COST AVERAGING for computer
software is not dispositive, where, as here, the term
unquestionably projects a merely descriptive connotation.
That is, the absence of third-party uses of the term does
not, as contended by applicant, serve to raise a
presumption of registrability. See In re Tekdyne Inc., 33
USPQ2d 1949, 1953 (TTAB 1994) and cases cited therein.
Neither are we persuaded to reach a different result in
this case because the term does not appear in a dictionary.
Finally, we find unpersuasive applicant’s argument
that the combined term POSITION COST AVERAGING is
“nonsensical.” The individual words which comprise
applicant’s mark have descriptive significance with respect
to applicant’s computer software and the combination
results in a mark which is merely descriptive. As
applicant acknowledges, the term POSITION COST AVERAGING is
similar in structure to the phrase “dollar cost averaging,”
a phrase which has descriptive significance in the
Ser No. 75/592,357
7
financial field. Just as investors understand the meaning
of dollar cost averaging, they would understand the meaning
of POSITION COST AVERAGING as used in connection with
applicant’s computer software.
Decision: The refusal to register under Section
2(e)(1) of the Trademark Act is affirmed.