TMEP 1301.01(b)(iv): Soliciting Investors

October 2017 Edition of the TMEP

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1301.01(b)(iv)    Soliciting Investors

Offering shares of one’s own stock for investment and reinvestment, and publication of reports to one’s own shareholders, are not services, because these are routine corporate activities that primarily benefit the applicant. In re Canadian Pac. Ltd., 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985).  Similarly, soliciting investors in applicant’s own partnership is not a registrable service. In re Integrated Res., Inc., 218 USPQ 829 (TTAB 1983) (syndicating investment partnerships did not constitute a service within the meaning of the Trademark Act, because there was no evidence that the applicant was in the business of syndicating the investment partnerships of others; rather, the applicant partnership was engaged only in syndication of interests in its own organization).  On the other hand, investing the funds of others is a registrable service that primarily benefits others. In re Venture Lending Assocs., 226 USPQ 285 (TTAB 1985) (investment of funds of institutional investors and providing capital for management found to be a registrable service).

In Canadian Pacific, 224 USPQ at 974, the court noted that since shareholders are owners of the corporation, an applicant who offers a reinvestment plan to its stockholders is essentially offering the plan to itself and not to a segment of the buying public.  The court distinguished American Int’l Reinsurance Co., v. Airco, Inc., 570 F.2d 941, 197 USPQ 69 (C.C.P.A. 1978), in which offering an optional retirement plan to applicant’s employees was found to be a registrable service that primarily benefits the employees.