Avant Garde Marketing Solutions, Inc.

Trademark Trial and Appeal BoardMar 19, 2013

No. 77735279 (T.T.A.B. Mar. 19, 2013)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: March 19, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Avant Garde Marketing Solutions, Inc. _____ Serial No. 77735279 _____ Theodore F. Shiells of Shiells Law Firm P.C., for Avant Garde Marketing Solutions, Inc. Steven M. Perez, Trademark Examining Attorney, Law Office 101, Ronald R. Sussman, Managing Attorney. _____ Before Bucher, Holtzman and Adlin, Administrative Trademark Judges. Opinion by Bucher, Administrative Trademark Judge: Avant Garde Marketing Solutions, Inc. (“applicant”) seeks registration on the Principal Register of the mark CASH VALUE (in standard character format) for the following services, as amended: customer loyalty services and customer club services, for commercial, promotional and/or advertising purposes featuring the ability for cus- tomers to earn rewards with a value equivalent to cash when applied to purchase goods or services from a participating merchant subject to compliance with any conditions imposed by the merchant; promoting the goods and services of others by means of the issuance of loyalty re- wards cards which offer customers the ability to earn rewards with a value equivalent to cash when applied to purchase goods or services from a participating merchant subject to compliance with any condi- tions imposed by the merchant; providing incentive award programs for customers and employees for the purpose of promoting and reward- ing loyalty through the distribution of prepaid stored value cards hav- Serial No. 77735279 2 ing a value equivalent to cash when applied to purchase goods or ser- vices from a participating merchant subject to compliance with any conditions imposed by the merchant; providing incentive award pro- grams for customers for frequent use of participating businesses through the issuance and processing of loyalty coupons having a value equivalent to cash when applied to purchase goods or services from a participating merchant subject to compliance with any conditions im- posed by the merchant in International Class 35.1 The examining attorney has refused registration on the ground that the term is merely descriptive under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). When the refusal was made final, applicant appealed and requested recon- sideration. After the examining attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. I. The Applicable Law A term is merely descriptive if it immediately conveys knowledge of a signifi- cant quality, characteristic, function, feature or purpose of the products it identifies. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Whether a par- ticular term is merely descriptive is determined in relation to the goods or services for which registration is sought and the context in which the term is used. In re Ab- cor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Rema- cle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, the question is whether someone who knows what the services or products are will understand the mark immediately to convey information about them. In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003). 1 Application Serial No. 77735279 was filed on May 12, 2009, based on an allegation of a bona fide intention to use the mark in commerce. Serial No. 77735279 3 Applicant argues that this term is suggestive, not descriptive; that the exam- ining attorney has failed properly to apply the legal tests for determining descrip- tiveness; and that the combination of these two descriptive terms creates a new mean- ing that does not immediately convey to prospective consumers the ingredients, qualities or characteristics of applicant’s services. By contrast, the examining attorney contends that each of the individual words is merely descriptive of applicant’s services, as is the combined term, “Cash Value.” He argues that this composite does not create a unique, incongruous or non- descriptive meaning in relation to the recited services. II. The Evidence of Record The examining attorney has supplied for the record a number of diction- ary definitions of the words “cash” and “value”: Cash NOUN: 1. Money in the form of bills or coins; currency. 2. Payment for goods or services in currency or by check. TRANSITIVE VERB: cashed, cash·ing, cash·es To exchange for or convert into ready money: cash a check; cash in one's gambling chips. PHRASAL VERBS: cash in 1. To withdraw from a venture by or as if by settling one's account. 2. Informal To obtain a profit or other advantage by timely exploitation: Profi- teers cashed in during the gasoline shortage. 3. Slang To die. cash out To dispose of a long-held asset for profit: Hard-pressed farmers are tempt- ed to cash out by selling their valuable land. IDIOM: cash on the barrelhead Immediate payment: You must pay cash on the barrelhead; we don't offer credit. 2 2 http://education.yahoo.com/reference/dictionary/entry/cash Serial No. 77735279 4 Cash noun Definition of CASH 1: ready money 2: money or its equivalent (as a check) paid for goods or services at the time of purchase or delivery Origin of CASH modification of Middle French or Old Italian; Middle French casse money box, from Old Italian cassa, from Latin capsa chest — more at CASE First Known Use: 1593 3 cash - definition NOUN 1. money in the form of bills and coins Some checkout lines at the store take cash only. in cash: Do you want to pay in cash or by credit card? 2. money in any form, especially money that is available for you to use when you need it The Treasury has cash reserves of about $500 billion. short of cash: Olga's short of cash so she decided to put off her trip. 4 value noun Definition of VALUE 1: a fair return or equivalent in goods, services, or money for something exchanged 2: the monetary worth of something : MARKET PRICE 3: relative worth, utility, or importance 4: a numerical quantity that is assigned or is determined by calculation or measurement 5: the relative duration of a musical note 6 a : relative lightness or darkness of a color : LUMINOSITY b : the relation of one part in a picture to an- other with respect to lightness and darkness 7: something (as a principle or quality) intrinsically valuable or desirable 8: DENOMINATION 2 Examples of VALUE • The company's stock continues to decline in value. • Real estate prices have doubled in value over the last decade. • The difference in value between the two currencies is not significant. • You may exchange the item for something of equal value. • We sold the home for less than its full value. • an increase in the value of the dollar • The home has a value of $1,000,000. • Property values tend to rise as interest rates fall. • The store advertises great values. • No one can deny the value of a good education. 3 http://www.merriam-webster.com/dictionary/cash 4 http://www.macmillandictionary.com/dictionary/american/cash Serial No. 77735279 5 Origin of VALUE Middle English, worth, high quality, from Anglo-French, from Vulgar Latin *valuta, from feminine of *valutus, past participle of Latin valēre to be of worth, be strong — more at WIELD First Known Use: 14th century 5 value NOUN: 1. An amount, as of goods, services, or money, considered to be a fair and suita- ble equivalent for something else; a fair price or return. 2. Monetary or material worth: the fluctuating value of gold and silver. 3. Worth in usefulness or importance to the possessor; utility or merit: the value of an education. 4. A principle, standard, or quality considered worthwhile or desirable: "The speech was a summons back to the patrician values of restraint and responsi- bility" (Jonathan Alter). 5. Precise meaning or import, as of a word. 6. Mathematics An assigned or calculated numerical quantity. 7. Music The relative duration of a tone or rest. 8. The relative darkness or lightness of a color. See Table at color. 9. Linguistics The sound quality of a letter or diphthong. 10. One of a series of specified values: issued a stamp of new value. 6 The examining attorney has also supplied the following website evidence from a range of different types of merchants and service providers: • Watkins Glen unveils Media Center sketches: The construction of the new media center at Watkins Glen International is in high gear and on schedule for completion for the Grand-Am Rolex Sports Car Series weekend, The Sahlen's Six Hours of The Glen, June 6-8. The new 17,600-square foot building consists of a dedicated workroom that can host over 180 members of the media on a deadline, a dedicated photogra- pher's workroom, a press conference/large meeting room, radio station and sanctioning body workrooms and a lounge/cafeteria. The two-story building is set back approximately 125 feet to the east of the previous press tower which was demolished this past December. Both the first and second floors of the new building are already in place and the construction of the peaked roof began earlier this week. Help celebrate the 60th Anniversary of racing in The Glen by purchasing your tickets for the 2008 season now! Tickets can be pur- chased at The Shop, located at 2 North Franklin Street in downtown Watkins Glen. Gift Certificates worth cash value toward any ticket at Watkins Glen International can be purchased at the Information Center of Corning located in Centerway Square on Historic Market Street. For more information, please contact the Watkins Glen International ticket office at 866-461-RACE or log on to the official website www.TheGlen.com.(WGI PR)(2-6-2008).7 5 http://www.merriam-webster.com/dictionary/value 6 http://education.yahoo.com/reference/dictionary/entry/value 7 http://www.jayski.com/next/2008/22wg2008.htm Serial No. 77735279 6 HealthStyles Exercise Equipment Recycles Too! … If you are thinking about trading in your old exercise equipment now is the time because during August Health- Styles is offering our Dollars for Dinosaurs special! Trade in any piece of old equipment during August and get cash value toward a trade-in – no matter what the condition – and we pick up your old equipment for FREE*! (good with delivery of new equipment). 8 … • Huge Cash Value Rewards (See “Referrals Program” and “Irresistable Offer” pages) 9 GLENORA'S FREQUENT STAY PROGRAM Enjoy a stay at The Inn at Glenora Wine Cellars on us! Join our frequent stay program and earn cash value towards rooms at our Inn. Each time you stay with us you will receive $10.00 for every night of your stay. Just hand your card in at checkout and we will put the cash onto the card so it can be used at a later date. When you have accumulated enough on your card use it to pay for your next stay with us. 10 8 http://www.healthstylesexercise.com/wp/2010/08/healthstyles-exercise-equipment- recycles-too/ 9 http://www.aabcleaningspecialists.com/More_Benefits.html 10 http://www.glenora.com/Clubs/Earn-Rewards-at-Glenora/Frequent-Stay-Program Serial No. 77735279 7 11 SHOP, EARN, SAVE AND SPEND! … How do I earn cash value rewards? 12 13 11 http://aonesupermarkets.com/frequent_shopper.htm 12 http://www.wxel.org/wxelmall.html/ 13 http://www.johnsoncountykawasaki.com/custompage2.asp?pg=rewards Serial No. 77735279 8 14 SUBARU REWARDS PROGRAM TERMS AND CONDITIONS Rewards SubaruBucks are redeemable toward the purchase or lease of any new Subaru vehicle in addition to the purchase of Subaru service and parts at any of the Subaru authorized dealers, and are earned by making purchases with the Subaru MasterCard from Chase (the “Card”). Cardmembers earn SubaruBucks in the following manner: Cardmembers earn a 3% rebate on every purchase of goods or services. Every time a cardmember has accumulated at least $100 in cash-value rewards, a SubaruBucks certificate in $100 increments will be sent to the cardmember. … 15 … You have to first want to make a change for a change to happen. Whether it is to be a certain size for that wedding dress, look you best for that 30 year reunion or just beat your friend in a game of golf, there is a goal. There has to be that proverbial “carrot.” Behavioral scientists say that goal achievement is best accomplished when short and long term goals are set. Many people drop out of a nutrition and exercise program because they say they don’t see it working after a short period. We measure even small changes in fitness and give cash value rewards for every increment of improvement towards the goal. We give the member a short-term reason for that long-term goal. We pay them in cash card rewards. 16 14 https://www.mtb.com/personal/cardproducts/Pages/MTBankRewardsFAQs.aspx 15 http://drive2.subaru.com/Terms_Conditions.html 16 http://www.forafitamerica.net/index/whythisworks Serial No. 77735279 9 17 18 Final Boarding Skate- board Shop (215) 576-5760 1314 Easton Road, Abbington, PA Join the Loyalty Program and earn points for every dollar you spend in the store, which you can save up and redeem as cash value toward future pur- chases. 19 17 http://www.inspirecommerce.com/gift-cards/ 18 http://www.69taps.com/medina/coupon.html 19 http://philadelphia.citysearch.com/profile/8923548/abbington_pa/final_boarding_skateboard_shop.html Serial No. 77735279 10 20 … • More flexible than paper certificates – One card can contain cash value or loyalty points, with redemption program custom designed to fit your business. VaHomeschoolers Connection 21 News release from school district in Minnesota: 22 20 http://www.vitalcashflow.com/giftCardProgram.html 21 http://vahomeschoolers.org/blog/2011/10/kids_tech_/ 22 www.abcnewspapers.com/2006/september/13ahef.html Serial No. 77735279 11 EDebitPay Rewards: BSP to provide custom rewards-mall for EDP. Monday, January 7, 2008 LOS ANGELES--(Business Wire)--EDP (EDebitPay, LLC) has partnered with MediaNet Group Technologies, Inc. (BSP Rewards) to build a custom branded rewards-mall for EDebitPay (www.edebitpay.com), one of the nation's prem- ier Prepaid Debit Card marketing companies. … Martin Berns, Chief Executive Officer of MediaNet Group Technologies/BSP Rewards stated, "We are excited to be working with EDebitPay as they are addressing a large and underserved segment of the under-banked consumer market. Offering BSP Rewards as a value added feature of their cards allows cardholders to earn cash value re- wards each time they make a purchase. Rewards, provided through the custom branded online rewards-mall, can be viewed through the private branded mall when cardholders login to the debit card customer support site at www.debitcardsupport.com. 23 Capcom Unity pre-paid Visa Debit Cards Come With Gamer Perks Capcom Unity points can be redeemed at the Cap- com Rewards Mall (BSPRewards) … over 750 partic- ipating e-merchants, in addition to up to 20% in cash-value rewards. 24 25 Finally, the examining attorney has offered the following listing of third- party registrations showing that recitations of services in the United States Patent and Trademark Office employ the term “cash value” in the context of loyalty pro- grams: 23 http://www.edebitpay.com/press_bsp_012008.asp and http://www.allbusiness.com/. 24 http://www.capcom-unity.com/ 25 http://www.diversifiedacquirersgroup.com/Products-Services/gift-a-loyalty-card- programs.html Serial No. 77735279 12 EBUSINESS SECURE & GUARANTEED for, inter alia, “ … issuing customer loyalty cards, namely issuing stored value cards for use by cus- tomers as part of an incentive program in which points may be accumulated and translated into cash value and used by the customer to purchase goods or services at any participating location …”26 for, inter alia, “ … electronic processing of payment transactions made using cash value customer loyalty cards or points via wireless proximity payment de- vices and magnetically encoded cards …”27 MYCROPOD for, inter alia, “ … issuing customer loyalty cards, namely, issuing stored value cards for use by cus- tomers as part of an incentive program in which points may be accumulated and translated into cash value and used by the customer to purchase goods or services at any participating location …”28 for, inter alia, “ … issuing customer loyalty cards, namely, issuing stored value cards for use by cus- tomers as part of an incentive program in which points may be accumulated and translated into cash value and used by the customer to purchase goods or services at any participating location …”29 and for, inter alia, “ … theater customer loyalty program, namely, a promotional program to reward customer loyalty featuring cash value cards …”30 III. Analysis Based on all this evidence, we agree with the examining attorney that the term “Cash Value” immediately conveys to potential consumers a key characteristic of 26 Registration No. 3038492 issued on the Supplemental Register on January 3, 2006; Sec- tion 8 (six-year) affidavit accepted. No claim is made to the exclusive right to use the term “EBusiness” apart from the mark as shown. 27 Registration No. 3934802 issued on March 22, 2011. No claim is made to the exclusive right to use the word “Data” apart from the mark as shown. 28 Registration No. 3931622 issued on March 15, 2011. 29 Registration No. 3938393 issued on March 29, 2011. 30 Registration No. 3074508 issued on March 28, 2006; Section 8 affidavit (six-year) accept- ed and Section 15 affidavit acknowledged. No claim is made to the exclusive right to use the words “Movie Viewer Program” apart from the mark as shown. Serial No. 77735279 13 the rewards that make up the recited services. As opposed to rewards systems hav- ing a “points” structure or offering retail discounts, consumers obtain rewards having a value measurable in standard denominations of money. Throughout applicant’s reci- tation of services is the phrase “value equivalent to cash.” Logically, this is the defi- nition of “cash value,” and hence, “cash value” is a significant characteristic or fea- ture of applicant’s rewards programs. Moreover, we note that the representative, third-party registrations that the examining attorney placed into the record recite services substantially the same as those of applicant, which further supports the finding that “cash value” has become a well-understood term of art in the field of customer loyalty programs. We see from the website evidence that a wide variety of merchants and ser- vice providers use the combined term, “cash value,” to describe rewards having a value equivalent to cash. Moreover, many of these uses appear within the context of consumer loyalty programs – and often involving the issuance of cards. In this actual marketplace context, prospective consumers will understand immediately that these programs provide “cash value” rewards usable toward further purchases from a partici- pating merchant, but not necessarily redeemable for cash-in-hand. Hence, we agree with the examining attorney that “cash value” encompasses value which may be used in the same manner as cash, i.e., for purchasing goods or service. Similarly, we reject applicant’s narrow view that “cash value” refers only to value that is directly and without any limitation exchangeable for an equivalent amount of paper currency and coins. Actually, this appears closer to the first definition of “cash,” supra, ren- dering superfluous the “value” portion of applicant’s term “cash value.” Consumers Serial No. 77735279 14 in the U.S. are accustomed to loyalty programs, each having unique constraints, but all effectively designed to encourage one to make further purchases from a defined network of merchants – not to have the consumer depart a participating establish- ment stuffing the merchant’s greenbacks into her wallet. The sheer range of third-party uses of the term “cash value” in the context of customer loyalty programs demonstrates to us that others in fields closely related to that of applicant do indeed use the term “cash value” to describe their programs, and clearly have a need to continue doing so. Applicant reminds us of our obligation if, at this stage of the analysis, we still harbor doubts about descriptiveness. But in this case, about this determination, we have no doubts. Decision: The refusal to register the term CASH VALUE under Section 2(e)(1) of the Lanham Act is hereby affirmed.