Digital Receipts, LLC

Trademark Trial and Appeal Board

Mar 16, 2015

No. 85810689 (T.T.A.B. Mar. 16, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: March 16, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Digital Receipts, LLC
________

Serial Nos. 85810677; 85810681; 85810689; and 85811478
(Consolidated)
_______

Jeffrey H. Handelsman of Greenblum & Bernstein PLC,
for Digital Receipts, LLC.

Ronald E. Aikens, Trademark Examining Attorney, Law Office 112,
(Angela Bishop Wilson, Managing Attorney).
_______

Before Bucher, Cataldo and Gorowitz,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Digital Receipts, LLC (“Applicant”) filed two applications for registration
on the Principal Register of the mark RECEIPTMATCH (in standard
characters) for:
Computer database management software for use in creating an
online database for the organization, management, and
statistical analysis of digitized receipts, personal account data,
and financial records (International Class 9);1 and

1 Application Serial No. 85811478 was filed on December 27, 2012 based upon
Applicant’s assertion of March 2007 as a date of first use of the mark in commerce in
connection with the goods.
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services for the organization and management of financial
records, namely, records management services in the nature of
managing digitized receipts for others (International Class 35),
and

computer services, namely, hosting and maintaining an online
website for the organization, management, and statistical
analysis of digitized receipts, personal account data, and
financial records (International Class 42).2

In addition, Applicant filed two applications for registration on the Principal
Register of the mark RECEIPTMATCH SIMPLY SHOP (in standard
characters) for the goods and services recited above.3
The Trademark Examining Attorney refused registration of the involved
applications for the mark RECEIPTMATCH under 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 recited goods and services. The Examining
Attorney further required Applicant, under Trademark Act § 6(a), 15 U.S.C.
§ 1056(a), to disclaim the exclusive right to use RECEIPTMATCH in the
mark RECEIPTMATCH SIMPLY SHOP, on the ground that it is an
unregistrable component of Applicant’s mark, because it is merely descriptive
of the recited goods and services within the meaning of Trademark Act
§ 2(e)(1), 15 U.S.C. § 1052(e)(1).

2 Application Serial No. 85810677 was filed on December 26, 2012 based upon
Applicant’s assertion of March 2007 as a date of first use of the mark in commerce in
connection with both classes of services.

3 Application Serial Nos. 85810681 and 85810689 were filed on December 26, 2012,
both reciting March 2007 as a date of first use of the mark in commerce in
connection with the respective goods and services.
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We presume that Applicant and the Examining Attorney are familiar with
the prosecution history of these applications. Most relevant to the issue under
appeal, Applicant maintains that its marks are inherently distinctive and, in
the alternative, it amended involved application Serial Nos. 85810677 and
85811478 to seek registration under Section 2(f) of the Trademark Act, and
application Serial Nos. 85810681 and 85810689 to seek registration in part as
to “RECEIPTMATCH” under Section 2(f) of the Trademark Act, based upon a
showing of acquired distinctiveness. The Examining Attorney accepted
Applicant’s showing of acquired distinctiveness as to all four applications and
approved the involved marks for publication under Section 2(f). Applicant
maintains its marks are inherently distinctive in the alternative and appeals
the refusal to register the marks under Section 2(e)(1). The cases are fully
briefed.
Proceedings Consolidated
Both Applicant and the Examining Attorney have requested consolidation
of these appeals. When, as here, an applicant has filed ex parte appeals to the
Board in two or more co-pending applications, and the cases involve common
issues of law or fact, the Board, upon request by the applicant or examining
attorney or upon its own initiative, may order the consolidation of the appeals
for purposes of briefing, oral hearing, or final decision. TBMP § 1214 (2014).
See also, e.g., In re Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012) (Board
sua sponte consolidated two appeals); In re America Online Inc., 77 USPQ2d
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4
1618, 1618 (TTAB 2006) (Board consolidated appeals in four applications upon
applicant’s motion). Accordingly, the Board consolidates these appeals.
References to the record refer to Application Serial No. 85810677 unless
otherwise indicated.
Mere Descriptiveness
The sole issue before the Board is whether the term RECEIPTMATCH,
comprising in whole or in part Applicant’s involved marks, merely describes
the goods and services identified thereby.
“A term is merely descriptive if it immediately conveys knowledge of a
quality, feature, function, or characteristic of the goods or services with which
it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102
USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft,
488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009, 1009-10 (Fed. Cir. 1987). Whether a particular 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, not in the
abstract or on the basis of guesswork. In re Abcor Dev. Corp., 588 F.2d 811,
200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224
(TTAB 2002). In other words, the question is whether someone who knows
what the goods or services are will understand the mark to convey
information about them. DuoProSS Meditech Corp. v. Inviro Medical Devices,
Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re Tower
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Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002); In re Patent &
Trademark Servs. Inc., 49 USPQ2d 1537, 1539 (TTAB 1998). “On the other
hand, if one must exercise mature thought or follow a multi-stage reasoning
process in order to determine what product or service characteristics the term
indicates, the term is suggestive rather than merely descriptive.” Coach
Servs. Inc. v. Triumph Learning LLC, 96 USPQ2d 1600, 1616 (TTAB 2010)
(quoting In re Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978)),
vacated-in-part on other grounds, 668 F.3d 1356, 101 USPQ2d 1713 (Fed. Cir.
2012).
The original specimens of record, submitted with all four of the involved
applications, is reproduced in part below.

Serial Nos. 85810677; 85810681; 85810689; and 85811478

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The Examining Attorney made of record with his June 29, 2013 Office
Action printed copies of the following Internet webpage and blog:
ReceiptMatch
from Amex
Description
ReceiptMatch from American Express OPEN
ReceiptMatch, a feature created exclusively for American
Express OPEN Cardmembers, stores and organizes your
receipts for you.
Reviews:
“I can’t take any pictures with my S4. The exposure on the
camera is too high and I can’t adjust it with the app. Going to
the “Camera” app works fine, and going to my “Expensify” app
works fine, but when trying to take a picture with the
ReceiptMatch it is just a white sheet of paper with no words. …”
“I haven’t fully tested this application. It seems to be holding on
to the receipts, but I haven’t matched any of them yet. …”
play.google.com/store/apps; and

PO Receipt Match
I have done a shipment receipt for a po.
The line is not closed on the PO (I can see this via Edit Purchase
Orders Window)
When I go to invoice match – I cannot see this line item…is that
b/c you cannot invoice match against a closed PO line???
msgroups.net/microsoft.public.greatplains/po-receipt-match.

In addition, the Examining Attorney made of record with his June 29,
2013 Office Action copies of the following two printed advertisements:

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and

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The Trademark Examining Attorney also placed into the record with his
June 29, 2013 Office Action the following dictionary definitions:4
receipt noun
1 : a written acknowledgement of having received, or taken
into one’s possession, a specified amount of money, goods,
etc.
2 : receipts, the amount or quantity received.

4 The May 30, 2013 Letter of Protest Memorandum issued to the Examining
Attorney by the Office of the Deputy Commissioner for Trademark Examination
Policy also included as evidence the above Internet webpages and advertisements as
well as definitions of “receipt” and “match” from the “English Worldwide” database
of Collinsdictionary.com rather than the “American” database. We cannot determine
whether these definitions reflect American English usage. As a result, we give the
definitions from Collinsdictionary.com no consideration.
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3 : the act of receiving or the state of being received.
4 : something that is received.
5 : Archaic. Recipe.5
match noun
1 : a person or thing that equals or resembles another in
some respect.
2 : a person or thing able to cope with another as an equal:
to meet one’s match.
3 : a person or thing that is an exact counterpart of another.
4 : a corresponding, suitably associated, or harmonious pair:
The blue hat and green scarf were not a good match.
…
verb (used with an object)
9 : to equal; be equal to: My talent does not match his.
10 : to be the match or counterpart of; harmonize with: The
skirt matches the jacket perfectly.
11 : to cause or correspond; adapt: to match one’s actions to
one’s beliefs.
12 : to fit together, as two things: to match the pieces of a
puzzle.6
Applicant placed into the record with its December 30, 2103
communication printed copies of pages from its Internet website, as well as a
substitute specimen, displaying the term RECEIPTMATCH as a trademark
and not a descriptive term, and copies of third-party Internet web pages
utilizing unrelated marks to identify goods and services similar to those
offered by Applicant in order to demonstrate the lack of a competitive need
for the term RECEIPTMATCH in the relevant industry. None of these third-

5 Dictionary.com, Based on the Random House Dictionary (2013).

6 Id.
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party web pages use the term RECEIPTMATCH as a mark or descriptive
term. The following information is contained on Applicant’s web site:
ReceiptMatch™ is for the customer who is looking to streamline
their expense management. No more lost or damaged receipts.
At ReceiptMatch™ we believe all your transactions should be
safe and secure in one central location allowing you to
seamlessly access, store and manage your receipts. We simplify
this process by aggregating all your purchases, allowing them to
be organized digitally, so that all you have to do is Simply
Shop™.

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With its May 6, 2014 communication, Applicant submitted, inter alia, the
declaration of its President and CEO, Chad Batterman, including the
following:

Applicant further introduced into the record four essentially identical
customer declarations from individuals who attended presentations by Mr.
Batterman in which he discussed the services offered under the
RECEIPTMATCH mark, and subsequently became customers of Applicant.
These declarations include the following language:
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…

Applicant also submitted a printout from the USPTO’s Trademark Status
and Document Retrieval (TSDR) system for application Serial No. 85740410,
owned by American Express Marketing & Development Corp. and amended
to seek registration on the Supplemental Register for the mark
RECEIPTMATCH for goods identified as “downloadable software application
Serial Nos. 85810677; 85810681; 85810689; and 85811478

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featuring an expense reconciliation function that matches receipt images to
the corresponding transactions on a card statement.”7
In support of the refusal to register, the Examining Attorney argues:

Here, the plain meaning of “RECEIPTMATCH” is the
harmonization of written acknowledgment of having received, or
taken into one’s possession, a specified amount of money – in
essence, “RECEIPTMATCH” means the matching of receipts to
one another or something else. In other words, the individual
components of the “RECEIPTMATCH” term retain their
descriptive meaning in relation to the goods and services. As
such, the combination results in a composite mark that is itself
descriptive and not registrable because it immediately conveys
knowledge of a quality, feature, function, or characteristic of
Applicant’s goods and services, namely, the matching of receipts.
In fact, as established by evidence gathered during prosecution,
third-parties have begun or were already using the non-
composite version of the phrase “receipt match” to refer to
purchase order receipt matching activities. As such, the
Examining Attorney contends that the Applicant’s
“RECEIPTMATCH” component is primarily merely descriptive
with respect to the applicant’s goods and services even if the
Board determines that the asserted RECEIPTMATCH mark
does not describe the full scope and extent of the applicant’s
goods or services.8

The Examining Attorney further argues:
It should be noted with particularity that the applicant placed in
the stream of Interstate commerce advertising that included the
following statement:

“[t]ake photos of receipts and we will digitize,
upload and MATCH receipts to your online
accounts including credit card transactions.”

7 Applicant and the Examining Attorney appear to agree that Internet web page
discussing Amex’s ReceiptMatch, made of record by the Examining Attorney with
his June 29, 2013 Office Action refers to the goods identified in this application.

8 12 TTABVUE 12-13. Citations are to TTABVUE, the Trademark Trial and Appeal
Board’s publically available docket history system. See Turdin v. Trilobite, Ltd., 109
USPQ2d 1473, 1476 n.6 (TTAB 2014).
Serial Nos. 85810677; 85810681; 85810689; and 85811478

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(internal citations omitted.) The Examining Attorney therefore
contends that the plain meaning of the term
“RECEIPTMATCH” (the matching of receipts to one another or
something else) describes the purpose and intended use of
Applicant’s goods and services (goods and services used to match
receipts to online accounts).9

Turning to Applicant’s recited goods and services, we observe that they
perform related, indeed largely identical, functions to that described in this
advertisement. As identified, Applicant’s goods and services encompass
computer database management software, as well as business and online
website hosting and maintenance services in the field of organizing,
managing and analyzing digitized receipts and financial records. According to
the definitions of record, a “receipt” is a written acknowledgment of having
received a specified amount of money or goods. As defined, Applicant’s goods
and services organize, manage and analyze such written acknowledgments.
“Match” is defined as to harmonize, correspond or fit together. Thus,
RECEIPTMATCH may be defined as to match, or harmonize, correspond or
fit together receipts, or written acknowledgments of having received money
or goods. To harmonize, correspond or fit together receipts appears to be
included among the features of Applicant’s goods and services, namely,
organization, management and analysis of receipts. Applicant’s own evidence,
outlined above, shows that its goods and services allow users to “access, store
and manage your receipts.” Applicant’s substitute specimen indicates that its
goods and services allow users to forward their receipts to Applicant, who will

9 Id. at 13.
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digitize and store them so users may view them all in one place. This
evidence further shows that Applicant’s website under its RECEIPTMATCH
mark offers subfolders in which users may store and access receipts related
to, inter alia, auto and transportation, bills and utilities, business services,
entertainment, food and dining, etc. Thus, Applicant’s goods and services
organize, store, manage receipts in various subcategories.
Applicant vigorously argues that its goods and services do not “match
receipts.” Applicant argues with equal vigor that its original specimen of
record, reproduced above – indicating that “we match personalized offers and
coupons based on products purchased and your brand preference” and that an
upcoming mobile phone app feature will allow users to “take photos of
receipts and we will digitize, upload and MATCH receipts to your online
accounts including credit card transactions” – is an internal document not
intended for public release. Applicant argues in its reply brief (13 TTABVUE
4) that “this specimen was replaced in the record and should not be
considered, more importantly, Applicant submits that the specimen was
given undue weight by the Examiner.” Applicant submitted its original
specimen of use and the Examining Attorney clearly relied upon it in issuing
the refusals of registration under appeal herein. Accordingly, Applicant will
not now be heard to argue that its own original specimen should not be
considered part of the record for purposes of our determination herein.
However, even if we do not consider the original specimen of use, other
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evidence of record, including Applicant’s substitute specimen, indicate that
its goods and services under the RECEIPTMATCH and RECEIPTMATCH
SIMPLY SHOP marks include features allowing users to match their receipts
to, at the very least, subcategories of expenditures as part of Applicant’s
organization, management and analysis of such receipts.
While the Examining Attorney’s evidence is somewhat limited, it
nevertheless establishes that the term RECEIPTMATCH is defined as to
match, or harmonize, correspond or fit together receipts, or written
acknowledgments of having received money or goods. The Examining
Attorney’s Internet evidence is consistent with these dictionary definitions
and demonstrates that third parties use the term RECEIPTMATCH in
various contexts to identify similar functions of matching of invoices and
purchase orders (Abacus Data Systems); the matching of receipts to
corresponding transactions (Amex); and matching receipts to goods subject to
purchase orders (Ariba). As a result, the term RECEIPTMATCH merely
describes a function, feature or characteristic of Applicant’s goods and
services.
Based on the totality of the evidence of record, we find that the term
RECEIPTMATCH merely describes a function, feature or characteristic of
Applicant’s goods and services used to organize, manage and analyze
receipts, namely, that they may be used to match receipts to various types of
expenditures in Applicant’s database. We further find no evidence of record
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that RECEIPTMATCH is incongruous or presents a double entendre with
respect to the recited goods or services.
If a term has a primary significance that is descriptive in relation to at
least one of the recited goods or services, and does not create any double
entendre or incongruity, then the term is merely descriptive. The fact that
RECEIPTMATCH may have different meanings in different contexts is not
controlling. See In re RiseSmart Inc., 104 USPQ2d 1931, 1933 (TTAB 2012);
In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984); In re Bright-Crest,
Ltd., 204 USPQ 591, 593 (TTAB 1979).
Decision: The refusal to register Applicant’s RECEIPTMATCH marks
under Trademark Act Section 2(e)(1) of the Trademark Act, without a
showing of acquired distinctiveness under Section 2(f), is affirmed.
The refusal to register Applicant’s RECEIPTMATCH SIMPLY SHOP
marks without a showing of acquired distinctiveness in part as to
RECEIPTMATCH, on the ground that it is an unregistrable component of
Applicant’s mark, within the meaning of Trademark Act § 2(e)(1), is affirmed.
Inasmuch as the Examining Attorney previously accepted Applicant’s
claims of acquired distinctiveness, presented in the alternative, as to all four
applications, the applications will proceed to registration in whole or in part,
as applicable, under Section 2(f) of the Trademark Act.