Edward W. Vaughan

Trademark Trial and Appeal Board

Sep 15, 2016

No. 86363382 (T.T.A.B. Sep. 15, 2016)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
September 15, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Edward W. Vaughan
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Serial No. 86363382
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Michael P. Fortkort of Michael P. Fortkort P.C. for Edward W. Vaughan.

Gina Hayes, Trademark Examining Attorney, Law Office 103 (Michael Hamilton,
Managing Attorney).
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Before Wellington, Ritchie and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Edward W. Vaughan (“Applicant”), dba Electronic Transactions Systems, filed an
application for registration on the Supplemental Register of the proposed mark
ELECTRONIC TRANSACTION SYSTEMS in standard characters for the services
set forth below:
Merchant accounts, namely, merchant banking services;
credit and debit card processing or handling,
authorization and clearing; merchant accounts in the field
of finance, namely, provision of monthly financial
statements online; financial services, namely, provision of
merchant account interchange qualification reporting,
chargeback and retrieval information, provision of daily
deposit summaries for review, retrieval of requests for
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sales and credit slips and credit match verification;
financial services, namely, processing all types of credit
cards and debit cards, in International Class 36.1
The Examining Attorney refused registration under Section 23 of the Trademark
Act, 15 U.S.C. § 1091, on the ground that Applicant’s proposed mark is generic and
thus incapable of distinguishing the identified services. When the Examining
Attorney made the refusal final, Applicant requested reconsideration and
simultaneously appealed to this Board. The Examining Attorney denied the request
for reconsideration and this appeal proceeded. Applicant and the Examining
Attorney have filed their briefs.
In order to qualify for registration on the Supplemental Register, a proposed mark
“must be capable of distinguishing the applicant’s goods or services.” 15 U.S.C.
§ 1091(c). “[G]eneric terms by definition are incapable of indicating a unique
source.” In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1267
(Fed. Cir. 2015), citing In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987) (“Generic terms, by definition
incapable of indicating source, are the antithesis of trademarks, and can never
attain trademark status.”). A mark is generic if it refers to the class or category of
goods or services on or in connection with which it is used. In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001), citing H. Marvin
Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir.

1 Application Serial No. 86363382 was filed on August 11, 2014 under Trademark Act
Section 1(a), 15 U.S.C. § 1051(a), based on Applicant’s asserted use of the mark in
commerce, stating June 1994 as the date of first use and first use in commerce.
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1986) (“Marvin Ginn”). The test for determining whether a mark is generic is its
primary significance to the relevant public. In re American Fertility Soc’y, 188 F.3d
1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB Inc., 940 F.2d
638, 19 USPQ2d 1551 (Fed. Cir. 1991); and Marvin Ginn, supra. Making this
determination “involves a two-step inquiry: First, what is the genus of goods or
services at issue? Second, is the term sought to be registered … understood by the
relevant public primarily to refer to that genus of goods or services?” Marvin Ginn,
228 USPQ at 530. The Examining Attorney has the burden of establishing by clear
evidence that a mark is generic. In re Merrill Lynch, 4 USPQ2d at 1141; In re
American Fertility Soc’y, supra; and Magic Wand Inc., supra. “Doubt on the issue of
genericness is resolved in favor of the applicant.” In re DNI Holdings Ltd., 77
USPQ2d 1435, 1437 (TTAB 2005).
1. The genus of Applicant’s services.
Our first task under Marvin Ginn is to determine, based on the evidence of record,
the genus of Applicant’s services. Because the identification of goods or services in
an application defines the scope of rights that will be accorded the owner of any
resulting registration under Section 7(b) of the Trademark Act, generally “a proper
genericness inquiry focuses on the description of services set forth in the
[application or] certificate of registration.” Magic Wand, 19 USPQ2d at 1552, citing
Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 942, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990).
Applicant contends that the genus of services at issue is “merchant banking
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services.”2 This expression appears to be a term of art, and neither Applicant nor
the Examining Attorney has provided a persuasive explanation as to the meaning of
“merchant banking.”3 We will instead focus our discussion on the following
identified services, which are clearer in meaning: “credit and debit card processing
or handling, … financial services, namely, processing all types of credit cards and
debit cards.” A refusal on grounds of genericness is proper with respect to all of the
identified services in an International Class if the mark is generic for any of the
services in that class. In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632,
1638 (Fed. Cir. 2016) (“A registration is properly refused if the word is the generic
name of any of the goods or services for which registration is sought.” (quoting 2
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 12:57)); see also In re
Analog Devices, Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff’d, 871 F.2d 1097, 10
USPQ2d 1879 (Fed. Cir. 1989) (unpublished). Applicant confirms in his brief that
his services “assist merchants in converting credit and debit card payments to funds
the merchants may deposit in their bank accounts …”4
Applicant argues that the Examining Attorney erred when she “incorrectly
identified the genus of Applicant’s Services,”5 making “the profoundly inaccurate

2 Applicant’s brief at 6, 8 TTABVUE 7.
3 According to RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE (2nd ed. 1987), p.
1202, “merchant bank” is a chiefly British expression meaning “a private banking firm
engaged chiefly in investing in new issues of securities and in accepting bills of exchange in
foreign trade.” As the dictionary identifies the term as a British one, we cannot be sure that
in the United States market the term would be understood to have this meaning.
4 Applicant’s brief at 7, 8 TTABVUE 8.
5 Applicants’ brief at 10.
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finding that ‘the identification, and thus the genus [of Applicant’s Mark], is
financial services provided through electronic transaction systems.’”6 This
characterization of the Examining Attorney’s position is given without a citation to
the record, and is not an accurate one. We note that in her first Office Action, the
Examining Attorney clearly contended that the genus at issue was “credit card
processing or handling, authorization and clearing” and “financial services, namely,
processing all types of credit cards and debit cards.”7 As this language is drawn
directly from Applicant’s recitation of services, it was a sound contention. Magic
Wand, 19 USPQ2d at 1552.
2. Public understanding of the term ELECTRONIC TRANSACTION
SYSTEMS.

We next consider whether ELECTRONIC TRANSACTION SYSTEMS would be
understood by the relevant public primarily to refer to the processing or handling of
credit and debit cards. Applicant contends that his services “are not consumer
services” but would be marketed only to “merchants who use Applicant’s services in
serving their own customers”; and that the relevant public therefore consists of
merchants.8 The Examining Attorney does not contest this characterization of the
relevant public.9 Therefore, we consider the relevant public to consist of merchants
and the personnel of businesses where credit cards and debit cards are presented as
a form of payment. In our deliberations, we have considered all of the evidence of

6 Id. at 8, 8 TTABVUE 9.
7 Office Action of December 2, 2014 at 2.
8 Applicant’s brief at 6-7, 8TTABVUE 7-8.
9 Examining Attorney’s brief, 10 TTABVUE 6.
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record. We summarize below and discuss the evidence that we find most highly
relevant and probative regarding the public’s understanding of Applicant’s mark.
To begin, the Examining Attorney has submitted the following definitions:
electronic transaction:
An act of buying or selling something or sending money
electronically, especially over the internet.
CAMBRIDGE BUSINESS ENGLISH DICTIONARY, at .10
system:
a set of connected items or devices that operate together
…
A way of doing things: a method

CAMBRIDGE ACADEMIC CONTENT DICTIONARY, at .11
The Examining Attorney has made of record excerpts of news items in which the
phrase “electronic transaction system” (or its plural) is used in the context of
payments. Among these, we note the following:
House Bill 190 Authorizes the Supreme Court to develop
and implement an electronic transaction system for
submittal of payment to the circuit courts of all fees,
penalties and fines and bonds …
12
MyECheck Inc., … provider of alternative payment
solutions, reported …
… the company said it processed about 2.1 million
transactions in 2008, its first full year of operation with
its electronic transaction system.

10 Office Action of December 2, 2014 at 40.
11 Id. at 42.
12 Id. at 7.
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Sacramento Bee, January 15, 2009.13
… a 23 percent sales tax on net retail purchases would be
far less of an economic burden if we replaced our paper
currency with an electronic transaction system.
Pittsburgh Post-Gazette, December 19, 2007.14
He also knew the ins and outs of electronic transactions
systems through previous positions with gift-card supplier
Stored Value Systems and National City Processing,
where he developed a smart-card system to handle food
stamps and cash benefits in several states.
The Courier-Journal (Louisville, KY), August 20, 2007.15
The company also creates electronic transaction systems
to enable online selling.
Grocery Headquarters, January 1, 1999.16
Both Chase Manhattan and Citibank, in association with
Visa and Mastercard, are launching a smart card program
in New York this fall.
… Michael Smith, general manager of operations and
electronic transaction systems at Schlumberger DANYL,
said that the Atlanta and New York tests should create a
ripple effect.
The Boston Herald, August 5, 1996.17
…the financial habits of both consumers and corporations
would have to change. But, because the electronic
transaction system was really superior to the paper-based
one, it would win out in the end.

13 Office Action of July 7, 2015 at 6.
14 Id. at 7.
15 Id. at 8.
16 Id. at 14.
17 Id. at 17.
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One of the recommendations was to establish a series of
local automated clearing houses (ACHs) to process a large
number of both paperless credit and debit transactions.
ABA Banking Journal, March 1980.18
Tittle, 54, spent 20 years developing an electronic
transaction system for the Minnesota Department of
Revenue. He led the design and development of the state’s
first electronic tax-filing system and its first electronic
tax-payment systems.
Star Tribune (Minneapolis, MN), November 6, 2006.19
Founded in 1981, VeriFone introduced one of the first
check verification and credit authorization devices. … In
1997, HP bought the company …
HP was attracted by the possibilities of taking the
company’s electronic-transaction systems onto the
Internet …
San Jose Mercury News, July 10, 2006.20
The Examining Attorney has also submitted an excerpt from the commercial
website , which “provides debit card, credit card and gift
card processing services for our merchants” and offers “an electronic transaction
system which utilizes the NACHA (National Automated Clearing House
Association) network to provide … processing …”21 She has also submitted excerpts
of the descriptions of certain patents:
Electronic transaction system capable of improving
transaction security …

18 Id. at 19.
19 Id. at 28.
20 Id. at 29.
21 Id. at 41
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When the user wants to proceed a shopping transaction, a
sale end operation device of a sale end reads the electronic
certificate and personal radio frequency identification,
respectively, …
22
A CRYPTOGRAPHIC SYSTEM AND METHOD FOR
ELECTRONIC TRANSACTIONS …
1. An electronic transaction system comprising at least
one first subscriber interface …
The current electronic commerce and payments through
the Internet are partially unprotected …
In this manner, the present electronic transaction system
increases the real security ICC-type guarantees of
commerce over IP (Internet Protocol).
23
SECURE ELECTRONIC TRANSACTION SYSTEM …
… a system and method for the secure processing of
electronic transactions comprises: receiving …
information for a financial transaction card; …
24
Finally, the Examining Attorney submitted additional evidence showing use of
“electronic transaction system” in connection with a wider range of transfers (other
than payments), such as transfers of information, documents, title in stocks and
bonds, real estate transactions, and bank-to-bank transfers of money. While this
evidence shows that “electronic transaction system” is a term of wide applicability,

22 Id. at 54.
23 Id. at 44-48.
24 Id. at 49.
Serial No. 86363382

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it is of less relevance than evidence of use of the term specifically in connection with
payments.
The documentary evidence submitted by Applicant consists of an “Order and
Entry of Default Judgment” issued by the U.S. District Court for the District of
Columbia, permanently enjoining a defendant named Prodigy Partners Ltd., Inc.
from using various trade names, including “Electronic Transaction Services.”25 We
do not interpret this order as constituting an adjudication of whether Applicant’s
proposed mark is or is not generic.
We find the Examining Attorney’s evidence set forth above to be clear evidence of
use of the term “electronic transaction systems” or “electronic transaction system” to
identify a process for dealing with various kinds of payments in a manner that does
not require the physical transfer of cash or commercial documents such as checks.
The evidence demonstrates use of the term in a number of contexts, including online
buying and selling; payment of taxes; payment of court fees; processing of gift cards
and smart cards; credit authorization; and “paperless credit and debit transactions”
in general. “Credit and debit card processing,” as identified in Applicant’s recitation
of services, is indeed such a process of effectuating payments.
Applicant argues:
“Financial services” are services, while “electronic
transaction systems” are goods. To identify the “genus” of
Applicant’s Services as services provided by means of
goods not only fails to support a finding of genericness, it
actually supports a finding in favor of the descriptiveness
(or suggestiveness) of Applicant’s Mark insofar as it

25 Applicant’s response of June 2, 2015 at 10-11.
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describes the means by which Applicant’s [sic] does or
could provide its services to consumers.26
Applicant’s suggestion that the generic name of goods cannot be generic for services
is not tenable:
[A] term can be generic for a genus of goods or services if
the relevant public … understands the term to refer to a
key aspect of that genus—e.g., a key good that
characterizes a particular genus of retail services. “A
generic name of goods may also be a generic name of the
service of selling or designing those goods.”
In re Cordua Rests., Inc., 118 USPQ2d at 1637 (quoting 2 MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 12:23). See also In re Hotels.com LP, 573
F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (HOTELS.COM is generic for
“providing information for others about temporary lodging” and “travel agency
services” because the term “hotels” “names a key aspect” of such services.) In any
event, the very essence of Applicant’s card processing service is to operate and make
available to customers a system for making electronic payments. As the Examining
Attorney’s evidence shows, people in the relevant market use the expression
ELECTRONIC TRANSACTION SYSTEMS to refer to such a system.
Applicant criticizes the Examining Attorney’s evidence as “an array of random
and irrelevant blurbs and other references from the Internet…”27 Evidence of the
ways in which members of the public use language to discuss relevant fields of
business is exactly the type of evidence that will reveal whether the relevant public
would use the proposed mark to refer to the services at issue. While some items of

26 Applicant’s brief at 8-9, 8 TTABVUE 9-10.
27 Id. at 10, 8 TTABVUE 11.
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the Examining Attorney’s evidence are more relevant than others, much of the
evidence is directly on point, as is shown above, clearly associating the term
ELECTRONIC TRANSACTION SYSTEMS with credit and debit payment
transactions. “Evidence of the public's understanding of the mark may be obtained
from ‘any competent source, such as consumer surveys, dictionaries, newspapers
and other publications.’” In re Cordua Rests., Inc., 118 USPQ2d at 1634, citing
Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d
1827 (Fed. Cir. 2015).
Finally, Applicant argues that the Examining Attorney has “impermissibly
dissected Applicant’s Mark in an effort to make the Internet evidence a better fit.”28
We disagree. The Examining Attorney, by presenting evidence of use of the term
“electronic transaction systems” as a whole by members of the relevant public has
squarely addressed Applicant’s proposed mark as a whole and has shown that
Applicant’s proposed mark as a whole is used to refer to automated payment
services. The fact that the Examining Attorney submitted dictionary definitions of
the individual terms “electronic transaction” and “system” does not detract from the
correctness of her approach; she had no need to argue, in this case, that the
proposed mark is a combination of individual generic terms, because she was able to
show generic use of the proposed mark as a whole.
Having reviewed all the evidence and arguments of record, we find that clear
evidence shows that the relevant public would understand the term ELECTRONIC

28 Id.
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TRANSACTION SYSTEMS primarily to refer to credit card and debit card
processing as identified in the application. Accordingly, we affirm the Examining
Attorney’s refusal to register Applicant’s proposed mark on the Supplemental
Register on the ground that it is incapable of distinguishing the recited services.
Decision: The refusal to register Applicant’s mark is AFFIRMED on the
ground that ELECTRONIC TRANSACTION SYSTEMS is generic and thus
incapable of distinguishing Applicant’s services.