Electronic Payments Inc.

Trademark Trial and Appeal Board

Nov 20, 2019

87049492 (T.T.A.B. Nov. 20, 2019)

This Opinion is not a
Precedent of the TTAB

Hearing: July 18, 2019 Mailed: November 20, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Electronic Payments Inc.
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Serial No. 87049492
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Sean L. Ingram of Ingram IP Law PA,
for Electronic Payments Inc.
Anne M. Farrell, Trademark Examining Attorney, Law Office 118,
Michael W. Baird, Managing Attorney.
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Before Kuhlke, Goodman and Heasley,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
On May 25, 2016, Electronic Payments Inc. (“Applicant”) filed an application to
register ELECTRONIC PAYMENTS (in standard characters) for services ultimately
identified as “Credit card transaction processing services, namely, obtaining
transaction authorization codes for merchants; Gift card transaction processing
services, namely, obtaining transaction authorization codes for merchants; Merchant
services, namely, payment transaction dispute processing services; Electronic credit
card transaction processing services, namely, obtaining transaction authorization
Serial No. 87049492
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codes for merchants; Payment dispute processing services, namely, providing credit
card and debit card transaction chargeback processing services for merchants; and
not available to cardholder markets” in International Class 36, on the Principal
Register.1
Procedural Background
The Trademark Examining Attorney initially refused registration of Applicant’s
applied-for mark on the ground that the mark is merely descriptive of Applicant’s
services under Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1). In response,
Applicant argued its mark is suggestive and, in the alternative, Applicant submitted
a declaration of five years of substantially exclusive and continuous use in commerce
to support a claim of acquired distinctiveness under Section 2(f) of the Trademark

1 Application Serial No. 87049492 was filed under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and use in commerce
since at least as early as January 29, 2004. The original identification of services read as
follows: “Credit card transaction processing services; Merchant services, namely, payment
transaction processing services; Electronic credit card transaction processing; Payment
processing services, namely, credit card and debit card transaction processing services;
Providing electronic processing of credit card transactions and electronic payments via a
global computer network.” During prosecution of the application, the Examining Attorney
noted that the identification “shows that the services feature processing of ‘electronic
payments’ [and therefore] merely describes a primary feature of the services.” September
18, 2016 Office Action, TSDR at 1. Applicant amended the identification to remove the word
“electronic” from the following: “Providing electronic processing of credit card transactions
and electronic payments via a global computer network.” June 9, 2017 Response TSDR at 1.
The Examining Attorney did not accept this amendment because it exceeded the scope of
the original identification. July 11, 2017 Office Action TSDR at 1. Applicant subsequently
provided the above-listed amended identification of services, which was accepted by the
Examining Attorney. August 9, 2018 Req. Recon. TSDR at 1; September 17, 2018 Req.
Recon. Denied TSDR at 1.

Page references herein to the application record refer to the online database of the USPTO’s
Trademark Status & Document Retrieval (TSDR) database. References to the briefs on
appeal refer to the Board’s TTABVUE docket system.
Serial No. 87049492
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Act, 15 U.S.C. § 1052(f). The Examining Attorney issued a second nonfinal Office
Action maintaining the mere descriptiveness refusal and finding the declaration of
acquired distinctiveness insufficient to support registration under Section 2(f). In
response to this Office Action, Applicant submitted further evidence to support
registration under Section 2(f) and did not maintain in the alternative that its mark
is inherently distinctive. Thereafter, in a third nonfinal Office Action registration was
refused on the ground that the proposed mark is generic as used in connection with
the services. The Examining Attorney also maintained the mere descriptiveness
refusal, noting Applicant’s claim of acquired distinctiveness is a concession of mere
descriptiveness and that Applicant’s evidence to support a claim of distinctiveness is
insufficient due to the highly descriptive nature of the mark. In response, Applicant
argued against the genericness refusal, resurrected its argument that the proposed
mark is suggestive, and submitted further evidence of acquired distinctiveness. In
the Final Office Action the Examining Attorney maintained the genericness and mere
descriptiveness refusals and her finding that the evidence of acquired distinctiveness
is insufficient. Thereafter, Applicant filed a notice of appeal and a request for
reconsideration. In its request for reconsideration, Applicant again argued that its
mark is not generic but rather suggestive, and in the alternative has acquired
distinctiveness. After the Examining Attorney denied the request for reconsideration,
the appeal resumed. We affirm the refusal to register on both grounds.
Serial No. 87049492
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The Record
The Examining Attorney submitted excerpts from third-party websites showing
use of the phrase “electronic payment[s]” to name a payment method through an
electronic medium. Representative samples are reproduced below:
The electronic payment system has grown increasingly
over the last decades due to the widely [sic] spread of
internet-based banking and shopping. As the world
advance[s] more on technology development, a lot of
electronic payment systems and payment processing
devices have been developed to increase, improve and
provide secure e-payment transactions while decreasing
the percentage of check and cash transaction. Electronic
payment methods E-payment methods could be classified
into two areas … www.securionpay.com (July 11, 2017
Office Action TSDR at 2);
Electronic Payment Services for Commercial Business …
Our suite of electronic payment services offers you speed,
security, accuracy and flexibility. … We can even help you
move more of your payments from paper to electronic by
driving supplier acceptance of electronic payments. … We
offer a variety of electronic payment initiation options,
including online and direct data transmission for both
domestic and foreign payments www.usbank.com (Id. at 7);
Learn about Electronic Payments … Electronic Payments
via ACH … Easy, secure deposits and receivables with
Direct Deposit and Direct Payment via ACH.
https://electronicpayments.nacha.org (Id. at 11-12);
Government Finance Officers Association Electronic
Payments … Background: Moving funds electronically is
efficient, effective, and common within local government …
While electronic payments are not immune from fraud, and
criminals are becoming more sophisticated … Many types
of electronic payments exist, and banks may offer specific
products or services as the market evolves. The most
popular types of electronic payments include … Purchasing
(procurement) cards – a credit card transaction designed to
reduce the volume of purchase orders … Electronic
accounts payable – a credit card transaction, often without
Serial No. 87049492
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physical cards, that allows governments to pay invoices
electronically. www.gfoa.org (Id. at 13); and
Vantage Pointsmarter Payments Electronic Payments for
Business How electronic payments can help your business
… See how and why electronic payments should at least be
an option for your business. … Taking electronic payments
gives your company some reach. www.vantiv.com (Id. at
15).
In addition, the Examining Attorney submitted excerpts from third-party
websites describing aspects of the electronic payment process to show that Applicant’s
services are part of the process of processing electronic payments. February 9, 2018
Office Action TSDR at 2-16. This excerpt comes from www.squareup.com:
Understanding how an electronic payment works can get
technical since there are a lot of moving parts. Here’s a
breakdown of the main participants required for an
electronic payment transaction: The cardholder is
identified as the consumer who purchases a product or
service online. The merchant is the person or business that
sells the product or service to the cardholder. The issuer is
the financial institution that provides the cardholder the
payment card. This is usually the cardholder’s bank. The
acquirer, or merchant account provider, is the financial
institution that establishes an account with the merchant.
The acquirer authorizes the legitimacy of the cardholder
account. The payments processor handles the official
transaction between the cardholder and merchant. The
payment gateway processes merchant payment messages
and uses security protocols and encryptions to ensure
transaction safety. https://squareup.com/townsquare (Id.
at 7-8).
Applicant submitted the following evidence to traverse the genericness refusal
and to support its claim of acquired distinctiveness under Section 2(f):
The affidavit of Michael Nardy Applicant’s Chief Executive
Officer attesting that “the mark has become distinctive of
the goods and/or services through applicants substantially
exclusive and continuous use of the mark in commerce that
Serial No. 87049492
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the U.S. Congress may lawfully regulate for at least the
five years immediately before the date of this statement.”
(December 12, 2016 Response TSDR at 2-3);
Applicant’s press release that includes results from The
Nilson Report ranking Applicant as the 34th largest
payment processor (June 9, 2017 Response TSDR at 2-3);
Excerpt from a third-party website describing a procure-to-
pay service (Id. at 4);
A flowchart showing the entities that participate in
payment card transactions (January 11, 2018 Response
TSDR at 7);
Declaration of Michael Nardy (“Nardy Decl.”) attesting,
inter alia, that Applicant is a merchant acquirer in the
payment card industry (Id. at 2-6);
Declarations from 23 merchants and a competitor
attesting, inter alia, that Applicant is a well-known and
prominent industry leader in the payment card industry
(Id. at 12-59);
Search results from the Google search engine for the
wording electronic payments and “electronic payments”
(Id. at 8-11);
Excerpt from Merriam-Webster online dictionary showing
no results for “electronic payments” (August 9, 2018 Req.
for Recon. at 2-5); and
Excerpt from Merriam-Webster online dictionary showing
the definition of payment as “the act of paying” “something
that is paid” and “requital” (Id. at 7-15).
Genericness
“A generic mark, being the ‘ultimate in descriptiveness,’ cannot acquire
distinctiveness, and is not entitled to registration on either the Principal or
Supplemental Register under any circumstances. In re La. Fish Fry Prods., Ltd., 797
F.3d 1332, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (quoting H. Marvin Ginn Corp.
Serial No. 87049492
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v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986)).
A designation 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 Marvin Ginn, 228 USPQ 528). “[A]
term [also] is generic if the relevant public understands the term to refer to part of
the claimed genus of goods or services, even if the public does not understand the
term to refer to the broad genus as a whole.” In re Cordua Rests., Inc., 823 F.3d 594,
118 USPQ2d 1632, 1638 (Fed. Cir. 2016) (“the term ‘pizzeria’ would be generic for
restaurant services, even though the public understands the term to refer to a
particular sub-group or type of restaurant rather than to all restaurants”). “The test
is not only whether the relevant public would itself use the term to describe the
genus, but also whether the relevant public would understand the term to be
generic.” In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1685 (Fed.
Cir. 2009).
The test for determining whether a proposed mark is generic is its primary
significance to the relevant public. Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19
USPQ2d 1551, 1553-54 (Fed. Cir. 1991); Marvin Ginn, 228 USPQ at 530. 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.
Serial No. 87049492
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Addressing the first part of the genericness inquiry, we find in this case that the
genus of goods is commensurate with Applicant’s identification of services in the
application. See Magic Wand, 19 USPQ2d at 1552 (“[A] proper genericness inquiry
focuses on the description of [goods or] services set forth in the [application or]
certificate of registration.”). The Examining Attorney and the Applicant are in
agreement that “Credit card transaction processing services, namely, obtaining
transaction authorization codes for merchants; Gift card transaction processing
services, namely, obtaining transaction authorization codes for merchants; Merchant
services, namely, payment transaction dispute processing services; Electronic credit
card transaction processing services, namely, obtaining transaction authorization
codes for merchants; Payment dispute processing services, namely, providing credit
card and debit card transaction chargeback processing services for merchants; and
not available to cardholder markets” is the genus.
We next proceed to the second part of the Marvin Ginn inquiry: whether
ELECTRONIC PAYMENTS is understood by the relevant public primarily to refer
to the services offered by Applicant. Marvin Ginn, 228 USPQ at 530. In this case, the
relevant public would be what Applicant and the Examining Attorney refer to as
consumers in non-cardholder markets. 7 TTABVUE 7; 9 TTABVUE 7. Applicant
“provides products and services to merchants that facilitate acceptance of credit card,
debit card, gift card, and value card transactions and resolve payment disputes due
to chargebacks or fraud” and also “provides a broad range of services to merchants
and acquiring banks… .” Nardy Decl. ¶¶ 26-27, January 11, 2018 Response TSDR at
Serial No. 87049492
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5. In other words, Applicant’s consumers are merchants and acquiring banks; they
are the relevant public.
“Evidence of the public’s understanding of the term may be obtained from any
competent source, such as purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers and other publications.” Royal Crown Co. v.
Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1046 (Fed. Cir. 2018) (citation
omitted); In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1958 (TTAB 2018)
(“These examples [dictionary definitions and industry specific evidence] clearly show
the meanings that relevant consumers attribute to those words when they are used
separately and when they are used together.”); see also In re Hotels.com, L.P., 573
F.3d 1300, 91 USPQ2d 1532, 1537 (Fed. Cir. 2009) (“the Board satisfied its
evidentiary burden, by demonstrating that the separate terms ‘hotel’ and ‘.com’ in
combination have a meaning identical to the common meaning of the separate
components”); In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111-12 (Fed.
Cir. 1987).
Applicant is “a merchant acquirer within the payment card industry.” Nardy Decl.
¶ 3, January 11, 2018 Response TSDR at 2. Applicant submitted a flowchart that
illustrates the payment process. Id. at 7.
Serial No. 87049492
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Applicant’s services are described as follows:
13. EPI [Applicant] provides point of sales (POS) devices to
merchants that enables them to process sales, receive
payments, and maintain records of sales, transactions, and
inventory. A cardholder inserts a credit or debit card into a
POS device provided at a merchant site when checking out
at “brick and mortar” store. …
15. The POS device triggers an authorization step…. as
shown by arrows linking the rectangles labeled
“Merchant,” “Acquirer/ISO,” and “Acquiring Bank.” For
example, the POS device sends an authorization request to
[Applicant] that may include information identifying the
cardholder, the merchant, the acquiring bank, and the
issuer.
16. [Applicant] relays the identifying information to the
acquiring bank for ultimate delivery to the issuer.
17. The issuer performs a fraud check and determines
whether the cardholder has sufficient available credit to
Serial No. 87049492
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cover the desired purchase. Based on the fraud check and
the available credit, the issuer generates a response either
granting or denying authorization.
18. [Applicant] obtains authorization codes or results from
the acquiring bank and forwards these codes to the POS
device provided at the merchant site. If the credit or debit
card transaction is approved, the cardholder is permitted
to complete checkout. If the credit or debit card transaction
is declined, the cardholder [sic] the transaction is declined.
The authorization process takes a few seconds to complete
and is performed while the cardholder is at the point of
sale.
19. [Applicant] participates in an authorization process
that occurs prior to transfer of any funds to the merchant.
In other words, the authorization process does not involve
transfer of funds or payment.
20. The merchant receives payment for any sales directly
from the acquiring bank at a second stage known as
clearing and settlement, which typically occurs in batch
form within 24 to 48 hours to capture payment from
various authorization processes. This batch payment is
depicted in the flowchart as a green arrow between the
rectangles labeled “Acquiring Bank” and “Merchant.”
21. [Applicant] does not make payments for purchases
within the payment card environment.
22. [Applicant] also provides chargeback mitigation
services and fraud risk services after purchases have been
made by cardholders. Chargebacks typically occur when a
cardholder is not satisfied with a product or service
provided by a merchant. In this case, the cardholder may
dispute a charge and the corresponding transaction
amount is deducted from a merchant’s account. [Applicant]
provides chargeback mitigation services to resolve a
disputed charge and provides insurance to the acquiring
bank against financial loss.
23. [Applicant] also provides risk/fraud services to
merchants for charges made using stolen credit or debit
card. …
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25. Electronic Payments Inc. also provides ongoing services
to our business that includes obtaining transaction
authorization codes for payment card purchases and
resolving any payment disputes involving chargebacks or
fraud.
26. [Applicant] provides products and services to
merchants that facilitate acceptance of credit card, debit
card, gift card, and value card transactions and resolve
payment disputes due to chargebacks or fraud. … (Id. at 3-
5.)
The Examining Attorney argues that Applicant’s identified services are “payment
processing services that are performed electronically. Therefore, Applicant’s services
feature electronic payments as a key aspect, central focus or feature, or main
characteristic of these services.” 9 TTABVUE 10.
Applicant argues that the Examining Attorney has not shown that ELECTRONIC
PAYMENTS is generic for Applicant’s services and that Applicant’s services “are
several steps removed from the actual offering of or rendering of electronic payment
services.” 7 TTABVUE 9. Applicant asserts that although its services are provided
prior to or after the transfer of funds, its services are not part of the process of
processing electronic payments. Id. In this regard, Applicant focuses on its “payment
dispute processing services.” But even if ELECTRONIC PAYMENTS is not generic
for payment dispute processing services, a term that is generic as to certain of the
services in Class 36 renders the mark unregistrable as to this entire class of services.
In re Katch, LLC, 2019 USPQ2d 233842, 10 (TTAB 2019); In re Analog Devices Inc.,
6 USPQ2d 1808, 1810 (TTAB 1988), aff’d, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir.
1989) (unpublished).
Serial No. 87049492
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Applicant also points to a dictionary result that shows no entry for “electronic
payments.” However, the presence or absence of “Electronic Payments” in
dictionaries is not controlling on the question of whether a term is generic. In re
ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1603 (TTAB 2014); In re Dairimetics,
Ltd., 169 USPQ 572, 573 (TTAB 1971); cf. Princeton Vanguard, LLC v. Frito-Lay N.
Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1832-33 (Fed. Cir. 2015) (“[E]ven in
circumstances where the Board finds it useful to consider the public’s understanding
of the individual words in a compound term as a first step in its analysis, the Board
must then consider available record evidence of the public’s understanding of whether
joining those individual words into one lends additional meaning to the mark as a
whole.”).
Applicant states that it is not aware of any competitors that use the name
ELECTRONIC PAYMENTS with similar services. Nardy Decl. ¶ 28, January 11,
2018 Response TSDR at 5. We acknowledge that none of the third-party examples
provided by the Examining Attorney appears to be a company that specializes in only
the merchant acquirer aspect of the electronic payment process, but the fact remains
that the purpose of Applicant’s service is to assist in completing the electronic
payment process. We find probative the generic uses of the phrase “electronic
payment[s]” by others involved in the electronic payment processing industry (see,
e.g., www.usbank.com, July 11, 2017 Office Action TSDR at 2, https://squareup.com,
Id. at 6-10). The third-party websites showing use of “electronic payments” have
sufficient context and reflect generic use of the term as they are in lower case letters
Serial No. 87049492
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and are used to refer to the electronic payments process generally. See generally
Plyboo Am. Inc. v. Smith & Fong Co., 51 USPQ2d 1633, 1638 (TTAB 1999) (discussing
generic third-party use); see also Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC,
124 USPQ2d 1184, 1190, 1193 (TTAB 2017) (because business and industry
publications are the work of authors who have an understanding that a brand is
expressed in capital letters, their use of lower case letters to refer to “pretzel crisps”
evidences the relevant public’s understanding that the term is a category of goods,
not a brand).
Moreover, the fact that an applicant may be the first or only user of a generic
designation does not justify registration if the only significance conveyed by the term
is that of a category of goods or services. In re Empire Tech, Dev. LLC, 123 USPQ2d
1544, 1549 (TTAB 2017) (citing In re Greenliant Systems Ltd., 97 USPQ2d 1078, 1083
(TTAB 2010). See also In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d
1567, 1569, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987) (“To allow trademark protection
for generic terms, i.e., names which describe the genus of goods being sold, even when
these have become identified with a first user, would grant the owner of the mark a
monopoly, since a competitor could not describe his goods as what they are.”); In re
Preformed Prods. Co., 323 F.2d 1007, 139 USPQ 271, 273 (CCPA 1963) (exclusive use,
even when coupled with “large sales volume of such goods and its substantial
advertising expenditure . . . cannot take the common descriptive name of an article
out of the public domain and give the temporarily exclusive user of it exclusive rights
to it, no matter how much money or effort it pours into promoting the sale of the
Serial No. 87049492
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merchandise”) (quoting J. Kohnstam, Ltd. v. Louis Marx & Co., 280 F.2d 437, 126
USPQ 362, 364 (CCPA 1960)).
Applicant’s specimen and marketing materials also are probative in indicating
how the public perceives the term ELECTRONIC PAYMENTS. Gould, 5 USPQ2d at
1112 (stating that owner’s generic reference to its own product provided “the most
damaging evidence” that the alleged mark is generic); Mecca Grade Growers, 125
USPQ2d at 1958 (Board considered applicant’s specimen in finding the mark
descriptive and generic); Empire Tech., 123 USPQ2d at 1544 (Board considered
applicant’s specimen, website and promotional video in finding “Coffee Flour”
generic). Applicant’s specimen and brochure explain that it provides “customized
payment processing solutions.” May 25, 2016 Specimen of Use TSDR at 1-6. On its
website, Applicant refers to itself as “one of the nation’s oldest and largest privately
held merchant service providers of electronic payment products to businesses and
ISO’s.” February 9, 2018 Response TSDR at 11. Although Applicant argues that it
does not make the actual payment transfer, it is clear that Applicant’s authorization
service is part of the electronic payment process effectuating electronic payments.
Royal Crown, 127 USPQ2d at 1045. The uses of “electronic payments” by third-
parties reflect use as a common name for an electronic payment process that includes
as a key part or step the authorization for the transfer of the electronic payment. This
process is also shown in Applicant’s flowchart supra.
Indeed, in its initial application, Applicant recognized the pivotal role its services
play in the electronic payment process by providing this identification:
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Credit card transaction processing services; Merchant
services, namely, payment transaction processing services;
Electronic credit card transaction processing; Payment
processing services, namely, credit card and debit card
transaction processing services; Providing electronic
processing of credit card transactions and electronic
payments via a global computer network.
Similarly, in In re DNI Holdings Ltd., 77 USPQ2d 1435 (TTAB 2005), the
applicant applied for SPORTSBETTING.COM for online casino games and providing
information on gaming, and specifically carved out of its applied-for services its sports
betting services. Nonetheless the Board found:
where a single website is offering a variety of interrelated, interactive
services, it seems appropriate to take all of those largely undifferentiated
services into consideration when defining the genus of services.
Accordingly, despite applicant’s tactical decision to carve them out of its
recitation of services, we find that the relevant genus of services herein
includes wagering on sporting events.
Id. at 1438.

Here, Applicant’s services are an integral part of the electronic payment process
that Applicant carved out of its identification. As in DNI Holdings, even if we confine
our analysis to Applicant’s authorization service as the class or category of services,
it still clearly includes the process of completing electronic payments. Id. (quoting In
re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002) (BONDS.COM generic for
identified information services related to investment securities even where applicant
does not buy or sell bonds). See also In re Reed Elsevier Props. Inc., 482 F.3d 1376, 82
USPQ2d 1378 (Fed. Cir. 2007) (integral aspect of the applied-for services
“information exchange about legal services” concerns identifying and helping to select
lawyers).
Serial No. 87049492
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Applicant relies on the declarations of 22 customers and one competitor as
evidence of “the public’s understanding of the term in question.” Reply Br. 10
TTABVUE 8. Applicant argues that these declarations support its position that
ELECTRONIC PAYMENTS is not generic but rather support a finding that it is
inherently distinctive. Id. Applicant specifically requests that the Board address
whether such evidence should be considered as evidence of non-genericness. Id.
Evidence of acquired distinctiveness does not overcome a refusal where the matter
has been shown to be generic. See TRADEMARK MANUAL OF EXAMINING PROCEDURE
(TMEP) § 1212.02(i) (Oct. 2018) and cases cited therein. This general principle has
some relationship to the concept discussed above that even when an entity is the first
and only user of a term and there may be some level of association with the entity,
this does not justify registration where the only significance conveyed by the term is
that of a category of goods. See Merrill Lynch, 4 USPQ2d at 1142. However, Applicant
presents these declarations as direct evidence of consumer perception of the term and
we consider them in connection with the genericness refusal. The declarations are
from a handful of Applicant’s clients and one competitor. We discuss them more
thoroughly below in connection with the assertion of acquired distinctiveness, but,
here, in connection with the genericness refusal, we find these declarations to be of
limited probative value and not sufficient to outweigh the other evidence from the
industry, Applicant’s use of the term, the plain meaning of the words, and the integral
relationship between Applicant’s applied-for services and payment transfers which
are all part of an electronic payment process.
Serial No. 87049492
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The combination of the two words “electronic” and “payments” results in a
designation that has a plain and readily understood meaning. Applicant’s services
are a key aspect of the payment process, and consumers would understand electronic
payment to refer to all aspects of the process, including Applicant’s integral step in
that process. However, the authorization and transfer of funds are all part of a
payment processing system, one does not work or exist without the other; therefore,
in this circumstance the term continues to be generic because Applicant’s services are
engaged in, integrally necessary, and part of completing the transfer of funds in an
electronic payment process.
In view of the foregoing, we find that the term ELECTRONIC PAYMENTS is
generic when used in connection with “Credit card transaction processing services,
namely, obtaining transaction authorization codes for merchants; Gift card
transaction processing services, namely, obtaining transaction authorization codes
for merchants; Electronic credit card transaction processing services, namely,
obtaining transaction authorization codes for merchants; and not available to
cardholder markets.” Because the phrase ELECTRONIC PAYMENTS is generic
when used in connection with the services identified in the application, it is not
registrable.
Mere Descriptiveness and Lack of Acquired Distinctiveness
For completeness, we address the alternative refusal that ELECTRONIC
PAYMENTS is merely descriptive and has not acquired distinctiveness. Although
Applicant appears ultimately to have acquiesced to the mere descriptiveness
Serial No. 87049492
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determination (App. Br. 7 TTABVUE 3), to the extent Applicant has preserved its
argument that the term is suggestive, based on the evidence above, we find that
“electronic payments” immediately describes a significant feature of the services,
namely “obtaining transaction authorization codes for merchants” to complete the
electronic payment process.2 See In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574
(Fed. Cir. 2015) (term is merely descriptive if it describes an ingredient, quality,
characteristic, function, feature, purpose, or use of the specified goods or services).
“To show that a mark has acquired distinctiveness, an applicant must
demonstrate that the relevant public understands the primary significance of the
mark as identifying the source of a product or service rather than the product or
service itself.” In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed.
Cir. 2005); see also Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1729 (Fed. Cir. 2012). “The applicant … bears the burden of proving
acquired distinctiveness.” La. Fish Fry Prods., Ltd., 116 USPQ2d at 1265 (Fed. Cir.
2015).
In determining whether Applicant has demonstrated acquired distinctiveness of
the proposed mark for its goods, we examine the evidence of record as it relates to six

2 To the extent Applicant has not preserved its argument of suggestiveness, “[w]here … an
applicant seeks a registration based on acquired distinctiveness under Section 2(f), the
statute accepts a lack of [inherent] distinctiveness as an established fact.” Yamaha Int’l
Corp. v. Hoshino Gakki Co., 840 F.2d 1571, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988). For an
applicant seeking “registration on the basis of Section 2(f), the mark’s descriptiveness is a
nonissue; an applicant’s reliance on Section 2(f) during prosecution presumes that the mark
is descriptive.” Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92
USPQ2d 1626, 1629 (Fed. Cir. 2009). The Examining Attorney may rely on this concession
alone. TMEP § 1212.02(b).
Serial No. 87049492
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categories of facts that are evaluated together: (1) association of the mark with a
particular source by actual purchasers (typically measured by customer surveys); (2)
length, degree, and exclusivity of use; (3) amount and manner of advertising; (4)
amount of sales and number of customers; (5) intentional copying; and (6) unsolicited
media coverage of the product embodying the mark. Converse, Inc. v. ITC, 909 F.3d
1110, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018); In re SnoWizard, Inc., 129 USPQ2d
1001, 1005 & n.8 (TTAB 2018) (holding Converse applicable to Board proceedings).
No single factor is determinative. Converse, 128 USPQ2d at 1548 (citing
Steelbuilding, 75 USPQ2d at 1424); In re Tires, Tires, Tires Inc., 94 USPQ2d 1153,
1157 (TTAB 2009); see also In re Ennco Display Sys. Inc., 56 USPQ2d 1279, 1283
(TTAB 2000) (“Direct evidence [of acquired distinctiveness] includes actual
testimony, declarations or surveys of consumers as to their state of mind.
Circumstantial evidence, on the other hand, is evidence from which consumer
association might be inferred, such as years of use, extensive amount of sales and
advertising, and any similar evidence showing wide exposure of the mark to
consumers.”).
A. Degree of Descriptiveness

We begin by assessing the degree of descriptiveness because that bears on the
sufficiency of the evidence required to prove acquired distinctiveness. See, e.g., Royal
Crown, 127 USP2d at 1048 (“[H]igher levels of descriptiveness require a more
substantial showing of acquired distinctiveness.”); Real Foods Pty Ltd. v. Frito-Lay
N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1378 (Fed. Cir. 2018) (same);
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Steelbuilding.com, 75 USPQ2d at 1424 (“[A]pplicant’s burden of showing acquired
distinctiveness increases with the level of descriptiveness; a more descriptive term
requires more evidence of secondary meaning.”); In re Bongrain Int’l Corp., 894 F.2d
1316, 13 USPQ2d 1727, 1727 n.4 (Fed. Cir. 1990) (quoting Yamaha Int’l, 6 USPQ2d
at 1008 (“the greater the degree of descriptiveness the term has, the heavier the
burden to prove it has attained secondary meaning”)); Tires, Tires, Tires Inc., 94
USPQ2d at 1157 (highly descriptive terms are less likely to be perceived as
trademarks, and therefore more persuasive evidence of secondary meaning will
ordinarily be required to establish their distinctiveness).
In this case, we find that the designation ELECTRONIC PAYMENTS is highly
descriptive. The record establishes that the wording directly and immediately
identifies significant features of the services without requiring thought or
imagination to discern the nature of the services. Applicant’s transaction
authorization services are required in order to complete the electronic payment
process. The authorization services are merely descriptive as a primary part of the
electronic payment process in the way a primary feature of a good is merely
descriptive of the goods. See Real Foods, 128 USPQ2d at 1374-75 (“Substantial
evidence supports the TTAB’s finding that the proposed marks are highly descriptive.
The terms ‘corn’ and ‘rice’ … describe the primary ingredient in Real Foods’ respective
goods .… Moreover, the term thins describes physical characteristics of the corn and
rice cakes.”). Given the term’s highly descriptive nature, Applicant has a higher
burden to establish acquired distinctiveness.
Serial No. 87049492
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B. Evidence of Acquired Distinctiveness
Applicant has used ELECTRONIC PAYMENTS continuously and exclusively
since at least January 29, 2004. Nardy Decl. ¶ 4 January 11, 2018 Response TSDR at
2. It is ranked as the 34th largest merchant acquirer by The Nilson Report with over
“$8 billion in purchase volume through 40,000 merchant outlets.” Id. ¶ 5. Since 2004
its “top line revenue” has increased steadily. Id. ¶ 7. Applicant has not provided
marketing figures or information by which to measure consumer impressions. This
evidence does not show how and the extent to which consumers are exposed to the
phrase.
Applicant has received some limited unsolicited media coverage for five
consecutive years (2008-2012) from Inc. magazine and for three consecutive years
(2010-2012) from Deloitte Touche Tohmatsu Limited for earning the Deloitte
Technology Fast 500 Award for three consecutive years. Id. ¶ 9 TSDR at 3.
Applicant has owned the www.electronicpayments.com domain since 1998, and its
website is the first listed search result by the Google search engine upon performing
searches for “electronic payments” and electronic payments. Id. ¶¶ 10-12, TSDR at 3;
Exs. C-D, TSDR at 8-11. This may simply reflect Applicant’s use of metatags and
purchase of higher placement in search results. Although it does show consumer
exposure to Applicant when searching to obtain information on the electronic
payment process generally, it also shows exposure to third-party generic usage. For
example, the search also retrieved the following: “Adyen electronic payment – One
solution for all payments www.adyen.com/electronic/payments” and “The Benefits of
Serial No. 87049492
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Electronic Payments in Financial Software – The Balance … In addition, most
financial institutions offer electronic payments online directly from their web site to
the payee. You may also be able to set up electronic bill payments through your …”
January 11, 2018 Response TSDR at 8-10.
Applicant “is not aware of any competitors that use the name ELECTRONIC
PAYMENTS with similar services.” Nardy Decl. ¶ 28, id. TSDR at 5. However, even
if Applicant is the first and only user of ELECTRONIC PAYMENTS for authorization
services, that does not justify registration if the only significance conveyed by the
term is merely descriptive. See In re Fat Boys Water Sports LLC, 118 USPQ2d 1511,
1514 (TTAB 2016); In re Nat’l Shooting Sports Found., Inc., 219 USPQ 1018, 1020
(TTAB 1983); see also KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543
U.S. 111, 72 USPQ2d 1833, 1838 (2004) (trademark law does not countenance
someone obtaining “a complete monopoly on use of a descriptive term simply by
grabbing it first”) (citation omitted).
Finally, as direct evidence, Applicant submitted declarations from 22 customers
and one competitor.3 The declarations include the identical paragraphs as follows:
7. Electronic Payments Inc. provided a point of sales (POS)
system that enables our business to process orders, receive
payments, and maintain records of sales, transactions, and
inventory.
8. Electronic Payments Inc. also provides ongoing services
to our business that includes obtaining transaction
authorization codes for payment card purchases and

3 The merchant customers include 3 restaurant owners, 6 retail businesses, 1 event center,
1 manufacturer, 2 marketing merchandisers, 1 credit card solutions company, 1 dentist, 1
investment company, 1 hotel group, a web hoster and retailer, 1 cleaning company, 1 limo
and 1 cab company, 1 collision repair company, and 1 competitor acquirer.
Serial No. 87049492
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resolving any payment disputes involving charge-backs or
fraud.
10. Electronic Payments Inc. provides products and
services to merchants that facilitate acceptance of credit
card, debit card, gift card, and value card transactions and
resolve payment disputes due to charge-backs or fraud.
9. I believe that Electronics Payments Inc. is a well-known
and prominent industry leader in the payment card
industry.
11. The name ELECTRONIC PAYMENTS is associated in
my mind with the company Electronic Payments Inc. and
with their products and services.
13. When I encounter the name ELECTRONIC
PAYMENTS, I associate that name with Electronic
Payments Inc. and their products and services and not with
a generic or descriptive term for the services of resolving
payment disputes or providing value card transaction
processing that includes obtaining transaction
authorization codes for merchants.
14. In my mind, the name ELECTRONIC PAYMENTS has
acquired distinctiveness as a name identifying the
products and services of Electronic Payments Inc., and it
effectively distinguishes the products and services
provided by Electronic Payments Inc. from the same or
similar services provided by others in the U.S.
See, e.g., Flores Decl. January 11, 2018 TSDR at 12-13.
The declarations are nearly identical and formulaic, indicating that someone other
than the declarants prepared these documents. In addition, although merchants are
the ones who pay for the service provided by Applicant, everyone involved in the
electronic payment process—merchants, banks, purchasers—are part of and benefit
from the payment process. See In re Pennzoil Products Co., 20 USPQ2d 1753, 1758
(TTAB 1991) (form declarations from nine marketers of oil products who have
Serial No. 87049492
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business relationships with the applicant “lack persuasiveness on the issue of the
primary significance of the [proposed mark] to the purchasing public.”).
In light of the highly descriptive nature of ELECTRONIC PAYMENTS, the
customer and competitor declarations alone do not convince us that ordinary
consumers of merchant acquirers or payment processing companies have come to
view that term primarily as an indicator of source. See SnoWizard, 129 USPQ2d at
1006 (length of use of mark for over nine years insufficient by itself to bestow acquired
distinctiveness); Target Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1681 (TTAB 2007)
(“Applicant’s continuous use since 1992 is a fairly lengthy period, but not necessarily
conclusive or persuasive on the Section 2(f) showing.”); In re Kalmbach Publ’g Co., 14
USPQ2d 1490, 1494 (TTAB 1989) (for highly descriptive term, applicant’s statement
of long use of a purported mark was insufficient to establish distinctiveness, absent
specific evidence of the extent of the mark’s exposure to the purchasing public and of
the purchasers’ perception of the asserted mark). We further note these are 22
customers out of “40,000 merchant outlet[]” customers. Nardy Decl. ¶ 5, January 11,
2018 TSDR at 7.
Moreover, as noted above, Applicant did not provide information as to its
advertising expenditures or context. Mini Melts, Inc. v. Reckitt Benckiser LLC, 118
USPQ2d 1464, 1480 (TTAB 2016) (probative value of sales revenue figures quantified
as doses sold is diminished by the fact that the amount is just a raw number without
context as to applicant’s market share or whether this amount is significant in the
industry). In other cases, annual advertising expenditures of $100,000 or less have
Serial No. 87049492
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been considered relatively modest for a highly descriptive designation. See Apollo
Med. Extrusion Techs., Inc. v. Medical Extrusion Techs., Inc., 123 USPQ2d 1844, 1856
(finding $75,000 for one year of advertising and promotion expenditures “hardly
impressive, falling far below levels deemed persuasive in other cases involving the
acquired distinctiveness of marks that may be highly descriptive”); Burke-Parsons-
Bowlby Corp. v. Appalachian Log Homes, Inc., 871 F.2d 590, 10 USPQ2d 1443, 1447
(6th Cir. 1989) (finding $100,000 for one year’s advertising expenditures did not
evidence secondary meaning in “Appalachian Log Structures” for log houses without
additional evidence “to establish the amount as extensive or to distinguish it as
beyond that necessary to survive in the market”).
Applicant did not provide circulation figures for the two publications in which the
unsolicited media about Applicant appeared. “Thus, we are at a disadvantage to
accurately gauge the degree of exposure and the achievement of distinctiveness
among the relevant classes of purchasers.” Apollo Med. Extrusion Techs., 123
USPQ2d at 1855-56. In sum, the record falls far short of establishing that Applicant’s
promotional efforts have borne fruit with respect to acquired distinctiveness. Id. at
1856; see also Mini Melts, 118 USPQ2d at 1480 (“The ultimate test in determining
whether a designation has acquired distinctiveness is Applicant’s success, rather
than its efforts, in educating the public to associate the proposed mark with a single
source.”).
We find that Applicant has failed to establish that the designation “Electronic
Payments” has acquired distinctiveness as a source-indicator for Applicant’s services.
Serial No. 87049492
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That is, Applicant has not established that, “in the minds of the public, the primary
significance of [Electronic Payments] is to identify the source of the product rather
than the product itself.” Coach Servs., 101 USPQ2d at 1729. The record establishes
that the wording is, at a minimum, a highly descriptive designation that identifies a
significant feature and purpose of the services, namely, Applicant’s services are one
step in the electronic payment process. Given that the designation is highly
descriptive, much more persuasive evidence than Applicant has submitted would be
necessary to show that ELECTRONIC PAYMENTS has become distinctive as a
source indicator for Applicant’s “obtaining transaction authorization codes.” Cf. In re
Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056, 1057-58 (Fed. Cir. 1999) (even
where there was evidence of “annual advertising expenditures in excess of ten million
dollars and annual sales under the mark of approximately eighty-five million dollars,”
the Court held that, “considering the highly descriptive nature of the proposed mark,
[the applicant] has not met its burden to show that the proposed mark has acquired
secondary meaning”).
The refusal to register based on mere descriptiveness and lack of acquired
distinctiveness is affirmed.
Decision: The refusal to register Applicant’s proposed mark ELECTRONIC
PAYMENTS is affirmed on the basis of genericness and on the basis that the mark is
merely descriptive and Applicant has not demonstrated that the mark has acquired
distinctiveness.