Franchise Payments Network, LLC

Trademark Trial and Appeal Board

Oct 21, 2008

No. 78908713 (T.T.A.B. Oct. 21, 2008)

Mailed:
October 21, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Franchise Payments Network, LLC
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Serial No. 78908713
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Lane Fisher of Fisher Zucker LLC for Franchise Payments
Network, LLC.

Vivian Micznik First, Trademark Examining Attorney, Law
Office 114 (K. Margaret Le, Managing Attorney).
_______

Before, Hairston, Grendel and Zervas, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

On June 15, 2006, Franchise Payments Network, LLC
filed an application (Serial No. 78908713) to register the
mark

THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Ser No. 78908713
2
for “electronic payment processing, namely, electronic
processing and transmission of bill payment data; credit
card transaction processing services” in International
Class 36. Applicant has claimed February 1, 2006 as its
date of first use anywhere and first use in commerce; and
has entered the following description of the mark: “The
mark consists of [a] design of a credit card with the
letters ‘FPN’ and the words ‘Franchise Payments Network’
stacked next to the design.”
The examining attorney has refused registration
pursuant to Section 6 of the Trademark Act, 15 U.S.C.
§ 1056, because applicant has not disclaimed FRANCHISE
PAYMENTS NETWORK. See also 15 U.S.C. § 1052(e)(1).1
According to the final Office action, the term is merely
descriptive and hence must be disclaimed “because it merely
describes the nature of applicant's entity and its
purpose.” On p. 3 of her brief, the examining attorney
states that the term “describes the characteristics of the

1 The final action also refuses registration in view of
requirements regarding the drawing and the identification of
services. Subsequent to the mailing of the final Office action,
applicant attended to the examining attorney’s requirements
regarding the identification of services and the drawing to the
satisfaction of the examining attorney. Accordingly, the only
issue on appeal concerns the examining attorney’s disclaimer
requirement.

Ser No. 78908713
3
services”; and that “applicant has simply combined
descriptive terms into one phrase.”
Applicant has appealed the final refusal. Both
applicant and the examining attorney have filed briefs. We
affirm the refusal to register.
A term is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics of
the goods or services or if it conveys information
regarding a function, purpose, or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215 (CCPA 1978). See also In re Nett Designs, 236
F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). To be merely
descriptive, a term need only describe a single significant
quality or property of the goods or services. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Also, “[t]he perception of the relevant purchasing public
sets the standard for determining descriptiveness. Thus, a
[term] is merely descriptive if the ultimate consumers
immediately associate it with a quality or characteristic
of the product or service. On the other hand, if a [term]
requires imagination, thought, and perception to arrive at
the qualities or characteristics of the goods or services,
then the [term] is suggestive.” In re MBNA America Bank
Ser No. 78908713
4
N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003)
(citations and internal quotation marks omitted).
We agree with the examining attorney that the phrase
FRANCHISE PAYMENTS NETWORK is merely descriptive of a
feature or characteristic of applicant's services and must
be disclaimed.
Turning first to the term FRANCHISE, applicant's
identification of services does not limit applicant's
services to a particular field or industry and hence must
be construed as identifying the field in which applicant
offers its services, namely, the franchising field.
Indeed, applicant, in its specimen of use which appears to
be a magazine advertisement, offers applicant's services to
franchisors, stating:
FPN combines the buying power of all clients to
achieve a more cost-effective solution for a
franchise system. By partnering with three of
the top five credit card processing services in
the nation, FPN is uniquely positioned to offer
franchisors the ability to select the best
possible solutions for their systems.

FPN understands the franchise business model and
works to align payment processing solutions to
meet individual franchisor’s needs. We will
customize a truly world-class solution to meet
your needs both domestically and internationally.

Applicant has also included the logo of the International
Franchise Association on its specimen and has acknowledged
Ser No. 78908713
5
at p. 19 of its brief that a “portion of Applicant's
customer base are franchises.”
The term PAYMENTS merely identifies the service that
applicant provides to franchises. Applicant's
identification of services specifies that applicant (i)
processes bill payment data and credit card transactions,
and (ii) transmits bill payment data. Through such
services, applicant facilitates the making of payments.
In the context of applicant's services offered to
franchisors, the phrase FRANCHISE PAYMENTS indicates to the
purchasing public, which applicant acknowledges includes
franchisors, that applicant makes or facilitates payments
pertaining to the franchise. Of course, a number of
different payments may be covered by the term “franchise
payments.”2 For example, franchisors may be paid by
franchisees for products purchased from franchisors, or
franchisors may receive payment directly in connection with
sales made by franchisees. Applicant touts itself as a
“New Force in Payment Processing” in its specimen of use
and processing payments made in a franchise relationship
would be included in its payment processing.

2 We do not consider FRANCHISE PAYMENTS to encompass such a large
variety of services that it cannot be merely descriptive of the
services set forth in applicant's identification of services.
Ser No. 78908713
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As for NETWORK, the word is defined in dictionary.com,
“based on the Random House Unabridged Dictionary, © Random
House, Inc., 2006,” as “an association of individuals
having a common interest, formed to provide mutual
assistance, helpful information, or the like.”3 In
applicant's mark, NETWORK indicates that applicant offers
its franchise payment services in a manner that furthers
all of its customers’ common interests. Indeed, this
aspect of applicant's services is promoted in applicant's
specimen, which states, “FPN combines the buying power of
all clients to achieve a more cost-effective solution for a
franchise system. By partnering with three of the top five
credit card processing services in the nation, FPN is
uniquely positioned to offer franchisors the ability to
select the best possible solutions for their systems.”4

3 Applicant submitted the dictionary.com definition of “network”
with it main brief. We take judicial notice of this definition.
See In re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002)(the
Board may take judicial notice of dictionary definitions,
including online dictionaries which exist in printed format).
See also University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
4 Applicant's partnering with credit card processing services and
combining the buying power of all of its clients to achieve “a
more cost effective solution” undercuts its argument at pp. 13
and 18 of its brief that it is not arranged as a network and that
its services and business model do not revolve around any type of
defined network. Whether the use of the credit card processing
companies “is no more than [a] practicality of the industry” is
not inimical to the fact that applicant, in structuring its
services, fits within the definition of record of “network.”
Ser No. 78908713
7
The next question is whether the combination of
FRANCHISE PAYMENTS and NETWORK is merely descriptive. In
re IP Carrier Consulting Group, 84 USPQ2d 1028, 1030 (TTAB
2007) (“Finally, in determining whether a mark is merely
descriptive, we must consider the mark in its entirety”).
When we view FRANCHISE PAYMENTS NETWORK in relation to
applicant's services, we conclude that there is nothing
incongruous about the term. Applicant's term immediately
informs prospective purchasers of a feature or
characteristic of the services, i.e., that applicant's
services involve the processing of payments concerning
franchises in a manner that serves its customers’ common
interests. See In re Kronholm, 230 USPQ 136, 137 (TTAB
1986) (“It is clear that applicant's cable television
network services will have, as their subject matter and
intended audience, colleges and universities in this
country. The term sought to be registered [COLLEGE CABLE
NETWORK] comprises a combination of descriptive words which
lose no descriptive significance in the expression, one
which aptly describes a significant feature or
characteristic of applicant's services”).
Applicant makes several arguments in support of
registration but none of its arguments is persuasive. We
address applicant's primary arguments made in its twenty-
Ser No. 78908713
8
page brief (devoted substantially to the disclaimer issue)
in turn below.
First, applicant argues that a degree of imagination
and “multi-step processing” is required by the average
purchaser of applicant's services to make any connection
between FRANCHISE PAYMENTS NETWORK and applicant's
services. According to applicant, the average purchaser of
its services is an individual or a small business entity
that seeks consulting or customized solutions for credit
card, ATM or other types of electronic money transfer; and
most of applicant's customers have not used credit cards or
other forms of electronic transmission in their past
endeavors. Brief at pp. 11 – 12. Applicant maintains that
they would not “directly and immediately perceive what
Applicant's services are” from the wording “Franchise
Payments Network,” and, most readily, would consider the
mark as referring to “a network of franchise payments” or a
“network which handles franchise payments.” Brief at pp.
12 – 13. Applicant's argument is not persuasive largely
because the prospective purchasers of applicant's services
are not limited to those described by applicant and include
purchasers such as franchisors who have accepted credit
cards in the past and who may want obtain more favorable
Ser No. 78908713
9
payment terms.5 Additionally, the meanings applicant
ascribes to the wording in the mark are not likely meanings
in the context of applicant's identified services. It is
not apparent what “a network of franchise payments” could
refer to and applicant has not provided an explanation.
Further, a “network which handles franchise payments” is
not a meaning as natural as the meaning we ascribe to the
wording in the mark for the reasons discussed above.
Second, applicant argues that the combination of the
three terms in its mark creates a distinct commercial
impression on the average purchaser of applicant's services
through its arbitrary word placement. Applicant's mark is
not similar to the marks found registrable and referenced
by applicant in its brief, namely, SNO-RAKE in In re
Shutts, 217 USPQ 363 (TTAB 1983); SUGAR & SPICE in In re
Colonial Storage, Inc., 157 USPQ 382 (CCPA 1968); THE MONEY
SERVICES in In re TMS Corp of the Americas, 200 USPQ 57
(TTAB 1978); and EXPRESS SAVINGS in In re Wells Fargo &
Co., 231 USPQ 116 (TTAB 1986). FRANCHISE PAYMENTS NETWORK
does not have the incongruity in terms or double meanings
or commonly used words that suggests a number of things,

5 Applicant’s contention at p. 18 of its brief that the
disclaimer requirement is improper because only “a portion of
Applicant’s customer base are [sic] franchises” is incorrect.
Cf., In re Hutchinson Technology Inc., 852 F.2d 552, 7 USPQ2d
Ser No. 78908713
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that exist in those marks. In short, we do not find any
distinct impression or meaning created by the combination
of the three terms in applicant's mark.
Viewing FRANCHISE PAYMENTS NETWORK as a whole, we find
the evidence of record sets forth a prima facie case that
such phrase is merely descriptive. Thus, we are persuaded
that when applied to applicant’s services, FRANCHISE
PAYMENTS NETWORK immediately describes, without need for
conjecture or speculation, a significant feature or
characteristic of applicant’s services. Nothing requires
the exercise of imagination, cogitation, mental processing
or gathering of further information in order for
prospective consumers of applicant’s goods to perceive
readily the merely descriptive significance of FRANCHISE
PAYMENTS NETWORK as it pertains to applicant’s services.
Decision: The refusal to register absent a disclaimer
of FRANCHISE PAYMENTS NETWORK is hereby affirmed. However,
this decision will be set aside if, within thirty days of
the mailing date of this order, applicant submits to the
Board a proper disclaimer of FRANCHISE PAYMENTS NETWORK.
See Trademark Rule 2.142(g), 37 U.S.C. § 2.142(g); and TBMP
§ 1218 (2d ed. rev. 2004). A proper disclaimer would be:

1490 (Fed. Cir. 1988). The term need not have significance to
all of the potential purchasers of applicant's services.
Ser No. 78908713
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“No claim is made to the exclusive right to use FRANCHISE
PAYMENTS NETWORK apart from the mark as shown.”