@Pay LLC

Trademark Trial and Appeal Board

Sep 20, 2017

No. 86159275 (T.T.A.B. Sep. 20, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 20, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re @Pay LLC
_____

Serial No. 86159275
_____

John J. O’Malley and Dionne D. Heard, Volpe and Koenig, P.C.,
for @Pay LLC.

Meghan Reinhart, Trademark Examining Attorney, Law Office 108,
Andrew Lawrence, Managing Attorney.
_____

Before Wellington, Hightower, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
@Pay LLC (“Applicant”) seeks registration on the Principal Register of the claimed
mark PASSWORDS SUCK in standard characters for the following services (as
amended):
electronic payment processing services that facilitate
making electronic purchases by electronic mail or a web
based electronic network; financial transaction services for
others, namely, clearing and reconciling financial
transactions, and providing secure commercial
transactions and payment options by electronic mail or a
web based electronic network; electronic processing and
subsequent transmission of bill payment data by means of
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providing links for processing and payment of bills via
electronic mail or a web based electronic network;
electronic commerce payment processing services that
provide for payment by electronic mail or a web based
electronic network; providing a website providing
information about the foregoing services, in International
Class 36.1
The Trademark Examining Attorney has refused registration under Sections 1
and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1127, on the ground that Applicant’s
specimen of use fails to show use of the applied-for mark in commerce in connection
with any of the services identified in the application. When the Examining Attorney
made the refusal final, Applicant appealed and requested reconsideration, which was
denied. The appeal has been fully briefed. We affirm the refusal to register.
I. Screenshots of Applicant’s Website and the Specimen of Use
Applicant filed a Statement of Use supported by a specimen of use, which
consisted of the screenshot from its website at atpay.com reproduced below:

1 Application Serial No. 86159275 was filed on January 7, 2014 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), on the basis of Applicant’s allegation of a bona fide
intention to use the mark in commerce.
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The Examining Attorney issued an Office Action refusing registration on the
ground that the submitted specimen did not show use of the claimed mark in
commerce in connection with any of the identified services. Applicant responded by
stating that “the specimen submitted was not a complete copy of the relevant web
page because Applicant was unable to capture the entire page,” and by submitting
“two additional screen shots of the web site page . . . .”2 These appear as follows:

2 August 19, 2015 Response to Office Action at 1.
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Applicant refers to its two submissions as its “original specimen” and its
“substitute specimen,” respectively, citing Trademark Rule 2.59, 37 C.F.R. § 2.59,
which governs the filing of substitute specimens after a statement of use. 24
TTABVUE 5. The Examining Attorney describes Applicant’s original submission as
“the only specimen of record.” 23 TTABVUE 10. Applicant’s self-styled “substitute
specimen” does not satisfy the requirements of Rule 2.59(b) because it was not
accompanied by the required verified statement that the specimen “was in use in
commerce either prior to the filing of the statement of use or prior to the expiration
of the deadline for filing the statement of use.” Cf. In re WAY Media, Inc., 118
USPQ2d 1697, 1698-1701 (TTAB 2016) (considering “all 18 pages of specimens
submitted” by the applicant in three separate submissions, each supported by a
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verified statement regarding use, to determine whether they showed use of the
applied-for mark in commerce in connection with the identified services).
Section 904.05 of the Trademark Manual of Examining Procedure (Apr. 2017)
(“TMEP”) notes, however, that “[i]n some situations . . . an affidavit or declaration of
use of substitute specimens is not necessary.” For instance, if the specimen originally
filed is cut from a larger object, it is not necessary to provide an affidavit or
declaration when a sample (or a photograph) of the complete object is submitted to
corroborate the original specimen. In these circumstances, the additional specimen is
supplemental, and the examining attorney may consider the original specimen to
have been satisfactory. Id.
Applicant claims that its supplemental submissions merely corroborate its
original specimen. According to Applicant’s counsel, Applicant’s original specimen
“was a not a complete copy of the relevant web site page because Applicant was
unable to capture the entire page,” so Applicant submitted “[c]opies of portions of the
website specimen previously submitted in order to provide explanatory information
regarding the services.” August 19, 2015 Response to Office Action at 1. We will
accept at face value the explanation of Applicant’s counsel that its “substitute
specimen” is merely a more complete depiction of the originally-submitted “Key
Features” page of Applicant’s website.3 The Examining Attorney discusses the

3 In that regard, we note that there are more links on the toolbars of the two additional
screenshots than on the original specimen, but all three screenshots bear the same URL
“www.atpay.com/features/” and the “Features” link on the toolbar is illuminated on each.
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additional screenshots in her brief, 23 TTABVUE 9, and we will also treat all of
Applicant’s screenshots collectively as its specimen.
II. Analysis of Sufficiency of Specimen to Show Use in Commerce
“An application initially based on Trademark Act Section 1(b) must, upon the
filing of . . . a statement of use under Section 1(d), include one specimen showing the
applied-for mark in use in commerce, on or in connection with those goods or services
identified in the application . . . .” In re Florists’ Transworld Delivery, Inc., 119
USPQ2d 1056, 1062 (TTAB 2016). As noted above, Applicant submitted a screenshot
from its website as its specimen of use with its Statement of Use, followed by
additional screenshots.
Under Section 45 of the Trademark Act, 15 U.S.C. § 1127, a service mark is used
in commerce “when it is used or displayed in the sale or advertising of services.” “Such
use may be established by: (1) showing the mark used or displayed as a service mark
in the sale of the services, which includes use in the course of rendering or performing
the services, or (2) showing the mark used or displayed as a service mark in
advertising the services, which encompasses marketing and promotional materials.”
WAY Media, 118 USPQ2d at 1698. “An acceptable specimen must show ‘some direct
association between the offer of services and the mark sought to be registered
therefor.’” Id. (quoting In re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456,
457 (CCPA 1973)). “A specimen that shows only the mark with no reference to, or
association with, the services does not show service mark use.” Id. (citations omitted).
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“Specimens showing the mark used in rendering the identified services need not
explicitly refer to those services in order to establish the requisite direct association
between the mark and the services, but ‘there must be something which creates in
the mind of the purchaser an association between the mark and the service activity.’”
Id. (quoting In re Johnson Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)). “For
specimens showing the mark in advertising the services, ‘[i]n order to create the
required ‘direct association,’ the specimen must not only contain a reference to the
service, but also the mark must be used on the specimen to identify the service and
its source.’” Id. (quoting In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1668
(TTAB 2010)). “In determining whether a specimen is acceptable evidence of service
mark use, we may consider applicant’s explanations as to how the specimen is used,
along with any other available evidence in the record that shows how the mark is
actually used.” In re DSM Pharm. Inc., 87 USPQ2d 1623, 1626 (TTAB 2008).
For the reasons discussed below, we do not find anything in Applicant’s specimen
that “shows a direct association between the services and the mark sought to be
registered.” Osmotica, 95 USPQ2d at 1668. At the outset, we note that the record
here is sparse. It includes only Applicant’s specimen, supplemented by the unsworn
and often unclear arguments of Applicant’s counsel purporting to explain the
operation of Applicant’s website, such as the vague statement that the website
“allows consumers to link monetary transactions to emails.” 21 TTABVUE 7. We
would have benefitted from a declaration from a knowledgeable employee of
Applicant explaining with specificity how Applicant’s website operates and the
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manner in which the identified services are rendered or advertised through it. Cf. In
re JobDiva, Inc., 843 F.3d 936, 121 USPQ2d 1122, 1124-26 (Fed. Cir. 2016)
(discussing declaration of applicant’s Chief Executive Officer regarding operation of
applicant’s website). We must decide the appeal, however, on the basis of the record
as Applicant made it.
We reproduce below the screenshot from its website upon which Applicant
principally relies:

21 TTABVUE 7; 24 TTABVUE 6 (arrow added by Applicant in its briefs).
The Examining Attorney argues that there is nothing on the original specimen
“that indicates applicant is actually providing the relevant payment/financial
transaction processing services themselves beyond merely providing software that
allows consumers to make a payment under the ‘@PAY’ platform,” and that “the
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specimen at best only indicates that the mark ‘PASSWORDS SUCK’ refers to a
feature of the ‘@PAY’ email payment software platform . . . .” 23 TTABVUE 9. The
Examining Attorney further argues that the screenshots collectively “serve[], at most,
to indicate a feature of a software application and/or of a website that is used to
complete electronic payments.” 23 TTABVUE 9.
Applicant argues that the specimen “textually references the identical [sic]
services and associates the mark with those services” and that “there is a clear mark-
services association shown in the specimen due to the prominent usage of the mark
near the top of the page and the placement of the mark in relation to the description
of the services.” 21 TTABVUE 11. According to Applicant, the claimed mark is used
on the page “where customers are able to actually make payment using the
PASSWORDS SUCK option,” and “[a]s a result, Applicant’s Mark does in fact show
a direct association with Applicant’s Class 36 services, which are in relevant part,
‘electronic payment processing services that facilitate making electronic purchases by
electronic mail or a web based electronic network.’” 24 TTABVUE 7.
According to the explanation of Applicant’s counsel during prosecution,
Applicant’s specimen shows the claimed mark on the “Features” page of the @pay
website. The claimed mark is displayed above an image and text, and is rendered
with initial capital letters, in the same manner in which what are described as other
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“Key Features” such as “Mobile Convenience” and “Simplified Payments” are
displayed:4

The words “Passwords Suck” appear above a short paragraph describing this
particular feature, in the same format in which the other features are described:

The words “Passwords Suck,” as used on the specimen of record, are not used in
direct association with Applicant’s services and, indeed, do not appear to identify the

4 Four of the other five “Key Features” are identified by a two-word phrase like “Passwords
Suck.”
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source for any services.5 Rather, the information under “Passwords Suck” merely
involves one of several self-described “Key Features,” namely, that passwords are not
used. The paragraph notably does not refer to “electronic payment processing services
that facilitate making electronic purchases by electronic mail or a web based
electronic network,” as Applicant claims, or even to what Applicant describes as a
“PASSWORDS SUCK option.” 24 TTABVUE 7.6
Applicant argues that the claimed mark is “prominently displayed near the top of
the payment page with instructions directly under it for customers who wish to make
payment without using a password . . . .,” and that the claimed “payment page”
“provides consumers with a link for processing payments without use of a password.”
21 TTABVUE 9-10. We agree with the Examining Attorney that “there is nothing on
the specimen that states or indicates it is a ‘payment page,’” 23 TTABVUE 11, as
neither instructions nor a link are reflected on the specimen.7 The text beneath
“Passwords Suck” describes “complet[ing] an email payment without entering

5 The only difference between the manner of display of the words “Passwords Suck” and the
manner of display of the words identifying the other “Key Features” is that a “™” symbol
appears after “Passwords Suck.” This alone is insufficient to establish either a direct
association or service mark use. In re Graystone Consulting Assocs., 115 USPQ2d 2035, 2038
(TTAB 2015); see also TMEP §§ 1301.02(a), 1301.04(e). Failure to function as a service mark
under Sections 1, 2, 3, and 45 of the Trademark Act, however, is not the basis for the refusal
before us.
6 Applicant’s counsel does not explain how “[i]f a customer is logged into the website, they
[sic] are able to choose the PASSWORDS SUCK option to make a payment,” 24 TTABVUE
8, and nothing on the face of the specimen indicates that making “payment without entering
another password” is an optional service rendered only under the claimed mark.
7 We similarly agree with the Examining Attorney that Applicant’s claim that the asserted
mark appears “under a video instructing customers how to use the site for electronic
payments,” 21 TTABVUE 11, is unsupported by the specimen. 23 TTABVUE 10-11.
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another password” as the end result of using the @pay website, not as instructions
for using a separate “Passwords Suck” service, and Applicant’s counsel does not
explain where the referenced link is located on the specimen or how it is used in
rendering or receiving the identified services under the claimed mark. On the
specimen, the words “Passwords Suck” at most serve as a shorthand descriptor for
one feature of Applicant’s @pay website, that users who “are already logged in to
[their] email can complete an email payment without entering another password.”
In any event, there is no direct association between “Passwords Suck” and the
services recited in the application. That is, even assuming that the text beneath the
words “Passwords Suck” vaguely “references the [identified] services,”8 it does not
directly “associate[] the mark with those services.” 21 TTABVUE 11. Instead, it
explains that “[p]asswords are annoying and they don’t improve security” and
“[t]hat’s why @Pay doesn’t use them.” Any services rendered by Applicant when
consumers make email payments through its website are associated with the “@Pay”
(or “@pay”) mark that appears throughout the specimen, not with the claimed mark.9

8 As discussed above, the Examining Attorney argues that Applicant’s “specimen at best only
indicates that the mark ‘PASSWORDS SUCK’ refers to a feature of the ‘@PAY’ email
payment software platform.” 23 TTABVUE 9. Applicant responds that “[e]ven if the subject
mark is considered software, it is software being used to conduct the business of payment
processing. As such, the subject mark is in fact rendering a service.” 21 TTABVUE 9, citing
TMEP Section 1301.04(h)(iii) and In re Ancor Holdings, LLC, 79 USPQ2d 1218 (TTAB 2006).
We need not address this issue because we find that the specimen does not “sufficiently
create[] in the minds of purchasers an association between the mark and the applicant’s
identified” services, Ancor, 79 USPQ2d at 1221, even if Applicant’s software performs each
of the steps of the identified services. See JobDiva, 121 USPQ2d at 1126.
9 The “Mobile Convenience” feature refers to “[m]aking a payment with @Pay,” the
“Simplified Payment” feature states that “@Pay makes buying fast, safe, and secure,” the
“Proven Results” feature urges visitors to “try adding @Pay as a payment method,” and the
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See WAY Media, 118 USPQ2d at 1700 (use of the claimed mark on webpage
displaying both radio station’s call letters and the claimed mark did not establish a
direct association between the claimed mark and the identified broadcasting services
where those services were associated with the call letters); In re Keep A Breast
Found., ___ USPQ2d ____, Serial No. 85316199, 2017 WL 3575872, at *5 (TTAB Aug.
17, 2017) (presence on specimen of “other, readily-perceived source identifiers”
supported Board’s finding that claimed mark would not be perceived as a source
identifier for the identified services).
On this record, the specimen does not show use of the claimed mark as a service
mark. The specimen also does not “create[] in the mind of the purchaser an
association between the mark and the service activity,” if the specimen is deemed to
involve the rendition of the identified electronic payment processing services, and
does not “identify the service and its source,” if the specimen is deemed to be
advertising for those services. WAY Media, 118 USPQ2d at 1698. The specimen of
record does not show use of the claimed mark in commerce because the claimed mark
is not used as a mark and because the specimen does not create a direct association
between the claimed mark and any of the identified services.
Decision: The refusal to register is affirmed.

“Available Everywhere” feature explains that payments “using @Pay can be completed in two
clicks.”