PayClerk, Inc.

Trademark Trial and Appeal Board

Oct 4, 2007

No. 76594440 (T.T.A.B. Oct. 4, 2007)

Mailed: October 4, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re PayClerk, Inc.
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Serial No. 76594440
_______

Jay S. Horowitz of Jay S. Horowitz, P.C. for PayClerk, Inc.

Julie A. Watson, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Quinn, Hairston and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

PayClerk, Inc. filed an application to register on the
Principal Register the mark PAYCLERK in standard character
form for the following services1:
payroll preparation and payroll tax preparation
services for others,

in International Class 35.

1 Serial No. 76594440 was filed on May 27, 2004, based on an
allegation of June 1, 2003 as a date of first use of the mark
anywhere and August 15, 2003 as a date of first use of the mark
in commerce.

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 76594440
2
The examining attorney refused registration on the
ground that the mark is merely descriptive under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1). After
applicant amended its application to seek registration on
the Supplemental Register, the examining attorney refused
registration, under Section 23 of the Trademark Act, 15
U.S.C. §1091, on the ground that applicant’s mark is
incapable of identifying applicant’s services and
distinguishing them from those of others. When the refusal
was made final, applicant appealed. Applicant and the
examining attorney have filed briefs on the issue under
appeal.
A mark is a generic name if it refers to the class,
genus or category of goods and/or services on or in
connection with which it is used. See In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807
(Fed. Cir. 2001), citing H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986). The test for
determining whether a mark is generic is its primary
significance to the relevant public. See Section 14(3) of
the Act. See also In re American Fertility Society, 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);
Ser No. 76594440
3
and H. Marvin Ginn Corp. v. International Association of
Fire Chiefs, Inc., supra. The examining attorney has the
burden of establishing by clear evidence that a mark is
generic and thus unregistrable. See In re Merrill Lynch,
Pierce, Fenner and Smith, Inc., 828 F.2d 1567, 4 USPQ2d
1141 (Fed. Cir. 1987). Evidence of the relevant public’s
understanding of a term may be obtained from any competent
source, including testimony, surveys, dictionaries, trade
journals, newspapers, and other publications. See In re
Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ
961 (Fed. Cir. 1985).
In the case of In re American Fertility Society,
supra, our primary reviewing court stated that if the PTO
can prove “(1) the public understands the individual terms
to be generic for a genus of goods and species; and (2) the
public understands the joining of the individual terms into
one compound word to lend no additional meaning to the
term, then the PTO has proven that the general public would
understand the compound term to refer primarily to the
genus of goods or services described by the individual
terms.” (Id. at 1837.)
In the case of In re Dial-A-Mattress Operating Corp.,
supra, 1-888-M-A-T-R-E-S-S for “telephone shop-at-home
Ser No. 76594440
4
retail services in the field of mattresses,” the court
further clarified the test as follows (Id. at 1810):
Where a term is a “compound word” (such as
“Screenwipe”), the Director may satisfy his
burden of proving it generic by producing
evidence that each of the constituent words is
generic, and that “the separate words joined to
form a compound have a meaning identical to the
meaning common usage would ascribe to those words
as a compound.” In re Gould Paper Corp., 834 F.2d
1017, 1018, 5 USPQ2d 1110, 1110 (Fed. Cir. 1987).
However, where the proposed mark is a phrase
(such as “Society for Reproductive Medicine”),
the board “cannot simply cite definitions and
generic uses of the constituent terms of a mark”;
it must conduct an inquiry into “the meaning of
the disputed phrase as a whole.” In re The Am.
Fertility Soc'y, 188 F.3d at 1347, 51 USPQ2d at
1836. The In re Gould test is applicable only to
“compound terms formed by the union of words”
where the public understands the individual terms
to be generic for a genus of goods or services,
and the joining of the individual terms into one
compound word lends “no additional meaning to the
term.” Id. at 1348-49, 51 USPQ2d at 1837.

The court concluded that “1-888-M-A-T-R-E-S-S,” as a
mnemonic formed by the union of a series of numbers and a
word, bears closer conceptual resemblance to a phrase than a
compound word, and the court reiterated that the PTO must
produce evidence of the meaning the relevant purchasing
public accords to the proposed mnemonic mark “as a whole.”
In this case, we find that PAYCLERK is more analogous
to the compound word considered in Gould than it is to the
phrase considered by the court in American Fertility.
Thus, we look first to the dictionary definitions of the
Ser No. 76594440
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terms comprising PAYCLERK to determine whether they support
the refusal to register the proposed mark. The examining
attorney submitted with her December 29, 2004 Office action
the following definition of “clerk”:2 “A person who works
in an office performing such tasks as keeping records,
attending to correspondence, or filing.” The examining
attorney further submitted with her brief the following
definition of “pay”:3 “ADJECTIVE: Of, relating to, giving,
or receiving payments. NOUN: The act of paying or state
of being paid.” We will exercise our discretion to take
judicial notice of this definition. See University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213
USPQ 594, 596 (TTAB 1982); aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983). Thus, PAYCLERK may be defined as a
person who works in an office keeping records,
correspondence and filing relating to giving or receiving
payments.
In addition, the examining attorney submitted with her
July 25, 2005 Office action articles from the Lexis/Nexis
electronic database as well as advertisements and articles

2 The American Heritage® Dictionary of the English Language: 4th
ed. 2000.

3 Id.

Ser No. 76594440
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retrieved from Internet web pages. Certain excerpts from
these articles and web pages follow (emphasis added):

Payroll Clerks

Payroll Clerks collect, verify and process
payroll information and determine pay and benefit
entitlements for employees within a department,
company or other establishment. They are
employed by payroll administration companies and
by establishments throughout the private and
public sectors.

Examples of titles classified in this group

Benefits officer
Pay Clerk
Pay Advisor
Payroll Clerk
Pay and Benefits Administrator
Payroll Officer
Pay and Benefits Clerk
Salary Administrative Officer

Main duties
Payroll Clerks perform some or all of the
following duties:

Maintain records of employee attendance, leave
and overtime to calculate pay and benefit
entitlements, using manual or computerized
systems
Prepare and verify statements of earnings for
employees, indicating gross and net salaries and
deductions such as taxes, union dues and
insurance and pension plans
(http://happyface.com/jobdesc/dllil.html)

With TimeCardControl, your payroll clerk will not
need to manually track and count daily hours and
overtime hours. This can translate into
substantial cost saving as she could be assigned
to other tasks…Within a five-year period a pay-
clerk’s time on processing punch cards could cost
Ser No. 76594440
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the company $5,236x5=$26,180. Her time could be
better utilized through using TimeCardControl
with or without the Payroll option at a much
lower investment.
(www.dbcsoft.come/timecard.php)

Maydean Swoboda lives in Topeka. She began
working at the Supply Depot in Topeka in 1944.
She worked as a military pay clerk in Indiana and
in accounting at Forbes Air Force Base, Topeka.
(Topeka Capital-Journal (Kansas), May 9, 2004)

…Officers in the war zone often had to educate
pay clerks at bases in the United States about
proper pay procedures.
(The Denver Post, November 14, 2003)

Based upon the recitation of services in the involved
application, we find that that “payroll services” is the
name of a genus of services. Next, we must determine based
upon the evidence of record whether the designation
PAYCLERK is understood by the relevant purchasing public
primarily to refer to that genus of services.
On this record, we are constrained to find that the
examining attorney has failed to show that the designation
PAYCLERK has acquired no additional meaning to consumers of
payroll services than the terms “PAY” and “CLERK” have
individually. That is to say, although the terms “PAY” and
“CLERK” may be generic for, respectively, giving and
receiving payments and a person who works in an office
keeping records, correspondence and filing, the record
Ser No. 76594440
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falls short of establishing that the compound word
PAYCLERK, comprised of those individual terms, is generic.
This is not a case where the Office has clearly proven that
the designation as a whole is no less generic than its
constituents. While PAYCLERK may be an apt name for a
person who works in an office performing various
recordkeeping, filing and correspondence tasks that may
include payroll services, the evidence does not show that
it is used as a generic name for such services.
We find, based on the limited evidence of record, that
the Office has not met its burden of establishing by clear
evidence that the designation PAYCLERK, as a whole, is
generic for the identified services. See In re Merrill
Lynch, supra. Genericness is a fact-intensive
determination, and the Board’s conclusion must be governed
by the record that is presented to it. Although we have
concerns here about the genericness of applicant’s
designation, it is the record evidence bearing on
purchasers’ perceptions that controls the determination,
not general legal rules or our own subjective opinions.
Any doubts raised by the lack of evidence must be resolved
in applicant’s favor. Id. Further, on a different and
more complete record, such as might be adduced by a
competitor in an opposition proceeding, we might arrive at
Ser No. 76594440
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a different result on the issue of genericness.
Decision: The refusal of registration on the
Supplemental Register, under Section 23 of the Trademark
Act, is reversed.