WorldPay US, Inc.

Trademark Trial and Appeal Board

Sep 25, 2018

No. 85778132 (T.T.A.B. Sep. 25, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: September 25, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re WorldPay US, Inc.
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Serial No. 85778132
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Scott E. Taylor of Arnall Golden Gregory LLP,
for WorldPay US, Inc.
Dominic J. Ferraiuolo, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
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Before Ritchie, Kuczma and Hightower,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
WorldPay US, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark LYNK (in standard characters) for:
Electronic funds transfer services; Credit card and debit
card transaction processing services in International Class
36.1

1 Application Serial No. 85778132 was filed on November 13, 2012, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
Serial No. 85778132
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The application was published for opposition on November 26, 2013, and on
January 21, 2014, the USPTO issued a Notice of Allowance. After securing several
extensions of time, on December 12, 2016, Applicant timely submitted a Statement
of Use with a specimen of use consisting of a copy of “a PowerPoint sales
presentation.” In the Office Action of January 10, 2017, the specimen was found to be
unacceptable because it did not show the applied-for mark used in connection with
the services identified in the Statement of Use. The Trademark Examining Attorney
subsequently refused registration of Applicant’s mark under Trademark Act Sections
1 and 45, 15 U.S.C. §§ 1051 and 1127, on the ground that the specimen did not show
the applied-for mark in use in commerce in connection with the services specified in
the Statement of Use.
After the refusal was made final, Applicant appealed and requested
reconsideration submitting substitute specimens comprising two “Sales flyers.” The
request for reconsideration was denied and the appeal was resumed. For the reasons
set forth below, the refusal to register is affirmed.
Specimens
A statement of use filed in support of an application based on § 1(b) of the
Trademark Act must include a specimen showing the applied-for mark in use in
commerce for each International Class of goods and/or services identified in the
application. 15 U.S.C. §§ 1051(d) and 1127; Trademark Rule 2.56(a), 37 C.F.R.
§ 2.56(a); see also In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB
2013).
Serial No. 85778132
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Section 45 of the Trademark Act, 15 U.S.C. § 1127, specifies that “a mark shall be
deemed to be in use in commerce − . . . (2) on services when it is used or displayed in
the sale or advertising of services and the services are rendered in commerce . . . .” In
order to show service mark use, the specimen must show a direct association between
the services identified in the application and the mark sought to be registered. See In
re Advert. & Mktg. Dev. Inc., 821 F.2d 614, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987); In
re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973); see also
In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1668 (TTAB 2010); In re DSM
Pharms. Inc., 87 USPQ2d 1623, 1626 (TTAB 2008). 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.
Osmotica Holdings, 95 USPQ2d at 1668; see also In re Aerospace Optics Inc., 78
USPQ2d 1861, 1862 (TTAB 2006).
The specimen and substitute specimens show the applied-for mark used in
promotional materials for Applicant’s Worldpay electronic payments program.2 The
specimen submitted by Applicant refers to its LYNK platform, i.e., “. . . by processing
at least $100 in card volume on our Lynk platform . . . .” The LYNK platform is also

2 In footnote 1 on p. 1 (7 TTABVUE 2) of Applicant’s Appeal Brief, Applicant cites to
. (References to the briefs refer to the Board’s TTABVUE
docket system.) Inasmuch as the record in an application should be complete prior to the
filing of an appeal, exhibits attached to a brief that were not made of record during
examination are untimely, and generally will not be considered. TRADEMARK BOARD MANUAL
OF PROCEDURE (TBMP) §§ 1203.02(e) and 1207.01 (June 2018). Moreover, providing only a
link to a website without the material attached is not sufficient to introduce it into the record.
See, e.g., In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1195 n.21 (TTAB 2018); see also
TBMP § 1208.03.
Serial No. 85778132
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mentioned in the original specimen in the explanatory notes for Applicant’s Merchant
Referral and Advisor Programs Terms and Conditions, which state that a referred
merchant “must sign Worldpay’s standard 3-year Customer Processing Agreement
for our Lynk platform.” Applicant described its specimen as consisting of “. . . a
PowerPoint sales presentation to potential customers that references Applicant’s
LYNK mark in connection with the marketing of Applicant’s electronic funds transfer
services . . . .”3 The substitute specimens display use of LYNK in a footnote on
promotional materials to identify Applicant’s payment processing platform, i.e.,
“Payments are processed on our award winning Lynk platform.”4
The Examining Attorney rejected the specimen and substitute specimens on the
ground that the applied-for LYNK mark as used on them only appears to reference
processing on a “platform.” As supported by the evidence submitted by the Examining
Attorney, a “platform,” also known as a “computer platform,” is a term that commonly
identifies goods, such as hardware, a browser such as web-based software, an
application, such as a spreadsheet or word processor, software frameworks that
provide ready-made functionality, or services, such as cloud computing and Platform-
As-A-Service. The Examining Attorney asserts that the reference to the “Lynk”
platform appears to identify use of a platform, such as software or hardware for

3 See Statement of Use and Specimen filed with Statement of Use pp. 28, 32, 33-34, TSDR 2,
33, 37-39. (Page references herein to the application record refer to the downloadable .pdf
version of the United States Patent and Trademark Office (USPTO) Trademark Status &
Document Retrieval (TSDR) system.) The contact information listed on the specimen of use
identifies only non-U.S. telephone numbers.
4 Request for Reconsideration at TSDR 5-6.
Serial No. 85778132
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Applicant’s customers to perform electronic processing as part of their Worldpay
agreement.5 According to the Examining Attorney, the use of the wording “Lyn[k]
platform” on the specimen and substitute specimens fails to show a direct association
with the identified services because its use on each of them either directly refers to
goods, such as computer hardware or software, or services such as “Platform-As-A-
Service,” that potential purchasers must use in connection with electronic funds
transfer and credit card and debit card transaction processing services. The LYNK
mark or designation does not appear anywhere else on any of the specimens in direct
association with the identified services.6
Applicant contends that its specimens create a direct association between its
applied-for mark and its services in the minds of potential purchasers.7 Noting that
its original specimen is a PowerPoint presentation that Applicant uses when it
advertises and promotes its applied-for electronic funds transfer and credit and debit
card processing services directly to an audience of Applicant’s potential purchasers,
Applicant argues that its specimen makes clear that the entirety of the presentation
advertises and promotes its services covered in the subject application.8 Likewise,

5 August 1, 2017 Final Office Action, at TSDR 4-5: “A computing platform is the environment in which
a piece of software is executed. It may be the hardware or the operating system (OS), even a
web browser or other underlying software, as long as the program code is executed in it.”
August 1, 2017 Final Office Action, TSDR 2.
6 Examining Attorney’s Appeal Brief, 9 TTABVUE 4.
7 Applicant’s Appeal Brief p. 5 (7 TTABVUE 6).
8 Applicant’s Appeal Brief p. 2 (7 TTABVUE 3) referring to specimen identified as a “Power
Point presentation” submitted with the Statement of Use filed December 12, 2016, TSDR 6-
39, specifically referencing pp. 28, 32 and 33 of the specimen.
Serial No. 85778132
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Applicant maintains its substitute specimens consisting of two separate sales flyers
also feature use of the LYNK mark in connection with advertising and promoting the
applied-for services.9
The manner in which an applicant has employed the asserted mark, as evidenced
by the specimens of record, must be carefully considered in determining whether the
asserted mark has been used as a trademark with respect to the goods and/or services
named in the application. In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 216 (CCPA
1976). Thus, we look to the specimens to determine how consumers likely would
perceive the subject matter sought to be registered. In re Phoseon Tech. Inc., 103
USPQ2d 1822, 1828 (TTAB 2012); Aerospace Optics, 78 USPQ2d at 1862; Signal Cos.,
228 USPQ 956, 957 (TTAB 1986). The salient question is whether the applied-for
mark LYNK, as used, will be recognized as an indication of origin for the electronic
funds transfer and credit/debit card transaction processing services identified in the
application. It is not enough that the services identified in the application are
identified in the same advertising piece on which the matter sought to be registered
appears.
Promotional pieces are typically acceptable specimens when they refer to the
designated services or are used in the sale or advertising of such services showing the
mark as used in connection with the services. See TRADEMARK MANUAL OF EXAMINING
PROCEDURE (TMEP) § 1301.04(a) (Oct. 2017). However, none of the uses in the

9 Applicant’s Appeal Brief p. 4 (7 TTABVUE 5) referring to the substitute specimens filed
February 1, 2018, TSDR 1-2.
Serial No. 85778132
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specimen and substitute specimens show the applied-for LYNK mark used to refer to
Applicant’s electronic funds transfer and credit/debit card transaction processing
services identified in the application. Instead, we agree with the Examining Attorney
that the specimens show LYNK used to identify Applicant’s “platform” referring to
goods, such as computer hardware or software, or services such as “Platform-As-A-
Service,” that potential purchasers must use in connection with the electronic funds
transfer and credit/debit card transaction processing services.
Registration must be refused if the specimen shows that the mark is used as a
service mark but not for the identified services. That the “Lynk platform” identified
in the specimen and substitute specimens may actually be used in connection with
the identified services does not necessarily transform that platform into the identified
services or associate the name of the software platform with the identified services.
See In re HSB Solomon Assocs., 102 USPQ2d 1269, 1274 (TTAB 2012) (finding no
direct association between the mark, CEI, and the identified technical consultation
services because the submitted specimens showed the mark being used only to
identify a metric, index, equivalency factor, standard, or performance measure and
never to identify the identified services); TMEP § 1301.04(e).
Thus, the applied-for mark would be perceived by the relevant public as referring
to Applicant’s “Lynk platform,” and not the funds transfer and transaction processing
services covered in the application. Such use does not meet the required “direct
association” between LYNK and Applicant’s electronic funds transfer and credit and
debit card transaction processing services.
Serial No. 85778132
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This case is similar to the situation in In re Walker Research, Inc., 228 USPQ 691
(TTAB 1986). There, the Board affirmed the refusal to register where the use of the
proposed mark in the specimen clearly referred to a software product used in
performing the services rather than to the market analysis services for which the
applicant sought registration. Importantly, the Board found it irrelevant that the
software was used in performance of the identified service. Without direct association
between the service and the proposed mark in the specimen, the Board could not
conclude that the service mark was in use to identify and distinguish the services
themselves. See also DSM Pharms., 87 USPQ2d at 1625-26 (finding the submitted
specimen unacceptable evidence of use of the mark in connection with custom
manufacturing services because it did not show an association between the mark and
the services, but instead the mark was used only to refer to computer software).
The specimen must demonstrate the applied-for mark LYNK serving as a source
indicator for the identified services. It is not enough that the applied-for mark and a
reference to the services identified in the application both appear in the specimens.
As set forth above, none of the specimens are acceptable to show use of LYNK as a
service mark for electronic funds transfer and credit/debit card transaction
processing services.10

10 Additionally, the designation sought to be registered must appear sufficiently prominent
on the specimen (e.g., placement, size, or stylization) so that it will be perceived by consumers
as a mark. If shown in the same font, size and color as the surrounding text on the specimen,
as the applied-for mark is shown on the specimens submitted, the designation may not be
perceived as source indicator. In re Osterberg, 83 USPQ2d 1220, 1223 (TTAB 2007) (finding
the mark not prominently displayed because it was buried in text describing the mark and,
while the mark was shown in bold font, so was other matter); TMEP § 1301.04(f)(i).
Serial No. 85778132
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For the foregoing reasons, after considering the specimen and substitute
specimens submitted by Applicant, and the arguments of both Applicant and the
Examining Attorney, we find that the specimens do not serve to show use of the
applied-for mark as a service mark in connection with the electronic funds transfer,
and credit card and debit card transaction processing, services identified in the
application. Thus, registration must be refused.
Decision: The refusal to register is affirmed.