Yodlee, Inc.

Trademark Trial and Appeal Board

Dec 2, 2020

88392661 (T.T.A.B. Dec. 2, 2020)

Mailed: December 2, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Yodlee, Inc.
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Serial No. 88392661
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Martin R. Greenstein of Techmark a Law Corporation
for Yodlee, Inc.

Anthony Rinker, Trademark Examining Attorney, Law Office 102
(Mitchell Front, Managing Attorney).
_______

Before Cataldo, Kuczma and Dunn,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Yodlee, Inc., filed an application on the Principal Register seeking
registration of the mark FINCHECK, in standard characters, identifying the
following goods and services, as amended:
Downloadable computer software for aggregation of banking, financial,
investment and personal records and information; downloadable
computer software for accessing online and electronic data and for
converting and transferring that data to and for use in connection with
computer software programs, personal and business electronic devices,
mobile and smart phones, tablets and other computer software
applications; downloadable computer software for aggregating,
processing and analyzing data for the purpose of providing customized
recommendations in the field of finance; downloadable computer
This Opinion is not a
Precedent of the TTAB
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software for financial management and financial and e-commerce
transactions in Class 9; and

Financial advisory and consultancy services; Financial information
provided by electronic means; Financial information provided by
electronic means in the field of online monitoring and tracking services
for financial and e-commerce transactions relating to the status of
securities and other financial instruments; Providing financial
assessment services to others; Providing financial assessment services
to others, namely, providing an online financial records aggregation
service to aggregate and summarize personal and corporate banking,
financial, investment and general financial information; Providing
financial assessment services to others, namely, collecting and
analyzing financial affairs records and summaries in the nature of bank
accounts, investments accounts, bill payments, mortgages, retirement
accounts, retirement programs, credit card accounts, insurance policies
and loans all over electronic communications networks; Providing
financial information; Providing financial information services to
others; providing financial information services to others, namely,
providing an online financial records aggregation service to aggregate
and summarize personal and corporate banking, financial, investment
and general financial information; Providing financial information
services to others, namely, collecting and analyzing financial affairs
records and summaries in the nature of bank accounts, investments
accounts, bill payments, mortgages, retirement accounts, retirement
programs, credit card accounts, insurance policies and loans all over
electronic communications networks; Providing financial information
services to others, namely, providing financial information in the form
of records and summaries in the fields of financial affairs, bank
accounts, investments accounts, bill payment, mortgages, retirement
accounts, retirement programs, credit card accounts, insurance and
loans by means of electronic communications networks; Providing
financial information services to others, namely, providing online
monitoring and tracking services for financial and e-commerce
transactions relating to status of securities and other financial
instruments in Class 36.1

1 Application Serial No. 88392661 was filed on April 18, 2019 pursuant to Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), claiming dates of first use anywhere and first use in
commerce as of September 13, 2017 as to both classes of goods and services.
Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs and orders
on appeal are to the Board’s TTABVUE docket system.
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The Trademark Examining Attorney finally refused registration under Sections 1
and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1127, on the basis that the specimens
of record are unacceptable because they fail to show the applied-for mark in use in
commerce in connection with the Class 36 services.2
Applicant then appealed. The appeal is fully briefed.
I. Evidentiary Issue
Applicant submitted evidence in the form of copies of third-party registrations
with its appeal brief.3 To the extent that such evidence is duplicative of the evidence
previously submitted with its April 13, 2020 Request for Reconsideration,4 we need
not and do not give this redundant evidence any consideration. See, e.g., Life Zone,
Inc. v. Middleman Group, Inc., 87 USPQ2d 1953, (TTAB 2008). Any of the evidence
submitted with Applicant’s appeal brief that was not previously submitted during
prosecution is untimely and also will not be considered.5 Trademark Rule 2.142(d)
reads as follows:
The record in the application should be complete prior to the filing
of an appeal. Evidence should not be filed with the Board after
the filing of a notice of appeal. If the appellant or the examining
attorney desires to introduce additional evidence after an appeal
is filed, the appellant or the examining attorney should submit a

2 The refusal of registration does not apply to the goods identified in Class 9.
3 6 TTABVUE 10-48.
4 At p. 12-46.
5 The proper procedure for an applicant or examining attorney to introduce evidence after an
appeal has been filed is to submit a written request with the Board to suspend the appeal
and remand the application for further examination. See Trademark Rule 2.142(d), 37 C.F.R.
§ 2.142(d). See also TBMP § 1207.02 and authorities cited therein.
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request to the Board to suspend the appeal and to remand the
application for further examination.

37 C.F.R. § 2.142(d); see also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (TBMP) §§ 1203.02(e), 1207.01, and authorities cited therein.
We now turn to the merits of this appeal.
I. Sufficiency of Applicant’s Specimens
We turn to the Examining Attorney’s refusal of registration on the basis that the
specimens of record are unacceptable because they fail to show the mark in the
drawing in use in commerce in connection with the identified services.
Specifically, the specimens of use filed with the application under
Trademark Act Section 1(a) for International Classes [sic] 036 include
two screenshots showing the applied-for mark “FINCHECK” displayed
in applicant’s smartphone application running on an iPhone® screen
that shows measurements of the user’s financial status based on the
user’s spending to income ratio, which shows use of the mark for
downloadable software goods in International Class 009. (Applicant’s
Specimens of Use, pages 1-2). The remaining specimens are comprised
of two pages of data sheets advertising applicant’s software that
incorporates the use of artificial intelligence (AI) algorithms to
automatically analyze the user’s financial status and display results.6

The datasheet specimen shows the software application running and
displaying the mark on a tablet computer, again, demonstrating the
mark represents a downloadable software application in International
Class 009 rather than the identified services in International Class 036
(Applicant’s TEAS Plus application filed May 22, 2019, Specimens of
Use, at page 3.) Thus, the specimens of use are not acceptable as
evidence of service mark use in Classes 036 because the applied-for
mark is shown only in the context of a software used for financial
analysis purposes by the user.7

6 Examining Attorney’s brief, 8 TTABVUE 4.
7 8 TTABVUE 5.
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The Trademark Act “provides for registration of a mark based on use of the mark
in commerce.” In re Siny, 920 F.3d 1331, 2019 USPQ2d 11362, *2 (Fed. Cir. 2019).8 A
service mark is “any word, name, symbol, or device, or any combination thereof
... [used] to identify and distinguish the services of one person ... from the services
of others and to indicate the source of the services, even if that source is unknown.”
15 U.S.C. § 1127. The USPTO “requires an applicant to submit a specimen of use
‘showing the mark as used on or in connection with the goods [or services].’” In re
Siny Corp., 2019 USPQ2d 11362, *2 (quoting In re Sones, 590 F.3d 1282, 93 USPQ2d
1118, 1120 (Fed. Cir. 2009)). The specimen of use, which is required by Section 1 of
the Trademark Act and Trademark Rule 2.56, 37 C.F.R. § 2.56, must display the
applied-for mark and show an association between the mark and the services. As the
TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) states:
To be acceptable, a service-mark specimen must show the mark
sought to be registered used in a manner that demonstrates a
direct association between the mark and the services.
Essentially, the mark must be shown in a manner that would be
perceived by potential purchasers as identifying the applicant’s
services and indicating their source.

TMEP § 1301.04(f) (October 2018) (citations and internal quotation marks omitted).
See also In re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973)
(“The minimum requirement is some direct association between the offer of services
and the mark sought to be registered therefor.”). We have stated that a service mark

8 The Federal Circuit originally issued this opinion as nonprecedential on January 14, 2019,
but subsequently granted the USPTO’s motion to reissue it as a precedential opinion. The
precedential opinion was reissued on April 10, 2019.
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must be “used in such a manner that it would be readily perceived as identifying”
the services, which is “determined by examining the specimens of record in the
application.” In re The Ride, LLC, 2020 USPQ2d 39644 *4 (TTAB 2020); In re Keep A
Breast Foundation, 123 USPQ2d 1869, 1876 (TTAB 2017), (quoting In re Moody’s
Investors Svc. Inc., 13 USPQ2d 2043, 2047 (TTAB 1989)); accord In re Osmotica
Holdings Corp., 95 USPQ2d 1666, 1668 (TTAB 2010) ( “At a minimum, the specimen
must show a direct association between the services and the mark sought to be
registered.”). “A specimen that shows only the mark with no reference to, or
association with, the services does not show service mark usage.” In re DSM Pharm.,
Inc., 87 USPQ2d 1623, 1624 (TTAB 2008).
Applicant’s specimen of use, submitted with the involved application, consists of
four photographic images Applicant describes as follows: “Screenshots showing
examples of the application running on a mobile device, showing use in connection
with the Class 9 goods;” and “A datasheet showing use in connection with the Class
36 services.” The specimen of use is reproduced below.9

9 The Class 9 screenshots are displayed side by side.
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First, we note that this specimen displays the FINCHECK mark shown in the
drawing, as required by Trademark Rule 2.51, 37 C.F.R. § 2.51(a) (“the drawing of
the mark must be a substantially exact representation of the mark as used on or in
connection with the goods and/or services”). In the data sheets submitted as a Class
36 specimen, the mark appears, for instance, as “Yodlee AI FinCheck” and “AI
FinCheck.” Yodlee is Applicant’s business name. AI describes the “proprietary
Artificial Intelligence (AI) technologies”10 used in connection with Applicant’s goods
and services. Thus, we find the drawing displaying Applicant’s FINCHECK mark is
a substantially exact representation of the mark as it appears in Applicant’s
specimens of use.
With regard to the question of whether the specimens support use of the mark in
connection with Applicant’s Class 36 services, our primary reviewing court has held:
with modern technology, the line between services and products
sometimes blurs. As the Board correctly observed, “[i]n today’s
commercial context if a customer goes to a company’s website and
accesses the company’s software to conduct some type of business, the
company may be rendering a service, even though the service utilizes
software.” But a mark used with a web-based offering may equally
identify the provision of software, rather than a service. For these
reasons, careful analysis is required to determine whether web-based
offerings, like those [Applicant] provides, are products or services: “[I]t
is important,” as the Board properly noted, “to review all the information
in the record to understand both how the mark is used and how it will
be perceived by potential customers.” (internal citations omitted).

In re JobDiva, Inc., 121 USPQ2d 1122, 1125-1126 (Fed. Cir. 2016). “Even though a
service may be performed by a company’s software, the company may well be

10 Applicant’s specimen, p. 3.
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rendering a service.” In re JobDiva, Inc., 121 USPQ2d at 1126. “The question is
whether a user would associate the mark with [the identified] services performed by
[Applicant], even if [Applicant’s] software performs each of the steps of the service.”
Id.
Based upon our review of the third page of the specimen of use, Applicant appears
to be offering its Class 36 services both to consumers seeking to improve their
finances and Financial Service Providers (FSPs) seeking to offer financial guidance
and products thereto. The specimen further indicates these services are provided by
means of Applicant’s Class 9 goods, namely, its downloadable software provided via
the mobile app: “the app shares personalized guidance and education that helps
consumers improve their financial habits and attain true financial wellness.”11 While
page three of the specimen indicates that consumers may link to other FinApps for
creating a budget, viewing investments”12 and other related functions, it also
indicates that FINCHECK allows consumers to review and optimize their financial
health, pursue and achieve financial goals, reduce debt and receive recommendations
relating thereto. Page three thus supports Applicant’s various financial information
services, provided by a mobile app.
The fourth page of Applicant’s specimen further highlights the interplay between
Applicant’s Class 9 goods and its Class 36 services:

11 Id.
12 Id.
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According to this language, Applicant’s Class 9 downloadable software automates
certain financial diagnostic functions paired with the provision of personalized
financial information, advice and consultation based upon the collected data. As such,
page four of Applicant’s specimen further supports Applicant’s Class 36 financial
services by means of its mobile app.
In sum, we conclude that Applicant is rendering its Class 36 services by means of
its Class 9 goods. See In re JobDiva, Inc., 121 USPQ2d at 1126; see also, e.g., On-Line
Careline, Inc. v. Am Online, Inc., 229 F.3d. 1080, 56 USPQ2d 1471, 1476-77 (Fed. Cir.
2000) (affirming Board finding that AOL used its mark in connection with services
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provided by software). Applicant’s proffered specimen is sufficient to support use of
the proposed mark to identify the source of Applicant’s services.
II. Decision:
The refusal to register Applicant’s mark FINCHECK in Class 36 pursuant to
Sections 1 and 45 of the Trademark Act, and related rules, on the ground that the
specimen of use fails to show the applied-for mark in use in commerce in connection
with the Class 36 services, is reversed.