In a hard fought TTABattle, the Board affirmed a refusal to
register CARDLESS CASH as a trademark for ATM
software and services, on the ground of genericness. For the sake
of completeness, the Board also considered and rejected Applicant
Fidelity's claim of acquired distinctiveness under Section
2(f), finding that Fidelity's use of the term had not been
substantially exclusive.
In re Fidelity National Information Services, Inc.,
Application Serial No. 87006159 (May 6, 2020) [not precedential]
(Opinion By Judge Marc A. Bergsman).
Genericness:
The USPTO has the burden to prove genericness by clear evidence.
"The critical issue in genericness cases is whether members of
the relevant public primarily use or understand the term ... to
refer to the genus of goods or services in question." The
relevant public includes ordinary consumers who use ATM machines,
as well as banks, credit unions, other providers of ATM goods and
services.
Based on dictionary definitions, the Board found that CARDLESS CASH
means access to money without a credit or debit card. [CASHLESS
CARD, on the other hand, means a destitute comedian -
ed.]. Examining Attorney Charles Hiser submitted evidence
of use of the term by "cardless cash" by Fidelity's
competitors, two patents, one patent application, one trademark
registration, and numerous media examples.
Citing In re Merrill Lynch, Pierce, Fenner & Smith
Inc. [CASH MANAGEMENT ACCOUNT] and In re Am. Online,
Inc. [INSTANT MESSENGER], Fidelity argued that the USPTO's
evidence comprised a mixture of generic or descriptive use and uses
that refer to Fidelity, or its customers or licensees, and that
such a mixed record does not satisfy the USPTO's burden of
proof.
The Board noted the following observation it made in Am
Online:
Fidelity argument against the refusal was
"impressive," but unlike the two cited cases, here there
was unrebutted and unexplained generic use of the term CARDLESS
CASH by four other companies to describe their ATM-related goods
and services. Along with the patent documents and media references,
the Board found that this was "clear evidence that members of
the relevant public primarily use or understand CARDLESS CASH to be
generic" for ATM-related goods and services.
Acquired Distinctiveness: Fidelity amended its
application to seek registration under Section 2(f), without
reserving the argument that the proposed mark is inherently
distinctive. That amendment constituted an admission that the
phrase is not inherently distinctive, and Fidelity was not allowed
to argue otherwise on appeal. [Although it did - ed.].
See, e.g., Cold War Museum, Inc. v. Cold War Air Museum,
Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir.
2009).
The Board was first required to determine the degree of
descriptiveness of the proposed mark. See Royal Crown
Cola, 127 USPQ2d at 1048. The more descriptive the term, the
higher the burden to prove acquired descriptiveness. In re
Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed.
Cir. 2005).
Fidelity maintained that CARDLESS CASH is not merely descriptive
and, therefore, not highly descriptive, because a potential
customer must use multiple-step reasoning, thought, imagination or
logic to understand the connection between CARDLESS CASH and its
software and services. Fidelity also argued that "cardless
cash" is incongruous. The Board, however, found that each of
the constituent words are highly descriptive, as is the phrase
"cardless cash."
The Board applied the factors set forth in Converse, Inc. v.
Int'l Trade Comm'n, 907 F.3d 1361, 128 USPQ2d 1538,
1546 (Fed. Cir. 2018)). It noted that Fidelity did not submit a
survey or evidence from consumers, and found that Fidelity had used
the proposed mark since 2013. However, four other companies use the
phrase to describe the same services. Applicant and its affiliates,
partners, and licensees promote and/or display the proposed mark,
and the software and services are available nationwide at many
locations.
Although this type of evidence may be sufficient to prove acquired
distinctiveness in many cases, the Board found that Fidelity's
use of "the highly descriptive CARDLESS CASH is not
substantially exclusive."
Although absolute exclusivity is not required, the
"unrebutted, unexplained" third-party use by four
competitors was inconsistent with Fidelity's Section 2(f)
claim. The Board therefore concluded that Fidelity had failed to
prove that CARDLESS CASH has acquired distinctiveness for its
software and services.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.