ACH Direct Inc.

Trademark Trial and Appeal Board

Aug 28, 2006

No. 76523001 (T.T.A.B. Aug. 28, 2006)

Mailed: August 28, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re ACH Direct Inc.
________

Serial No. 76523001
_______

Michael D. Pegues of Munsch Hardt Kopf & Harr, P.C. for ACH
Direct Inc.

Paula B. Mays, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).1
_______

Before Hohein, Grendel and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

ACH Direct Inc. has filed an application to register
the mark “ATMVERIFY” (in standard character form) for
services ultimately identified as “providing bank account
verification information by means of both private networks

1 The above application was originally examined by another
examining attorney, but was subsequently reassigned to the
attorney whose name is shown to prepare the appeal brief.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76523001
2
(leased/dedicated lines) and secured public networks
(Internet SSL)” in International Class 36.2
Registration was originally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
basis that “ATMVERIFY” is merely descriptive of applicant’s
services. In its response, applicant argued against the
refusal based on descriptiveness but in the alternative
requested amendment of the application to seek registration
on the Supplemental Register. Thereafter, the examining
attorney issued a new refusal under Section 23 of the
Trademark Act, 15 U.S.C. §1091, on the basis that
applicant’s alleged mark is incapable of identifying
applicant’s services because it is the generic term for the
recited services.
When the refusals were made final, applicant appealed
to the Board and requested reconsideration. After the
examining attorney denied the request for reconsideration,
the Board resumed the appeal. Briefs have been filed, but
oral hearing was not requested.
As a preliminary matter, in view of applicant’s
statements in its request to amend to the Supplemental

2 Application Serial No. 76523001, filed June 16, 2003, under
Trademark Act Section 1(a), 15 U.S.C. §1051(a), asserting January
1, 2002 as the date of first use and first use in commerce.
Ser No. 76523001
3
Register and in its brief, we find that the question of
descriptiveness has been preserved for appeal. In order to
preserve the right to argue in the alternative, applicant
must request amendment to the Supplemental Register prior
to appeal. While TMEP §801.02(b) (4th ed. 2005) provides
that an applicant may not seek registration on both the
Principal and the Supplemental Registers in the same
application, TMEP §§ 816.05 and 1212.02(c) make it plain
that the applicant may submit an amendment (or request to
amend) to the Supplemental Register and continue to argue
in the alternative that it is nonetheless entitled to
registration on the Principal Register in an appeal. See
also TBMP § 1215 (2d ed. rev. 2004). Accordingly, we must
determine whether the mark is generic and, if not, whether
it is merely descriptive.
When a proposed mark is refused registration as
generic, the examining attorney has the burden of proving
genericness by "clear evidence" thereof. See In re Merrill
Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1143 (Fed. Cir. 1987); see also In re Gould
Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir.
1987). The critical issue is to determine whether the
record shows that members of the relevant public primarily
use or understand the term sought to be registered to refer
Ser No. 76523001
4
to the category or class of goods or services in question.
H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); In
re Women's Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB
1992). Making this determination “involves a two-step
inquiry: First, what is the genus of goods or services at
issue? Second, is the term sought to be registered ...
understood by the relevant public primarily to refer to
that genus of goods or services?” Ginn, supra, 228 USPQ at
530. Evidence of the public’s understanding of a term may
be obtained from any competent source, including testimony,
surveys, dictionaries, trade journals, newspapers and other
publications. See Merrill Lynch, supra, 4 USPQ2d at 1143
(Fed. Cir. 1987), and In re Northland Aluminum Products,
Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
We find that the genus of services at issue in this
case is adequately defined by applicant’s recitation of
services, namely, providing bank account verification
information by means of both private networks
(leased/dedicated lines) and secured public networks
(Internet SSL). Applicant’s specimen of use and
advertising provide further clarification that the services
involve providing bank account information to merchants
through private and secured public networks.
Ser No. 76523001
5
Turning to the second inquiry, the public’s
understanding of the term, the relevant public as shown in
the specimen of use and by applicant’s statements and
exhibits in its July 5, 2005 Request for Reconsideration,
consists of merchants, including “supermarkets, shops, and
other entities dealing with many customers and their bank
accounts.” Br. p. 11.
In support of her position that the relevant public
understands applicant’s mark to primarily refer to bank
account verification services, the examining attorney
submitted excerpts from third-party websites where the
phrases “ATM VERIFY” and “ATM VERIFICATION” appeared or
where the term ATM appeared on the same website as VERIFY
or VERIFICATION. The most pertinent portion from each of
the website excerpts follows (emphasis added):
Now with ATM Verify, you can determine (virtually
in real-time) the following account
particulars:...Anyone can use ATM Verify!...There
is no requirement to process your transactions
through our systems, ATM Verify is available as a
stand-alone service. www.bizcashflow.com;

Working closely with our affiliate company ATM
Business.Com, Cash Now has secured certain ATM
Authentication technology that allows the ATM
company, to authenticate the authenticity of the
ATM card that is linked to the clients ATM
card...Verify consumer and business bank-account
status information (via the STAR ATM network) so
that you can mitigate risk of accepting back
checks and maximize business efficiency. We call
this Cash Now ATM Verify...Cash Now ATM Verify is
Ser No. 76523001
6
the only solution that provides you with Real-
time account status information for both consumer
and business accounts. With ATM Verify you can
determine, in Real-time, whether the account
is...Cash Now ATM Verify can be utilized with any
of our products or services...Combining NCN
Verify with Cash Now ATM Verify offers the
licensees the best negative and positive
databases in the industry – creating the
industry’s premier check verification
service...Pricing Regular License fee plus *ATM
Verify Fee...NCN Verify Fee... www.cashflow.com;

It is no longer difficult to verify ATM accounts
when accepting payments online. In the past,
many merchants refused to accept ATM payments
because it was difficult to verify
them...Verifying ATM account in real-time means
there are no more worries about customers making
purchases they can’t afford. Their checking
accounts are checked instantly and are either
approved or declined. www.articleinsider.com;

Real-time ATM Verification Solution...Checks are
still the number one way consumers prefer to make
payments. But even electronic checks can bounce.
How do you give your consumers a choice and not
get stuck with bad checks? The answer – verify
the account number through the ATM network with
the AS-2002 Payment Processing System.
www.autoscribe.com;

We will not be offering the ATM verification due
to a flaw in the system...Checkmatic is working
with one of our partners to bring ATM
verification to our CheckMatic product line as
well as our ECC products. ATM verification will
allow us to verify the validity of a consumer
account prior to exporting a transaction through
the ACH. www.checkmatic.com;

But increasingly, the systems being developed are
moving in the Services layer of network
architecture. In the most basic sense, many of
the newest products (from large financial and
technical companies) are designed to expand the
existing financial services layer of Credit/ATM
Ser No. 76523001
7
verification to include new products and web
functionality...The Credit-ATM Model is proposed
for other uses as well, such as verification of
digital cash accounts that remain on a bank
server, or servicing of multiple account or
payment options for consumers.
www.sims.berkeley.edu;

Payway Direct now offers RT-Verify to verify your
customer’s financial institution account status
in virtual real time via the ATM network!...This
type of account status verification can determine
whether a check is likely to be returned for a
specific cause. www.paywaydirect.com;

BankRegistry’s optional Account Number/ATM
Verification can determine the current status of
a bank account number by querying an extensive
network that includes thousands of financial
institutions like Band of America...ATM
Verification is also available with Lyons
Integrated Services. www.lyonsreg.com;

XID provides an ATM verification system that
authenticates each transaction at every
machine...www.xidtech.com;

Find information regarding Credit Card, ACH & EFT
processing and Atm Check Verification on our
site...More Atm Check Verification
Resources...Electronic payment processing. ACH
debit. ACH credit...Check Verification Taken to
the Next Level! ATM verify is it!.Real-Time Check
Verification through the ATM Network...ATM
Verify’s Real-Time Check verification.
www.officeteller.com;

Electronic Check Recovery/Verification (ATM
Verification and NCN).
www.midamericasolutions.com;

For example, Verisity and Qualis Design provide E
Verification Components (EVCs), which are
reusable pieces of verification code based on
Verisity’s E Verification language. They save
the verification engineer valuable time in
writing and rewriting the verification
Ser No. 76523001
8
environment for a standard interface. Just as
there is no value in designing your own PCI, USB
or ATM interface block, there is no value in
designing your own PCI, USB or ATM verification
infrastructure. www.us.design-reuse.com;

CardExAsia2005 The 5th Card Technology Conference
& Exhibition...2005 Kuala Lumpur...Exhibit
Profile...ATM verification/signature.
www.cardexasia.com; and

Customers can lookup deposits, maintain ATM
schedules, ATM verification and balancing
information, access customer profiles, order coin
and currency and lookup customer service
inquiries. www.unitedarmored.com.

In response to the refusals, applicant submitted the
following dictionary definitions:
ATM Abbreviation: 1. asynchronous transfer mode
2. automated teller machine 3. automatic teller
machine.

Verification: 1. The act of verifying or the
state of being verified. 2a. A confirmation of
truth or authority. B. The evidence for such a
confirmation c. A formal assertion of validity.
3. Law An affidavit that attests to the truth of
a pleading.

The American Heritage Dictionary of the English Language
(4th ed. 2000).
In addition, applicant submitted the results from a
search, using the Google search engine, of the phrase “bank
account verification” plus “ATM” in support of its argument
that the generic name of its services is “bank account
Ser No. 76523001
9
verification,”3 and copies of various agreements with
certain entities referred to in the examining attorney’s
evidence.
Applicant explains that its service “allows a merchant
to determine in real time whether a customer’s account is
currently overdrawn, frozen, closed, etc. Merchants and
only merchants are consumers of Applicant’s service.
Merchants receive Applicant’s bank account verification
services by connecting their computers to the Internet
and/or private networks. It is very unlikely that any
reasonable merchant may think that the mark, ‘ATMVERIFY’ is
a name of bank account verification service provided via
Internet and private networks.” Br. p. 11.
Applicant clarifies that its service is not ATM
verification, but rather bank account verification.
Applicant states that the term ATM in applicant’s mark does
not refer to ATM teller machines but rather to
“Asynchronous Transfer Mode (ATM) switches interconnected
by point-to-point ATM links or interfaces.” Applicant
argues that “[b]ecause this term is unknown to the relevant
public and Applicant’s service is not provided via

3 We note that such search results are of limited probative
value. In re Fitch IBCA, Inc., 64 USPQ2d 1058, 1060 (TTAB 2002)
(use in a search summary may indicate only that the words in an
overall phrase appear separately in the website literature.)
Ser No. 76523001
10
Automated Teller Machines, there is no ground to suggest
that the relevant public may perceive the mark,
‘ATMVERIFY,’ as a name of bank account verification service
or a way of obtaining bank account verification information
via Internet and private networks.” Br. pp. 5-6.
Applicant notes that the ATM networks are part of the
Internet and further states that:
Although Applicant’s service, speaking in
technical terms, is provided via Asynchronous
Transfer Mode (ATM) networks, the merchants
understand the bank account verification service
as being provided via the Internet and private
networks. There is no ground to suggest that
merchants may think that the service is being
provided via Asynchronous Transfer Mode Networks.
It will be fair to say that merchants are not
even aware what an Asynchronous Transfer Mode
Network is. The fact that a minority of computer
technicians understand the term, “ATM Network” is
irrelevant since Applicant is seeking
registration in IC 036, Insurance and Commercial,
and does not seek protection for any computer or
scientific services where computer specialists
would be potential customers. Determination of
whether or not a mark is merely descriptive must
be made in relation to the goods or services for
which registration is sought.

Br. p. 11.

Applicant states that of the 14 examples, submitted by
the examining attorney, of use of the phrase ATM VERIFY,
ATM VERIFICATION, or ATM and VERIFY or VERIFICATION used in
close proximity, 7 are applicant’s clients licensed to use
their services and proposed mark. With regard to the
Ser No. 76523001
11
excerpts that are not from applicant’s clients, applicant
notes that: (1) paywaydirect.com “shows the composite
terms ‘atm’ and ‘verify’ separated by twelve other words”;
(2) cardexasia.com is “dedicated to a conference and
exhibition that took place on May 17-19, 2005 in Selangor,
Malaysia...from the content of this website it’s impossible
to determine who is using the term, ‘ATM Verification,’ in
what country the term is used, and whether this term is
presently in usage...[or] whether this term represents any
services or products”; xidtech.com “represents usage of the
term ‘ATM Verification System’ for an unrelated service”
specifically authentication of transactions at “every
machine, ensuring that the ATM card is nontransferable and
therefore cannot be used by anyone other than the owner”;
unitedarmoured.com “represents another irrelevant usage of
the words ‘ATM Verification’”; the “[o]ther internet
excerpts produced by the Examining Attorney are irrelevant
as they refer to ‘Check Verification/Guarantee’,
‘Verification Component’, ‘Success of Verification Reuse’,
‘Verification Engineers’, ‘Verification Reuse Ecosystem’,
and even ‘Language Run Verification Ecosystem.’” According
to applicant, only two website excerpts, autoscribe.com and
lyons.com (a subdivision of autoscribe) “represent an
independent usage of the term, ‘ATM VERIFICATION,’ for bank
Ser No. 76523001
12
account verification services.” Br. pp. 4-5. Applicant
concludes that the other “excerpts are irrelevant as
either: a) featuring an out-of-context usage of words,
‘Verification,’ and/or ‘ATM,’ or b) referring to the usage
of ‘ATM Verification’ for services and processes that are
different from Applicant’s bank account verification
service.” Br. p. 5.
The examining attorney argues that the fact that ATM
may have different meanings in other contexts is not
controlling on the question of genericness and that “the
terms in the proposed mark are not ambiguous, [given that]
verify means verification and the ATM tells how the
verification is performed via computer network. There is
simply no other way the relevant public will view this
mark.” Br. unnumbered p. 6. The examining attorney points
to the “ubiquitous usage of the terms ‘ATM’ and ‘Verify’ or
‘Verification’” in connection with “check verification and
debit verification services.”
As noted above, the evidentiary burden of establishing
genericness of a term rests with the Office and the showing
must be based on clear evidence. Merrill Lynch, supra, 4
USPQ2d at 1143. Based on this record, we cannot say that
there is clear evidence to support a finding of
genericness. Half of the examples provided by the
Ser No. 76523001
13
examining attorney are applicant’s licensee’s using the
phrase ATM VERIFY in a manner that is not clearly generic
usage. There is not one example of use of the phrase ATM
VERIFY by an entity that is not applicant’s client. The
remaining examples where ATM appears with VERIFICATION or
with VERIFY separated by several words have no probative
value in determining whether the term ATMVERIFY is generic.
At most, the evidence presents a circumstance of mixed use.
See Merrill Lynch, supra. While this is a compound word,
the record in this case is different from In re Gould Paper
Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111-1112 (Fed. Cir.
1987) where the evidentiary burden was satisfied because
the Office “produce[d] evidence including dictionary
definitions that the separate words joined to form a
compound have a meaning identical to the meaning common
usage would ascribe to these words as a compound.” In In
re Gould, SCREEN named the object for which the WIPE is
used. Here, ATM, although descriptive of the manner in
which the service is provided, is not the name of any part
of the bank verification service. Moreover, even in the
context of applicant’s services as identified, ATM could
relate to either definition, the asynchronous transfer mode
or automated teller machine.
Ser No. 76523001
14
Therefore, we find that the examining attorney has not
established a prima facie showing that the term “ATMVERIFY”
is generic for applicant’s recited services.
We next address whether “ATMVERIFY” is merely
descriptive of applicant’s recited services.
“A mark is merely descriptive if it ‘consist[s] merely
of words descriptive of the qualities, ingredients or
characteristics of’ the goods or services related to the
mark.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370, 1371 (Fed. Cir. 2004), quoting, Estate of P.D.
Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920).
See also In re MBNA America Bank N.A., 340 F.3d 1328, 67
USPQ2d 1778, 1780 (Fed. Cir. 2003). The test for
determining whether a mark is merely descriptive is whether
it immediately conveys information concerning a quality,
characteristic, function, ingredient, attribute or feature
of the product or service in connection with which it is
used, or intended to be used. In re Engineering Systems
Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-Crest, Ltd.,
204 USPQ 591 (TTAB 1979). It is not necessary, in order to
find a mark merely descriptive, that the mark describe each
feature of the goods or services, only that it describe a
single, significant quality, feature, etc. In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Further, it
Ser No. 76523001
15
is well-established that the determination of mere
descriptiveness must be made not in the abstract or on the
basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the impact that it is likely to
make on the average purchaser of such goods or services.
In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978).
Although the evidence of record does not establish
that the term “ATMVERIFY” is generic, it does establish
that “ATMVERIFY” is merely descriptive of a significant
feature of applicant’s services, specifically that its
services involve verifying information through the ATM
network.
There is sufficient evidence to establish that the
terms ATM and VERIFY are descriptive of the services and
when combined do not create a unique impression. As shown
above, some of the third-party websites show use of the
terms ATM, VERIFY and VERIFICATION to describe services in
the field of bank account verification. See, e.g.,
www.paywaydirect.com and www.lyonsreg.com. Also, in its
brochure, applicant describes its service as providing
account verification through the ATM network. Finally, the
combination of the descriptive terms ATM and VERIFY does
Ser No. 76523001
16
not create a new and unique commercial impression. In re
Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed.
Cir. 2004).
Therefore, we find that “ATMVERIFY,” when used in
connection with applicant’s bank account verification
service, would immediately inform the potential users of
those services that the services involve, in applicant’s
words, “Account Verification Through the ATM Network.”
Nothing requires the exercise of imagination, cogitation,
mental processing or gathering of further information in
order for prospective users of applicant’s services to
perceive readily the merely descriptive significance of
“ATMVERIFY” as it pertains to applicant’s services.
Decision: The refusal to register on the Principal
Register based on mere descriptiveness under Section
2(e)(1) is affirmed. The refusal to register on the
Supplemental Register based on genericness under Section 23
is reversed and registration will issue on the Supplemental
Register in due course.