Cashflow Technologies, Inc.v.NetDecide

Trademark Trial and Appeal Board

Jul 10, 2002

No. 92030363 (T.T.A.B. Jul. 10, 2002)

7/10/02

GOODMAN

Cancellation No. 30,363
Cancellation No. 30,364

Cashflow Technologies,
Inc.

v.

NetDecide

Before Quinn, Hairston and Drost, Administrative
Trademark Judges.

NetDecide owns Reg. No. 2,209,531, issued on
December 8, 1998 for the mark CASHFLOW in typed form for
“computer software for individual financial modeling,
management, planning, and online financial data
transactions,” and Reg.
No. 2,298,545, issued on December 7, 1999 for the mark
CASHFLOW and design, as reproduced below,

for “computer software for individual financial modeling,
management, planning and online financial data
transactions.”
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation Nos 30,363 and 30,364
2
On March 27, 2000, Cashflow Technologies, Inc. filed
separate petitions to cancel the registrations on the
ground that respondent had abandoned its marks, and
alleging its standing based on its business of providing
educational and financial products and services under its
CASHFLOW marks and based on respondent’s CASHFLOW marks
being cited against petitioner’s United States
application Serial No. 75/666,450 for the mark CASHFLOW
for “computer games and instruction manuals sold as a
unit for playing computer games used for financial
education” in International Class 9.1
On October 6, 2000, the Board consolidated
cancellation proceedings, with Cancellation No. 30,363
identified as the parent case. On July 15, 2001,
petitioner filed a motion to amend the petitions to
cancel to add the additional grounds of descriptiveness
and lack of acquired distinctiveness and partial
cancellation (by restriction or modification of
respondent’s goods as listed in the involved

1 This application is currently suspended pending the final
disposition of these consolidated cancellation proceedings.
Petitioner has since amended the identification of goods in
application Serial No. 75/666,450 as follows: “computer board
game and instruction manual sold as a unit for playing a
computer board game used for financial education; the computer
board game and manual marketed through on-line subscription
sales, multi-level marketing and retail outlets and not marketed
to financial professionals or brokerages.”
Cancellation Nos 30,363 and 30,364
3
registrations) and submitted first amended petitions for
cancellation.
Prior to the Board’s decision on petitioner’s motion
to amend, petitioner filed, on August 7, 2001, a motion
for summary judgment on the ground that the term CASHFLOW
is merely descriptive of respondent’s software products
and that the term CASHFLOW has not acquired
distinctiveness in connection with respondent’s goods.
Respondent filed a response on August 24, 2001, which did
not address the merits of petitioner’s motion, arguing
that petitioner’s motion for summary judgment was based
on an unpleaded issue.
On February 7, 2002, the Board granted petitioner’s
motion to amend, required petitioner to file a second
amended petition to cancel which properly pleaded the
ground of abandonment, and deferred consideration of
petitioner’s motion for summary judgment on the ground of
descriptiveness and lack of acquired distinctiveness
pending the filing of a response on the merits by
respondent. On March 11, 2002, petitioner filed its
second amended petition to cancel alleging, with respect
to the ground of descriptiveness, that use of the term
CASHFLOW by respondent is merely descriptive because

Cancellation Nos 30,363 and 30,364
4
CASHFLOW immediately brings to mind a use, purpose,
feature characteristic or function of respondent’s
software and that “there is no evidence that CASHFLOW has
ever developed secondary meaning” with respect to
respondent’s software. On April 3, 2002, respondent
filed its response to petitioner’s motion for summary
judgment.
This case now comes up on petitioner’s motion for
summary judgment on the ground of descriptiveness and
lack of acquired distinctiveness of respondent’s CASHFLOW
marks. The motion is fully briefed.
The exhibits submitted by petitioner include a
dictionary definition of the term “cashflow,” print-outs
from websites providing information about software which
calculates cashflow, excerpts of Lexis/Nexis articles
discussing software which calculates cashflow, excerpts
of the deposition testimony of Michael Smith, a customer
of respondent, excerpts of the deposition testimony of
Evan Burfield, an officer of respondent, and excerpts of
respondent’s responses to petitioner’s second
supplemental interrogatories and requests for admissions.
Respondent’s exhibits consist of a dictionary
definition of the term “cashflow” and an excerpt of the
Cancellation Nos 30,363 and 30,364
5
deposition testimony of Michael Smith, a customer of
respondent.
In support of its motion, petitioner argues that the
dictionary definition of the term “cashflow,” the
numerous third-party uses of the term “cashflow,” and the
statements made by respondent and its customer with
respect to the use, purpose, characteristic or function
of respondent’s software establish a prima facie case
that respondent’s use of the term CASHFLOW is merely
descriptive because the term immediately conveys an
important use, purpose, function, or characteristic of
respondent’s software; and that the record establishes
that respondent’s CASHFLOW mark had not acquired
distinctiveness at the time of registration, and has not
now acquired distinctiveness.
In response, respondent argues that the dictionary
definition of “cashflow” should be considered immaterial,
because the definition does not refer to the goods
identified in respondent’s registrations, namely computer
software or computer programs; that petitioner’s evidence
only shows that respondent has admitted that respondent’s
marks are used to identify respondent’s software and that
among the functions of the software is the ability to
calculate the inflow and outflow of money; that a
Cancellation Nos 30,363 and 30,364
6
reasonable consumer would not immediately perceive that
the term CASHFLOW relates to software since respondent’s
identification of goods does not refer to cashflow or to
calculating a cashflow; that petitioner’s contention that
respondent’s marks are descriptive is disingenuous since
petitioner’s marks would also be descriptive based on the
same evidence offered by petitioner; that during the
prosecution of respondent’s marks the Examining Attorney
never made a descriptiveness refusal but allowed the
marks to register on the Principal Register; and that,
assuming respondent would be required to offer evidence
of acquired distinctiveness, petitioner’s evidence does
not establish an absence of a genuine issue of material
fact with regard to acquired distinctiveness.
In reply, petitioner argues that respondent bases
its opposition to petitioner’s motion for summary
judgment on an incorrect legal standard of genericness
rather than descriptiveness, a misrepresentation of the
testimony of its customer, and an irrelevant, unsupported
attack on petitioner’s registrations; that respondent
does not deny or address the fact that respondent’s chief
technology officer testified that respondent’s software
calculates an individual’s cashflow, is frequently used
for that purpose, and that calculating cashflow is an
Cancellation Nos 30,363 and 30,364
7
important feature of the software; that even if
respondent’s software is used for purposes other than
calculating cashflow, respondent’s responses to
petitioner’s second supplemental interrogatories and
requests for admissions show that CASHFLOW describes a
function of respondent’s software; and that any relevant
information regarding acquired distinctiveness should
have been produced, or at the very least, identified in
respondent’s opposition.
Summary judgment is an appropriate method of
disposing of cases in which there are no genuine issues
of material fact in dispute, thus leaving the case to be
resolved as a matter of law. See Fed. R. Civ. P. 56(c).
The party moving for summary judgment has the initial
burden of demonstrating the absence of any genuine issue
of material fact. See Celotex Corp. v. Catrett, 477 U.S.
317 (1986), and Sweats Fashions Inc. v. Pannill Knitting
Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). If
the movant meets this burden, then the non-movant, to
avoid entry of an adverse judgment, must present
sufficient evidence to show an evidentiary conflict as to
one or more material facts in issue. See Opryland USA
Inc. v. Great American Music Show Inc., 970 F.2d 847, 23
USPQ2d 1471 (Fed. Cir. 1992). In our consideration of
Cancellation Nos 30,363 and 30,364
8
the movant’s request for judgment, the evidence must be
viewed in a light most favorable to the non-movant, and
all justifiable inferences are to be drawn in the non-
movant's favor. See Lloyd's Food Products Inc. v. Eli's
Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993), and
Opryland USA, supra.
After carefully reviewing the arguments and viewing
all evidence in the light most favorable to respondent,
we find that petitioner has established that there is no
genuine issue of material fact in dispute with regard to
descriptiveness and lack of acquired distinctiveness of
respondent’s CASHFLOW marks and that petitioner is
entitled to judgment as a matter of law.
A mark is considered to be merely descriptive within
the meaning of Section 2(e)(1) if it describes an
ingredient, quality, characteristic, function, feature,
purpose, use, etc. of the goods to which it is applied.
See e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987); In re Bed & Breakfast Registray, 791
F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); and In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). Whether a
term is merely descriptive is determined not in the
abstract, but in relation to the goods for which
registration is sought, the context in which it is being
Cancellation Nos 30,363 and 30,364
9
used on or in connection with those goods, and the
possible significance that the term would have to the
average purchaser of the goods because of the manner of
its use. In re Bright-Crest, supra at 593.
Based on the evidence of record, we find that
petitioner has met its burden in establishing the absence
of any genuine issue of material fact with regard to
descriptiveness, and that respondent has failed to submit
any evidence which contravenes petitioner’s evidence of
descriptiveness.
In particular, petitioner has presented evidence that
respondent admitted that a significant function of
respondent’s software was to calculate cashflow. See
Excerpt of Deposition of Evan Burfield, officer of
respondent (Petitioner’s Exhibit 22)2 and excerpts from

2 Q. Can Cashflow be used to calculate an individual’s
monthly cash flow?

A. Yes.

A. Yearly cash flow?

A. Yes

A. Is it frequently used for that?

A. Yes.

A. Is that an important feature of the product?

A. Yes.

Cancellation Nos 30,363 and 30,364
10
respondent’s responses to petitioner’s second
supplemental interrogatories and requests for admissions
(Petitioner’s Exhibits 20 and 21).3 Additionally, the
deposition testimony of Michael Smith4, a customer of

3 Admission No. 1
Admit that your software bearing the term CASHFLOW may be
used by financial professionals to calculate an individual’s
cash flow.

Response
Among the many functions performed by the software,
NetDecide software bearing the term CASHFLOW may be used
for individual financial modeling, management, planning and
online data transactions, which includes in part, the
ability to calculate the inflow and outflow of money.

Admission No. 2
Admit that your software bearing the term CASHFLOW uses the
term “Cashflow” to identify an operation whereby your
software calculates an individual’s cash flow.

Response
Among the many functions performed by the software,
NetDecide software bearing the term CASHFLOW may be used for
individual financial modeling, management, planning and
online data transactions, which includes in part, the
ability to calculate the inflow and outflow of money. The
term CASHFLOW identifies, in part, a view in which an icon-
based user interface provides a depiction of an individual’s
finances, including the inflow and outflow of money.

Admission No. 3
Admit that a function of your software bearing the term
CASHFLOW is to calculate an individual’s cashflow.

Response
Among the many functions performed by the software,
NetDecide software bearing the term CASHFLOW may be used for
individual financial modeling, management, planning and
online data transactions, which includes in part, the
ability to calculate the inflow and outflow of money.

4
Cancellation Nos 30,363 and 30,364
11
respondent, (Petitioner’s Exhibit 18) supports the fact
that a use, purpose, function, or feature of the software
is to calculate cashflow or display cashflows. Although
respondent offers its own interpretation of Evan Burfield
and Michael Smith’s testimony as well as respondent’s
responses to petitioner’s second requests for responses
to interrogatories and admissions (as being indicative
that CASHFLOW is used to identify respondent’s software),
we concur with petitioner that the discovery deposition
testimony and discovery responses support a finding of
descriptiveness.
Additionally, the dictionary definition5 of the term
“cashflow”, and evidence of third-party use6 of the term
“cashflow” in connection with financial computer software

A. I’m sorry, page eight of Exhibit Number 2 that cashflow—
that’s a cashflow report that you were able to generate
using the Cashflow model software?

A. Correct.

A. So pages 10 through 14 of Exhibit 2 reflect the annual
cashflows for this particular client that you were able
to generate using the Cashflow model software?

A. Correct.

5 Cash flow is defined as “1. The movement of cash through a
business, as a measure of profitability or liquidity. 2. The
cash generated from a business or transaction. 3. Cash
receipts minus cash disbursements for a given period. –
Sometimes spelled cashflow.” Black’s Law Dictionary 2nd Pocket
Edition (2001).
6 Excerpts of third-party use include the following:
Cancellation Nos 30,363 and 30,364
12
products further support petitioner’s allegation that
CASHFLOW is merely descriptive of a use, purpose,
function or feature of respondent’s software. (See
Petitioner’s exhibit 3, dictionary definition, and
exhibits 5-16, excerpts from Lexis/Nexis and excerpts
from internet websites). With regard to this evidence,
respondent has attempted to argue, that, while admittedly
the dictionary definition and examples of third-party use
establish that the term “cashflow” has a “definable
meaning,” and that the term may be used to “describe
particular actions or functions,” CASHFLOW as applied to
respondent’s computer software for individual financial
modeling, management, planning, and online financial data
transactions is suggestive. We find respondent’s

“Cashflow Plan is a range of powerful, easy-to-use software
packages for preparing comprehensive monthly cashflow
projections for budgets, business plans, fund raising etc . . .”
“Accountant-in-a-Box Helps Clients Manage Cash Flow; software
spots losses before they occur . . . .”
“Risk management software provider Askari Inc. has released a
new product that models portfolio values and returns across
market, credit, asset/liability and cash-flow risks.”
“If you’re having trouble keeping track of everything, you may
need one of the many software programs designed to help manage
cash flow.”
“. . . software is available that qualifies both risk-management
performance and cash-flow forecasting . . . .”
“BARRA has added an enhancement to its U.S. Bond Analysis System
software that allows insurance companies and money managers to
test cash flows of fixed income portfolios . . . .”
“CashControl [software] –-helps business of any size manage
cashflow . . . graphically analyze cashflow highs and lows.”

Cancellation Nos 30,363 and 30,364
13
arguments unpersuasive and agree with petitioner that
respondent has confused the standard for genericness with
descriptiveness. Here, petitioner has established that
“cashflow” describes the flow of cash and is frequently
used in connection with software products that calculate
or display cashflows and that an important feature of
respondent’s software is the calculation or display of
cashflows. Accordingly, petitioner has established that
there is no genuine issue of material fact that CASHFLOW,
as used in connection with respondent’s computer
software, is merely descriptive.
We now consider the question of lack of acquired
distinctiveness.
Petitioner argues that the evidence establishes that
respondent’s CASHFLOW marks lack “secondary meaning.”
Respondent, on the other hand, argues that even if
petitioner establishes a “prima facie case of
descriptiveness, respondent should not have to present
evidence of secondary meaning at this time because
petitioner is not entitled to prevail on summary
judgment.” In particular, respondent argues that “neither
party has had an opportunity to conduct discovery
directed toward secondary meaning” and that should
respondent “be required to offer evidence of secondary
Cancellation Nos 30,363 and 30,364
14
meaning” . . . “both parties should be given an
opportunity to conduct discovery on this issue.”
We consider first respondent’s request for
additional discovery. We agree with petitioner that
further discovery on the issue of acquired
distinctiveness would be unnecessary inasmuch as the
question of whether respondent's CASHFLOW marks have
acquired distinctiveness are facts solely within the
knowledge of respondent. We also agree with petitioner
that respondent’s request for discovery is insufficient
under Fed. R. Civ. P. 56(f). Accordingly, respondent's
request for additional discovery is denied.
With regard to acquired distinctiveness, if the
petitioner were to plead and were to establish that at
the time of registration, “the registered mark was merely
descriptive, then it is incumbent upon the registrant to
establish that prior to the issuance of the registration,
the registered mark had acquired a secondary meaning in
the sense that its primary significance was that of a
source indicator of goods emanating from registrant . . .
. If the petitioner were to so plead and were to
establish that the registered mark is currently
inherently merely descriptive, then the burden would be
on the registrant to show that the mark currently has a
Cancellation Nos 30,363 and 30,364
15
secondary meaning in the sense that it functions
primarily as a source indicator of goods emanating from
the registrant.” Neapco Inc. v. Dana Corp. 12 USPQ2d
1746, 1747 (TTAB 1998). “If it is established either that
as of the time of registration, the registered mark was
merely descriptive and lacked a secondary meaning, or
that as of the present time, the mark is merely
descriptive and lacks a secondary meaning, the
cancellation petition would be granted.” Id.
Inasmuch as petitioner established a prima facie case
of descriptiveness in its motion for summary judgment,
the burden then shifted to respondent to present evidence
of acquired distinctiveness of its CASHFLOW marks in its
response. See Opryland USA and Neapco Inc., supra and
Fed. R. Civ. P. 56(c). Thus, the issue before us is
whether respondent has put forth sufficient evidence to
at least raise a genuine issue of material fact with
regard to the issue of acquired distinctiveness (or lack
thereof).7

7 A movant may prevail by pointing out the "absence of evidence
to support the non-moving party's case" with respect to an issue
on which the non-movant bears the burden. Intellicall Inc. v.
Phonometrics Inc. 952 F.2d 1384, 21 USPQ2d 1383, 1388 (Fed.
Cir. 1992) citing Celotex Corp. v. Catrett, 477 U.S. 317, 325
(1986). In its reply, petitioner stated that “[n]o evidence of
secondary meaning has been produced by [r]egistrant in this
case.”
Cancellation Nos 30,363 and 30,364
16
Here, respondent has failed to submit any evidence in
support of its argument that a genuine issue has been
raised with respect to acquired distinctiveness (or lack
thereof) of its CASHFLOW marks as it was required to do.
See Fed. R. Civ. P. 56(c) and Neapco, supra.
Accordingly, we find that there is no genuine issue with
regard to the lack of acquired distinctiveness of
respondent’s CASHFLOW marks.
In view thereof, petitioner’s motion for summary
judgment on petitioner’s claim of descriptiveness and
lack of acquired distinctiveness is granted. The
petitions to cancel in Cancellation Nos. 30,363 and
30,364 are granted solely on the ground of
descriptiveness and lack of acquired distinctiveness, and
Registration Nos. 2,209,531 and 2,298,545 will be
cancelled in due course.