Points.com Inc.

Trademark Trial and Appeal Board

May 13, 2003

No. 76079850 (T.T.A.B. May. 13, 2003)

Mailed: May 13, 2003
Paper No. 11
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Points.com Inc.
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Serial No. 76/079,850
_______
Thad N. Leach of Lewis, Rice & Fingersh, L.C. for
Points.com Inc.
Esther A. Belenker, Trademark Examining Attorney, Law
Office 111 (Craig Taylor, Managing Attorney).
_______
Before Chapman, Bucher and Bottorff, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Points.com Inc. (a Canadian corporation) filed on June
28, 2000 an application to register on the Principal
Register the mark shown below
for services amended to read “providing a web site on the
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76/079850
2
global computer network for the tracking and exchange of
customer loyalty rewards” in International Class 35. The
application is based on applicant’s assertion of a bona
fide intention to use the mark in commerce.
The Examining Attorney refused registration on the
ground that applicant’s mark is merely descriptive of
applicant’s services under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. §1052(e)(1).
When the refusal was made final, applicant appealed to
this Board. Both applicant and the Examining Attorney have
filed briefs;1 an oral hearing was not requested.
1 Filed contemporaneously with applicant’s brief on the case, was
its proposed amendment to the drawing showing the word “xchange”
in italic font and in light gray, and including a statement on
the proposed drawing page that “the element ‘xchange’ is depicted
in green.” Applicant’s alternative request to remand the
application to the Examining Attorney was denied in a Board order
dated November 22, 2002 because applicant had given no reason
whatsoever for its delay in seeking to amend the drawing of its
mark. However, the Board explained that the Examining Attorney
could address this matter in her brief, but should not treat it
as raising a new issue. In her brief (p. 7), the Examining
Attorney rejected the proposed amendment to applicant’s mark,
explaining that it was submitted too late in the prosecution
(i.e., after the appeal--Trademark Rule 2.142(d)); that it
includes gray which is not allowed (drawings are to be in black
and white--Trademark Rule 2.52(a)(2)(i)); and that, and in any
event, it would not obviate the mere descriptiveness refusal.
Filed with applicant’s reply brief were printouts of two
applications and two registrations from the USPTO’s Trademark
Electronic Search System (TESS) to illustrate the marks shown
therein. Material submitted for the first time with a reply
brief is clearly untimely under Trademark Rule 2.142(d), and
thus, the Board did not consider these printouts. In any event,
each of the four marks was the subject of a published Board
decision, and the marks are depicted in the Board decisions.
Ser. No. 76/079850
3
The Examining Attorney argues as follows:
[A]pplicant’s mark identifies a points
exchange, a place on the Internet where
consumers can exchange any type of
points accrued from any airline or other
business, anywhere in the world, for
gifts or rewards.
As a whole, the mark is merely
descriptive of the nature of the
applicant’s services. ... The mark
immediately names the exact nature and
purpose of applicant’s goods. (Brief,
p. 6)
She also argues that the slight misspelling of the
word “exchange” remains merely descriptive because
purchasers would perceive the different spelling as the
equivalent of the descriptive word; that the mark does not
include distinctive stylization that creates a separate
commercial impression sufficient to carry the mark, with
the merely descriptive words disclaimed; and that the mark,
as a whole, is merely descriptive of applicant’s services.
In support of the descriptiveness refusal, the
Examining Attorney has made of record the following
definition from The American Heritage Dictionary (Third
Edition 1992):
(1) “exchange noun 3. a place where
things are exchanged. ...”
The Examining Attorney also submitted (i) copies of
numerous excerpted stories retrieved from the Nexis
Ser. No. 76/079850
4
database to show how applicant and others use the words
“points” and “exchange” in the context of the type of
service offered by applicant; and (ii) certain pages
printed from applicant’s website as evidence that applicant
itself uses the term “points xchange” to tell consumers
that applicant’s service “lets you xchange your points
between your loyalty program accounts or [exchange your
points] into gift certificates,” “unlimited pointsxchanges
are only $14.95 per year with a pointsplus account—your
best value at points.com,” and “Reach rewards faster than
ever with •pointsxchange -- the world’s first and only
online loyalty program currency exchange.”
Applicant urges reversal of the refusal arguing as
follows:
In this case, Applicant does not deny
that the words comprising the Mark may
be descriptive. However, Applicant is
confident that the stylization of the
Mark distinguishes the mark in its
entirety.... (Brief, p. 4)
[Applicant’s mark] (stylized) is
capable of creating a commercial
impression separate and apart from the
words it is comprised of because (1) it
is at least descriptive, (2) it is
displayed in an aesthetic manner, and
(3) it pertains to a unique service.
(Brief, p. 5.)
Applicant asserts that the Mark,
consisting of the distinctive display
of the disclaimed word ‘POINTS,’ is
Ser. No. 76/079850
5
registerable upon the Principal
Register as the aesthetics, appearance
and arrangement of the display serve to
distinguish the Mark in its entirety.
(Brief, p. 6.)
Ultimately, applicant contends as follows in its reply
brief:
The law in this case is undisputed: A
distinctive display of unregisterable
portions of a mark are registerable
upon the principal register so long as
the unregisterable elements are
disclaimed. (Citations omitted)
Accordingly, the issue in this appeal
is simple: Is the stylization of the
Applicant’s mark POINTSXCHANGE
(stylized) (the ‘Mark’) a sufficient
distinctive display so as to permit the
Mark to be registered (even assuming
that the Mark is merely descriptive)?
As a preliminary matter, we must clarify the status of
applicant’s offer of a disclaimer of the word “points” in a
December 18, 2001 letter to the Examining Attorney.
Although the Examining Attorney did not formally accept or
reject applicant’s disclaimer, it was offered clearly and
without condition. Thus, pursuant to Section 6(a) of the
Trademark Act (whereby an applicant may voluntarily
disclaim a component of a mark), the disclaimer has been
entered.
We also note applicant stated (reply brief, p. 5) that
although the Examining Attorney never required any
disclaimer, “should the same be necessary, the Applicant
Ser. No. 76/079850
6
may be willing to disclaim those individual elements of the
mark that the Trademark Trial and Appeal Board determines
are needed in order to permit registration of the Mark.”
However, TMEP §1213.06 (Third Edition 2002) explains USPTO
policy that an entire mark may not be disclaimed, and “if a
mark is not registrable as a whole, a disclaimer will not
make it registrable.” The TMEP Section goes on: “There
must be something in the combination of elements in the
mark, or something of sufficient substance or
distinctiveness over and above the matter being disclaimed,
which would make the composite registrable after the import
of the disclaimer is taken into account.”
The issue before the Board is whether applicant’s mark
is merely descriptive, and if so, whether the stylization
of the words is sufficient to carry the mark with the words
disclaimed. As discussed below, we find that the mark is
merely descriptive, and the stylization is not distinctive.
Applicant has acknowledged that the words “may be
descriptive,” and applicant argued the case essentially on
the issue of “distinctive display” of the words. However,
because applicant did not specifically admit the words are
merely descriptive, and applicant offered a disclaimer of
only one of the two words, we will first determine whether
the Examining Attorney has made a prima facie showing that
Ser. No. 76/079850
7
the words “points xchange” are merely descriptive under
Section 2(e)(1).
As has been stated repeatedly, “a term is merely
descriptive if it forthwith conveys an immediate idea of
the ingredients, qualities or characteristics of the goods
[or services].” In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978); Abercrombie & Fitch Co.
v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759, 765 (2nd
Cir. 1976). Moreover, it should be noted that the
descriptiveness of a term is not decided in the abstract,
but rather is decided in relationship to the goods or
services for which registration is sought. See Abcor
Development, supra; In re Consolidated Cigar Co., 35 USPQ2d
1290 (TTAB 1995); and In re Eden Foods Inc. 24 USPQ2d 1757
(TTAB 1992). Finally, it should be noted that a word or
phrase can be “descriptive though it merely describes one
of the qualities or properties of the goods [or services].”
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir.
1987).
Here the Examining Attorney has established that the
mark is merely descriptive of applicant’s identified
services. The words in applicant’s mark, “points xchange,”
clearly refer to an exchange of points and would be so
understood by the consuming public. The Nexis evidence,
Ser. No. 76/079850
8
examples of which are reproduced below, demonstrates that
these words immediately convey information about the nature
and purpose of applicant’s services (emphasis added):
Headline: Vision: The rewards of Digital
Payment
...Universal reward operators are
beginning to strengthen their market
position further by setting up points
exchanges with private label and
consortia programs in a bid to provide
members with increasingly enticing
redemption options. For private and
consortia programs, these point exchanges
enable members to earn their points or
miles more rapidly. “New Media Age,”
January 24, 2002;
Headline: Amtrak, Continental Enter Into
Partnership
...Members of the OnePass program and
Amtrak’s Guest Rewards program will be
able to exchange points and miles. ...
“The Record (Bergen County, NJ),” January
18, 2002;
Headline: Airline Merger Might Shock
Frequent Fliers
...US Airways members would become
customers of an airline that is part of
the Star Alliance, which would let them
rack up frequent-flier points and
exchange them for trips on 12 global
carriers, including Air Canada, All
Nippon, Lufthansa and Singapore Airlines.
..., “The Washington Post,” May 2, 2001;
and
Headline: Business Digest
...American Airlines’ frequent flier
program will become a participant in
Points.com, a new Internet-based company
that touts itself as the world’s first
loyalty program currency exchange.
AAdvantage members will be able to
Ser. No. 76/079850
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exchange their points in other loyalty
programs for AAdvantage mileage points or
convert AAdvantage mileage points into
other loyalty programs’ points. ...,
“Fort Worth Star Telegram,” March 31,
2001.
The words POINTS XCHANGE, as applied to “providing a
web site on the global computer network for the tracking
and exchange of customer loyalty rewards,” immediately
informs consumers that applicant’s services will allow
consumers to exchange points in various loyalty rewards
programs. That is, the purchasing public would immediately
understand the nature and purpose of the services, knowing
that applicant’s services involve this exchange of points.
No thought or imagination is required on the part of a
consumer of applicant’s services to come to this
conclusion.
We find the words POINTS XCHANGE are merely
descriptive of the involved services; and the combination
of these words does not create an incongruous or creative
or unique mark. See In re Gyulay, supra; and In re Omaha
National Corporation, 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987).
We must then consider whether the stylized lettering
and arrangement of the words comprises a “distinctive
display” sufficient to carry the mark. Again we agree with
Ser. No. 76/079850
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the Examining Attorney that the stylization of the words in
this case is not sufficient to create a separate commercial
impression and thus does not obviate the refusal under
Section 2(e)(1). The style of lettering and arrangement of
the words is not unique or fanciful but rather is ordinary
and nondistinctive. Here, the words are displayed in plain
lettering with no design feature, such as in the sense of a
monogram as in the case (relied on heavily by applicant) of
In re Jackson Hole Ski Corporation, 190 USPQ 175 (TTAB
1976). Specifically, in the case now before the Board, the
mark appears in lower case lettering in plain font type,
with the words appearing one over the other flush with a
right margin, and the word “points” in slightly larger
plain type. There is no distinctive arrangement of the
words, or aesthetics or design involved. These are simply
two words in lower case, one over the other, right
justified. See In re American Academy of Facial Plastic
and Reconstructive Surgery, 64 USPQ2d 1648 (TTAB 2002), and
cases cited therein. See also, 2 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition, §11:30 (4th
ed. 2001). We find this mark involves very minimal
stylization which does not create a separate commercial
impression apart from the words “points xchange.”
Ser. No. 76/079850
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As noted earlier, we acknowledge that the word
“xchange” in applicant’s mark is a misspelling of the
English word “exchange.” However, applicant did not argue
that this misspelling constitutes anything unique or
distinctive about its mark. Moreover, we have no doubt
that this slight and common misspelling of the word
“exchange” is not unique or distinctive and would not be so
perceived by the purchasing public. Instead, the
purchasing public would readily and immediately understand
it to refer simply to “exchange.” Thus, the misspelled
word “xchange” does not create a separate and distinct
commercial impression.
Applicant also relies heavily on the case of In re
Clutter Control Inc., 231 USPQ 588 (TTAB 1986). There the
Board found the words to be merely descriptive, but the
design format of the words made a “striking commercial
impression, separate and apart from the word portion of
applicant’s mark” (supra at 589-590).2 That is simply not
the case in the mark now before the Board.
2 The initial letter “C” in each word, “construct” and “closet,”
was elongated both above and below the remaining letters in the
word in a manner such that the “C” encompassed all the other
letters of that word.
Ser. No. 76/079850
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Decision: The refusal to register on the ground that
the mark is merely descriptive under Section 2(e)(1) is
affirmed.