Points.com, Inc.

Trademark Trial and Appeal Board

Apr 8, 2003

No. 76133801 (T.T.A.B. Apr. 8, 2003)

Mailed: April 8, 2003
Paper No. 10
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Points.com Inc.
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Serial No. 76/133,801
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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
September 22, 2000 an application to register the mark
GLOBALPOINTSXCHANGE on the Principal Register for services
amended to read “providing a web site on the global
computer network for the tracking and exchange of customer
loyalty rewards” in International Class 35. The
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76/133801
2
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, GLOBALPOINTSXCHANGE, 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; an oral hearing was not requested.
The Examining Attorney contends that “the mark
immediately describes the exact nature and purpose of
applicant’s web site, namely, a complete, international, or
global, exchange for customer loyalty points, such as
frequent flyer points, car rental points, and the like”
(first Office action February 16, 2001, p. 2); that
applicant’s misspelling of the word “xchange” does not
obviate the merely descriptive nature of the entire mark
because purchasers would readily perceive the term
“xchange” as “exchange”; that the exchanging of earned
points or rewards for goods and/or services is not new as
evidenced by the numerous excerpted stories retrieved from
the Nexis database; and that the mark, as a whole, is
merely descriptive of applicant’s services.
Ser. No. 76/133801
3
In support of the descriptiveness refusal, the
Examining Attorney has made of record the following
definitions from The American Heritage Dictionary (Third
Edition 1992):
(1) “global adj. 2. of, relating to,
or involving the entire earth;
worldwide ... 3. comprehensive;
total ...,” and
(2) “exchange noun 3. a place where
things are exchanged. ...”
The Examining Attorney also submitted (i) copies of
numerous excerpted stories retrieved from the Nexis
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 “pointsxchange” to tell consumers that
applicant’s service “lets you xchange your points between
your loyalty program accounts or [exchange your points]
into gift certificates” and that applicant is “the only
place you can exchange points, miles or other currencies
between your loyalty programs.”
Applicant argues that “the element GLOBAL is not
geographically descriptive nor descriptive of the
Applicant’s services, and is capable of distinguishing
Applicant’s services,” and “a mark cannot be primarily
Ser. No. 76/133801
4
geographically descriptive simply because it includes the
word ‘global’” (brief, p. 2)1; that applicant uses the mark
in a suggestive manner whereby “‘global’ conveys a message
and quality of international travel and sophistication that
the Applicant desires to associate with its airline,
travel, online and hotel customer loyalty reward management
services” (brief, p. 3); that some imagination and thought
is required to determine the nature of applicant’s
services; and that applicant’s customers may enter into
transactions with only the 25 businesses that have
affiliated with applicant and thus, it is not
“comprehensive” as to all companies offering points or
rewards.
The test for determining whether a mark is merely
descriptive is whether the term or phrase immediately
conveys information concerning a significant quality,
characteristic, function, ingredient, attribute or feature
of the product or service in connection with which it is
used or is intended to be used. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978);
In re Eden Foods Inc. 24 USPQ2d 1757 (TTAB 1992); and In re
1 These arguments by applicant are somewhat puzzling to the Board
because the Examining Attorney has not refused registration on
the basis that (i) the mark, or any portion thereof, is primarily
geographically descriptive, or (ii) the mark is incapable of
distinguishing applicant’s services.
Ser. No. 76/133801
5
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). Further, it
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 term or phrase is being used or is intended to be
used on or in connection with those goods or services, and
the impact that it is likely to make on the average
purchaser of such goods or services. See In re
Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); and In
re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991).
Consequently, “[w]hether consumers could guess what the
product [or service] is from consideration of the mark
alone is not the test.” In re American Greetings Corp.,
226 USPQ 365, 366 (TTAB 1985). Rather, the question is
whether someone who knows what the goods or services are
will understand the term or phrase to convey information
about them. See In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990).
The issue before the Board is whether, applicant’s
mark, as a whole, is merely descriptive. Initially we note
that applicant stated (brief, p. 3) that it “agrees with
the Examiner that the novel spelling of the element
‘XCHANGE’ in the Mark would not obviate the descriptiveness
Ser. No. 76/133801
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of the term should the term appropriately be deemed
descriptive” and “if necessary, the Applicant 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 §1213.05(a) (Third Edition 2002) explains
USPTO policy that compound word marks are considered
unitary marks and disclaimers of a nondistinctive component
of a unitary mark should not be required.
Applicant also stated (brief, p. 4) that “even
assuming that the element XCHANGE is descriptive of
applicant’s disservices, it is hard to assert that the
element GLOBAL immediately brings to one’s mind the
Applicant’s service of allowing an internet user to manage
customer loyalty rewards online, without engaging in some
exercise of imagination.” The term “global” alone would
not bring applicant’s services to mind, but the question is
whether the mark GLOBALPOINTSXCHANGE describes the nature
and purpose of applicant’s services. As discussed below,
we find that the mark is merely descriptive.
We agree with the Examining Attorney that the mark, in
its entirety, is merely descriptive of applicant’s
identified services. The dictionary meanings of “global”
as “worldwide” and “comprehensive” are the readily
Ser. No. 76/133801
7
perceived meanings of the term. While applicant contends
that it intends “global” to convey a meaning of
international travel and sophistication, there is no
evidence that the term would be so perceived.
The other portion of the mark, “pointsxchange,”
clearly refers to an exchange of points and would be so
understood by the consuming public. The Nexis evidence,
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
Ser. No. 76/133801
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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
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.
When we consider the phrase GLOBALPOINTSXCHANGE as a
whole, and in the context of applicant’s services
[“providing a web site on the global computer network for
the tracking and exchange of customer loyalty rewards”],
the phrase immediately informs consumers that applicant’s
services allow customers to exchange points, and that it is
comprehensive in scope or is accessible anywhere in the
world via the Internet. 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.
The combination of these words does not create an
incongruous or creative or unique mark. Rather,
Ser. No. 76/133801
9
applicant’s mark, GLOBALPOINTSXCHANGE, when used in
connection with applicant’s identified services,
immediately describes, without need of conjecture or
speculation, the nature and purpose of applicant’s
services, as discussed above. Nothing requires the
exercise of imagination or mental processing or gathering
of further information in order for purchasers of, and
prospective customers for, applicant’s services to readily
perceive the merely descriptive significance of the phrase
GLOBALPOINTSXCHANGE as it pertains to applicant’s services.
See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir.
1987); In re Omaha National Corporation, 819 F.2d 1117, 2
USPQ2d 1859 (Fed. Cir. 1987); In re Intelligent
Instrumentation Inc., 40 USPQ2d 1792 (TTAB 1996); and In re
Time Solutions, Inc., 33 USPQ2d 1156 (TTAB 1994).
Finally, even if applicant became the first (and/or
only) entity to use the phrase “GLOBALPOINTSXCHANGE” in
relation to “providing a web site on the global computer
network for the tracking and exchange of customer loyalty
rewards,” such is not dispositive where, as here, the term
unquestionably projects a merely descriptive connotation.
See In re Tekdyne Inc., 33 USPQ2d 1949, 1953 (TTAB 1994),
and cases cited therein. We believe that competitors would
have a competitive need to use this term. See 2 J. Thomas
Ser. No. 76/133801
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McCarthy, McCarthy on Trademarks and Unfair Competition,
§11:18 (4th ed. 2000).
Decision: The refusal to register on the ground that
the mark is merely descriptive under Section 2(e)(1) is
affirmed.