Tango Card, Inc.Download PDFTrademark Trial and Appeal BoardApr 14, 2015No. 85878822 (T.T.A.B. Apr. 14, 2015) Copy Citation This Opinion is not a Precedent of the TTAB Hearing: March 19, 2015 Mailed: April 14, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Tango Card, Inc. _____ Serial No. 85878822 Serial No. 85878838 _____ Erik M. Pelton of Erik M. Pelton & Associates, PLLC for Tango Card, Inc. Amy E. Hella, Trademark Examining Attorney, Law Office 110, Chris A. F. Pedersen, Managing Attorney. _____ Before Shaw, Gorowitz, and Masiello, Administrative Trademark Judges. Opinion by Masiello, Administrative Trademark Judge: Tango Card, Inc. (“Applicant”) has filed two applications for registration on the Principal Register of the mark REWARDS AS A SERVICE in standard characters for the following services: Computer services, namely, providing an online non- downloadable Internet-based system application featuring technology enabling users of an application programming interface to integrate a rewards program into a user's information technology systems, namely, account creation, account funding, catalog management, rewards delivery, and order management and history, in International Class 42; Serial Nos. 85878822 and 85878838 2 Promotional and marketing services, namely, conducting incentive reward programs to promote the sale of products and services of others, associated with an application programming interface to integrate a rewards program into a user's information technology systems, in International Class 35.1 In each case, the Trademark Examining Attorney refused registration under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s mark merely describes the identified services. When the refusals were made final, Applicant appealed and filed requests for reconsideration. When the Examining Attorney denied the requests for reconsideration, the appeals proceeded and Applicant filed its briefs. The Examining Attorney then moved to consolidate the appeals and the Board granted the motion.2 After the Examining Attorney filed her appeal brief, Applicant filed a reply brief applicable to both appeals. The evidentiary records in the two cases are almost identical. In this decision, we will refer to the record in Application Serial No. 85878822, except where expressly indicated. Section 2(e)(1) of the Trademark Act provides for the refusal of registration of “a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them.” 15 U.S.C. § 1052(e)(1). A term is merely descriptive of services within the meaning of Section 2(e)(1) if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, 1 Application Serial No. 85878822 in Class 42 and Application Serial No. 85878838 in Class 35 were both filed on March 18, 2013 under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), stating a date of first use of May 7, 2012 and a date of first use in commerce of January 7, 2013. 2 10 TTABVUE. Serial Nos. 85878822 and 85878838 3 feature, function, purpose or use of the services. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); see also, In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a mark is merely descriptive is determined in relation to the services for which registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, we evaluate whether someone who knows what the services are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). A mark need not immediately convey an idea of each and every specific feature of the services in order to be considered merely descriptive; it is enough if it describes one significant attribute, function or property of the services. See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). Moreover, the mark need not describe all of the identified services. Rather, a descriptiveness refusal is proper with respect to all of the identified services in an International Class if the mark is descriptive of any of the services in that class. In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005). The determination that a mark is merely descriptive is a finding of fact and must be based upon substantial evidence. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007). Serial Nos. 85878822 and 85878838 4 It is the Examining Attorney’s burden to show, prima facie, that a term is merely descriptive of an applicant’s goods or services. In re Gyulay, 3 USPQ2d at 1010; In re Accelerate s.a.l., 101 USPQ2d 2047, 2052 (TTAB 2012). If such a showing is made, the burden of rebuttal shifts to Applicant. The Board resolves doubts as to the mere descriptiveness of a mark in favor of Applicant. In re The Stroh Brewery Co., 34 USPQ2d 1796, 1797 (TTAB 1994). The Examining Attorney argues that Applicant’s mark is merely descriptive because it is nothing more than a combination of common descriptive words applicable to the services that, in combination, retain their descriptive meaning in relation to the services and do not give rise to any nondescriptive meaning.3 The Examining Attorney has made of record the following relevant dictionary definitions: service NOUN: Work done for others as an occupation or business: has done service for us as a consultant. An act or a variety of work done for others, especially for pay: offers a superior service to that of his competitors; provides full catering services.4 reward NOUN: Something given or received in recompense for worthy behavior or in retribution for evil acts. Psychology The return for performance of a desired behavior; positive reinforcement.5 Applicant, for its part, has made of record the following definition of “reward”: 3 Examining Attorney’s brief, 11 TTABVUE 5-6. 4 Definitions from , Office Action of July 1, 2013 at 28-29. 5 Id. at 26. Serial Nos. 85878822 and 85878838 5 reward transitive verb to give money or another kind of payment to (someone or something) for something good that has been done to give a reward to or for RECOMPENSE.6 The record shows that in the world of commerce, “reward” is widely understood to mean an inducement or premium offered to customers by a business in order to retain them as customers or to intensify their engagement with the business. This meaning is particularly consistent with the psychological definition quoted above. Applicant’s specimens of use state: Real rewards are a critical part of business strategy – whether it is customer loyalty, customer acquisition, or employee engagement.7 We help you deliver the right rewards at the right time and in the right way to inspire happy employees and customers.8 Third-party websites state as follows: REWARD/S: Enrolled members can earn cash back rebates and other rewards including, but not limited to, bonus cash, cash, points, discounts, coupons and similar qualified benefits. … Cash Back REWARDS allows a MEMBER to earn back a portion of their online purchase in the form of a REWARD. 9 6 Definition from , Applicant’s request for reconsideration of February 27, 2014 at 24. 7 Applicant’s specimen of use filed March 18, 2013. 8 Applicant’s specimen of use filed December 10, 2013. 9 , Terms and Conditions, Office Action of July 1, 2013 at 12, 15. Serial Nos. 85878822 and 85878838 6 Since integrating Pretio into our game, we’ve seen both increased engagement and retention amongst our players. Giving us the ability to reward our users for their loyalty with actual gift cards has meant that players return to our game more often, play for longer and are less likely to leave to play other games that just don’t offer the same return for a player’s valuable time.10 Applicant and others refer to the dispensing of such “rewards” as a “rewards program.” The recitations of services in both applications at issue refer to “rewards program[s]” as a feature of the services. We also note the following: you can elegantly knit a sophisticated rewards program into your platform.11 Our free out-of-the-box rewards program takes less than 5 minutes to get up and running.12 Applicant also appears to refer to the dispensing of rewards as a “rewards … service”: YOU CAN Integrate our rewards and management services with your platform13 On this record, it is clear that REWARDS is a recognized word describing a type of business strategy for the attraction and retention of customers. SERVICE is a highly general term that applies in a descriptive way to activities of virtually all businesses. Applicant’s services involve “rewards programs” and REWARDS clearly 10 , What People Are Saying, id. at 23. 11 Applicant’s specimen filed March 18, 2013. 12 Office Action of July 1, 2013 at 20. 13 Applicant’s specimen of use filed March 18, 2013. We acknowledge that the phrase “rewards and management services” might be parsed differently so as to avoid viewing it as a reference to “rewards services”; and we give Applicant the benefit of the doubt. Serial Nos. 85878822 and 85878838 7 has descriptive meaning with respect to this feature of Applicant’s services. To determine whether the phrase is descriptive, we must ask whether REWARDS AS A SERVICE forthwith conveys an immediate idea of this feature of the services. Applicant argues as follows: Applicant’s REWARDS AS A SERVICE mark is a clever play on the phrase “software as a service” (also known as “cloud computing”). The phrase “software as a service” is commonly defined as “a software delivery model in which software and associated data are centrally hosted on the cloud” and accessed via web browser. [Citation to record omitted.] Applicant’s recited services include, among other things, “providing an online non-downloadable Internet-based system application,” which falls into this category. However, Applicant’s mark does not incorporate the phrase “software as a service.” Instead, Applicant replaces the word “software” with “rewards” in order to suggest that Applicant’s cloud-based software helps consumers integrate a program featuring Applicant’s gift card technology into information technology systems. Applicant’s unique spin on the well-known phrase “software as a service” also means that consumers must engage in a multi-stage reasoning process in order to understand how Applicant’s mark relates to Applicant’s services. Applicant’s brief, 7 TTABVUE 9-10.14 Applicant admits that its services are a type of “software as a service” (“Applicant’s recited services include [providing software online], which falls into this category.”).15 It is equally clear that the type of software that is featured in Applicant’s services is rewards program software. However, Applicant contends that 14 See 8 TTABVUE 9-10 in the record of Application Serial No. 85878838. 15 This fact is also apparent in the recitations of services. The recitation in Class 42 involves “providing an online … application … to integrate a rewards program into a user’s … systems.” The recitation in Class 35 involves “conducting incentive reward programs … with an application programming interface …” Serial Nos. 85878822 and 85878838 8 the mark is not merely descriptive, because the words AS A SERVICE, with their implicit reference to the well-known phrase “software as a service,” provide an additional meaning to the mark. Applicant also argues that the wording AS A SERVICE makes a “multi-stage reasoning process” necessary. As Applicant admits, the phrase “software as a service” describes Applicant’s services. Applicant’s Class 42 services actually are the provision of software as a service; and software as a service is an important feature of the Class 35 services. Therefore, the suggestion of “software as a service” created by the wording AS A SERVICE in the mark does not add nondescriptive significance to the mark, nor does it interrupt or impede the immediate conveyance of accurate information about the services. Applicant further argues that its mark is suggestive because it is incongruous: By definition, a “reward” is “money or another kind of payment that is given or received for something that has been done”; in other words, something given to someone in exchange for a service. [Citation to record omitted.] Consequently, Applicant’s REWARDS AS A SERVICE mark, when read literally, would be interpreted as self- contradictory, as a form of circular logic, or as if Applicant itself is engaged in the practice of rewarding people. It thus takes multi-stage reasoning for the consumer to realize that Applicant’s mark suggests that Applicant provides a means for third-parties to give out rewards… Applicant’s brief, 7 TTABVUE 11 (emphasis in original).16 First, we must note that the quoted argument is ineffective with respect to Applicant’s Class 35 services, identified as “conducting incentive reward programs”; 16 See 8 TTABVUE 11 in the record of Application Serial No. 85878838. Serial Nos. 85878822 and 85878838 9 this wording plainly indicates that, indeed, “Applicant itself is engaged in the practice of rewarding people.” The Class 35 services literally are providing rewards as a service, i.e., “conducting reward programs” for others, which necessarily entails providing rewards to customers of a business as a service to the business. Thus, there is no incongruity with respect to the Class 35 services. With respect to the services in Class 42, Applicant’s focus on the “money or … payment” definition of the word “reward” ignores the commercial meaning that the word clearly has in the context of Applicant’s services, i.e., an inducement or premium offered to customers by a business in order to retain them as customers or to intensify their engagement. In light of this meaning of the word “rewards,” which relevant customers would immediately apprehend, we must ask whether customers for the Class 42 services would find the phrase REWARDS AS A SERVICE incongruous. The record shows that, in the field of cloud computing, the phrase “software as a service” has led to a proliferation of other similar phrases: The term “software as a service” (SaaS) is considered to be part of the nomenclature of cloud computing, along with infrastructure as a service (IaaS), platform as a service (PaaS), desktop as a service (DaaS), backend as a service (BaaS), and information technology management as a service (ITMaaS).17 17 Wikipedia entry for “software as a service,” Applicant’s request for reconsideration filed February 27, 2014 at 16. Serial Nos. 85878822 and 85878838 10 The same entry also refers to another variant of the phrase, i.e., “database as a service,” or “DbaaS.”18 With one exception, these variations on the “as a service” concept resemble Applicant’s mark in the sense that each of them includes a noun not typically used as the name of a service and characterizes it as “a service.”19 In each case the noun is the name of some desired result of a computing process. The evidence indicates that the phrase “as a service,” when affixed to such a noun, is readily understood to mean “providing cloud computing services that will make available to the user the desired result.” In the examples given in the Wikipedia entry, the desired results made available to the user are a database (DbaaS); a computing infrastructure (IaaS); a computing platform (PaaS); computer desktop functions (DaaS); or backend data processing functions (BaaS). As the record shows, in Applicant’s industry, phrases that include “as a service” have proliferated and are readily understood. Therefore, it is highly unlikely that relevant customers would perceive the phrase REWARDS AS A SERVICE as an incongruous expression. That people would not perceive Applicant’s mark as an incongruous combination of words is confirmed by the fact that some third parties have apparently independently used the words of Applicant’s mark to describe similar services: Earndit is the leading exercise rewards program … They’ve recently built an API to make all of their rewards 18 Id. at 17. 19 The one exception is “information technology management as a service,” because “management” is a type of activity that would readily be perceived as a service. Serial Nos. 85878822 and 85878838 11 available … Think of it as a white-label rewards program, or even Rewards as a Service.20 Rewards.com is a consumer website for anyone interested in rewards. We maintain this great destination for all things rewards as a service for our members, and other interested parties. Please visit our website often … to browse our specially designed pages, and earn as many Rewards as you can.21 A true Rewards as a Service platform. Pretio handles all the rewarding, tracking, sourcing, and most importantly fulfillment of the rewards.22 The relevant customers for Applicant’s services are persons seeking cloud computing services to help with the administration of rewards programs. In such a context, in which people have been exposed to other expressions like “software as a service,” “database as a service” and “desktop as a service,” customers would readily understand the mark REWARDS AS A SERVICE to describe the provision of cloud computing services that will make available to them the software functions necessary for an incentive rewards program. We also disagree with Applicant’s argument that the mark does not describe the services “with the requisite degree of particularity.”23 The point of Applicant’s Class 42 services is to provide rewards software in the cloud. The only relevant word that is missing from the mark is “software”; and in the context of an offer to provide software, no imagination or multi-stage reasoning is required of the customer to infer that the mark refers to software. Similarly, the point of Applicant’s Class 35 20 , Office Action of July 1, 2013 at 7. 21 , id. at 12. 22 Comment of Jessica S, “What People Are Saying,” , id. at 23. 23 Applicant’s brief, 7 TTABVUE 9, 17. Serial Nos. 85878822 and 85878838 12 services is to conduct reward programs. The only relevant word missing from the mark is “program,” which, in context, the customer can deduce without mental exertion. Both Applicant and the Examining Attorney have made of record third-party registrations of marks that include the designation AS A SERVICE, some of which indicate that the USPTO has treated such marks as merely descriptive and some of which indicate that such marks were deemed registrable on the Principal Register. Aside from illustrating inconsistent treatment by the USPTO, these registrations are not persuasive. We must decide each case on its own merits. In re Owens- Corning Fiberglas Corp., 774 F.2d 1116, 1127, 227 USPQ 417, 424 (Fed. Cir. 1985). Even if the marks in some prior registrations had some characteristics similar to those of Applicant’s mark, the USPTO's allowance of such prior registrations does not bind the Board. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). For the reasons stated, we find that Applicant’s mark is merely descriptive of Applicant’s services within the meaning of Trademark Act Section 2(e)(1). Decision: The refusal to register is affirmed. Copy with citationCopy as parenthetical citation