Community Financial Services Assoc. of America

Trademark Trial and Appeal Board

Jan 29, 2003

No. 92029232 (T.T.A.B. Jan. 29, 2003)

Mailed: January 29, 2003
Paper No. 19
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Community Financial Services Association of America1
v.
Payday Garden City, L.L.C.
____
Cancellation No. 29,232
_____
David J. Hill and Alicia Brown Oliver of Chambliss, Bahner &
Stophel, P.C. for Community Financial Services Association
of America.
Ken J. Pedersen of Pedersen and Company, PLLC for Payday
Garden City, L.L.C.
_____
Before Seeherman, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Community Financial Services Association of America (a
Maryland corporation) (hereinafter petitioner) has filed a
1 On January 22, 2001, the parties filed a stipulation that due
to a clerical mistake, several papers filed in this case,
including the petition to cancel, erroneously refer to petitioner
using the word “Consumer” instead of the correct word
“Community,” and that all such references are understood to refer
to petitioner.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Cancellation No. 29232
2
petition to cancel a registration issued on the Principal
Register to Payday Garden City, L.L.C. (an Idaho limited
liability company) (hereinafter respondent) for the mark
PAYDAY ADVANCES for “cash advances without credit checks up
to five hundred dollars ($500) for off-the-street customers
with their post-dated checks as promissory note[s], and wire
funds transfers for such customers” in International Class
36.2
Petitioner alleges that “a ‘payday advance’ is a
service provided by Petitioner’s members for which the
customer pays a flat fee and receives a small amount of cash
for a short period of time against the customer’s next
paycheck. Petitioner’s members hold the customer’s check
for an agreed-upon time period and then deposit the check,
or if the customer repays with cash, the check is returned
to the customer.” (Paragraph 1). Petitioner asserts as
grounds for cancellation that it is a national trade
association which represents the payday advance industry;
that petitioner’s members are currently and have been for
many years engaged in providing payday advances; that
petitioner’s members have extensively advertised these
2 Registration No. 2,243,154, issued on May 4, 1999 from an
application filed on October 2, 1996, originally based on the
assertion of a bona fide intention to use the mark in commerce,
and ultimately a statement of use was accepted, with a claimed
date of first use and first use in commerce of May 15, 1997.
Respondent disclaimed the word “advances.”
Cancellation No. 29232
3
services nationwide, and the public recognizes the term
“payday advance” as a generic term for petitioner’s members’
services; that the term is a generic term for the services
provided by petitioner’s members and by respondent; and that
petitioner believes it will be damaged by the involved
registration.
In its answer respondent denied the salient allegations
of the petition to cancel.
The Record/Evidentiary Objections
Before we describe what the record consists of in this
case, we must address evidentiary objections made by
respondent in its brief on the case. First, respondent
objects to petitioner’s July 27, 2001 testimony of William
M. Webster, IV, a member of petitioner’s board of directors,
current president of petitioner association and chief
executive officer of one of petitioner’s members, because
the testimony (i) was not taken during petitioner’s
testimony period, and (ii) cannot be submitted by notice of
reliance as the deposition is not of an adverse party.
Upon review of the trial date schedule as set and reset
in this case,3 we concur that the testimony was taken
outside of any of petitioner’s testimony periods. See
Trademark Rule 2.121(a). However, respondent’s attorney
3 During this review it came to the Board’s attention that one of
petitioner’s consented motions to extend dates (filed June 8,
2001) had not been granted. That motion is hereby granted.
Cancellation No. 29232
4
attended the deposition, did not object thereto on the basis
of timeliness, and cross-examined the witness. Further,
respondent included the Webster testimony in the list of
items (exhibit E) in respondent’s own notice of reliance.
In addition, one of petitioner’s attorneys has stated in a
declaration (submitted with petitioner’s reply brief on the
case) that the July 27, 2001 deposition date was ultimately
chosen because of scheduling conflicts involving both
parties’ attorneys as well as the witness. It would have
been the better practice for petitioner to either move to
extend its testimony period, or to have obtained a written
stipulation from respondent that the untimely taken
deposition could be considered of record. But, in any
event, in the circumstances herein we find that respondent
waived its objection to the timeliness of petitioner’s
testimony deposition of William M. Webster, IV, and we
consider the testimony (with exhibits) to be of record. See
Of Counsel Inc. v. Strictly of Counsel Chartered, 21 USPQ2d
1555, footnote 2 (TTAB 1991). See also, TBMP §718.04.
Further, contrary to respondent’s contention, this
testimony deposition is that of a party. At the time of his
deposition, Mr. Webster was the president of petitioner
association. Moreover, a party need not file a notice of
reliance on a trial testimony deposition (party or non-
party) at all. See Trademark Rule 2.125(c).
Cancellation No. 29232
5
Second, respondent objects to petitioner’s September
10, 2001 notice of reliance on numerous printed publications
because (i) the relevance thereof has not been set forth,
(ii) the publications lack foundation and authentication,
and (iii) they constitute hearsay.
While it is true that petitioner did not set forth the
relevance of the printed publications, this would generally
be a curable defect and respondent should have raised such
an objection promptly, preferably by way of motion to strike
during the trial. See TBMP §718.02(b). Respondent waited
to object thereto until the filing of its brief on the case.
Moreover, we note that the only pleaded ground in this case
is that of genericness of the registered mark, and the
relevance of the involved printed publications is obvious.
With regard to foundation and authentication of these
publications, petitioner provided photocopies of stories
from newspapers and other printed publications, each one
identified as to source and date (e.g. The Cincinnati Post,
January 25, 2000, The St. Louis Post-Dispatch, September 18,
2000). These publications comply with the normal
requirements. Respondent pointed to no specifics for its
objections as to authentication and foundation, or to any
specific publication as specifically lacking authenticity.
Respondent’s hearsay objection is also not well taken
with regard to these printed publications because such
Cancellation No. 29232
6
materials are admissible and probative for what they show on
their face, not for the truth of the matters contained
therein. See Midwest Plastic Fabricators Inc. v.
Underwriters Laboratories Inc., 12 USPQ2d 1267, footnote 5
(TTAB 1989), aff’d 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir.
1990). See also, TBMP §708. Here, these publications are
admissible to show uses of the phrase “payday advance(s)”
within those publications, but not for the truth of the
stories themselves.
Respondent’s objections to petitioner’s notice of
reliance on printed publications are overruled.4
The record consists of the pleadings; the file of
respondent’s registration; the testimony, with exhibits, of
William M. Webster, IV; petitioner’s notices of reliance on
(i) a certified copy of respondent’s Registration No.
2,243,154,5 (ii) respondent’s answers to petitioner’s
interrogatory Nos. 1, 2 and 4, and the documents attached
thereto6, and (iii) photocopies of numerous stories
4 We note that exhibit No. 14 to the Webster deposition is a
collection of numerous print and electronic media articles, many
of which were also submitted under petitioner’s notice of
reliance on printed publications. Respondent’s attorney cross-
examined the witness with regard to these articles.
5 Respondent’s registration is of record pursuant to Trademark
Rule 2.122(b), and neither party needed to submit a notice of
reliance on a copy of the registration page.
6 Normally, documents produced in discovery may not be made of
record by way of notice of reliance. See Trademark Rule
2.120(j)(3)(ii). However, inasmuch as respondent provided these
documents to petitioner as part of its answers to petitioner’s
interrogatories, they are received into evidence. Moreover,
respondent did not object thereto. See TBMP §711.
Cancellation No. 29232
7
appearing in printed publications; and respondent’s notice
of reliance on (i) a photocopy of its Registration No.
2,243,154, (ii) petitioner’s responses to respondent’s first
set of interrogatories, (iii) petitioner’s supplemental
responses to respondent’s first set of interrogatories, (iv)
petitioner’s responses to respondent’s document requests,7
(v) the July 27, 2001 testimony of William M. Webster, IV,
and (vi) the August 29, 2001 testimony depositions of
Shannon Fontenot and Darrell Fontenot, members of respondent
(both Fontenot depositions were taken by petitioner during
its testimony period).
Both parties filed briefs on the case, but neither
party requested an oral hearing.
The Parties
Petitioner, Community Financial Services Association of
America, is “the national trade association for the payday
advance industry” (Webster dep., p. 7). According to
petitioner, a “payday advance” is a service for which the
customer pays a flat fee and receives a cash advance against
his next paycheck. (Webster dep., exhibit No. 5.)
Petitioner was formed in early 1999 by five founding members
-- Advance America, National Cash Advance, Check Into Cash,
7 With regard to respondent’s notice of reliance on petitioner’s
responses to respondent’s document requests and the attached
documents, these have also been considered because petitioner did
not object thereto and treated them of record.
Cancellation No. 29232
8
Check-N-Go and A.C.E. Cash Express; and it currently has 66
members representing approximately 60% of the industry.
These members operate a combined total of approximately 6500
stores nationwide. The largest provider of these services
in the United States is Advance America with 1414 stores.
Petitioner disseminates educational information to
local, state and federal legislators, government regulators,
news media and its own members. Petitioner also produces a
document titled “Best Practices for the Payday Advance
Industry”8 requiring that members abide by these practices
in order to remain a member in good standing. (One of
petitioner’s founding members, A.C.E Cash Express, left the
association because they did not follow the “Best Practices”
guidelines.) The “Best Practices” document is posted
(generally appearing in a size of three feet by five feet)
in each member’s outlet stores, and it also appears on
counter cards and brochures prepared for the customers, as
8 This document specifies, for example, “full disclosure”
compliance with all state and federal requirements including
disclosing the cost of the transaction to the customer;
“compliance” with all applicable laws, including not charging any
fee not authorized by law; “truthful advertising”; “encourage
consumer responsibility” by implementing procedures to inform
customers of the intended use of this service; “right to rescind”
giving customers the right to rescind, at no cost, a transaction
on or before the close of the following business day;
“appropriate collection practices” collecting past due accounts
in a professional, fair and lawful manner; “no criminal action”
will be threatened or pursued based on non-payment of the
account; and “enforcement” by participating in self-policing of
the industry through reporting violations of the “Best Practices”
to petitioner and by maintaining a toll-free customer hotline in
each outlet store.
Cancellation No. 29232
9
well as being distributed to all state and federal
legislators and members of the federal regulatory community.
Petitioner also provides to its members a brochure titled
“The Facts About Cash Advance Services” (on which each
member can fill in their company logo) to give to each
customer at the time of their first transaction. (This
document includes the “Best Practices” list, as well as
questions and answers about the service in which “payday
advance” [without quotation marks] is used to refer to the
service.9
Petitioner attends and provides exhibits at various
legislative trade shows and conferences (e.g., National
Conference of State Legislators).
Respondent, a limited liability company organized under
the laws of Idaho, provides cash advances through a
procedure whereby a customer writes a post-dated check and
respondent holds the check for two weeks. Respondent also
sells money orders, wires money transfers, and, at one
9 For example, “Q. How often do most people use this service? A.
Since a payday advance is a short-term solution to an immediate
need, it is not intended for repeated use in carrying an
individual from payday to payday. When an immediate need arises,
we’re here to help. But a payday advance is not a long-term
solution for ongoing budget management.”; and “Q. Getting a
payday advance is such a simple and easy process, why is there so
much information in the Customer Agreement? A. The Agreement you
read and sign prior to receiving a payday advance is a contract
between you and [name of member company, e.g., United Cash
Advance]. Our contract complies with all applicable state or
federal disclosure requirements. It fully outlines the terms of
the payday advance transaction,....”
Cancellation No. 29232
10
location, respondent cashes payroll checks. (Shannon
Fontenot dep., pp. 5-6). Respondent uses the mark PAYDAY
ADVANCES in approximately 15 different store locations in
Idaho, Colorado, Utah, Kansas and New Mexico, under various
names such as Triumph, Checkmate, and Payday. (Respondent’s
answer to petitioner’s interrogatory No. 4.)
Respondent has taken action against a few third-party
uses of “payday advances,” doing so in 1996 during the
pendency of respondent’s then application. Some of those
third parties ceased use (e.g., Nationwide Finance) and some
did not. Respondent did not follow up on those that did
not. (Darrell Fontenot dep., pp. 5-7.)
Standing
Respondent contends that petitioner has neither pleaded
nor proven standing. We disagree. Petitioner pleaded and
proved that it is a national trade association representing
the industry which provides short-term small loans without
credit checks; that each of its members engages in this
service; and that petitioner and its individual members use
the words “payday advance(s)” to refer to the service
whereby customers receive a short-term loan for a short
period of time against the customer’s next paycheck.
The claimed use of a term in a generic sense (or in
certain time frames under Section 14, a descriptive sense)
is sufficient to impart standing to a competitor in a
Cancellation No. 29232
11
petition to cancel a registration based on the ground of
genericness. Moreover, the Court of Appeals for the Federal
Circuit [the successor court to the Court of Customs and
Patent Appeals (CCPA)] has discussed the standing of a trade
association representing its members in the case of Jewelers
Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2
USPQ2d 2021 (Fed. Cir. 1987). See also, Mars Money Systems
v. Coin Acceptors, Inc., 217 USPQ 285 (TTAB 1983); and 3 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, §§20:46 and 20:50 (4th ed. 2001).
Petitioner, as a trade association representing members
which offer cash advances for paychecks, has shown the
requisite standing in this case.
Genericness
Section 14(3) of the Trademark Act, 15 USC §1064(3),
permits cancellation if the “registered mark becomes the
generic name for the goods or services, or a portion
thereof, for which it is registered....”
The test for determining whether a designation is
generic, as applied to the goods or services in the
registration, turns upon how the term is perceived by the
relevant public. See Loglan Institute Inc. v. Logical
Language Group, Inc., 962 F.2d 1038, 22 USPQ2d 1531 (Fed.
Cir. 1992). Determining whether an alleged mark is generic
involves a two step analysis: (1) What is the genus of the
Cancellation No. 29232
12
goods or services in question? and (2) Is the term sought to
be registered understood by the relevant public primarily to
refer to that genus of goods or services? See H. Marvin
Ginn Corporation v. International Association of Fire
Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
Evidence of the public’s understanding of a particular
term may be obtained from any competent source, including
direct testimony of consumers, consumer surveys, listings in
dictionaries, trade journals, newspapers, and other
publications. See Magic Wand Inc. v. RDB Inc., 940 F.2d
638, 19 USPQ2d 1551 (Fed. Cir. 1991); In re Merrill, Lynch,
Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141
(Fed. Cir. 1987); and In re Northland Aluminum Products,
Inc., 777 F.2d 1566, 227 USPQ 961 (Fed. Cir. 1985). The
party asserting genericness must prove its claim by a
preponderance of the evidence. See Magic Wand Inc. v. RDB,
Inc., supra, at 1554.
The key consideration in determining genericness is the
relevant public’s understanding of the term. That is, do
the members of the relevant public understand or use the
term sought to be protected to refer to the genus of goods
or services in question. In this case, the relevant public
consists of persons who currently need or those who might
need a short-term advance of small amounts of money.
Cancellation No. 29232
13
Respondent contends that the relevant services are
“cash advances”; that the ultimate question then becomes “do
consumers understand PAYDAY ADVANCES primarily to refer to
‘cash advances’”; and that “a ‘yes’ answer requires that
‘payday’ be identical to ‘cash’” (brief, pp. 12-13).
Respondent argues that there is no equivalency between those
two words; and that consumers must make a mental leap
between “cash” and “payday,” making respondent’s mark
suggestive, not generic.
Petitioner contends that a preponderance of the
evidence establishes that “payday advances” has become
generic for deferred presentment or cash advance services as
identified in the involved registration; and that respondent
has not objected to competitors’ uses of the term.
Petitioner references and categorizes its evidence showing
that the term “payday advance(s)” is widely used by all of
the following: (i) respondent’s competitors in the industry
to describe their services; (ii) the news media to describe
the industry occupied by petitioner’s members and
respondent; (iii) petitioner to describe the services
offered by its members; (iv) legislators and regulators in
referring to the involved industry; and (v) surveys, polls
and third-party reports relating to the involved service
industry.
Cancellation No. 29232
14
Petitioner’s witness, Mr. Webster, testified regarding
a group of documents (exhibit No. 21) which are all taken
from various companies’ web pages. The text of examples of
uses of the term “payday advance(s)” from those web pages
are reproduced below:
Get $200 Fast
Welcome to the best payday loan site on
the Internet. We’ve been in business
since 1994 and have successfully
completed over 65,000 payday advance
transactions for our satisfied
customers....
“payadvance.com”;
AmeriCash Advance
Payday advances up to $500 overnight
Need cash before payday?
Secure, fast & easy
No credit checks
No hassles
Our payday advance service can help you
with life’s little emergencies...
Apply for a payday advance online via
our secure website...
Upon FAST approval notification, your
cash advance will be sent to your....
“americashadvance.com”;
Pay Advances Dollar$mart Checks Cashed
Welcome to the Dollar$mart web site
...Our company specializes in payday
advances, check cashing and Western
Union wire services.
We take great pride in providing fast,
friendly and hassle-free services. This
web site provides information about our
company and instructions for applying
for payday advances.
“dollarsmartinc.com”;
Cancellation No. 29232
15
Uca$h Payday Advance
...U Cash has subsidiary divisions which
operate “traditional” payday advance
retail offices in South Carolina and
Texas.
Our recently established online agent-
supported payday advance program is
rapidly expanding through Georgia and
Texas.
We fund all payday advances from
internal resources which is testimony of
our financial strength.
“ucashpayday.com”;
MaxOutLoan.com
Borrow up to $500!
MaxOutLoan.com can help with a Cash
Loan, available overnight,...loan you up
to $500 with a MaxOutLoan Payday
Advance.
No credit check is required!
...Click here now to apply for a new
MaxOutLoan...
“maxoutloan.com”;
ChecKing Check Cashing Centers
Our Centers offer fast, friendly
service, while providing a wide range of
financial services. ChecKing Check
Cashing Centers will cash any good check
for a fee, as well as providing payday
advances to the community....
“check-king.com”;
ezcashnow.com
Access Payday Advance
“Online Cash Advance Center”
...Apply for a loan: Click here to apply
for a payday advance loan
...More Information: Click here to find
out more information about a payday
loan.
“excashnow.com”;
Cancellation No. 29232
16
Yourfinancelink.com
Payday Advance Services
Site Links
AmeriCash Advance – Delaware-based firm
provides payday advance services
Bell Financial Services – Provides
payday advances in the state of
California
...Cash Now – Provides payday advance
services, based in Carlsbad, CA...
“yourfinancelink.com”; and
Welcome to ePacific
eP Products
eP PayCard
A Payday Advance Card
...Remember, when you get your short-
term financing on an eP card, you get...
“epacific.com.”
Also, there is of record much general circulation media
evidence (exhibit No. 14 to Mr. Webster’s testimony, and the
publications submitted under petitioner’s notice of
reliance) which shows generic uses of “payday advance(s).”
Examples of these stories are reproduced below:
Headline: Advancing into Debt; State
Needs Stricter Regulation of Payday
Advance Stores
Payday advance stores do exactly what
their name implies. They give short-
term advances on paychecks — or
“deferred entitlements” — as they’re
called – and assess hefty finance
charges...
Although it’s illegal, many shops extend
the loan further, thus beginning a cycle
of payday advances, with the fees
eventually climbing higher than the
amount of the initial loan....
“Sarasota Herald-Tribune,” November 30,
1999;
Cancellation No. 29232
17
Headline: In Business
...Business Agreement: Pinnacle Business
Management and Fast PayCheck Advances
has made an agreement with Mail Boxes
Etc. to offer payday advances at
participating Mail Boxes Etc.....
“The Tampa Tribune,” December 13, 1999;
Headline: Landing a loan shark;
Legislature harpooned a voracious
species of predatory lender
...Loan sharks have found Florida’s
waters hospitable, but they don’t have
quite as much to grin about these days.
Five years after consumer advocates
began pleading for help, the Legislature
finally decided to hurl a harpoon at one
of the most voracious species of
predatory lenders -- the title-loan
company.
...The sharks, of course, still have
plenty of prey in Florida. The
Legislature did nothing to curb payday
advance shops, which charge up to 400
percent for short-term advances on
paychecks.
“Sarasota Herald-Tribune,” May 16, 2000;
Metro Desk
Supporters call it a last resort that
rescues working people in sudden need of
cash. Opponents call it a legal loan-
sharking operation that entangles poor
people in an endless web of debt.
It is the “payday loan” industry, a
fast-growing offshoot of the check-
cashing business that is exempt from
usury laws and provides advance money to
its customers at annualized interest
rates as high as 911%.
...One of the most controversial aspects
of the payday business is that it allows
customers who cannot pay off their loans
to roll them over repeatedly,...
Payday advance companies deny that
rollovers are common....
“Los Angeles Times,” May 17, 2000;
Cancellation No. 29232
18
Headline: The Pen Is Mightier; After
Signing Legislation to Put an End to
Consumer-Gouging by Car-Title Lenders,
Gov. Jeb Bush Rightly Pointed Out the
Need for Regulation of the Payday-
Advance Business
...Counties and cities throughout
Florida began imposing their own
restrictions,...
Nothing in existing law appears to
prohibit a local government’s taking
similar action against payday-advancers.
That’s why some already have jumped into
action. The Longwood City Commission
may consider as early as June 5 a
proposed ordinance that would slap a 30
percent annual rate on payday advances
but allow a one-time $5 fee.
...Mr. Bush should send an unmistakable
signal that he’s in on reforming the
payday-advance business from the
start....
“The Orlando Sentinel,” May 19, 2000;
CNN Financial Network July 7, 2000:
Payday Loans: fast bucks
...Smith is a lawyer who has studied the
payday-advance industry and is fighting
it....
Other lawyers and state regulators have
also taken a stand. Smith and others
believe payday-advance companies will
continue to proliferate....;
Headline: Payday Loans Offer Option, But
at a Cost
...Typically, customers who take out a
payday loan – also known as deferred
deposit or payday advance – must prove
they have a job and a bank checking
account....
“The Idaho Statesman,” August 20, 2000;
Headline: Cashing In on Cash Advances
...Supporters call payday advances a
lifeline for countless Americans...
Cancellation No. 29232
19
Critics counter that payday advances are
no bargain at all, but rather exorbitant
loans that take advantage of those
struggling to make ends meet.
...The only legislator to vote against
the 1999 payday advance law, State Rep.
Jo Carson,...
“The Arkansas Democrat-Gazette,” July
16, 2000;
Headline: Money Matters
“Payday Advances” Are Step Backward
...Every place I have gone in recent
months - with the possible exception of
the commute to the office – I was
offered a “payday advance,” as if this
is something I need.
...If you haven’t brushed up against the
payday advance phenomenon, it may be
because you live in a state such as
Massachusetts, where laws are considered
“unfavorable” by the rapidly expanding
payday advance industry....
Payday advances are sometimes known by
the more demure name “deferred
deposits,” and the practice is popular
with cash-strapped consumers. ... The
state of New York, for example, recently
issued a warning against payday
advances, even though there were no
firms known to be in the state offering
them....Payday advances are ultra-small
loans, and they are increasingly popular
because most banks won’t loan less than
$1000....
“The Boston Globe,” May 7, 2000; and
Headline: Payday loans draw a hefty
price, heavy criticism
...The cost of that two-week payday
advance loan is equivalent to roughly
400 annual percent percentage rate,
but....
“Crain’s Detroit Business,” May 22,
2000.
Cancellation No. 29232
20
While we acknowledge that much of the evidence is dated
1999 or later, Mr. Webster testified that a critic of the
industry, the Consumer Federation of America, has used
“payday advances” to describe this service since at least
one year prior to the formation of petitioner in 1999.
(Dep., p. 35.) Moreover, it is clear in the record that
this particular industry has expanded significantly in a
very short time frame, thus accounting for the amount of
media coverage in the recent past.
We note that the record includes numerous other uses of
“payday advance(s)” not only by petitioner in its trade
publications [e.g., petitioner’s article titled “Payday
Advance Services: The ‘Financial Taxi’ of America’s Middle-
Class” – (Webster dep., p. 34, and exhibit No. 16)], but
also by others (e.g., in surveys and reports, and by
legislators and regulators), all referring generically to
the “payday advance” industry. Excerpts showing these uses
are not reproduced here because our focus is on the evidence
showing generic uses of the term which are available to and
may be seen by the relevant purchasing public. See Magic
Wand Inc. v. RDB Inc., supra. Petitioner submitted ample
evidence establishing the meaning of the term “payday
advances” to the consumer.
Respondent has done nothing to refute this evidence.
In fact, in its cross-examination of petitioner’s witness
Cancellation No. 29232
21
William M. Webster, IV, respondent did not question the
witness with specific regard to the publication and website
generic uses directed to the consumer. Rather, respondent
simply argues that one cannot tell from the words alone what
the services are because the word “payday” is not the word
“cash.” However, we must consider not whether “payday” is
the equivalent of “cash,” but whether the term PAYDAY
ADVANCES would be viewed as an alternative generic term for
CASH ADVANCES. The evidence of record, some of which has
been set forth in this opinion, persuades us that it would
be viewed in this manner.
To the extent respondent contends that the services it
offers are known as “cash advances” and therefore “payday
advances” cannot be generic for such services, such an
argument is unpersuasive. There can be multiple generic
names for a single product or service. That is, any product
or service may have many generic designations; and all of
the generic names for the product or service belong in the
public domain. See 2 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, §12:9 (4th ed. 2001). It
appears that the involved services may be called “deferred
presentment,” “payday loans,” “payday advances,” “paycheck
loans” and the like,10 but the record clearly establishes
10 In explaining the use of different generic names for the same
service, Mr. Webster testified that in certain states a payday
advance is referred to as a payday loan or deferred deposit or
Cancellation No. 29232
22
that the term “payday advances” is one generic name for
these services.
Importantly, the record also establishes that with only
a few exceptions, respondent has not taken action against
competitors’ uses of the term “payday advances.” In 1996
respondent sent a few cease and desist letters, including
one to Nationwide Finance located in Garden City, Idaho
(respondent’s business address is in Garden City, Idaho)
regarding use of the term “payday advances.” Some of the
entities contacted (including Nationwide Finance) agreed to
cease use, but several did not so agree, and respondent took
no further action. Respondent’s attempts to enforce rights
in its mark ended around 1996, and no action has ever been
taken against petitioner. (Darrell Fontenot deposition.)
Based on this record, we find that the term “payday
advances” names the services which are identified in
respondent’s registration, and are offered to the public by
respondent as well as by the members of petitioner
association. We also find that the relevant public
understands the term to refer to the involved services.
That is, the primary significance to the relevant public of
the term “payday advances,” used in connection with this
type of cash advance, is as the name of the service itself.
deferred presentment “because of the [state] regulatory
structure.” (Dep., p. 59.)
Cancellation No. 29232
23
The members of the relevant public, i.e., those people who
are or may be in need of such short-term loans, would
understand the term to refer to the service, and not to the
source of the service.
We hold that the term “payday advances” is generic for
the services identified in respondent’s registration.
Decision: The petition to cancel is granted, and
Registration No. 2,243,154 will be cancelled in due course.