Energy Efficiency Institute, Inc.

Trademark Trial and Appeal Board

Jan 7, 2005

No. 76320844 (T.T.A.B. Jan. 7, 2005)

Mailed: January 7, 2005
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Energy Efficiency Institute, Inc.
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Serial No. 76320844
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Michael M. Zadrozny of Shlesinger, Arkwright & Garvey for
Energy Efficiency Institute, Inc.
Steven Foster, Trademark Examining Attorney, Law Office 106
(Mary Sparrow, Managing Attorney).
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Before Hairston, Walters and Chapman, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Energy Efficiency Institute, Inc. has filed an
application to register on the Principal Register the mark
PAY AS YOU SAVE for “promoting the sale of energy saving and
resource efficient appliances and devices of others, namely,
arranging for deferred repayment of the devices and
appliances on monthly utility bills, the monthly payment
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 76320844
2
relating to the savings from use of the appliance or
device,” in International Class 42.1
The examining attorney has issued a final refusal to
register, under Section 2(e)(1) of the Trademark Act, 15
§U.S.C. 1052(e)(1), on the ground that applicant’s mark is
merely descriptive in connection with its services.2
Applicant has appealed. Both applicant and the
examining attorney have filed briefs, but an oral hearing
was not requested. We reverse the refusal to register.
The examining attorney contends that the mark is merely
descriptive3 in connection with the identified services
because PAY AS YOU SAVE would be immediately “recognized by
purchasers as describing a payment program where purchasers
pay for improvements as they save from the improvements”
(brief, p. 4); and that the evidence establishes that “[t]he
phrase and the hyphenated version thereof appear to be used

1 Serial No. 76320844, filed October 4, 2001, based on an allegation of
a bona fide intention to use the mark in commerce. On February 6, 2003,
applicant filed its amendment to allege use and specimens, asserting
first use as of January 13, 1999, and use in commerce as of February 11,
1999. The amendment was accepted.
2 Subsequent to the final refusal on the ground of mere descriptiveness,
and with its amendment to allege use, applicant amended its application
to seek registration on the Supplemental Register. The examining
attorney then refused registration on the ground that the mark is
generic in connection with the identified services. Next, applicant
amended its application back to the Principal Register and the examining
attorney reinstated the final refusal, under Section 2(e)(1) of the
Trademark Act, on the ground that the mark is merely descriptive.
3 The examining attorney clarifies that, while applicant discusses
genericness and acquired distinctiveness in its brief, neither of these
issues is before the Board on appeal; and that the only basis for the
final refusal is mere descriptiveness. We agree and have considered
applicant’s arguments only in relation to mere descriptiveness.
Serial No. 76320844
3
in and out of applicant’s specific industry to describe
similar payment schemes.” (Id.)
In support of his position, the examining attorney
submitted a list of forty items that is the result of a
Google search of the Internet for the phrase “pay as you
save.” The examining attorney also submitted excerpts from
Internet web sites and from articles retrieved from the
LEXIS/NEXIS database as the result of a search for “pay as
you save and energy.”
Applicant contends that its mark is suggestive, and
describes its services as follows (brief, p. 5):
Applicant’s services provide deferred repayment
plans for consumers who purchase energy efficient
devices and appliances for use in their homes.
The individual payments, which are made on monthly
electric utility bills, correspond to the actual
savings realized through use of the energy
efficient appliance. … The incongruous wording
within the mark gives pause to a consumer since he
or she cannot immediately comprehend how they
(sic) might simultaneously “pay” and “save” since
paying requires spending money whereas saving is
the opposite.
Applicant states that the evidence submitted by the
examining attorney includes at least one trademark use by
applicant and other third-party trademark uses, not
descriptive uses; and that the evidence pertains to services
that are not related in any way to the services of
applicant.
Applicant’s specimens consist of advertising which
includes the following statements:
Serial No. 76320844
4
“Why pay now when you can, … Pay As You Save!”
“PAYS [Pay As You Save] Make your home or business
energy efficient for no upfront cost.”
“The PAYS advantage is simple – pay nothing out-
of-pocket to have energy efficient products and
services installed in your home or business. The
cost of the improvements is repaid over time,
using the savings generated by the products
themselves!
Let’s say you’ve installed energy efficiency
products worth $500 and those products save you
$50 per month. You pay for the product in easy
monthly payments on your electric bill equal to
two-thirds of the savings, or approximately $34
per month.”
The burden of showing that a proposed trademark is
merely descriptive is with the examining attorney. The test
for determining whether a mark is merely descriptive is
whether it immediately conveys information concerning a
quality, characteristic, function, ingredient, attribute or
feature of the product or service in connection with which
it is used, or intended to be used. In re Engineering
Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-
Crest, Ltd., 204 USPQ 591 (TTAB 1979). On the other hand, a
term which is suggestive is registrable. A suggestive term
is one which suggests, rather than describes, such that
imagination, thought or perception is required to reach a
conclusion as to the nature of the goods. See, In re
Gyulay, 820 F.2d 1215, 3 USPQ2d 1009 (Fed. Cir. 1987).
There is but a thin line of distinction between a suggestive
and a merely descriptive term, and it is often difficult to
Serial No. 76320844
5
determine when a term moves from the realm of suggestiveness
into the sphere of impermissible descriptiveness. See, In
re Recovery, Inc., 196 USPQ 830 (TTAB 1977).
We agree with applicant that many of the entries in the
Google search report submitted by the examining attorney are
of little persuasive value because they merely show use of
the phrase as a trademark by third parties that applicant
states are either its clients or unrelated third parties; or
that the entries are from web sites outside the United
States, such as Great Britian. Further, the Google search
report entries are of little evidentiary value because they
are too short to be of any use in determining the
significance of the phrase.
Likewise, the majority of the excerpts from Internet
web sites and from articles retrieved from the LEXIS/NEXIS
database as the result of a search for “pay as you save and
energy” are of little persuasive value. The entries merely
show use of the phrase as what appears to be a trademark by
third parties, some of whom may be applicant’s clients; or
the entries are from web sites outside the United States,
such as Great Britian.4 In other words, the evidence

4 Only the following excerpt shows what may be a descriptive use of the
phrase, but one example is insufficient to for a finding of mere
descriptiveness:
“In a region with many older government buildings gobbling
expensive heat and electricity, and tax weary voters
reluctant to lay out capital for renovations, energy
contractors are filling a niche by providing pay-as-you-save
system improvements.” The Buffalo News, January 20, 2001.
Serial No. 76320844
6
submitted by the examining attorney does not clearly show
use of the phrase in a merely descriptive manner in relation
to the services identified herein, or in relation to similar
savings programs in other industries.5
Therefore, we conclude that the examining attorney has
not met his burden of establishing that, when applied to
applicant’s services, the term PAY AS YOU SAVE immediately
describes, without conjecture or speculation, a significant
feature or function of applicant’s services.
Although this is a close case, we resolve that doubt,
as we must, in applicant’s behalf and conclude that the mark

5 The following examples show the use of the phrase with initial capital
letters. These uses are not clearly trademark use or at best the uses
are mixed. However, we note that the use of hyphens between the words
is not relevant to determining whether or not the use is trademark use.
Certainly, the following examples are not clearly descriptive use of the
phrase:
“‘In addition to generating revenue, this order is
significant from a strategic marketing perspective,’ said
Greg Smith, I.S. Sytems Director of Marketing. ‘… It also
reflects the success of our new pricing strategy, where we
offer customers a ‘Pay-As-You-Save’ long term service
contract alternative to an up-front capital purchase. … For
our customers, the ‘Pay-As-You-Save’ option shortens the
acquisition process, eliminates initial capital outlay, and
generates a positive cash flow, since the monthly fees are
substantially less than the monthly savings produced by the
system.’” www.id-systems.com, August 14, 2002.
“‘Pay as you save’ plan to spread initial investment costs
over a twelve month period.
This means that you will actually save money as you pay for
the conversion. This is an ideal option for personal or
company budgeting.” www.autogasonestop.com, August 14,
2002.
“‘PAY AS YOU SAVE’ PLAN:
Utilities and large consumers of power always have the
dilemma of financing large purchases in a certain time frame
for their expansion projects.
. . .
www.aelgroup.com, August 14, 2002.
Serial No. 76320844
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should be published for opposition. See, In re Rank
Organization Ltd., 222 USPQ 324, 326 (TTAB 1984) and cases
cited therein.
Decision: The refusal under Section 2(e)(1) of the
Trademark Act is reversed.