In a hard fought TTABattle, the Board affirmed a refusal to register CARDLESS CASH as a trademark for ATM software and services, on the ground of genericness. For the sake of completeness, the Board also considered and rejected Applicant Fidelity’s claim of acquired distinctiveness under Section 2(f), finding that Fidelity’s use of the term had not been substantially exclusive. In re Fidelity National Information Services, Inc., Application Serial No. 87006159 (May 6, 2020) [not precedential] (Opinion By Judge Marc A. Bergsman).

Genericness: The USPTO has the burden to prove genericness by clear evidence. “The critical issue in genericness cases is whether members of the relevant public primarily use or understand the term … to refer to the genus of goods or services in question.” The relevant public includes ordinary consumers who use ATM machines, as well as banks, credit unions, other providers of ATM goods and services.

Based on dictionary definitions, the Board found that CARDLESS CASH means access to money without a credit or debit card. [CASHLESS CARD, on the other hand, means a destitute comedian – ed.]. Examining Attorney Charles Hiser submitted evidence of use of the term by “cardless cash” by Fidelity’s competitors, two patents, one patent application, one trademark registration, and numerous media examples.

Citing In re Merrill Lynch, Pierce, Fenner & Smith Inc. [CASH MANAGEMENT ACCOUNT] and In re Am. Online, Inc. [INSTANT MESSENGER], Fidelity argued that the USPTO’s evidence comprised a mixture of generic or descriptive use and uses that refer to Fidelity, or its customers or licensees, and that such a mixed record does not satisfy the USPTO’s burden of proof.

The Board noted the following observation it made in Am Online:

We add that the mere fact that a record includes evidence of both proper trademark use and generic use does not necessarily create a mixed record that would overcome an examining attorney’s evidence of genericness. Quite simply, it would be fairly easy for a well-heeled applicant to ensure that there were at least some stories that would properly use an applicant’s mark. However, in this case, the evidence of generic use is offset by applicant’s evidence that shows not only a significant amount of proper trademark use but also trademark recognition by customers, publishers, and third parties.

Fidelity argument against the refusal was “impressive,” but unlike the two cited cases, here there was unrebutted and unexplained generic use of the term CARDLESS CASH by four other companies to describe their ATM-related goods and services. Along with the patent documents and media references, the Board found that this was “clear evidence that members of the relevant public primarily use or understand CARDLESS CASH to be generic” for ATM-related goods and services.

Acquired Distinctiveness: Fidelity amended its application to seek registration under Section 2(f), without reserving the argument that the proposed mark is inherently distinctive. That amendment constituted an admission that the phrase is not inherently distinctive, and Fidelity was not allowed to argue otherwise on appeal. [Although it did – ed.]. See, e.g., Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009).

The Board was first required to determine the degree of descriptiveness of the proposed mark. See Royal Crown Cola, 127 USPQ2d at 1048. The more descriptive the term, the higher the burden to prove acquired descriptiveness. In re, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005).

Fidelity maintained that CARDLESS CASH is not merely descriptive and, therefore, not highly descriptive, because a potential customer must use multiple-step reasoning, thought, imagination or logic to understand the connection between CARDLESS CASH and its software and services. Fidelity also argued that “cardless cash” is incongruous. The Board, however, found that each of the constituent words are highly descriptive, as is the phrase “cardless cash.”

Clearly, no thought or imagination is required to immediately understand that ATM and fund transfer banking services and the software to carry out those services rendered under the mark CARDLESS CASH are just that, card free cash access.

The Board applied the factors set forth in Converse, Inc. v. Int’l Trade Comm’n, 907 F.3d 1361, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018)). It noted that Fidelity did not submit a survey or evidence from consumers, and found that Fidelity had used the proposed mark since 2013. However, four other companies use the phrase to describe the same services. Applicant and its affiliates, partners, and licensees promote and/or display the proposed mark, and the software and services are available nationwide at many locations.

Although this type of evidence may be sufficient to prove acquired distinctiveness in many cases, the Board found that Fidelity’s use of “the highly descriptive CARDLESS CASH is not substantially exclusive.”

Applicant did not submit any testimony or evidence challenging the use of “Cardless Cash” by the four other companies such as protest letters, infringement actions, or evidence that the other companies are no longer using “Cardless Cash” or that such use is insignificant.

Although absolute exclusivity is not required, the “unrebutted, unexplained” third-party use by four competitors was inconsistent with Fidelity’s Section 2(f) claim. The Board therefore concluded that Fidelity had failed to prove that CARDLESS CASH has acquired distinctiveness for its software and services.

Read comments and post your comment here.

TTABlogger comment: Will this decision be appealed? I suspect you can take that to the bank.

Text Copyright John L. Welch 2020.