Wednesday, November 09, 2011

Precedential No. 29: TTAB Affirms Genericness Refusal of "Person2Person Payment" For Electronic Funds Transfers

In view of the "excellent record" assembled by Examining Attorney Lakeisha S. Munn-Lewis, the Board affirmed a refusal to register the designation Person2Person Payment (in standard character form) [PAYMENT disclaimed], finding it to be generic for "electronic funds transfer via electronic communications networks; clearing and reconciling financial transactions via electronic communications networks; providing a wide variety of payment and financial services, namely, processing and transmission of bills and payments thereof." In re ING Direct Bancorp, 100 USPQ2d 1681 (TTAB 2011)[re-designated Precedential, September 27, 2011].

The Board agreed with Applicant that the genus of the services at issue is "direct electronic fund transfers." That genus includes electronic payment services between individuals. The relevant consumers would be "individual persons wanting to transfer funds electronically - often to other individuals or small businesses."

The Examining Attorney contended the phrase "person to person payments" is often used to mean (not surprisingly) payments from one person to another. She pointed to a number of third-party websites where the phrase is used to refer to electronic transfer of funds and payments.

Applicant ING feebly argued that most of those transfers still involve banks and that, technically, the money does not go from "person to person." The Board was (not unimpressed, because the evidence "clearly shows" that "person to person payments" is a well-established term of art in the financial payments industry, with "specific meaning identical to the usage that applicant intends."

The evidence also showed that, in the field of e-finance, "person to person" is shortened to "P2P." The evidence even included use of "person-2-person."

ING argued that the evidence did not contain a single use of the exact phrase "Person2Person Payment" and therefore fails to show that the phrase is a commonly-used term in the industry.

Perhaps applicant’s argument is that its “Person2Person Payment” designation is not precisely the same as “Person 2 Person Payment” (having spaces) or “Person-2-Person Payment” (having hyphens). We also do not find this particular argument persuasive. Applicant's deletion of spaces or hyphens within the designation “Person2Person” cannot transform clearly generic terms such as “Person 2 Person Payment” or “Person-2-Person Payment” into something that is capable of functioning as a source identifier.

In short, ING's slight change does not yield a term that will be understood by relevant purchasers as "anything other than naming a category of direct electronic funds transfers."

And so the Board found the designation "Person2Person Payment" to be generic for the recited services, and it affirmed the refusal to register on the Supplemental Register.

TTABlog comment: Yawn! This is precedential? Judge Bucher does once again display his admirable Photoshopping skills, and it's nice to see the evidence right there in the opinion, but ....

Text Copyright John L. Welch 2011.


At 11:50 PM, Anonymous Mitchell Stabbe said...

I don't see this as an open and shut case. Yes, the Trademark Examiner found many uses of PERSON TO PERSON (with or without hyphens) and quite a few uses of P2P. But, there were only two uses of PERSON-2-PERSON (with or without hyphens). Is that evidence really sufficient to show that PERSON2PERSON is generic??

Indeed, there are numerous registered marks for ---2--- marks where the phrase ---- TO ---- is also common, presumably because changing "to" to "2" gives the phrase a modicum of distinctiveness. Do counsel who are advising clients on trademark use and registration now need to conclude that just one or two uses of a phrase renders it generic?

I hope that I don't sound overwrought, but I am troubled by the low level of proof that the Board accepted in order to find genericness.

Mitch Stabbe
Edwards Wildman Palmer LLP


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