American Express Marketing & Development Corp.

Trademark Trial and Appeal Board

Mar 30, 2012

No. 77538456 (T.T.A.B. Mar. 30, 2012)

Mailed: March 30, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re American Express Marketing & Development Corp.1
________

Serial No. 77538456
_______

Scott W. Johnston and Scott M. Oslick of Merchant & Gould
PC for American Express Marketing & Development Corp.

Christine C. Martin, Trademark Examining Attorney, Law
Office 104 (Chris Doninger, Managing Attorney).
_______

Before Bucher, Zervas and Taylor, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

American Express Marketing & Development Corp.’s
predecessor-in-interest filed an application to register on
the Principal Register the mark MONEYEXCHANGE, in standard
character form, for goods and services ultimately
identified as:
Apparatus for processing point-of-sale
transactions, namely, magnetically-encoded
stored value and debit cards; magnetically-
encoded identifying cards in International
Class 9;

1 American Express Marketing & Development Corp. is the
successor-in-interest to application Serial No. 77538456 by
assignment from Revolution Money Inc., the original applicant.
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser No. 77538456
2

Financial services, namely, consumer stored
value and debit card transactions and
providing electronic payments via a global
computer network2; financial services, namely,
electronic processing verification, and
settlement of sales transactions using online
accounts; stored value and debit card
transaction verification and settlement
services; electronic payment processing
services, namely, electronic processing of
stored value and debit card and online account
payment data; stored value and debit card
services; providing financial information via
a global computer network; and consultation
services related to the foregoing in
International Class 36; and

Providing electronic transmission of stored
value and debit card and online account
payment data via a global computer network in
International Class 38.3

The examining attorney issued a final refusal of
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 features of applicant’s goods and
services, namely that applicant’s goods include software,
magnetically encoded cards and card readers which are used
to facilitate the exchange of money and applicant’s

2 “Global computer network” is the PTO’s designation for
“Internet.” We will use the terms interchangeably in this
decision.

3 Application Serial No. 77538456 filed on August 4, 2008, and
claiming a bona fide intention to use the mark in commerce under
Section 1(b) of the Trademark Act. Applicant has since filed an
amendment to allege use, which was accepted, and applicant
presently claims July 1, 2008 as the date of first use of its
mark anywhere and in commerce.
Ser No. 77538456
3
services involve exchanging money via credit, prepaid,
stored value and debit card transactions.
In response, applicant, on November 20, 2009, filed an
amendment to allege use and a request for reconsideration
of the final refusal. The request for reconsideration
included an amendment to seek registration of MONEYEXCHANGE
on the Supplemental Register.4
In a December 10, 2009, Office Action, the examining
attorney refused registration on the Supplemental Register
in connection with only the services in Classes 36 and 38,
on the ground that MONEYEXCHANGE is generic for those
services under Section 23(c) of the Trademark Act,
15 U.S.C. § 1091(c).5
When that refusal of the application on the basis of
genericness as to the services in International Classes 36
and 38 only was made final, applicant appealed. Both
applicant and the examining attorney filed briefs, and

4 Included in the request for reconsideration was a proposed
amendment of the identification of goods and services by which
applicant deleted several items from previous recitation. The
amendment was accepted by the examining attorney, but neither
overcame the Section 2(e)(1) refusal nor precluded the refusal
pursuant to Section 23 of the Trademark Act (discussed infra).

5 The initial refusal on the ground of mere descriptiveness
under Section 2(e)(1) is no longer an issue, inasmuch as
applicant now seeks registration of its mark on the Supplemental
Register. In addition, we point out that the examining attorney
did not refuse registration of the goods identified in Class 9.

Ser No. 77538456
4
applicant filed a reply brief. We affirm the refusal as to
the services in both International Classes.
The Evidence6
a. The Examining Attorney’s evidence
The examining attorney submitted the following
evidence to demonstrate that MONEYEXCHANGE is generic in
connection with the International Class 36 and 38 services
(emphasis supplied infra):
i. Dictionary definitions, in relevant part,
MONEY: “any article or substance used as a
medium of exchange, measure of wealth, or means
of payment, as checks on demand deposit ….”

EXCHANGE: “something that is given or received
in exchange or substitution for something else”
or “to part with in return for some equivalent;
transfer for a recompense; barter.”7

ii. Excerpts from web pages showing use of the term
“money exchange” by third parties in the financial industry
for the same or very similar services as those involved in
this case:

6 Not all of the examining attorney’s evidence is relevant to
the issue of the public’s understanding of the term “money
exchange” in the context of applicant’s involved services. For
example, certain Internet excerpts concern currency exchange
services, and not services of the sort involved in this appeal.
These extraneous references have no effect on the outcome of this
appeal.

7 (Office actions issued November 18, 2008, pp. 2-11 and May 20,
2009, pp. 14-19, retrieved from www.dictionary.com).
Ser No. 77538456
5
“Paypal is an online money exchange service that
lets you transfer money to anyone or make
purchases online without a credit card.”
(www.maximizingmoney.com)

“E-Payments over E-Mail: Organizations deploying
the latest version of CheckFree WebPay also will
be able to offer their customers the ability to
exchange money with each other electronically as
a natural extension of electronic billing and
payment. This service supersedes other
electronic money exchange services in several
ways including the use of consumer’s existing
accounts and fast online enrollment/ verification
of senders and receivers.”
(http://ir.checkfreecorp.com/phoenix...)

“PokerStars allows real money players to transfer
money to one other through their ‘transfer funds’
service. PokerStars offers a better money
exchange service than most other online poker
rooms.”
(www.bonuspokerreview.com.pokerstars/
transferring-real-money.htm)

“You can also transfer money using bank debit
cards, bank credit cards, online money orders and
of course the familiar money transfer methods
that are extensively accessible, but to save
money and time it would be more advantageous and
desirable to use an online money exchange
company.”
(www.transferonlinemoney.com)

“PPScript is the ideal software solution for
those who wish to run their own Palpal, AlertPay
or e-gold type of online business. PPScript comes
with a ready out the box website with all the
features you need to run your own gateway system
or money exchange site ….
Using PPScript system, where customers buy
digital credits to spend at different users’
sites, people can use their accounts to send
money to other users, they can pay for auctions
or purchase any other products with just an email
address.”
(www.paymentprocessorscript.net)
Ser No. 77538456
6

“Money Exchange Comparison Between Paypal and
Western Union … Paypal and Western Union are
payment systems that can help you send and
receive money.”
(www.moneymakerjournal.com)

iii. Excerpts from patent applications:

U.S. Patent Application No. 11/105,410 (Apparatus
and method for increased security of wireless
transactions): “Another example of an
application of the invention is a person to
person financial exchange… The process is
designed to mimic a paper currency transaction
but in a digital and thus secure form. During
the money exchange process, the users will have
the option of activating smartlink for giving or
receiving money.”
(Office action dated July 1, 2010)

U.S. Patent Application No. 09/702,274 (Systems
and methods for implementing person-to person
money exchange) covering “systems and methods for
effecting online financial transactions between
individuals or between individuals such as banks,
merchants, and other companies”
(Id.)

iv. Excerpts from web pages showing use of on “money
exchange” by third-parties referring to applicant or
applicant’s predecessor, Revolution Money Inc., and
applicant’s predecessor, itself, as well as another third-
party using “exchange money” to explain the nature of
applicant’s services.
Revolution Money Exchange – the New Paypal?
“Apparently, Revolution Money Exchange is the newest
money exchange program to hit the net … Paypal does
have the upper hand in that they allow international
money exchange.”
(www.hubpages.com)
Ser No. 77538456
7
Shifting environment in fees, security breeds Revolution
“The company promises to remove barriers between
online money exchange, credit lines and debit
accounts, meaning the card could be a credit card, a
stored-value card, and an ATM card all in one … .
Revolution Money Exchange, like Paypal, lets people
e-mail money transfers to friends or merchants via
their checking accounts.”
(www.creditcards.com)

Revolution Money Exchange vs. Paypal
“Revolution Money Exchange is a new way to exchange
money online. Like Paypal, Revolution Money
Exchange allows you to send and receive money
online.”
(www.gatherlittlebylittle.com)

“MoneyExchange is the new way to send and receive
money online between accountholders. It’s a great
way to exchange money with friends, colleagues, or
online sellers.”
(www.revolutionmoneyexchange.com)

b. Applicant’s evidence:

In support of its position that its applied-for mark
is not generic, applicant has submitted the following:
i. an excerpt from the Online Trademark ID Manual
from the website of the USPTO listing “money exchange
services” as a defined service.8
ii. copies of third-party registrations for marks
including the term EXCHANGE that are currently registered
on the Supplemental Register, or on the Principal Register
based on Section 2(f) acquired distinctiveness.9

8 Exh. to Applicant’s June 11, 2010 response.

9 Id. Information of the registrations is provided, infra.
Ser No. 77538456
8
Analysis
To be registrable on the Supplemental Register, the
matter sought to be registered must be “capable of
distinguishing applicant’s goods or services.” Trademark Act
Section 23(a), 23(c). “Generic terms are common names that
the relevant purchasing public understands primarily as
describing the genus of goods or services being sold. They
are by definition incapable of indicating a particular source
of the goods or services.” In re Dial-A-Mattress Operating
Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir.
2001)(citations omitted).
The ultimate test for determining whether a term is
generic is the primary significance of the term to the
relevant public. See Section 14(c) of the Act. See also
In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d
1832 (Fed. Cir. 1999) and Magic Wand Inc. v. RDB Inc., 940
F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991). The burden of
proving genericness falls on the trademark examining
attorney, who must present “clear evidence of generic use.”
See In re Merrill Lynch, Pierce, Fenner, and Smith, Inc.,
828 F.2d 1567, 1571, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).

Applicant also made of record several definitions of “cash.”
Inasmuch as the mark at issue includes the term “money” rather
than the term “cash,” those definitions have little probative
value.

Ser No. 77538456
9
“Any competent source suffices to show the relevant
purchasing public’s understanding of a contested term,
including purchaser testimony, consumer surveys, dictionary
definitions, trade journals, newspapers and other
publications.” In re Dial-A-Mattress Operating Corp.,
57 USPQ2d at 1810.
Further, because Section 7(b) of the Lanham Act bestows
upon the owner of a registration the presumption of use of a
mark for all the services identified in a registration, the
question of registrability must be determined by considering
any of the services falling within a category or class of
services. If the proposed mark is held generic for any of
the goods [or services] identified in a class of an involved
application, registration is properly refused. See In re
Analog Devices, Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff’d,
871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (unpublished);
and In re Quick-Print Copy Shop, Inc., 205 USPQ 505, 507.
Our primary reviewing court has set forth a two-step
inquiry to determine whether a mark is generic: First,
what is the genus (category or class) of goods or services
at issue? Second, is the term sought to be registered
understood by the relevant public primarily to refer to
that genus of goods or services? H. Marvin Ginn Corp. v.
Ser No. 77538456
10
International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528, 530 (Fed. Cir. 1986).
With respect to the first part of the Marvin Ginn
inquiry, applicant, citing Magic Wand, 19 USPQ2d at 1552,
observes in its brief that the genus of services at issue
“is usually determined by the recitation of services as set
forth by an applicant in the relevant application.” Br. p.
3. By this, we presume that applicant is proposing that
the genus is commensurate with the recitation of services.
Notably, the examining attorney did not address the issue
during prosecution of the application or in her brief and,
by her silence, we assume she is in agreement. Moreover,
we see no reason to reject applicant’s proposal and find
the genus is adequately defined by applicant’s recitation.
See Magic Wand, supra. (“[A] proper genericness inquiry
focuses on the description of [goods or] services set forth
in the [application or] certificate of registration.”). We
specifically note that the recitation includes financial
services namely, providing electronic payments via the
Internet (Class 36) and providing electronic transmission
of payment data via the Internet (Class 38). It is these
services on which we focus our discussion.
That brings us to the second part of the inquiry: the
public’s understanding of the term. That is, who are the
Ser No. 77538456
11
members of the relevant public for the identified services
and will they understand the term MONEYEXCHANGE to refer to
the services of providing electronic payments and
electronic transmission of payment data via the Internet?
In this case, we conclude that the relevant public is
comprised of those members of the general public who send
and receive money in an electronic environment.
As stated earlier in this decision, the evidentiary
burden of establishing that a term is generic rests with
the USPTO and the showing must be by “clear evidence.”
Merrill Lynch, 4 USPQ2d at 1143. Based on the record as
set forth above, we find there is clear evidence to support
a finding that the relevant public readily understands the
designation MONEYEXCHANGE to identify the services of
providing electronic payments via the Internet and
providing electronic transmission of payment data via the
Internet.
We note, first, that applicant’s applied-for mark,
MONEYEXCHANGE, is a compound term. For a mark that is a
compound term, which in this case consists of a combination
of two words with no space to separate them, the evidence
of record must show that each constituent word is generic,
and that each word retains its generic meaning when
combined such that the composite formed does not create a
Ser No. 77538456
12
different, non generic meaning. See In re Gould Paper
Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111-12 (Fed. Cir.
1987).
The previously quoted definition of “money” is “any
article or substance used as a medium of exchange, measure
of wealth, or means of payment” We find this definition
identifies, at a minimum, the medium of exchange, i.e., the
monetary value being paid in connection with applicant’s
electronic payment services and the payment data
transmitted in the transmission services.
We note further that the previously quoted definition
of “exchange” is “something that is given or received in
exchange or substitution for something else” or “to part
with in return for some equivalent; transfer for a
recompense; barter.” This definition identifies the
provision of electronic payments or transmissions, i.e.,
the “send[ing] and receiv[ing]”10 aspect of applicant’s
services.

10 Applicant’s predecessor’s web page
(www.revolutionmoneyexchange.com/WebSite/SendMoney.aspx)
retrieved December 10, 2009, and attached to the Office Action
issued on that same date. The excerpt, from a section titled
“How It Works” reads in full as follows:
MoneyExchange is an easy way to send and receive
money between account holders, anytime you are
online.

Ser No. 77538456
13
The compound term MONEYEXCHANGE plainly has no
different meaning apart from its constituent words.
Joining the words “money” and “exchange” into the compound
term “moneyexchange” does not change the meaning of the two
words in the alleged mark. Noticeably, applicant, in the
specimen of record (shown below), displays its mark in a
manner that highlights the combination of two separate and
distinct words “money” and “exchange,” by capitalizing the
first letter of each word.

Moreover, the Internet and patent excerpts of record
also establish that “money exchange” is the name for the
provision of electronic payments and the provision of
electronic transmission of payment data services identified
herein. In particular, the articles from
www.maximizingmoney.com, checkfreecorp.com,
www.trasferonlinemoney.com, and www.moneymakerjournal.com
clearly establish that “money exchange” (moneyexchange) is
recognized by the relevant public as a term that identifies
services that involve the electronic exchange, by third
Ser No. 77538456
14
parties, of monetary value between individuals, merchants
and other business institutions.
Based on this evidence, we find the term “money
exchange” would be understood by the relevant public to
refer to the identified services of providing electronic
payments via the Internet in International Class 36 and
providing transmission of online account payment data via
the Internet in International Class 38 and, therefore, is
incapable of functioning as a mark for these services.
Applicant’s deletion of a space between the terms does not
transform the clearly generic term MONEYEXCHANGE into one
that is capable of registration. See In re ING Direct
Bancorp, 100 USPQ2d 1681 (TTAB 2011) (PERSON2PERSON PAYMENT
held generic for electronic funds transfer); and In re 3Com
Corp., 56 USPQ2d 1060, 1061 (TTAB 2000) (ATMLINK held
generic for computer hardware components used for enabling
connection of asynchronous communication networks).
Having found “MONEYEXCHANGE” generic for some of the
services in both refused Classes 36 and 38, we find that
registration is appropriately denied for the entire classes.
See Analog Devices, 6 USPQ2d at 1810. As such, we need not
discuss whether the term is generic for the remaining
services.
Ser No. 77538456
15
Applicant has advanced several arguments in support of
its position that its applied-for mark MONEYEXCHANGE is not
generic for its identified services. We do not find any of
these arguments persuasive, and explain why not in turn
below. First, applicant argues that none of the evidence
shows the wording “money exchange” displayed together as a
single term, as it is in applicant’s mark. For the reasons
discussed above, it is clear that the term MONEYEXCHANGE
would be recognized by the relevant public as the
combination of the words “money” and “exchange” and the
merger of the terms, if noticed at all, is immaterial to
the public’s understanding of that term.
Applicant also argues that “the record in the present
case evidences a variety of uses of the wording ‘money
exchange,’ the majority of which are not the types of
services being provided by Applicant under its
MONEYEXCHANGE mark.” Reply br. p. 3. Applicant
particularly points to references that involve the actual
exchange of money, e.g., dollars for Euros, or other
foreign currency exchanges. While we disagree with
applicant’s characterization that the “majority” of the
evidence fails to support the refusal, as we acknowledged
in footnote 6, the record includes some references of
generic use of the term “money exchange” in relation to the
Ser No. 77538456
16
discrete service of exchanging money from one national
currency to another. However, those references in no way
negate the evidence of the generic use of “money exchange”
for applicant’s identified services. Put another way, that
“money exchange” has more than one generic meaning when
considered in connection with financial services does not
help applicant’s position if it is still generic for
applicant’s specifically-identified services. Compare
Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1422-23
(Fed. Cir. 2005) (the Federal Circuit found neither of the
two possible meanings for the STEELBUILDING.COM to be
generic) with Abercrombie & Fitch Company v. Hunting World,
Inc., 537 F.2d 4, 189 USPQ 759, 766 (2d Cir. 1976) (stating
“a word may have more than one generic use,” the Second
Circuit found “safari” to be generic in multiple contexts,
although not in all contexts). See also Northland Aluminum
Products, Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir.
1985) (the Federal Circuit found BUNDT to be generic for
cakes and cake mixes); In re Reed Elsevier Properties Inc.
77 USPQ2d 1649, (TTAB 2005) (the Board found LAWYERS.COM to
be generic for a website that provides access to lawyers
and information about lawyers); and Gear Inc. v. L.A. Gear
California Inc., 670 F.Supp. 508, 4 USPQ2d 1192, 1197
(S.D.N.Y. 1987) (“A word may have more than one generic
Ser No. 77538456
17
use, and it is protected in each of its generic uses from
appropriation by any one merchant.”), vacated in part,
dismissed, 13 USPQ2d 1655 (S.D.N.Y. 1989) (disposition of
some claims by summary judgment vacated by a settlement
agreement of the parties and all claims dismissed).
Applicant, noting that the U.S. Trademark’s Office’s
Online ID Manual lists “money-exchange services” as a
specifically-defined service, also argues that because
applicant’s recitation of services does not include “money-
exchange services,” MONEYEXCHANGE does not identify the
genus of applicant’s services and, therefore, is not
generic as to the identified services. We find this
argument unpersuasive. The ID Manual is a guide and does
not purport to include all possible service recitations.
As just explained, a term may have more than one generic
meaning. Historically, the term “money exchange” was
recognized primarily as a term referring to the service of
exchanging one type of currency for another. However, as
the record demonstrates, in the electronic arena,
specifically the emerging field of e-finance, the term
“money exchange” has taken on an additional meaning. As
shown in the evidence, a variety of service providers are
using “money exchange” (moneyexchange) as a term of art
with a meaning identical to the services applicant provides
Ser No. 77538456
18
– that is, sending and receiving money by providing
electronic payments and transmission of account data via
the Internet. Indeed, as applicant explained in its brief,
consumers may use applicant’s services to “transfer money
to and from a bank account, collect payments from their
customers, send money to family or friends, collect dues,
to get reimbursed for a group gift or other shared expenses
and/or for other similar purposes.” Br. p. 5.
We further find unpersuasive applicant’s contention
that the Internet evidence is insufficient. The “twelve”
Internet excerpts relied upon by the examining attorney
meet the clear and convincing standard to establish that
“money exchange” is generic in relation to the services
enumerated above.
Another argument advanced by applicant is that since
the Office has allowed other marks containing the term
“exchange” to register on the Supplemental Register (or on
the Principal Register under Trademark Section 2(f)), and
has not refused registration on the Supplemental Register
of applicant’s MONEYEXCHANGE mark for the identified Class
9 goods, applicant should be permitted to register
MONEYEXCHANGE for the involved services in International
Classes 36 and 38. In support of this position, applicant
made of record several use-based, third-party registrations
Ser No. 77538456
19
that contain the term “exchange” in connection with other
matter for various goods and services including, for
example, Registration No. 3214285 for the mark
TRADEEXCHANGE for “financial services, namely, providing an
electronic platform for trading, analyzing, distributing,
and clearing of equity products, futures, options, foreign
exchange, fixed income instruments and other securities,
Registration No. 3278171 for the mark RESTAURANT EXCHANGE
for “business brokerage,” Registration No. 3552349 for the
mark CASH EXCHANGE for “pawn shops,” and Registration No.
1802992 for the mark COMMODITY EXCHANGE for “operation of
an exchange for trading in commodity futures and options,
contracts, primary metals.”
Even though the marks in these registrations “have
some characteristics similar” to the mark herein, as the
Federal Circuit has stated, “the PTO’s allowance of such
prior registrations does not bind the Board or this court.”
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001). It is well settled that each case
must be decided on its own facts, based on the particular
mark, the particular goods or services, and the particular
record in each application. Accordingly, there is “little
persuasive value in the registrations” applicant has
submitted. Id. Nor do these third-party registrations
Ser No. 77538456
20
establish that there is an Office practice holding such
marks are generally registrable. See In re First Draft,
Inc. 76 USPQ2d 1183 (TTAB 2005).
Last, while we agree with applicant’s point raised in
its brief that doubt must be resolved in its favor, in this
case, we have no doubt. The record herein establishes
without question that MONEYEXCHANGE is generic for
financial services namely, providing electronic payments
via the Internet (Class 36) and providing electronic
transmission of payment data via the Internet (Class 38)
and therefore the services in International Classes 36 and
38, in their entirety, are unregistrable on the
Supplemental Register.

Decision: The refusal to register the services identified
in International Classes 36 and 38 under Trademark Act
Section 23 is affirmed. The application file will be
forwarded in due course to the Publication and Issue
section of the Office for issuance of a Supplemental
Register registration for the goods listed in International
Class 9.