Fuhu, Inc.

Trademark Trial and Appeal BoardSep 10, 2013

No. 77679557 (T.T.A.B. Sep. 10, 2013)

Mailed: September 10, 2013 United States Patent and Trademark Office Trademark Trial and Appeal Board ________ In re Fuhu, Inc. ________ Serial No. 77679557 _______ Michael I. Shokrian of the Law Offices of Michael Isaac Shokrian for Fuhu, Inc. Zhaleh Delaney, Trademark Examining Attorney, Law Office 116 (Michael W. Baird, Managing Attorney). _______ Before Lykos, Kuczma and Gorowitz, Administrative Trademark Judges. Opinion by Lykos, Administrative Trademark Judge: Fuhu Inc. (“applicant”) filed an application to register the mark MICROPAYMENT in standard character format for “financial service, name- ly, exchanging online currency for cash redemption, thus allowing others to purchase online products using the online currency” in International Class 36.1 The Trademark Examining Attorney has refused registration of the mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the 1 Application Serial No. 77679557, filed February 26, 2009, alleging a bona fide in- tent to use the mark in commerce pursuant to Section 1(b) of the Trademark Act. This Opinion is Not a Precedent of the TTAB Serial No. 77679557 - 2 - ground that the mark is merely descriptive of applicant’s services,2 or alterna- tively, that the mark is deceptively misdescriptive. For the reasons discussed herein, the Board affirms the refusal to register the mark as merely descrip- tive. The test for determining whether a mark is merely descriptive is whether it immediately conveys information concerning a significant quality, charac- teristic, function, ingredient, attribute or feature of the product or service in connection with which it is used, or intended to be used. See, e.g., In re Cham- ber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). It is not necessary, in order to find a mark merely descriptive, that the mark describe each feature of the goods or services, only that it describe a single, significant ingredient, quality, characteristic, function, feature, purpose or use of the goods or services. In re Gyulay, 3 USPQ2d at 1009-10. Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is be- ing used on or in connection with the goods or services, and the possible signif- icance that the term would have to the average purchaser of the goods or ser- 2 Applicant, in its appeal brief, argued that the mark MICROPAYMENT is not gener- ic for the services recited in its application. Registration was not refused on this ground. Rather, the examining attorney merely advised applicant that because its mark “appears” to be generic, neither an amendment under Trademark Act Section 2(f) nor an amendment to the Supplemental Register could be recommended. See May 19, 2009 and January 13, 2012 Office Actions. As such, we have given no consid- eration to applicant’s arguments regarding genericness. Serial No. 77679557 - 3 - vices because of the manner of its use; that a term may have other meanings in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). We find that applicant's mark immediately conveys to prospective pur- chasers a significant feature of the identified financial services, namely that applicant’s online currency cash redemption services feature micropayments (the transfer or payment of very small sums of money such as one penny or a fraction thereof) as a mechanism for facilitating the purchase of goods in e- commerce. The dictionary definitions submitted by the examining attorney support this finding. The word “micropayment” is defined as: (a)n electronic transaction consisting of the transfer of a very small sum of money. It may refer to charging just a few cents or even a fraction of a cent for a transaction such as information lookup. It may also refer to aggregate several small value pur- chases and charging a credit card at the end of the day or some other period for the total amount. www.InvestorWords.com. (a)n electronic commerce transaction of very low value. The Free Dictionary, and ZDNet. Digital cash systems that allow very small sums of money (frac- tions of 1p) to be transferred but with lower security. Such small sums do not warrant a credit card payment because processing is too costly. www.sensa.com. See May 19, 2009 Office Action. As further explained in the IT online encyclopedia What is?.com micro- payments have emerged as a new way to facilitate the transfer of money and product purchases: Serial No. 77679557 - 4 - On the Web, micropayment is a business concept whose goal is to generate revenue by offering pay-per-view Web pages, Web links or Web services for small amounts of money called “microcents.” Since it is not practical for individual users to charge small amounts of money (such as a penny or a fraction of a penny) to a major credit card, a different method of payment is needed for sites that wish to go “micro.” Several methods of micropayment collection are being examined, many of which involve encoding pay-per-fee links inside HTML pages and some kind of Internet wallet account where individuals would establish a cash balance with a third party application that would monitor, collect and distribute micropayments. Once a common micropayment standard has been established, some visionaries predict that streaming media sites, sports ac- cess sites, and other specialized resources will pave the way for pay-per view Web use, just as they did for cable TV. May 19, 2009 Office Action. During ex parte prosecution, the examining attorney offered the following explanation of the concept of micropayments: The term “micropayment” has historically been used to simply de- scribe “[a] system on the web that allows content creators and consumers to have small money transactions, like 50 cents” by “using different technologies to collect, transfer and authenticate payments.”Thus, “micropayments” include a vital collection of “cash” component (such as with applicant’s services) to ultimately facilitate online payment transactions. … Micropayment providers have used various models of “cash re- demption” for online currency, such as coins, i.e. where the micro- payment provider sells the purchaser a number of coins, in ex- change for cash, to spend online on goods. Although different models of “micropayments” are used by others in trade, like Paypal, consumers still view MICROPAYMENT as relating to a service, such as applicant’s, that facilitates the pay- ment for goods online, typically small ticket goods, by exchanging “online currency (such as virtual money) for cash redemption (real money).” That is the consumer understands that a “micropay- Serial No. 77679557 - 5 - ment” entails the collection of “cash” and currency exchange as a means to facilitate online payment transactions. August 9, 2012 Office Action (internal citations to record omitted). Applicant’s own web site describing its financial services emphasizes the use of micropayments as a significant feature of its online currency cash re- demption services which enables users to easily purchase goods and services from a micropayments platform: Based in El Segundo, California, FUHU, Inc. is a global Internet consumer applications company with a platform that allows users and content providers to publish and distribute premium content ubiquitously across all 3 screens (Computers, TVs, Mobile Phones) through a distribution channel of over 50 million devices, allowing people to share, discover and consume content while FUHU pro- vides recommendations that ultimately allow for purchasing of virtual goods and services from their micropayments platform. March 4, 2013 Office Action. The record further corroborates our determination by showing that mi- cropayments (the payment or transfer of small sums of money) are becoming ubiquitous in the e-commerce industry. See for example the following descrip- tions and use of micropayments by competitors in the industry: The basic microtransaction payment model has gained a lot of ground over the past few years...(a)nd as a leading provider in the e-commerce solution industry, Gate2Shop offers top of the line so- lutions specifically for the software, digital content, Social Net- works and the Massive Multiplayer Online (MMO or MMOG) gaming industries…(w)ith the rapidly growing social networks such as MySpace and Facebook, a secure and trusted solution is needed, and Gate2Shop is the micropayment processor you need.” Gate2Shop.com, December 10, 2009 Office Action. UltimatePay Mobile brings global payments and virtual currency based micropayments to leading phone platforms, and with its Serial No. 77679557 - 6 - mobile payment widget, developers now have a proven micro- payments platform that brings a one-click payments experience to mobile users without them ever having to leave the game. PRWeb.com, March 4, 2013 Office Action. (T)he success of prepaid mobile is forcing FSI’s (Financial Services Institutions) to consider more closely the impact of prepaid mi- cropayments on their business models. Banktech.com, March 4, 2013 Office Action. Discover’s network business, which handles payment transactions for merchants and others, is partnering with Mazooma, an online cash payments provider for sellers of digital content, to make it easier for merchants to accept small-ticket payments, or micro- payments, for digital music, games, books and videos. Chica- goTribune.com, January 13, 2012 Office Action. Micropayments are huge these days and the number of players are scaling quickly...(w)ith continued expansion on social net- works, media properties and virtual worlds, startup PlaySpan has become a player in an arena where bigger players like PayPal, Facebook and MySpace are all investing in…(i)n fact, PayPal’s new API powers micropayments. Nickelodeon.com, December 10, 2009 Office Action. This evidence shows that this feature of applicant’s services is “significant” within the statutory meaning of merely descriptive marks. Applicant argues that the applied-for mark MICROPAYMENT is arbi- trary and fanciful because it cannot be considered a synonym for cash re- demption services. Applicant also argues that the term MICROPAYMENT is not merely descriptive because the recitation of services in the application does not specifically refer to micropayments. Both arguments reflect a misun- derstanding of the standard for evaluating descriptiveness. As often stated by the Board, we are bound by the language set forth in the recitation of services. Cf. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, Serial No. 77679557 - 7 - 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (in making Section 2(d) determina- tions, the Board is bound by the parties’ respective identifications). Appli- cant’s recitation of services is broadly worded, and does not contain any limi- tations regarding use. As such, applicant’s recitation of services necessarily encompasses all types of online currency cash redemption exchange services which enable the user to purchase goods, including those which feature mi- cropayments. Thus, applicant’s assertion that its services as identified do not incorporate “micropayments” as a stated feature is of no avail. Applicant also contends that prospective consumers would not perceive the mark MICROPAYMENT as pertaining to its identified services because any such conclusion would require imagination and multistage reasoning. We disagree. Determination of whether a mark is merely descriptive is considered in relation to the identified goods and/or services, not in the abstract. See In re Chamber of Commerce, 102 USPQ2d at 1219; In re Bayer, 82 USPQ2d at 1831; In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (CCPA 1978). See, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999) (finding DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary defini- tion); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (finding CONCURRENT PC-DOS merely descriptive of “computer programs recorded on disk” where relevant trade used the denomination “concurrent” as a de- Serial No. 77679557 - 8 - scriptor of a particular type of operating system). In other words, the issue is whether someone who knows what the services are will understand the mark to convey information about them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent & Trademark Serv. Inc., 49 USPQ2d 1537, 1539 (TTAB 1998). As the record shows, applicant’s use of the term MICROPAYMENT in relation to cash redemption services for online purchas- es is not unique. In light of the common use of the term by third parties in the e-commerce industry, it would be perceived by consumers, as identifying or describing the same or similar features of the applicant’s online currency ex- change and payment services. Applicant refers to third-party registrations for the marks MICROLAB and MICROPAY LOAN registered on the Principal Register as evidence that applicant’s mark is not merely descriptive. Insofar as the marks are distinct and are for services different than those in the involved application, we find the prior registrations to be of little probative value. Even if these prior regis- trations had some characteristics similar to applicant’s application, the USPTO’s allowance of such prior registrations does not bind the Board. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). In sum, based on the evidence of record, we find that applicant's mark, MICROPAYMENT, when considered in relation to “financial service, namely, exchanging online currency for cash redemption, thus allowing others to pur- chase online products using the online currency” immediately informs pro- Serial No. 77679557 - 9 - spective purchasers that applicant’s services feature micropayments as a fea- ture of the service. As illustrated by the evidence discussed above, the e- commerce industry has evolved to incorporate this new business concept for facilitating payments for products online. Competitors in this field should be free to use the descriptive language “micropayment” when describing to the public their own services in advertising and marketing materials. As noted in the seminal case of In re Abcor Dev. Corp., 200 USPQ at 217: The major reasons for not protecting such marks are: (1) to pre- vent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harass- ing infringement suits by the registrant against others who use the mark when advertising or describing their own products. In sum, we find that the Office has met its burden of proof that appli- cant’s mark MICROPAYMENT, when used in connection with the identified services, is merely descriptive. Decision: The refusal to register the mark MICROPAYMENT as merely descriptive under Section 2(e)(1) is affirmed. In view thereof, we need not con- sider the examining attorney’s alternative ground for refusal that the mark is deceptively misdescriptive under Section 2(e)(1).