Points.com Inc.

Trademark Trial and Appeal Board

Jun 28, 2005

No. 76359741 (T.T.A.B. Jun. 28, 2005)

Mailed: June 28, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Points.com Inc.
________

Serial No. 76359741
_______

Thad N. Leach of Lewis, Rice & Fingersh, L.C. for
Points.com Inc.

Esther A. Belenker, Trademark Examining Attorney, Law
Office 111 (Craig Taylor, Managing Attorney).
_______

Before Chapman, Bucher and Grendel,1 Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
Points.com Inc. (a Canadian corporation) filed on
January 17, 2002 an application to register on the
Principal Register the mark shown below

1 Formerly known as Bottorff.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76359741
2
for services identified as “providing a web site on the
global computer network for the tracking and redemption of
customer loyalty rewards” in International Class 35. The
application is based on applicant’s assertion of a bona
fide intention to use the mark in commerce. Applicant
disclaimed “points xchange.”
The Examining Attorney refused registration on the
ground that applicant’s mark is merely descriptive of
applicant’s services under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. §1052(e)(1).
When the refusal was made final, applicant appealed to
this Board. Both applicant and the Examining Attorney have
filed briefs. Applicant did not request an oral hearing.
As a preliminary matter, we will address the new
evidence attached to applicant’s brief on the case.
Applicant, citing to TBMP §1207.01 (2d ed. June 2003),
asserts that Exhibits A and B, printouts of two additional
pages from its website, are allowed because the Examining
Attorney made a few pages from applicant’s website of
record in her Final Office action. (See applicant’s brief,
footnote 5.) Regarding Exhibits C-W, printouts of third-
party registrations from the USPTO’s Trademark Electronic
Search System (TESS), applicant acknowledged that third-
party registrations were not previously filed, but
Ser. No. 76359741
3
applicant requested that the Examining Attorney stipulate
them into the record. (See applicant’s brief, footnote 8.)
The Examining Attorney did not stipulate any of the
late-filed evidence into the record. The third-party
registrations are clearly untimely under Trademark Rule
2.142(d), as recognized by applicant. With regard to
applicant’s argument that the two pages from its website
should be allowed into the record, the TBMP section cited
by applicant in support thereof refers to situations where
one side submitted excerpted stories retrieved from the
Nexis database and the other side submitted the full
stories with its brief. The situation in the case now
before us is quite different and involves a different
source. Here, applicant submitted pages from its website
not previously submitted into the record by either the
Examining Attorney or applicant. The transitory or
changing nature of websites (i.e., Internet postings may be
modified or deleted at any time) is not analogous to the
printout in full format of a story previously submitted in
excerpted format from a printed publication. See In re
Trans Continental Records Inc., 62 USPQ2d 1541, footnote 2
(TTAB 2002).
Applicant could have requested a remand under
Trademark Rule 2.142(d), but chose not to do so. We have
Ser. No. 76359741
4
not considered applicant’s untimely filed Exhibits A-W. We
add that even if considered, they would not alter our
decision herein.
The Examining Attorney argues that the words “global,”
“points” and “exchange” have dictionary meanings relating
in a descriptive manner to applicant’s services; that
applicant’s minor misspelling of the word “xchange” does
not alter that it is perceived by consumers as “exchange”;
that the concept of exchanging points earned for shopping
for various things such as flying on certain airlines, or
buying from certain vendors or exchanging the points for
gifts, merchandise and services is not new; that the phrase
“points exchange” and thus, “points xchange” is merely
descriptive of applicant’s services (and is disclaimed by
applicant); that even if the term “global” has several
meanings, if any of the meanings is merely descriptive in
relation to applicant’s services, then the overall mark is
merely descriptive; that it is not necessary that a mark
describe all functions, characteristics or features of the
services, it need only describe one such attribute; and
that the slight stylization of the fonts of the words
GLOBAL POINTS XCHANGE in applicant’s applied-for mark does
not obviate the mere descriptiveness of the phrase. The
Examining Attorney concludes that the phrase GLOBAL POINTS
Ser. No. 76359741
5
XCHANGE informs the purchasing public that applicant’s
services allow customers to exchange points in a
comprehensive manner and are accessible anywhere in the
world via the Internet; and that the phrase is therefore
merely descriptive of the desirable feature of applicant’s
services, which are global, i.e., comprehensive in nature
and are available on the Internet.
In support of the descriptiveness refusal, the
Examining Attorney has made of record the following
definition from The American Heritage Dictionary (Third
Edition 1992):
(1) global adjective 2. Of, relating
to, or involving the entire earth,
worldwide… 3. Comprehensive;
total…;

(2) point noun 20. A single unit, as
in counting, rating, or
measuring…; and

(3) exchange noun A place where
things are exchanged, especially a
place where stocks or commodities
are bought and sold: a stock
exchange.

The Examining Attorney also submitted (i) copies of
numerous excerpted stories retrieved from the Nexis
database to show how applicant and others use the words
“points exchange” in the context of the type of service
offered by applicant; and (ii) certain pages printed from
Ser. No. 76359741
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four websites (including applicant’s) to show that, with
regard to the word “global,” applicant itself promotes its
services as a points exchange with global aspects, and that
other services utilize “global” in the same sense.
Examples of the excerpted stories retrieved from the
Nexis database include the following (emphasis added):
Headline: Surviving the Time-Share
Sharks’ Attack Visitors to Mazatlan
Bombarded with Offers
…In our hotel lobby, we were swarmed
over by smartly dressed young women
pushing a frequent-flier-style points-
exchange program. … “The Denver Post,”
October 5, 2003;

Headline: A Custom Time Share;
Marriott Vacation Club Betting Millions
Historic Tower Will Satisfy Need of
Those Seeking an Urban Destination
…Every other year, for example, owners
of the Boston time shares would be
allowed to trade their week for points
that could be used for stays at
Marriott hotels worldwide or for
cruises, air travel and rental cars.
The point exchange has not been set
yet, but at many resorts, one week
during high season equals seven nights
at a Marriott hotel or two roundtrip
air tickets. … “The Boston Globe,”
October 3, 1995;

Headline: Weathering Severe Turbulence
… The SkyMiles and Mileage Plus
programs also suffered the same blow in
March when partner Hilton Hotels
announced it was suspending a point
exchange program with their two
airlines.… “Credit Card Management,”
May 2003; and

Ser. No. 76359741
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Headline: Hyatt Benefits from
Outsourcing
…Customers calling 1-800-GO HYATT speak
to an employee in the Interval Resort &
Financial Services Group who makes
reservations for them at their own
resort, another Hyatt resort or at one
of the Hyatt hotels that participate in
Interval Internationals’ point exchange
system. “Lodging Hospitality,” March
15, 2000.

Applicant’s website includes the following statements
regarding “global”:
Great Pacific International, Inc. (GPI,
TSX Venture:GPI) a global provider of
loyalty program enhancements, and
Points International Ltd. (Points, TSX
Venture:PTS) today announced that GPI
has acquired an agreement with
Points.com Inc., a wholly owned
subsidiary of Points.
…
Through a portfolio of custom
technology solutions, Points is
building rewarding partnerships with
the world’s leading player loyalty
players. …

Applicant urges reversal of the refusal arguing that
the term “global,” when used in connection with applicant’s
identified services, may suggest any of the following
meanings to consumers (brief, p. 6.):
“(1) applicant’s services are comprehensive, complete
or total in scope; [applicant’s footnote omitted]
(2) applicant’s services may be accessed anywhere in
the world via the Internet;
Ser. No. 76359741
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(3) applicant’s services have an aura of
sophistication and international travel;
(4) applicant’s services are of terrestrial origin;
and/or
(5) applicant’s services are leading, significant and
important.”
Applicant contends that the Examining Attorney
essentially argues that “global” relates to the first two
items listed, but applicant argues that when “global” is
used in connection with miles and points earned in the
travel industry, much more is conveyed than that the points
could have been earned anywhere in the world or that the
services may be accessed from anywhere in the world; that
the mark is not merely descriptive because the term
“global” conveys at least one meaning to consumers of
applicant’s identified services that is at least
suggestive; and that the term means the latter three items
listed. Applicant further argues that third-party
registrations on the Principal Register for internet-
related services which incorporate the word “global”
support its argument that the mark is suggestive;2 that “the
distinctive and stylized display of the mark” strengthens

2 However, these third-party registrations have not been
considered, as explained previously in this decision.
Ser. No. 76359741
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consumer perception of the phrase as a mark; and that doubt
is resolved in applicant’s favor.3
Specifically applicant argues as follows (brief, pp.
9-10):
“…the mark GLOBAL POINTS XCHANGE
(stylized), as used in connection with
Applicant’s services,4 is suggestive
rather than merely descriptive because
a single descriptive meaning is not
immediately apparent from the Mark as
applied to the identified services.
See In re White Swan Ltd., 8 U.S.P.Q.2d
1534, 1536 (TTAB 1988)(‘the fact that a

3 In addition, applicant argues that the word “global” does not
identify any particular geographical location, and applicant
cited to cases wherein the words “world” and “globe” were found
not geographically descriptive, and in footnote 6 of its brief,
applicant explained as follows:

Applicant is aware that the Trademark
Attorney has never expressly refused to
register the mark on the Principal Register
based upon being “primarily geographically
descriptive” under Section 2(3)(2) of the
Trademark Act. Nevertheless, the Trademark
Attorney has consistently described
Applicant’s services as an “international,
or global, exchange” and respecting points
earned from “all around the world, that is,
globally,” which appear to characterize
Applicant’s services in geographic terms,
rather than in merely descriptive terms.

Inasmuch as applicant’s mark has not been refused registration
on a geographically descriptive basis, we shall not further
address this argument.
4 While applicant argues with regard to use of the mark,
applicant has not submitted an Amendment to Allege Use, and thus
there are no specimens of record. The Examining Attorney has
submitted printouts of pages from applicant’s website.
(Applicant submitted other pages from its website which have not
been considered, as explained previously in this decision.) The
pages from applicant’s website do not indicate use of the
applied-for mark for the identified services. This record
includes no evidence of use of the applied-for mark.
Ser. No. 76359741
10
descriptive word has a double meaning
may indicate that the word is not
‘merely descriptive’ of the …
services.’). The Mark operates to not
only describe a customer loyalty reward
program that may be accessed anywhere
in the world via the internet, but it
also (i) suggests that such services
are leading, important, significant and
terrestrial in nature and (ii) provides
an attractive allusion of international
travel. The Mark is therefore
registerable on the Principal Register.
(case citations omitted) TMEP
§1213.05(c) (‘The mark that comprises
the ‘double entendre’ will not be
refused registration as merely
descriptive if one of its meanings is
not merely descriptive in relation to
the … services.’)…”

Ultimately, applicant contends as follows in its reply
brief (p. 2):
The Examining Attorney’s interpretation
of the law is not correct as applied to
the facts of this appeal. A mark may
be registered on the Principal Register
if the mark is suggestive,
notwithstanding the fact that it may
also convey a descriptive meaning to
the ordinary consumers of the goods or
services. Section 1213.05(c) of the
Trademark Manual of Examining Procedure
provides that “[t]he mark that
comprises the ‘double entendre’ will
not be refused registration as merely
descriptive if one of its meanings is
not merely descriptive in relation to
the…services.” The leading treatise on
trademark law similarly provides that
“[a] mark that connotes two meanings –
one possibly descriptive, and the other
suggestive of some other association –
can be called suggestive, as the mark
is not ‘merely’ descriptive.” 2 J.
Ser. No. 76359741
11
Thomas McCarthy, MCCARTHY ON TRADEMARKS
AND UNFAIR COMPETITION, §11:19, 11-30
(2001). This is due to the fact that
‘merely means ‘only.’

The test for determining whether a term or phrase is
merely descriptive is whether the term or phrase
immediately conveys information concerning a significant
quality, characteristic, function, ingredient, attribute or
feature of the product or service in connection with which
it is used or is intended to be used. See In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir.
2001); In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215 (CCPA 1978); In re Eden Foods Inc. 24 USPQ2d 1757
(TTAB 1992); and In re Bright-Crest, Ltd., 204 USPQ 591
(TTAB 1979).
Further, it is well-established that the determination
of mere descriptiveness must be made not in the abstract or
on the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the term or phrase is being used or is intended to be
used on or in connection with those goods or services, and
the impact that it is likely to make on the average
purchaser of such goods or services. See In re
Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); and In
re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991).
Ser. No. 76359741
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Consequently, “[w]hether consumers could guess what
the product [or service] is from consideration of the mark
alone is not the test.” In re American Greetings Corp.,
226 USPQ 365, 366 (TTAB 1985). Rather, the question is
whether someone who knows what the goods or services are
will understand the term or phrase to convey information
about them. See In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990).
Finally, it should be noted that a term or phrase may
be “descriptive though it merely describes one of the
qualities or properties of the goods [or services].” In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir.
1987).
We find that the phrase “GLOBAL POINTS XCHANGE” is
merely descriptive of the subject matter of applicant’s
services of providing an Internet website for the tracking
and redemption (or exchange) of customer loyalty rewards.
We agree with the Examining Attorney that applicant’s use
of the term “xchange” (deleting the letter “e”), if noticed
by purchasers, would still be understood by purchasers to
mean “exchange.” The words forming applicant’s mark are
English words with dictionary definitions, which would be
generally understood by the relevant purchasers of
applicant’s services. It is clear on this record that
Ser. No. 76359741
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“points exchange” refers to an exchange of points in
customer loyalty programs; and that these words immediately
convey information about the nature and purpose of
applicant’s services. “Global” is defined as of or
relating to the entire earth -- worldwide, or comprehensive
and total. While applicant argues that the term has
several other non-dictionary but “double entendre” meanings
-- specifically, (i) sophistication and international
travel, (ii) leading or significant or important, and (iii)
terrestrial origin -- it has provided no evidence that
consumers would so understand or perceive the term “global”
in the context of applicant’s services. Rather, we are of
the opinion, based on this record, that consumers will
understand the term “global” in its dictionary senses of
worldwide and comprehensive, and thus, that applicant’s
services involve a comprehensive exchange of points earned
in loyalty reward programs and that the services are
accessible worldwide via the Internet.
Applicant’s contention that the word “global” has
“double entendre” meanings and therefore the mark is not
merely descriptive is not persuasive. Applicant submitted
no evidence of any non-dictionary meanings. Even if we
assume arguendo that there are non-dictionary meanings or
concepts related to the world “global,” applicant submitted
Ser. No. 76359741
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no evidence of consumer perception of those asserted
meanings or concepts and particularly in relation to
applicant’s services.
The cases applicant cites with regard to “double
entendre” meanings include In re Colonial Stores Inc., 394
F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE for
bakery products); In re Grand Metropolitan Foodservice
Inc., 30 USPQ2d 1974 (TTAB 1994) (MufFuns (stylized
lettering) for baked mini muffins); Ex parte Barker, 92
USPQ 218 (Comm. 1952) (CHERRY-BERRY-BING for fruit and
berry preserves); and Blisscraft of Hollywood v. United
Plastics Co., 294 F.2d 694, 131 USPQ 55 (2nd Cir. 1961)
(patent and trademark infringement and unfair competition
involving POLY PITCHER for pitchers).
As stated by our primary reviewing Court in In re
Gyulay, supra, 3 USPQ2d at 1010 when addressing that
applicant’s reliance on the Blisscraft of Hollywood case:
Blisscraft held that “‘Poly Pitcher’ …
is an incongruous expression, and has
the characteristics of a coined or
fanciful mark”, more suggestive of Molly
Pitcher than descriptive of
polyethylene. Id. APPLE PIE is not a
coined or fanciful expression and does
not benefit from this ruling.

Likewise, in the case now before us involving the phrase
GLOBAL POINTS XCHANGE (in stylized lettering), we do not
Ser. No. 76359741
15
find on this record that the word “global” in the phrase
“global points xchange” has a double entendre meaning.
Rather, here “global” (in “global points xchange”)
describes a key characteristic of applicant’s identified
services.
When we consider the mark GLOBAL POINTS XCHANGE (in
stylized form) as a whole, and in the context of
applicant’s services, we find that the phrase immediately
informs consumers that applicant’s services involve
providing a comprehensive points exchange program which is
accessible worldwide.
Moreover, the combination of these English words does
not create an incongruous or unique mark, but instead, when
used in connection with applicant’s identified services,
“GLOBAL POINTS XCHANGE” immediately describes, without need
of conjecture or speculation, an essential characteristic
of applicant’s services. No exercise of imagination or
mental processing or gathering of further information is
required in order for purchasers or prospective customers
for applicant’s services to readily perceive the merely
descriptive significance of the phrase GLOBAL POINTS
XCHANGE as it pertains to the identified services in
connection with which applicant asserts a bona fide
intention to use the mark. See In re Gyulay, supra; In re
Ser. No. 76359741
16
Omaha National Corporation, 819 F.2d 1117, 2 USPQ2d 1859
(Fed. Cir. 1987); In re Quik-Print Copy Shop, Inc., 616
F.2d 523, 205 USPQ 505 (CCPA 1980); In re Polo
International Inc., 51 USPQ2d 1061 (TTAB 1999); In re
Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB
1998); In re Intelligent Instrumentation Inc., 40 USPQ2d
1792 (TTAB 1996); and In re Time Solutions, Inc., 33 USPQ2d
1156 (TTAB 1994).
While evidence of descriptive use of the multiple
words together is generally persuasive that such a multiple
word mark is merely descriptive, there is no requirement
that an Examining Attorney must obtain evidence of all the
words used together in order to make a prima facie showing
that a multiple word mark is merely descriptive.5 See In re
Nett Designs Inc., supra (Court affirmed Board holding THE
ULTIMATE BIKE RACK merely descriptive and subject to
disclaimer for carrying racks for mounting on bicycles and
accessories for bicycle racks, namely attachments for
expanding the carrying capacity of a carrying rack.) See
also, In re Shiva Corp., 48 USPQ2d 1957 (TTAB 1998).

5 The issue here is not whether the phrase is generic for
applicant’s identified services, but rather is whether the phrase
is merely descriptive in the context of applicant’s services.
Ser. No. 76359741
17
We are not persuaded that the two font styles and
sizes of the words “global,” “points” and “xchange” present
a “distinctive and stylized display” which overcomes the
mere descriptiveness of the phrase. The words are simply
presented in all lower case letters, in two rather normal
fonts.
Finally, even if applicant was the first (and/or only)
entity to use the phrase “global points xchange” (stylized
lettering) in relation to providing a website for tracking
and redeeming customer loyalty rewards, such is not
dispositive where, as here, the phrase unquestionably
projects a merely descriptive connotation. See In re
Tekdyne Inc., 33 USPQ2d 1949, 1953 (TTAB 1994). See also,
2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, §11:18 (4th ed. 2005).
Decision: The refusal to register on the ground that
the proposed mark is merely descriptive under Section
2(e)(1) of the Trademark Act is affirmed.