Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA196059
`ESTTA Tracking number:
`03/04/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Entity
`Address
`
`Rapid Funding, LLC
`Limited liability company
`200 Spruce Street Suite 200
`Denver, CO 80230
`UNITED STATES
`
`Citizenship
`
`Colorado
`
`Attorney
`information
`
`R. Garth Ferrell
`Mallgren & Ferrell, P.C.
`200 Spruce Street Suite 201
`Denver, CO 80230
`UNITED STATES
`gferrell@mallgrenferrell.com Phone:303-341-0700
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77227344
`03/04/2008
`
`Publication date
`Opposition
`Period Ends
`
`02/05/2008
`03/06/2008
`
`JPMorgan Chase & Co.
`270 Park Avenue
`New York, NY 10017
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 036. First Use: 1997/02/28 First Use In Commerce: 1997/02/28
`Opposed goods and services in the class: Banking services; financial services, namely, remittance
`services associated with checking and savings accounts
`
`Grounds for Opposition
`
`The mark is merely descriptive
`
`Trademark Act section 2(e)(1)
`
`Attachments
`
`76368321#TMSN.gif ( 1 page )( bytes )
`OPPOSITION JPMORGAN RAPID CASH WITH EXHIBITS.pdf ( 26 pages
`)(2728227 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`

`
`Signature
`Name
`Date
`
`/R. Garth Ferrell/
`R. Garth Ferrell
`03/04/2008
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of trademark application Serial No. 77—227,344
`For the trademark RAPID CASH
`
`Published in the Official Gazette on February 5, 2008
`
`Rapid Funding, LLC,
`Opposer,
`
`V.
`
`JPMorgan Chase & Co.,
`Applicant.
`
`‘
`
`Opposition No.:
`
`BOX TTAB FEE
`
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`NOTICE OF OPPOSITION
`
`RAPID FUNDING, LLC, a limited liability company organized and existing under the
`
`laws of the State of Colorado, believes that it will be damaged by registration of the mark shown
`
`in Serial No. 77-227,344 in International Class 36 and hereby opposes the same.
`
`As grounds of opposition, it is alleged that:
`
`1.
`
`The Applicant seeks to register RAPID CASH as a servicemark for “banking
`
`services; financial services namely remittance services associated with checking and savings
`
`accounts,” in International Class 36, as evidenced by the publication of said mark in the Official
`
`Gazette on February 5, 2008.
`
`2.
`
`The Applicant is also the owner of the trademark RAPID CASH, Registration No.
`
`2076602, registered on the Supplemental Register for “banking services” in International Class
`
`

`
`36. The servicemark for RAPID CASH states a date of first use in commerce of February 28,
`
`1997.
`
`3.
`
`The Opposer is engaged in the business of providing financial services and
`
`products, namely, loan financing, real estate and accounts receivable lease lending and mortgage
`
`lending, under the mark “RAPID FUNDING”.
`
`4.
`
`Opposer has been marketing such financial services and products since the latter
`
`part of 2000. These services are marketed nationally by various means, including internet
`
`domain name registration of variations of the phrase “rapid funding”, and Opposer’s use of
`
`RAPID FUNDING has developed distinctiveness for certain services in the financial services
`
`market sector, including loans, financing and mortgage lending, among other services.
`
`Descriptive Nature of Proposed Mark
`
`5.
`
`Opposer alleges that the term RAPID CASH is merely descriptive when used by
`
`Applicant in connection with the services proposed and is therefore unregistrable under Section
`
`2(e) ofthe Lanham Act, 15 U.S.C. § l052(e).
`
`6.
`
`The term RAPID CASH is descriptive under Section 2(e) of the Lanham Act, 15
`
`U.S.C. §l052(e), in the sense that it describes the timeliness with which certain remittance
`
`services for checking and savings accounts are provided. Banks provide money from customer’s
`
`accounts. This mark is descriptive of the speed at which the money is provided.
`
`Lack of Distinctiveness of Applicant’s Mark
`
`7.
`
`If the Applicant is granted the registration herein opposed it would thereby obtain
`
`at least a prima facie exclusive right to the use of its mark. Such registration would be a source
`
`of damage and injury to the Opposer who uses the designation “rapid funding” extensively to
`
`indicate a type or quality of service.
`
`

`
`8.
`
`Applicant’s statement regarding Section 2(t) lacks substantial support and
`
`evidence in the record. First, to the extent distinctiveness is based on prior use of the mark
`
`RAPID CASH, currently on the Supplemental Register, such reliance is misplaced because the
`
`prior registration must be on the Principal Register. 37 C.R.S. §2.,4l(b) and TMEP §§l2l2.04 et
`
`seq. Applicant has not proven distinctiveness of the use of RAPID CASH for “banking services”
`
`as listed in its Supplemental Register registration, let alone for “banking services; financial
`
`services, namely, remittance services associated with checking and savings accounts.” Second, it
`
`does not appear that Applicant has actually used the mark RAPID CASH in connection with the
`
`described remittance services associated with checking and savings accounts since February 28,
`
`1997, the date of first use of its use of the mark for banking services generally. Rather, it appears
`
`that Applicant has only recently begun using the mark RAPID CASH in light of an article
`
`appearing on www._pay_ment.n.eWs.com on June 14, 2007, wherein the article states “Chase
`
`Unveils Rapid Cash-Free Money Transfers to Mexico.” Exhibit A. Applicant has failed to
`
`prove continuous use in commerce for at least five years immediately before the date of the
`
`statement under §2(t) for either “banking services” or “remittance services associated with
`
`checking and savings accounts.” Third, cursory examination conducted through a Google
`
`search both by the attorney for Opposer as Well as by the trademark examiner reveals numerous
`
`other uses of the mark RAPID CASH in the financial services industry. They indicate that
`
`Applicant’s use of the mark is not “substantially exclusive in the financial services or banking
`
`services industries.” Exhibit B.
`
`9.
`
`Opposer does not object to the placement of Applicant’s mark on the
`
`Supplemental Register.
`
`

`
`WHEREFORE, the Opposer prays that the application Serial No. 77-227,344 be rejected, and
`
`that the mark therein sought for the services provided herein specified in International Class 36
`
`be denied and refused.
`
`Opposer hereby gives notice under Rule 2. l22(d), that in this opposition proceeding and in
`
`any appeals relating thereto, it may rely in part on its registration which is annexed as an exhibit
`
`to this Notice of Opposition as evidence in support of this Notice of Opposition. Exhibit C.
`
`A duplicate copy of this Notice of Opposition and fee required in § 2.6(a)(l7) are enclosed
`
`herewith.
`
`The Opposer by authority of the undersigned, hereby appoints R. Garth Ferrell, member of
`
`the Bar of the State of Colorado, Mallgren and Ferrell, P.C., 200 Spruce Street, Suite 201,
`
`Denver, Colorado 80230, its duly authorized attorney in the matter of the opposition identified
`
`above to prosecute said opposition, to transact all business in the Patent and Trademark Office
`
`and in the United States courts connected with this opposition, to sign its name to all papers
`
`which may hereinafter be filed in connection therewith, and to receive all communications
`
`relating to the same.
`
`Respectfully submitted,
`
`MALLGREN & FERRELL, P.C.
`
`R. Garth Ferrell
`
`

`
` By:
`
`Andrew S. Miller, Manager
`
`Date: g'2°I"10° 9
`
`

`
`Payments News: June 2007
`
`Opposer’s Exhibit
`A
`
`Page 1 of 34
`
`
`
`Payments News
`
`Home
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`_«_May_.Z_QOZ I Mam I Au/lL2_0_0L
`
`June 30, 2007
`
`Plastic Replaces Passing the Plate at Church
`
`Sam Hodges writes for the Dallas Morning News about new payment caLds are dis.p.lacing cash and checks
`
`at churches and charities.
`“
`A Look at ACH Fraud
`Glen Fest writes for Bank Technology News about &H fraud and new proposals under consideration that
`"would also require originators to maintain statistics on their return activity and rid themselves of
`problem firms (read: telemarketers) that blatantly violate NACHA rules with improper Web- or telephone-
`based authorizations-each helping to form the basis of a de facto originators blacklist."
`June 29, 2007
`
`t
`
`La
`
`5 P 0 N
`
`
`
`Mobile Banking Is Finally Almost Here. Really
`
`Glen Fest writes for Bank Technology News about mobile banking — saying that "recruiting Gen Y users will
`be most banks‘ priority. Ninety percent of the under-25 set already have data capabilities on their
`phones. And more than half of younger users say they will consider mobile banking offerings when
`choosing a bank."
`
`Top Trends in U.S. Corporate Cash Management
`
`Aite Group has published a new report titled "EpJm a$Mamg amgEs
`for a New Enflronment" that "explores the top trends that are currently shaping the U.S. cash
`management space and the strategies that are being implemented by the largest global players, down to
`the smallest community banks." >>_JiLl@JL'y
`
`A Perspective on Contacfless Payments
`
`Aneace Haddad of Welcome Real-time shares his London contactless con_f_erence presentation - taking a
`skeptical view of contactless payments that simply replace mag stripe functionality and suggesting that
`the real value is to also enable the card to interact with the merchant's POS to enable promotional
`marketing in addition to basic purchase functionality.
`
`A Look at Discover Financial Services
`
`
`
`In an article titled "Discover Finds a Fan Base Ahead of Loomingfipirlqfi", Robin Sidel writes for the Wall
`St. Journal about the spinoff of Discover Financial Services from parent Morgan Stanley. The spinoff is to
`be completed next Monday when Discover is expected to have a market capitalization of about $14
`billion.
`
`Google Checkout vs. PayPal
`
`In a post titled "fimgle Checkout Team Lays out Differem:_e,S»_FL9LT1_eBay'_sfl)P;ail", Red Herring blogger
`Tomio Geron writes about a presentation by Google's Michael Feldman comparing Google Checkout to
`PayPal. Feldman said that as compared to PayPal as a payment method at completion of a purchase,
`Google "Checkout provides solutions much earlier in the shopping cycle. We help consumers find
`merchants
`and can help them through that experience. We help influence users much earlier in the
`process and streamline the actual process."
`
`Headline News - June 29, 2007
`
`http://wvvwpaymentsnews.com/2007/06/
`
`2/22/2008
`
`

`
`Payments News: June 2007
`
`Page 19 of 34
`
`I mem§ystmsandfiLcxman Einaliz<LStmtegEfiu_itvBa:ttLeLsh_ip.l1eal
`
`I 3Leu'Eone.\AlimJAu_lti-mfllioflollapflayeiattheitablejystemspotdefloflcan_adaCL|@tgest£i.IlLSen£Lce
`Bestuamcbain
`l
`I FLmd_sTech CoriLEnLe_rs Into Consu_uir1gAgL ement to Implement a Prej@id.CLCL$)_lU1iQflfi_uLQp§
`I 1 U1tpatn Imaging Reaches 1,009 Remgte Deposit Capture Installations of Digital Check's ElectronicvChe,c_k
`c “nuts
`U1
`
`1 ‘
`
`\C| Worldwide(Reac,eiWve “Best-_of-Claiss Awards From Ait/e Group
`
`Hyp_erc,om’s SmartPayments Payment Processingjuite is Certified for Windows Vista
`
`@CmJLC.zud_l3fi\/_ing_LoyaLty
`
`Towergroup: While 'S,up;1y Chain Finan/<:e*' is a Powerful Concept for WholesaL_B_anking, It is Also Widely
`msmderstcm
`
`I Qefia Air Li,n_e_s Amends Credit Card Processing Agreement
`
`Note: Throughout the day, as Bayr_rLeuts,fle_\1s happens, this post is updated.. For job opportunities
`available for payments professionals, visit Baymentsdbspcm. Employers looking to hire payments
`professionals can post their job openings there as well.
`June 13, 2007
`
`Google Checkout Cancels Boston Party
`
`Earlier this week, Google Checkout announced it would be holding a "Let Freedom Ring" party Thursday
`evening in Boston — where eBay is holding its eBay Live! conference. Tonight, apparently after
`considerable back and forth between the two companies, Google announced that the figle Checkolfi
`D_afiy_pia_[fle_(ii0_I’_'t_O_rI_1_0l’I’OW nigiflas been cancelled.
`
`Capital One Tests a New Type of Debit Card
`
`Aleksandra Todorova writes for SmartMoney about Qpital 0ne's new "de<:.cJ_upLe/cLJ§,biL"_C,_Ld strategy.
`(See earlier posts on this new Capital One product on Payments News here and bJ_e.
`
`Overhauling the US Health Care Payment System
`
`The McKinsey Quarterly has a new article titled "9Le_rlmuling the US Health Care Paymperrit
`S_)Lstem" (registration required). From the abstract: "Over the next five years, rapid innovation may lead
`to a restructuring of the value chain of health care payments and to a shift in the sector's balance of
`power. Financial institutions have an opportunity to take on a more prominent role, while payers risk
`losing influence to new entrants. Providers stand to benefit as fewer dollars are wasted on transaction-
`processing inefficiencies."
`
`GSA Awards JPMorgan Chase SmartPay2 Charge Card Contact
`
`The U.S. General Services Administration has named JPMorgan Chase winner of a GSA SmartPay2 charge
`card service contract, certifying that the company can offer its charge card services to any U.S. federal
`entity. »fi;ll story
`
`U.S. -A Global Leader in Retail Bank Performance
`
`The U.S. ranks as one of the top three countries in overall retail banking performance, according to a
`new, global study by management consulting firm Booz Allen Hamilton; Hong Kong and Switzerland are
`the other leaders. However, the study concludes that banks in all regions have room for improvement.
`»fi;l_l._s_to_r:u
`
`
`
`CVSIphannacy Offer Own Gift Card via Coinstar Coin to Card
`
`Coinstar has announced that C.VS/ pharmacy is expected to have gift cards available in more than 360
`Coinstar Center kiosks in CVSI pharmacy stores this summer. The Coin to Card service allows consumers to
`convert their loose change to a CVS card at the Coinstar kiosk and pay no coin"-counting fee. »fi4ll stow
`
`Chase Unveils Rapid Cash - Free Money Transfers to Mexico
`
`http://www.paymentsnews.com/2007/06/
`
`2/22/2008
`
`

`
`Payments News: June 2007
`
`Page 20 of 34
`
`Chase has introduced Rapid Cash - calling it "an easy new way to send money to Mexico for free." »,1fll_l
`stozy
`
`Fidelity National Financial Joins ID Analytics ID Network
`
`ID Analytics has announced that Fidelity National Financial will be using ID Analytics ID Network - what
`the company calls "the nation's first and only real-time fraud prevention network" - to manage identity
`risk. »fi;ll story
`
`PayPal to Roll Out ‘Advanced Risk Predictors‘
`
`Ina Steiner reports for AuctionBytes.com about comments made by PayPal CTO Scott Thompson in a
`keynote address to eBay's Developers Conference in Boston. She reports that "in October, EavEaUALi_lLte:st
`a Wzab/Service that utilizes/aEdvanc,ed risk predictcm, giving merchants more information and control over
`whether to accept payments, while maintaining buyer privacy."
`
`The full text of Thompson's keynote is available on the Payliafieyelopefllog. Thompson concludes his
`keynote address to PayPal developers with the comments: "lmagine the hundreds of opportunities in the
`offline world. Perhaps you’re the guy to take an Internet-only company and extend it into the brick-and-
`mortar world."
`
`Headline News - June 13, 2007
`
`I Global Payments Europe to Provide Comprehensive Procig Services for STARBANK in Russia
`
`I flanlggaslfirtgiamimjncteasediees
`
`I ZDNet: Billmonk - track mone;Lowed between friends
`
`I GFI releases software suite for PCI DSS compliance
`
`I VeriFone DesignatedS(<)lefly@r1t_Systems Vendor'bLChrh_a1josfi3l Savingsjfl
`
`I First Data Corp. to cut 300 jobs in Tulsa
`
`Note: Throughout the day, as _P11_ym.erLtsAeMs happens, this post is updated. For job opportunities
`available for payments professionals, visit _EayLn_e:rr_ts;c1l:;s_.cQr_n_. Employers looking to hire payments
`professionals can post their job openings there as well.
`June 12, 2007
`
`eBuneau’s Buy-Now Pay-Later escore
`
`e,BJLreau, a provider‘ of custom predictive scoring and information solutions, has announced a new
`predictive scoring service that allows consumer—focused direct marketing companies to "more profitably
`offer deferred payment options to consumers as part of their online marketing and e-commerce
`programs." »_ ll stow
`
`Visa, Creative Mobile Technologies Partner to Speed NYC Taxi Payments
`
`Visa and Creative Mobile Technologies have announced the launch of a program to enhance the payment
`experience for New York taxi passengers by equipping thousands of New York taxicabs with contactless
`payment readers located in the back of the taxi , enabling passengers to simply pay with a wave.
`»,fi1_1l
`_s_to_I_'y
`
`Bank of America CEO to Discuss Greening of Corporate America
`
`In an address titled "A Golden Opportunity to Make S.om.e G_r.e_e_n", Bank of America Chairman and CEO
`Kenneth D. Lewis will be addressing the Commonwealth Club of California this Thursday evening in San
`Francisco.
`
`Nevvsday Looks at Mobile Banking
`
`
`in an article titled "You can now bank b3Lc§.lL[m9m and although few do so, the industry sees huge
`growth ahead", Newsday's Susan Hartigan takes a look at mobile banking - saying that "although the
`number‘ of people signed up for mobile banking is small at the moment, more large financial institutions
`
`http://Www.paymentsnews.c0m/2O07/O6/
`
`2/22/2008
`
`

`
`Payments News: Chase Unveils Rapid Cash - Free Money Transfers to Mexico - June 13,
`
`Page 1 of 5
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`fil,e_t>~_oy_|°_ayL11_,L1_t.s_B_<:o_c>.1'_C. ..m_p - MaLch_1_8-19,_,.0_0.8 - At,lanta_Pe),rgi.a
`
`Chase Unveils Rapid Cash - Free Money Transfers to Mexico
`Chase has introduced Rapid Cash - calling it "an easy new way to send money to Mexico for free."
`
`"At Chase we are committed to serving
`the Hispanic community by providing
`products and services tailored to their
`specific needs,” said Rebeca Vargas, head
`
`Of mUltiCUltU"al marketing at Cha5e-
`"When customers told us that they
`wanted an affordable, safe and
`convenient way to send their hard-earned
`money back to loved ones in Mexico’ We
`created Rapid Cash. Now, we are bringing
`
`Chase What Matters
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`it to customers in New York.”
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`_
`Rapid Cash allows Chase checking account
`customers to make three free transfers -
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`statement cycle. The money is
`transferred to Banorte bank, which has more than 1,000 branches and 2,800 ATMs in Mexico,
`and deposited into a Banorte account or picked up at any Banorte branch in cash for no fee.
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`Customers can send cash quickly and easily from their Chase personal checking account by
`visiting any Chase branch in the New York metro area. Qualifying individuals can open an
`account in just minutes. Customers can use their Mexican Matricula Card as a form of
`identification to open the account.
`
`Rapid Cash was first introduced to Chase customers in Texas, then rolled out to a larger part
`of the country and now to C.hase’s largest market: the New York Tri—state area of New York,
`New Jersey and Connecticut. The launch of the service in New York will be supported with
`TV and radio advertising.
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`_S,hareMQn_Ea_cebo_Qk I S,u,bs,cLib_e_t_o2Paym_entsNce1v_s/!
`Tags: Chase Card Services, Money Transfer, Rem‘__tar_1,c_es.
`Posted: ,.l.u_oe1L.2_ll)La_t_.02:fi3_/AIL/liaciiic
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`

`
`rapid cash — Google Search
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`Opposer’s Exhibit
`B
`
`Web
`
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`Page 1 of 2
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`Payments News: Chase Unveils Rapid Cash - Free Money Transfers to Mexico - June 13,
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`Payments News: Chase Unveils Rapid Cash — Free Money Transfers to Mexico - June 13,
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`Speedy Cash® & Rapid Cash Homepage
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`Page 1 of 1
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`
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`Home
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`GET CASH
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`Payday Advance Loan And Cash Advance Get an advance on your paycheck!
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`Fast Cash Loans
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`http://www.rapidcashsource.com/
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`2/22/2008
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`Fast Cash Loans
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`2/22/2008
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`QuikPay.com Loans - Rapid Cash Advance Loans @ QuikPay.com!
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`2/22/2008
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`Rapid Cash Funding purchases a Variety of cash flow assets
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`Page 1 of 1
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