My weekly search of the Trademark Trial and Appeal Board records led me to a pretty interesting situation between two competing companies in the e-commerce industry whose services you’ve probably never used if you are like the 99% of Americans who aren’t completely freaked out or paralyzed by the prospect of using their credit/debit card for online purchases.
If you’ve ever bought anything online at popular websites such as walmart.com, borders.com, or zappos.com, you may have noticed at checkout a payment option called “Bill Me Later.” Bill Me Later is a service offered by a subsidiary of PayPal called I4 Commerce Inc. and is basically a revolving credit account (backed by CIT Bank in Utah) that is an alternative to using a standard credit card. When shoppers click on the Bill Me Later option, they are prompted to enter their birthday and the last 4 digits of their social security number. The system then runs what amounts to a credit check and, if approved, the purchase is completed. Then, in about 10-14 days, the shoppers receive a bill in the mail for the purchase amount, payment of which is usually due 30-90 days later. If the bill is not paid on time, interest starts accruing at a whopping 19.99% APR.
In 2002, I4 Commerce was granted a federal trademark registration for BILL ME LATER for “credit services, namely providing revolving credit account services and bill payment services to others via the telephone and world wide web.” Five years later, it was granted another trademark registration for BILL ME LATER,with a check mark logo, for the identical services. It is important to note that both of these registrations issued on the Principal Register without any disclaimers, meaning that the Trademark Office did not believe that BILL ME LATER, in whole or in part, was merely descriptive of the services rendered under the trademark.
Then, in 2005, a company by the name of MODASolutions Corporation launched a competing service called “eBillme.” When shoppers use the eBillme option at checkout, they enter their contact information and email address. Their bill is then displayed on the screen, as well as emailed to them for their records. Shoppers then have the option of paying the bill through their online banking service, or by printing off the bill and paying it at one of over 36,000 walk-in locations set up in drug stores, convenience stores, etc. Basically, it’s a somewhat convoluted way to securely purchase items online without having to divulge any personal or financial information to the merchant directly.
In April 2007, MODASolutions filed an application to register its EBILLME trademark for “secure online payment services, namely presentment and processing of bill payment transactions conducted via telephone, internet, and mobile banking.” Again, it is noteworthy that the Trademark Office did not find EBILLME to be merely descriptive of MODASolutions’ electronic billing and payment services. Well, apparently I4 Commerce wasn’t too happy about MODASolutions’ application and filed an opposition against it in September 2008 alleging a likelihood of confusion with its prior-used BILL ME LATER trademark. Around the same time, I4 Commerce also filed a federal lawsuit against MODASolutions alleging trademark infringement and unfair competition. This lawsuit is currently pending in the United States District Court for the District of Maryland, and the opposition is suspended pending the disposition of the lawsuit.
But MODASolutions isn’t just playing defense. On the contrary, this past week MODASolutions filed a cancellation proceeding against the two BILL ME LATER registrations owned by I4 Commerce. In its Petition for Cancellation, MODASolutions alleges that the BILL ME LATER marks should be canceled because (1) they are “generic for bill payment services that allow customers to be billed later for internet purchases” and do not function as a trademark, and (2) in the alternative, they are “descriptive for bill payment services that allow customers to ‘bill me later’ for purchases” and the marks have not yet acquired the requisite secondary meaning and distinctiveness for registration on the Principal Register. I would like to point out that even though descriptiveness was alleged against both registrations, I4 Commerce’s 2002 registration cannot legally be canceled on that basis because it has been on the Principal Register for over 5 years and is incontestable. However, it still can be canceled on the basis of genericness.
In my humble and (somewhat) professional opinion, BILL ME LATER is merely descriptive for payment services that allow shoppers to request that they be billed for their purchases at a future date. The mark immediately describes a salient feature of the services and would be understood as such by the vast majority of the purchasing public. However, I do disagree with MODASolutions that the mark is generic for such services, although I think it does teeter on that critical line between descriptive and generic. Whatever the case may be, I think we can all agree that a mark like BILL ME LATER is about as close to generic as you can get and is subject to the narrowest scope of protection available under the law.
But I wonder if MODASolutions has fully thought out the potential ramifications of filing such a cancellation. Let’s just say that it successfully cancels I4 Commerce’s registrations. Well, doesn’t it mean that EBILLME is similarly not entitled to registration on the Principal Register? A persuasive argument could be made that EBILLME immediately describes a primary feature of the services provided under the mark, namely that shoppers can request that online merchants bill them electronically for their purchases. While I personally don’t believe EBILLME quite rises to the level of being generic, it certainly isn’t deserving of the broad protections to which more distinctive and unique marks are entitled. But perhaps MODASolutions is willing to sacrifice registration of its mark if it will help it win the right to continue using its mark in the face of I4 Commerce’s infringement suit.
Of course, this leaves me with one last extremely important and relevant question: Do the lawyers representing I4 Commerce and MODASolutions accept Bill Me Later and/or eBillme for payment of their legal fees? Just wondering.