1215.02(a) Use Applications
A mark composed of a domain name is registrable as a trademark or service mark only if it functions as a source identifier. The mark, as depicted on the specimen, must be presented in a manner that will be perceived by potential purchasers to indicate source and not as merely an informational indication of the domain name address used to access a website. See In re Roberts, 87 USPQ2d 1474, 1479 (TTAB 2008) (finding that irestmycase did not function as a mark for legal services, where it is used only as part of an address by means of which one may reach applicant’s website, or along with applicant’s other contact information on letterhead); In re Eilberg, 49 USPQ2d 1955, 1957 (TTAB 1998).
In Eilberg, the Trademark Trial and Appeal Board held that a term that only serves to identify the applicant’s domain name or the location on the Internet where the applicant’s website appears, and does not separately identify applicant’s services, does not function as a service mark. The applicant’s proposed mark was WWW.EILBERG.COM, and the specimen showed that the mark was used on letterhead and business cards in the following manner:
(The specimen submitted was the business card of William H. Eilberg, Attorney at Law, 820 Homestead Road, P.O. Box 7, Jenkintown, Pennsylvania 19046, 215-855-4600, email firstname.lastname@example.org.)
The Board affirmed the examining attorney’s refusal of registration on the ground that the matter presented for registration did not function as a mark, stating that:
[T]he asserted mark, as displayed on applicant’s letterhead, does not function as a service mark identifying and distinguishing applicant’s legal services and, as presented, is not capable of doing so. As shown, the asserted mark identifies applicant’s Internet domain name, by use of which one can access applicant’s Web site. In other words, the asserted mark WWW.EILBERG.COM merely indicates the location on the Internet where applicant’s Web site appears. It does not separately identify applicant’s legal services as such. Cf. In re The Signal Companies, Inc., 228 USPQ 956 (TTAB 1986).
This is not to say that, if used appropriately, the asserted mark or portions thereof may not be trademarks or [service marks]. For example, if applicant’s law firm name were, say, EILBERG.COM and were presented prominently on applicant’s letterheads and business cards as the name under which applicant was rendering its legal services, then that mark may well be registrable.
Eilberg, 49 USPQ2d at 1957.
The examining attorney must review the specimen in order to determine how the proposed mark is actually used. It is the perception of the ordinary customer that determines whether the asserted mark functions as a mark, not the applicant’s intent, hope, or expectation that it does so. See In re The Standard Oil Co., 275 F.2d 945, 947, 125 USPQ 227, 229 (C.C.P.A. 1960).
If the proposed mark is used in a way that would be perceived as nothing more than an Internet address where the applicant can be contacted, registration must be refused. Examples of a domain name used only as an Internet address include a domain name used in close proximity to language referring to the domain name as an address, or a domain name displayed merely as part of the information on how to contact the applicant.
Example: The mark is WWW.ABC.COM for online ordering services in the field of clothing. A specimen consisting of an advertisement that states "visit us on the web at www.ABC.com" does not show service mark use of the proposed mark.
Example: The mark is ABC.COM for financial consulting services. A specimen consisting of a business card that refers to the services and lists a telephone number, fax number, and the domain name sought to be registered does not show service mark use of the proposed mark.
If the specimen fails to show use of the domain name as a mark and the applicant seeks registration on the Principal Register, the examining attorney must refuse registration on the ground that the matter presented for registration does not function as a mark. The statutory bases for the refusals are §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, for trademarks; and §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127, for service marks.
If the applicant seeks registration on the Supplemental Register, the examining attorney must refuse registration under Trademark Act §23, 15 U.S.C. §1091.