TMEP 1215.04: Descriptiveness

This is the October 2015 Edition of the TMEP

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1215.04    Descriptiveness

If a proposed mark is composed of a merely descriptive term(s) combined with a non-source-identifying gTLD, in general, the examining attorney must refuse registration under Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1), on the ground that the mark is merely descriptive. This applies to trademarks, service marks, collective marks, and certification marks.

The gTLD will be perceived as part of an Internet address, and typically does not add source-identifying significance to the composite mark. In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682 (Fed. Cir. 2009) (MATTRESS.COM generic for “online retail store services in the field of mattresses, beds, and bedding”); In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (HOTELS.COM generic for “providing information for others about temporary lodging; travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network”); In re Reed Elsevier Props. Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007) (LAWYERS.COM generic for “providing access to an online interactive database featuring information exchange in the fields of law, lawyers, legal news, and legal services”); In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004) (PATENTS.COM merely descriptive of “computer software for managing a database of records and for tracking the status of the records by means of the Internet”); In re DNI Holdings Ltd., 77 USPQ2d 1435 (TTAB 2005) (SPORTSBETTING.COM generic for “provision of casino games on and through a global computer network wherein there are no actual monetary wagers; provision of contests and sweepstakes on and through a global computer network; providing a web site on and through a global computer network featuring information in the fields of gaming, athletic competition and entertainment”); In re Eddie Z’s Blinds and Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005) (BLINDSANDDRAPERY.COM generic for retail store services featuring blinds, draperies, and other wall coverings, sold via the Internet); In re Microsoft Corp., 68 USPQ2d 1195 (TTAB 2003) (OFFICE.NET merely descriptive of various computer software and hardware products); In re CyberFinancial.Net, Inc., 65 USPQ2d 1789 (TTAB 2002) (BONDS.COM generic for providing information regarding financial products and services and electronic commerce services rendered via the Internet); In re Martin Container, Inc., 65 USPQ2d 1058 (TTAB 2002) (CONTAINER.COM generic for “retail store services and retail services offered via telephone featuring metal shipping containers” and “rental of metal shipping containers”).

However, there is no bright-line, per se rule that the addition of a non-source-identifying gTLD to an otherwise descriptive mark will never under any circumstances operate to create a registrable mark. The Federal Circuit has cautioned that in rare, exceptional circumstances, a term that is not distinctive by itself may acquire some additional meaning from the addition of a gTLD such as “.com” or “.net.” In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005) (STEELBUILDING.COM highly descriptive, but not generic, for “computerized on-line retail services in the field of pre-engineered metal buildings and roofing systems,” noting that “the addition of the TLD can show Internet-related distinctiveness, intimating some ‘Internet feature’ of the item.”) (citing Oppedahl & Larson, 373 F.3d at 1175-1176, 71 USPQ2d at 1373).

Thus, when examining domain name marks, it is important to evaluate the commercial impression of the mark as a whole to determine whether the composite mark conveys any distinctive source-identifying impression apart from its individual components. The examining attorney must introduce evidence as to the significance of the individual components, including the gTLD, but must also consider the significance of the composite term (e.g., “Sportsbetting” in the mark SPORTSBETTING.COM) to determine whether the addition of the TLD has resulted in a mark that conveys a source-identifying impression.

See also TMEP §§1209.03(m), 1215.02(d)─1215.02(d)(iv), and 1215.05.