Monday, 22 February 2021 20:15

TTAB Found ".COM" Insufficient to Make "ONLINETRADEMARKATTORNEYS.COM" Distinctive

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The U.S. PTO Trademark Trial and Appeal Board (TTAB) affirmed the Examining Attorney’s refusal to register "ONLINETRADEMARKATTORNEYS.COM " as a trademark because it was merely descriptive of its services.

Sausser Summer PC (Applicant) is the owner of a trademark registration for “ONLINETRADEMARKATTORNEYS.COM” on the Supplemental Register in connection with (Int’l. Class: 045) legal services.  See U.S. Trademark Reg. 4,590,561.  Five years after registration on the Supplemental Register, Applicant filed a trademark application for “ONLINETRADEMARKATTORNEYS.COM” on the Principal Register under a Section 2(f) claim for “acquired distinctiveness”.  See U.S. Trademark App. No. 88/626,569.  However, the Examining Attorney refused to register the applied-for mark on the basis that it was merely descriptive of Applicant's services.  Applicant filed an Appeal Brief in October 2020 requesting reversal and submitting evidence showing that the “ONLINETRADEMARKATTORNEYS.COM” mark had acquired distinctiveness as required by the Trademark Act and that the addition of a general top level domain “.COM” made the mark distinctive.

On the basis of the dictionary definitions, third-party uses of “online trademark attorneys,” and Applicant’s own description of its business model, the TTAB found that “on the scale ranging from generic to merely descriptive,” "ONLINETRADEMARKATTORNEYS.COM" was much closer to the generic end of the scale than to the merely descriptive end, making it is highly descriptive of the “legal services” identified in the application.  See Royal Crown Cola Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1048 (Fed. Cir. 2018).  The TTAB found that the combination of the words “online,” “trademark,” and “attorneys” with the top-level domain “.COM” immediately and unequivocally described the key feature or attribute of the “legal services” identified in the application, namely, that Applicant provides trademark attorneys who are “[a]ccessible via a computer or computer network.”  The TTAB ultimately concluded Applicant’s evidence on the Converse factors fell far short of carrying Applicant’s heavy burden of showing that its highly descriptive proposed mark ONLINETRADEMARKATTORNEYS.COM had acquired distinctiveness for legal services.  See Converse, Inc. v. ITC, 909 F.3d 1110, 1120, 138 USPQ2d 1538, 1546 (Fed. Cir. 2018) (Converse factors: (1) association of the mark with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of adverting; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage).

The TTAB did not find persuasive Applicant’s arguments that the addition of the “.COM” TLD to the highly descriptive phrase supported a finding that the mark as a whole had acquired distinctiveness.  In 2020, the U.S. Supreme Court rejected the rule that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” was automatically generic.  See USPTO v. Booking.com B.V., 140 S. Ct. 2298, 2020 USPQ2d 10729 (2020).  Notwithstanding, a mark must be capable of serving as a source indicator, rather than indicating that the term, as a whole, is merely the name of the class or category of the goods and/or services identified in the application, or merely descriptive of a quality, feature, function, or characteristic of an applicant's goods and/or services.  The TTAB concluded that the fact that some consumers may recognize that the “.COM” TLD in Applicant’s mark can identify only one entity at any one time has “little probative value” regarding the exclusivity of Applicant’s use of the mark as a whole, particularly when the record contains evidence of various third-parties describing their legal services as provided by “online trademark attorneys”.

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Emily Mola

Ms. Mola earned her Bachelor’s degree in History, magna cum laude, from the Florida International University, and a Juris Doctor degree and Certificate in Intellectual Property Law from the Florida International University, College of Law. While at FIU Law, she served as the President of the Intellectual Property Student Association. As a result of her dedication to intellectual property law, she earned three CALI Excellence for the Future Awards in focused academic coursework. Ms. Mola is the recipient of the International Trademark Association’s 2020 Ladas Memorial Award for her article, Trademark Law’s Capability to Protect Traditional Cultural Expressions from Unauthorized Borrowing and Theft. Ms. Mola is a 2018 Microsoft/Hispanic National Bar Association’s Intellectual Property Legal Institute scholar.