Allwall Tech-nologies, Inc.

Trademark Trial and Appeal Board

Aug 19, 2003

No. 75879693 (T.T.A.B. Aug. 19, 2003)


Mailed: August 19, 2003
Paper No. 17
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Allwall Technologies, Inc.1
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Serial No. 75/879,693
___________
A. Jose Cortina of Kilpatrick Stockton for Allwall
Technologies, Inc.
Richard S. Donnell, Trademark Examining Attorney, Law Office
106 (Mary Sparrow, Managing Attorney).
____________
Before Hanak, Walters and Drost, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Allwall Technologies, Inc. filed an application to
register on the Principal Register the mark ART.COM for, as
amended, “retail services in the field of art; art gallery
services offered via computer networks and global
communications networks; computerized on-line ordering,

1 The application was originally filed by Getty Images, Inc. The
application was assigned to Allwall Technologies, Inc. on June 8, 2001,
and the assignement was recorded at the USPTO on August 15, 2001.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 75/879,693
2
consulting, and advisory services in the field of framing
materials for works of art and works of art, namely,
original and reproduced paintings, color prints, pictures,
printed art reproductions, limited edition prints,
lithographs, lithographic prints, photographs, pictorial
prints, cartoons, color pictures, art prints, art etchings,
drawings, and posters thereof; sculptures and decorative
objects and framing parts thereof, namely, matting
dimensions and glass; electronic greeting cards; providing
on-line information concerning the field of works of art,
namely, art, art prices, art sources, art prints, art
publishers and individual artists,” in International Class
35.2
The Trademark Examining Attorney initially refused
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. 1052(e)(1), on the ground that applicant’s proposed
mark is merely descriptive when used in connection with its
services. After the final refusal was issued, applicant
filed, on August 15, 2001, a notice of appeal and request
for reconsideration, which included an amendment of its
application to seek registration on the Supplemental
Register. The Board remanded the application to the
Examining Attorney, who accepted the amendment, withdrew the

2 Serial No. 75/879,693, filed December 23, 1999, based on use of the
mark in commerce, alleging first use as of November 12, 1998 and use in
commerce as of November 13, 1998.

Serial No. 75/879,693
3
refusal based on mere descriptiveness, and issued a refusal
to register, which was ultimately made final, under Section
23 of the Trademark Act, 15 U.S.C. 1091, on the ground that
the alleged mark is generic in connection with the
identified services.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs,3 but an oral hearing
was not requested. We affirm the refusal to register.
With respect to genericness, the Office has the burden
of proving genericness by “clear evidence” thereof. In re
Merrill, Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567,
4 USPQ2d 1141, 1143 (Fed. Cir. 1987). The critical issue in
genericness cases is whether members of the relevant public
primarily use or understand the term sought to be registered
to refer to the category or class of goods or services in
question. In re Women’s Publishing Co. Inc., 23 USPQ2d
1876, 1877 (TTAB 1992). Our primary reviewing court has set
forth a two-step inquiry to determine whether a mark is
generic: First, what is the category or class of goods or
services at issue? Second, is the term sought to be
registered understood by the relevant public primarily to
refer to that category or class of goods or services? H.

3 With its brief, applicant submitted a dictionary definition that was
previously made of record by the Examining Attorney and an excerpt from
a magazine article. Although the magazine article is untimely, the
Examining Attorney expressly stated in his brief that he does not object
to this evidence and, thus, the article has been considered as part of
the record.
Serial No. 75/879,693
4
Marvin Ginn Corporation v. International Association of Fire
Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir.
1986).
The Examining Attorney contends that the genus of the
involved services is “retail services featuring various
types of art”; and that the ART portion of applicant’s mark
is the generic name for the class of goods that applicant’s
online retail services offer for sale. He submitted several
dictionary definitions of “art,” one of which is, in part,
“[c]onscious arrangement or production of sounds, colors,
forms, movements, or other elements in a way that affects
the aesthetic sense” and “the product of these activities.”4
The Examining Attorney refers to the excerpts in the record
from applicant’s website as evidence of the “art” products
offered for retail sale thereon.5
The Examining Attorney contends that the second portion
of applicant’s mark, .COM, is a top level Internet domain
name that does not serve in a source-identifying role; it
merely serves to show that applicant is a commercial entity
doing business on the Internet. He concludes that the mark
in its entirety, ART.COM, is a generic term for the class of

4 Webster’s II New Riverside University Dictionary, 1984.
5 The Examining Attorney also submitted copies of third-party
registrations on the Principal Register containing disclaimers of the
term “art.” Several of the registrations contain claims under Section
2(f) of the Act. Because the issue in this case is whether the alleged
mark is generic, only those few registrations with Section 2(f) claims
and disclaimers are relevant.
Serial No. 75/879,693
5
art and art-related products that applicant sells via its
retails services on Internet, and that consumers would
immediately recognize it as such. The Examining Attorney
characterizes the alleged mark as “akin to a compound word
consisting of a generic term combined with the top-level
domain indicator .COM.” [Brief, pg. 11.]
Applicant admits that “the term ‘ART’ in the context of
applicant’s mark, ART.COM, may be generic for the genus of
products known as ‘art.’” [Brief, pg. 2.] Applicant
further states the following [brief, pg. 3]:
In all cases, the term “art” applies to products
or goods and not services. While it is
acknowledged that a term can be generic as applied
to services dealing with the class of goods to
which services are applied, this is not the case
in this application. “Art” is also a first name.
We begin our analysis by noting the definition made of
record by the Examining Attorney of “.com” as “[a] top-level
domain name used for commercial Internet sites in the United
States.”6 We find that this case is analogous to the
decision of the Board in In re Martin Container, Inc., 65
USPQ2d 1058 (TTAB 2002), wherein the Board found the
proposed mark CONTAINER.COM to be generic in connection with
retail sales and rental of containers. In that case, the
Board stated the following:
In the case before us, contrary to Dial-A-Mattress
[In re Dial-A-Mattress Operating Corp., 24 F.3d

6 High-Tech Dictionary, www.computeruser.com, September 10, 2002.
Serial No. 75/879,693
6
1341, 57 USPQ2d 1807 (Fed. Cir. 2001)], the mark
cannot be characterized as a mnemonic phrase. It
is instead a compound word, a generic term
combined with the top level domain indicator,
".COM." In proving genericness, the Office may
satisfy its burden by showing that these separate
generic words have a meaning identical to the
meaning common usage would ascribe to those words
as a compound. In re Gould Paper Corp., 834 F.2d
1017, 5 USPQ2d 1110 (Fed. Cir. 1987). In a similar
sense, neither the generic term nor the domain
indicator has the capability of functioning as an
indication of source, and combining the two does
not result in a compound term that has somehow
acquired this capability.
See also In re CyberFinancial.Net, Inc., 65 USPQ2d 1789
(TTAB 2002).
As in In re Martin Container, Inc., the matter for
which registration is sought herein, ART.COM, is a compund
term that is incapable of identifying the source of
applicant’s services. The evidence clearly establishes that
“art” refers to a class of products that encompass the goods
offered via applicant’s Internet web site. As stated in In
re Martin Container, Inc., supra, the term “.COM” is merely
a top-level domain indicator (TLD), which is a necessary
part of an address on the Internet. As with business entity
designations such as “INC.” or “CO.,” it has no source
indicating significance to the purchasing public, and cannot
serve any service mark purpose. See In re Paint Products
Co., 8 USPQ2d 1863 (TTAB 1988), ["PAINT PRODUCTS CO" held
incapable of identifying and distinguishing paints], and In
re E.I. Kane, Inc., 221 USPQ 1203 (TTAB 1984), ["OFFICE
Serial No. 75/879,693
7
MOVERS, INC." held incapable of identifying and
distinguishing office facilities moving services]. See
also: 1 J. McCarthy, McCarthy on Trademarks & Unfair
Competition, Section 7:17.1 (4th ed. 2002) at 7-28.1 {“a top
level domain (‘TLD’) indicator (such as ‘.com’) has no
source indicating significance and cannot serve any
trademark (or service mark) purpose [and] the same is true
of other non-distinctive modifiers used in domain names,
such as ‘http://www’ and ‘html’; [thus, because] the TLD
‘.com’ functions in the world of cyberspace much like the
generic indicators ‘Inc.,’ ‘Co.,’ or ‘LTD.’ placed after the
name of a company, [a] top level domain indicator like
‘.com’ does not turn an otherwise unregistrable designation
into a distinctive, registrable trademark (or service
mark)”}.
We find that the individual words making up the term
ART.COM have the same meaning that common usage would
ascribe to them as a compound and, thus, ART.COM, used in
connection with the identified services is incapable of
registration on the Supplemental Register. See In re Gould
Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987).
This conclusion is consistent with applicant’s admissions;
and applicant’s arguments to the contrary are unpersuasive.
Serial No. 75/879,693
8
Decision: The refusal under Section 23 of the Act on
the ground that the subject matter of this application is
generic is affirmed.