AxReg

Trademark Trial and Appeal Board

Apr 3, 2002

No. 75828354 (T.T.A.B. Apr. 3, 2002)

4/3/02

Paper No. 11
DEB

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re AxReg
________

Serial No. 75/828,354
_______

David M. Silverman of Cole Raywid & Braverman, L.L.P., for
AxReg.

Brian A. Rupp, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Chapman, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
On October 21, 1999, AxReg (a Texas general
partnership) filed an application to register on the
Principal Register AXREG.COM for services, as amended,
recited as “guitar registration services via a global
computer network, namely, assignment of guitar
identification numbers to deter theft,” in International
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Serial No. 75/828,354
- 2 -
Class 42.1 The Trademark Examining Attorney has finally
refused registration under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. §1052(e)(1), on the basis that the
designation AXREG.COM, when used in connection with the
recited services of applicant, is merely descriptive of
them.
Applicant has appealed. Both applicant and the
Trademark Examining Attorney have fully briefed this case,
but applicant did not request an oral hearing before the
Board.
We affirm the refusal to register.
It is the position of the Trademark Examining Attorney
that the term AXREG.COM is merely descriptive of
applicant’s services, specifically, guitar registration
services over the Internet designed to deter theft. As
evidence in support of this position, the Trademark
Examining Attorney submitted: (1) printouts from various
Internet Web sites, including applicant’s own Web site,
which show the use of “ax” and/or “axe” as a slang term for
certain musical instruments, but especially for electric
guitars; (2) dictionary entries showing that “Reg.” is an

1 Application Serial No. 75/828,354, filed on October 21,
1999, is based upon applicant’s claim of use in interstate
commerce since at least as early as August 24, 1999.

Serial No. 75/828,354
- 3 -
abbreviation for “register” or “registry”; and (3) that the
term “.com” is a top-level Internet domain (TLD) name
traditionally reserved for commercial enterprises.
Inasmuch as the entire record shows the focus of
applicant’s identified service to be an Internet registry
for guitars, the Trademark Examining Attorney argues that
for the relevant members of the public, this designation
immediately conveys the nature and purpose of applicant’s
services.
Applicant, on the other hand, maintains that the
entire designation herein is greater than the sum of its
parts; that the average consumer would not recognize the
term AXREG.COM as a service for registering guitars online;
and that the Trademark Examining Attorney has impermissibly
dissected this coined term:
The Examining Attorney’s brief is a tortured
attempt to reach a conclusion of
descriptiveness from dissecting applicant’s
mark into bits consisting of a slang term
(AX), an abbreviation (REG) and a generic
term (.COM), respectively … .

(applicant’s reply brief, p. 2).

A term is merely descriptive if, as used on or in
connection with applicant’s goods or services, it
immediately conveys information about a significant
ingredient, quality, characteristic or feature of
Serial No. 75/828,354
- 4 -
applicant’s goods or services, or if it directly conveys
information regarding the nature, function, purpose or use
of applicant’s goods or services. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ2d 215 (CCPA
1978); and In re Eden Foods Inc., 24 USPQ2d 1757 (TTAB
1992). Of course, the issue of mere descriptiveness must
not be determined in a vacuum, but rather is analyzed as
the term is used, or as it is intended to be used, on or in
connection with applicant’s goods or services. In re Abcor
Development Corp., supra.
Applicant may be correct that the term “ax” or “axe”
is best known to refer to a cutting tool. Of course, any
term alleged to be merely descriptive may have multiple
meanings. While the term “ax” (or “axe”) has a readily
understood connotation in the context of an outdoor tool,
on this record, it is also quite clear, that the
designation is used as a slang term for a guitar:
Playing regular electric and acoustical
guitars as well as exotic “axes” including a
42-string guitar and 15-string harp guitar…
“Metheny tests new trio,” Chicago Sun Times,
March 19, 2000.

PRS Guitars doesn’t crank out axes with the
regularity of a Fender or Gibson, the
acknowledged powerhouses in the field…
“Santana, other rock greats, look to
Maryland man for quality guitars,” The
Washington Times, March 16, 2000.

Serial No. 75/828,354
- 5 -
Her tall, slender frame and large wingspan
almost give [Hynde] a Tom Petty quality when
she is wielding her guitar. When she drops
the ax and dances like a go-go girl,
however, you could easily see her as a boot-
stompin’ Nancy Sinatra… “Hynde leads the
Pretenders in delivering ageless rock,” The
Houston Chronicle, February 7, 2000.

Hence, we conclude that the relevant members of the public,
purchasers and potential purchasers of applicant’s services
such as music professionals, music critics, guitar
technicians, and guitar players, would recognize and
attribute this particular meaning to the term, when used in
connection with applicant’s services. Under the
controlling law on descriptiveness, that is enough:
Appellant advances a variation of this
argument, arguing that the board failed to
determine descriptiveness of “first tier” by
its meaning to “average” or “ordinary”
customers, citing In re Colonial Stores,
Inc., 394 F.2d 549, 551, 157 USPQ 382, 385
(CCPA 1968) [descriptiveness determined from
standpoint of “potential purchaser”]. See
also In re Abcor Development Corp., 588 F.2d
811, 814, 200 USPQ 215, 218 (CCPA 1978)
[“descriptiveness … is to be determined from
the standpoint of the average prospective
purchaser”]. Appellant asserts that the
“vast majority” of its customers would not
be knowledgeable of the meaning of “first
tier” in the banking industry.
Appellant misunderstands the import of
the above decision. In context, “average”
or “ordinary” consumers simply refers to the
class or classes of actual or prospective
customers of the applicant’s particular
goods or services. In this sense, corporate
users of banking services who, appellant
admits, understand the industry meaning of a
Serial No. 75/828,354
- 6 -
“first tier” bank are “average” or
“ordinary” customers. That corporate
customers may constitute a smaller number of
accounts than individuals is irrelevant.
Descriptiveness is not determined by its
meaning only to the class of regular
customers with the largest head count.

In re Omaha National Corp., 819 F.2d 1117, 2 USQP2d 1859
(Fed. Cir. 1987).
Similarly, while the designation “Reg.” may have
multiple meanings when viewed in a vacuum, it is in the
context of the recited services that we must make our
decision on mere descriptiveness:
“reg. abbreviation … (6) Registry … ,” The
American Heritage Dictionary of the English
Language, Third Edition, electronic version-
1992.

“REG Register,” Acronym Finder, OneLook
Dictionaries.

In the instant context, the designation “Reg.” will
immediately be understood as an abbreviation for “register”
or “registry.”
When these two descriptive terms are combined into
“AxReg” and used within the context of “AxReg.com” as seen
in the specimens, or AXREG.COM as presented in the typed
drawing, the separate meanings of the individual components
are not lost. Nor does the combination create any double
entendre or incongruity that might render the combination
registrable as a mark. Accordingly, we find these two
Serial No. 75/828,354
- 7 -
portions of the mark as combined into “AxReg.” to be merely
descriptive of these services.
Clearly, the United States Patent and Trademark Office
has consistently held that a TLD, like “.com” has no
trademark or service mark significance. See United States
Patent and Trademark Office, Examination Guide 2-99, Marks
Composed in Whole or in Part, of Domain Names (September
29, 1999). This position is being widely adopted by
Federal Courts around the country. See Image Online
Design, Inc. v. Core Ass’n, 120 F.Supp.2d 870, 877 (C.D.
Cal. 2000); and 555-1212.COM, Inc. v. Communication House
International, Inc., 157 F.Supp.2d 1084, 49 USPQ2d 1453
(N.D. Cal. 2001). The element “.COM,” the top-level domain
name, merely indicates that applicant is a commercial
entity, and it serves as a critical address element used to
access online computer information.
Accordingly, we agree with the Trademark Examining
Attorney that applicant’s designation, taken in its
entirety, merely describes significant purposes, functions
or features of applicant’s online guitar registration
services. There is no question that, by use of applicant’s
services, one may seek to deter the theft of one’s guitar
(or “ax”) through applicant’s registration services
(“Reg.”) via the Internet. The asserted mark, as a whole,
Serial No. 75/828,354
- 8 -
immediately informs prospective purchasers and/or users of
applicant’s services that they may take advantage of the
benefits of applicant’s guitar registration services by
accessing the same via the Internet.
Decision: The refusal to register is affirmed.