Bargain Network, Inc.

Trademark Trial and Appeal Board

Dec 1, 2005

No. 78314735 (T.T.A.B. Dec. 1, 2005)

Mailed:
December 1, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bargain Network, Inc.
________

Serial No. 78314735
_______

Peter F. Weinberg of Gibson, Dunn & Crutcher for Bargain
Network, Inc.

Nelson B. Snyder III, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______

Before Hohein, Grendel and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Bargain Network, Inc. (applicant) has filed an
application to register BARGAIN.COM (in standard character
form) on the Principal Register for “computerized on-line
retail store services in the field of automobiles;
providing information in the field of auctions; providing
information about automobiles for sale by means of the
Internet” in International Class 35, and “computerized on-
line real estate listing; providing information in the
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78314735
2
field of real estate home purchasing” in International
Class 36.1
The examining attorney has refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that applicant’s mark is merely
descriptive of its services. In addition, the examining
attorney has refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, BARGAIN.COM, when used on its recited
services of computerized on-line retail store services in
the field of automobiles and providing information about
automobiles for sale by means of the Internet, in
International Class 35, so resembles the registered mark
BARGAIN for “leasing and renting of automobiles and other
vehicles” in International Class 39,2 as to be likely to
cause confusion, mistake or deception.
When the refusals were made final, applicant appealed.
Briefs have been filed, but applicant did not request an
oral hearing. We affirm the refusals to register.

1 Application Serial No. 78314735, filed October 16, 2003,
alleging October, 2001 as the date of first use and first use in
commerce.
2 Registration No. 1659131, issued October 1, 1991, Section 8
affidavit accepted, Section 15 affidavit acknowledged, renewed.
Ser No. 78314735
3
Refusal Based on Mere Descriptiveness Under Section 2(e)(1)
“A mark is merely descriptive if it ‘consist[s] merely
of words descriptive of the qualities, ingredients or
characteristics of’ the goods or services related to the
mark.” In re Oppendahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370, 1371 (Fed. Cir., 2004), quoting, Estate of
P.D. Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543
(1920). See also In re MBNA America Bank N.A., 340 F.3d
1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003). The test for
determining whether a mark is merely descriptive is whether
it immediately conveys information concerning a quality,
characteristic, function, ingredient, attribute or feature
of the product or service in connection with which it is
used, or intended to be used. In re Engineering Systems
Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-Crest, Ltd.,
204 USPQ 591 (TTAB 1979). It is not necessary, in order to
find a mark merely descriptive, that the mark describe each
feature of the goods or services, only that it describe a
single, significant quality, feature, etc. In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re
Venuture Lending Associates, 226 USPQ 285 (TTAB 1985).
Further, it is well-established that the determination of
mere descriptiveness must be made not in the abstract or on
the basis of guesswork, but in relation to the goods or
Ser No. 78314735
4
services for which registration is sought, the context in
which the mark is used, and the impact that it is likely to
make on the average purchaser of such goods or services.
In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978).
The examining attorney argues that applicant’s mark
consists of the “merely descriptive term BARGAIN combined
with the top-level domain (TLD) .COM.” Office action p. 3
(May 18, 2004). Specifically, he argues that the TLD .COM
fails to function as a source indicator, will be perceived
by prospective customers as part of an Internet address,
and merely indicates that the user of the name is a
commercial entity. Office action p. 3 (May 18, 2004). He
concludes that the proposed mark “merely identifies a
characteristic or feature of the identified services,
namely, that they feature goods/real estate and information
about goods/real estate ‘offered or acquired at prices
advantageous to the buyer’ and are available via a
commercial Internet address.” Brief p. 7. The examining
attorney provided the following definition of .COM:
Abbreviation: commercial organization (in
Internet addresses)

The American Heritage Dictionary of the English
Language (4th ed. (2000).
Ser No. 78314735
5

We take judicial notice of the following definition of
the term TLD:3
“(Top –Level-Domain) The highest level domain
category in the Internet domain naming system.
There are two types: the generic top-level
domains, such as .com, .org, and .net and the
country codes, such as .ca, .uk and .jp.”

McGraw Hill Computer Desktop Encyclopedia 977 (9th ed.
2001).
The TLD .COM generally serves no source-indicating
function and in this case, at a minimum, “describes a
significant feature of applicant’s services, namely the
Internet commerce connection.” In re Steelbuilding.com,
415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005).
Turning to the word BARGAIN, the examining attorney
submitted the following dictionary definition:
3. Something offered or acquired at a price
advantageous to the buyer.

The American Heritage Dictionary of the English
Language (4th ed. 2000).
In addition, the examining attorney submitted an
excerpt from applicant’s website wherein applicant states
that a consumer can “Find the best bargains from thousands
of auctions...Save thousands of dollars” and is the “place

3 University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
Ser No. 78314735
6
for great bargains on motors and homes,” and excerpts of
articles from a variety of newspapers retrieved from
www.lexis.com wherein “bargain” is used descriptively in
connection with real estate services. See, e.g.,
“...horror fave about the real-estate bargain...” USA
Today p. 2D (October 26, 2004); “...how great a real estate
bargain.” Des Moines Register p. 1E (October 22, 2004);
“...For those looking for real estate bargains...” The New
York Post, p. NaN (September 11, 2004); and “...and they
think Valley real estate is a bargain...” Fresno Bee p. E1
(August 8, 2004).
Finally, the examining attorney has submitted several
third-party registrations and one of applicant’s prior
registrations where the term “bargain,” is disclaimed,
registered under Section 2(f), or registered on the
Supplemental Register. See, e.g., Registration No. 2798268
(BIG LOTS THE WORLD’S BEST BARGAIN PLACE for retail
department store services; “World’s Best Bargain Place”
disclaimed); No. 2588124 (BARGAIN ALLEY for retail store
services; “Bargain” disclaimed); No. 2838993 (BLUE BARGAINS
for retail outlets and shops in the field of industrial
supplies and equipment; “Bargains” disclaimed); No. 2815445

USPQ 505 (Fed. Cir. 1983) (Board may take judicial notice of
dictionary definitions).
Ser No. 78314735
7
(BARGAIN NETWORK and design, which is applicant’s prior
registration for computer services, namely, providing
search engines for obtaining data on a global computer
network; “Bargain Network” disclaimed); No. 2891048
(BARGAIN BLITZ for retail store services; “Bargain”
disclaimed); No. 2755805 (BARGAIN BUGGIES for automobile
rental; registered under Section 2(f)); No. 2754554
(BARGAINS FOR THE HOME! for retail store services featuring
a variety of goods; Supplemental Register); and No. 2545462
(BARGAIN SHUTTERS for retail sales services featuring
window treatments; Supplemental Register). Conversely, in
support of its position, applicant submitted a listing from
the Trademark Electronic Search System (TESS) of third-
party registrations that include the term “Bargain” in
marks where it has not been disclaimed.4 See, e.g.,
Registration No. 2707304 (BARGAIN CALL for prepaid
telephone calling cards); and No. 1583109 (BARGAIN TOWN for
retail department store services).5

4 We note the examining attorney’s objection, presented for the
first time in his brief, to this listing. However, inasmuch as
applicant presented this listing in its response to an Office
action and the examining attorney not only did not object at that
time but also argued against the registrations contained in the
list on the merits, the objection is considered to have been
waived and this listing has been considered.
5 The majority of applicant’s examples of third-party
registrations have the word “bargain” combined as one word with
another term or as part of a unitary slogan or phrase where a
disclaimer requirement is not applicable. See, e.g.,
Ser No. 78314735
8
The third-party registrations do not conclusively
establish that the term “bargain” is descriptive for the
recited services.6 However, when we consider the dictionary
definition of the word “bargain,” the example of
applicant’s own descriptive use of that word, and use of
“bargain” in the newspaper articles, we find that the word
BARGAIN is descriptive of a significant feature or
characteristic of the services, namely, that applicant
offers goods at advantageous or bargain prices. BARGAIN,
as applied to the identified services, is analogous to
laudatory terms used to tout the quality of the product.
In re Boston Beer Co. L.P., 47 USPQ2d 1914 (TTAB 1998),
aff’d 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (“THE
BEST BEER IN AMERICA” immediately conveys to prospective
purchasers that applicant claims its beer is superior to
other beers in this country). See also In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) (THE
ULTIMATE BIKE RACK found to be merely descriptive and
therefore subject to disclaimer). Thus, applicant’s

Registration No. 2638707 (SECRETBARGAINS for newsletters in the
field of discount travel).
6 In general, third-party registrations are not particularly
probative inasmuch as prior decisions of other examining
attorneys are not binding upon the Office and the Board must
decide each case on its own facts and record. In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re
International Taste Inc., 53 USPQ2d 1604 (TTAB 2000); In re
Consolidated Foods Corp., 200 USPQ 477 (TTAB 1978).
Ser No. 78314735
9
argument that the word BARGAIN is suggestive because it
“simply denotes a generally positive quality” (brief p. 10)
is unpersuasive.
Here, the combination of the specific term BARGAIN and
the TLD .COM, does not create any double entendre,
incongruity, or any other basis upon which we can find the
composite any more registrable than its separate elements.
In re Microsoft Corp., 68 USPQ2d 1195 (TTAB 2003); see also
In re Martin Container Inc., 65 USPQ2d 1058 (TTAB 2002).
In this case, we are persuaded that BARGAIN.COM when
used in connection with the recited services in both
International Classes would immediately inform the
potential users of a significant aspect of those services,
i.e., that they will find, in applicant’s words, “great
bargains on motors and homes.” Excerpt from applicant’s
website, Exhibit to Office action (May 18, 2004). Nothing
requires the exercise of imagination, cogitation, mental
processing or gathering of further information in order for
prospective users of applicant’s services to perceive
readily the merely descriptive significance of the term
BARGAIN.COM as it pertains to applicant’s services.
Refusal Based on Likelihood of Confusion Under Section 2(d)
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
Ser No. 78314735
10
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
In traversing the refusal, applicant “concedes the
subject mark and the mark in the cited registration are
very similar.” Brief p. 2. Moreover, the record supports
such a finding. Applicant’s mark incorporates the entirety
of registrant’s mark and is distinguished only by the
addition of the TLD .COM. Thus, the marks are similar in
appearance and sound. In addition, the connotation of the
marks is the same inasmuch as the common element BARGAIN
has the same meaning when used in connection with the
recited services i.e., “something offered or acquired at a
price advantageous to the buyer.” The addition of .COM
merely informs the consumer that the services are available
on the Internet. The addition of .COM alone, under these
Ser No. 78314735
11
circumstances, does not create a sufficiently different
commercial impression to distinguish applicant’s mark from
the cited mark due to the similarity in appearance, sound
and connotation. Thus, the factor of the similarity of the
marks favors a finding of likelihood of confusion.
Applicant focuses its argument on the respective
services and the scope of protection to be accorded to the
mark in the cited registration. With regard to the
services, applicant argues that the services here do not
overlap because there is “no evidence that the owner of the
cited registration provides any service other than those
presented in the registration” and “applicant’s services
are not for the renting of automobiles, and the
registrant’s services are not for anything other than
renting (and leasing) automobiles.”7 Brief p. 9. Applicant
concludes that the examining attorney incorrectly reasoned
that “because some sources both sell and rent cars, all do”
and that the examining attorney “should not expand the
registration to include services that go far beyond what it
actually recites.”

7 We note applicant’s argument that the refusal does not apply to
the services recited as “providing information in the field of
auctions” in International Class 35. Applicant is advised that a
finding of likelihood of confusion as to any of the services
recited in an International Class prevents registration for the
entire Class.
Ser No. 78314735
12
The problem with applicant’s logic is that the
question is not whether registrant and applicant actually
provide the same services, but rather whether the services
are related or of such a nature that, if identified by
similar marks, consumers would mistakenly believe the
services emanate from the same source. It is well settled
that goods or services need not be similar or competitive
in nature to support a finding of likelihood of confusion.
The question is not whether purchasers can differentiate
the goods or services themselves, but rather whether
purchasers are likely to confuse the source of the goods or
services. See Helene Curtis Industries Inc. v. Suave Shoe
Corp., 13 USPQ2d 1618 (TTAB 1989). Further, we must
consider the cited registrant’s goods or services as they
are described in the registration and we cannot read
limitations into those goods. See Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002); and Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1987).
The examining attorney has presented evidence of
third-party use-based registrations showing that entities
have registered a single mark for both leasing and rental,
and sales. See, for example, Registration Nos. 2900159
Ser No. 78314735
13
(leasing of pre-owned automobiles and automobile
dealerships and wholesale distributorships featuring pre-
owned automobiles); No. 2783890 (automobile dealerships in
the field of new and used vehicles, and leasing of new and
used vehicles); and No. 2766528 (new and used automobile
dealership services; automotive repair, maintenance and
cleaning services; automobile leasing and rentals). Third-
party registrations which individually cover a number of
different items, and which are based on use in commerce,
serve to suggest that the listed services or goods are of a
type which may emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). In
addition, the examining attorney submitted excerpts from
third-party websites showing the provision of both
automobile leasing, sales and information from one source.
See, e.g., “...we are a family of businesses which includes
sales and leasing...” www.KRPerformance-Chevy.com; and ”So
whether you’re renting a car or thinking about buying one,
here you will find everything you need to know”
www.Hertz.com. Applicant argues that the examining
attorney’s presentation of a few registrations is
inadequate evidence because it does not “show that some
significant percentage of registrations for either car
sales services or car renting services are for both sales
Ser No. 78314735
14
and renting.” Reply Brief p. 2. However, applicant did
not cite any cases for this proposition, nor do we find
this to be a requirement. We find the Internet and third-
party registrations submitted by the examining attorney to
be sufficient to establish that applicant’s services are
related to and overlap with registrant’s services.
If the cited registration describes goods or services
broadly, and there is no limitation as to the nature, type,
channels of trade or class of purchasers, it is presumed
that the registration encompasses all goods or services of
the type described, that they move in all channels of trade
normal for these goods or services, and that they are
available to all classes of purchasers for the described
goods or services. See In re Linkvest S.A., 24 USPQ2d 1716
(TTAB 1992). With regard to “leasing and renting of
automobiles and other vehicles” as identified in
Registration No. 1659131, because the recitation of
services in the registration is not limited to any specific
channels of trade, we presume an overlap in trade channels
and that the services would be offered to all normal
classes of purchasers.
In view of the above, the du Pont factors of the
similarity of the services and the channels of trade favor
Ser No. 78314735
15
a finding of likelihood of confusion as to the cited
registration.
Finally, applicant argues that the subject mark and
cited mark are weak terms because “bargain is widely used
as a formative part of trademarks that are used to identify
many different goods and services... [and] members of the
public have been conditioned to understand that BARGAIN
does not uniquely point to a single source.” Brief p. 8.
In support of this argument, applicant references the same
TESS listing of registrations discussed supra. Inasmuch as
only one of the listed third-party registrations includes
automobile sales, the list itself is of little probative
value. That being said, weak marks are entitled to
protection against registration by a subsequent applicant
of the same or similar mark for the same or closely related
goods or services. King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA
1974); and Hollister Incorporated v. IdentAPet, Inc., 193
USPQ 439 (TTAB 1976). Due to the near identical nature of
the marks and closely related services, the record in this
case supports a finding of likelihood of confusion.
In conclusion, we find that because the marks are
similar, the goods are the same and/or closely related, and
the channels of trade are the same or overlapping,
Ser No. 78314735
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confusion is likely between applicant’s mark and the cited
registration.
Decision: The refusals to register under Section
2(e)(1) of the Trademark Act as to the recited
services in International Classes 35 and 36 and under
Section 2(d) of the Trademark Act as to the recited
services in International Class 35 are affirmed.