Cedro Group, Inc.

Trademark Trial and Appeal Board

Dec 22, 1999

No. 74707129 (T.T.A.B. Dec. 22, 1999)

Paper No. 17
RLS/kk
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 22, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Cedro Group, Inc.
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Serial No. 74/707,129
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Mark B. Harrison of Spencer & Frank for Cedro Group, Inc.
Farah Bhatti, Trademark Examining Attorney, Law Office 115
(Tomas Vlcek, Managing Attorney)
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Before Simms, Seeherman and McLeod, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:
Cedro Group, Inc. (applicant), a California
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark SPORTSITE
for “providing multiple user access to a global computer
information network for the transfer and dissemination of
information in the fields of sporting goods, sporting
equipment and consumers[′] purchasing habits and on-line
computer use habits, all relating to sporting goods and
Ser. No. 74707129
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sporting equipment; retail store services, available
through computer communications, featuring sporting goods
and sporting equipment.”1 While applicant originally sought
registration on the Principal Register, after receiving
repeated refusals under Section 2(e)(1) of the Act, 15 USC
§1052(e)(1), applicant amended this application to seek
registration on the Supplemental Register. At that time,
the Examining Attorney refused registration on the ground
that the asserted mark was generic for applicant’s services
and was therefore incapable of distinguishing applicant’s
services from those of others. Applicant has appealed from
this refusal and applicant and the Examining Attorney have
submitted briefs. No oral argument was requested.
We reverse.
It is the Examining Attorney’s position that “sport
site” or “sports site” is a widely used term to describe
Internet Web pages that provide information concerning
various sports, athletes, sports equipment, etc. According
to the Examining Attorney, because applicant’s services
feature information concerning sports equipment and because
applicant’s services are provided via the Internet, the
asserted mark is generic. In this regard, the Examining

1 Application Serial No. 74/707,129, filed July 28, 1995, based
upon allegations of use since June 1, 1995.
Ser. No. 74707129
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Attorney argues that consumers would view sporting goods
and equipment as a part of the umbrella term “sports.” The
Examining Attorney states, Final Refusal, 2:
The examining attorney also refers to the attached
excerpted results from the examining attorney’s search
on the internet for “sports sites” that feature
information about and the ability to purchase sports
equipment. A site located at
http://www.coollinks.com/sports.htm labeled as “The
100 Best Sports Sites on the Net” (emphasis added)
lists various sports related web sites. A random
visit to eight of them (including all of the most
popular major professional sports -- baseball,
football, basketball, golf and tennis) shows that each
of these “sports sites” also offers information about
and/or the ability to purchase sporting goods. The
examining attorney has attached print-outs from each
of these eight sites detailing their services
regarding sporting goods… Clearly, consumers exposed
to the term “sport site” will know without any doubts
that the term describes any web sites where sports
equipment can be studied and/or purchased since the
term is so widely used for this specific purpose.
The Examining Attorney argues that applicant has
merely combined two descriptive words to form a proposed
mark wherein the combination is the common name for the
services provided -- a Web site that provides information
on sports-related equipment. As additional support for her
position that the record supports the genericness refusal,
the Examining Attorney refers to nine stories from the
Lexis/Nexis computer database in which the term “sports
site” or “sport site” was used in connection with sporting
Ser. No. 74707129
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goods or sports equipment. She cites the following
references in her brief:
“Hubsites” catalogs the general sports sites that
encompass everything from the latest news to trivia to
memorabilia.
If I am looking at a sports site, I’ll see ads on
sports equipment.
The Word [sic] Wide Web, a standardized system of
viewing information on the Internet, also offers
hundreds of recreation sports sites.
Surfing sport sites on the World Wide Web.
(Emphasis added.) The Examining Attorney contends that
consumers seeing applicant’s asserted mark will know that
they will encounter sports-related information on the site,
including information on sporting goods and equipment.
Applicant, on the other hand, while conceding that the
term “sports sites” may be generic for Web sites dealing
with sports, sporting news, sports scores, etc., maintains
that its mark is, at most, only merely descriptive of its
services, but is not generic. Accordingly, consumers will
only know from the mark that applicant’s site is sports-
related. Applicant points out that its Web site does not
deal with sports per se but rather with sporting goods and
outdoor apparel, the manufacturers of these products and
consumers of them. Applicant contends, therefore, that its
Ser. No. 74707129
5
Web site (and its services) are not of a type for which the
terminology SPORTSITE would be generic.
All of the references [of record] have a common
theme, they deal with sports. While some may include
the sale of retail products, the primary purpose of
the noted web sites and hence, the class of services,
is the dissemination of sports information and
information about games and contests over a global
computer network.
The primary purpose of the applicant’s web site
is not the dissemination of sports information or
information about games and contests. Rather, the
applicant’s web site features information about
sporting goods and outdoor apparel, the manufacturers
of sporting goods and outdoor apparel, the consumers
for sporting goods and outdoor apparel, the ability to
purchase such goods…
…The fact that a so-called sport site may – as an
ancillary service — offer retail products for sale, is
not sufficient to support a finding that applicant’s
mark is generic for the applicant’s services. The
mere fact that a term may be generic when used to
identify a web site featuring information about “games
and contests” does not clearly place Applicant’s mark,
used for different services, in the category of a
generic term…
Applicant’s brief, 5-6.
We agree with applicant’s reasoning.
According to the U.S. Court of Appeals for the Federal
Circuit, the test for determining whether a mark is generic
involves determining the class of goods or services at
issue and whether the relevant public understands the
designation sought to be registered to refer primarily to
that class of goods or services. H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., 782 F.2d
Ser. No. 74707129
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987, 228 USPQ 528, 530 (Fed. Cir. 1986). We agree with
applicant that the record herein, while perhaps adequate to
support the conclusion that the asserted mark may be
generic for a Web site relating to sports in general,
sports news and scores, for example, is not sufficient to
support the conclusion that this term is commonly used and
understood as one to designate a Web site which features
sports equipment and sporting goods as well as information
about consumer purchasing habits concerning these goods.
The fact that some sports sites feature advertisements for
sporting equipment and apparel and the fact that
merchandise may incidentally be available for purchase on
some of these sites are not sufficient, in our view, to
support a refusal that the asserted mark is commonly
understood to refer to sites that provide information
concerning sporting goods and equipment.
Decision: The refusal of registration is reversed.
R. L. Simms
E. J. Seeherman
L. K. McLeod
Administrative Trademark Judges,
Trademark Trial and Appeal