Christopher Desmond and Nancy Desmond

Trademark Trial and Appeal Board

Jul 16, 2015

No. 86097894 (T.T.A.B. Jul. 16, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 16, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Christopher Desmond and Nancy Desmond
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Serial No. 86097894
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Mary Catherine Merz and Jennifer A. Widmer of Merz & Associates, P.C.,
for Christopher Desmond and Nancy Desmond.
Kim Teresa Moninghoff, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
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Before Bucher, Zervas and Wolfson,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Christopher Desmond and Nancy Desmond (“Applicants”) seek registration on
the Principal Register of the mark DOT-TAG (in standard characters) for
Online computer services, namely, providing an
interactive web-based application featuring technology
that allows users to store electronic content associated
with user-defined tags, and access it and other related
content via a computer readable encoded tag
Serial No. 86097894
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in International Class 42.1
The Trademark Examining Attorney has refused registration of Applicants’
mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), having
determined that the applied-for mark merely describes a feature or characteristic of
Applicants’ services.
After the Examining Attorney made the refusal final, Applicants appealed to
this Board. We affirm the refusal to register.
I. Evidentiary Issue
Before proceeding to the merits of the refusal, we address an evidentiary matter.
Trademark Rule 2.142(d) provides that the record in an application must be
complete prior to the filing of an appeal. Trademark Rule 2.142(d). The Board will
not ordinarily consider untimely evidence (i.e., evidence submitted after appeal
without a granted request to suspend and remand for additional evidence). Here,
Applicants submitted evidence with their appeal brief: Exhibits A-C and a print-out
contained within Applicants’ brief of a screenshot from Applicants’ prototype
website. The Examining Attorney objected to Exhibit A, the introduction of the
listing of records from the USPTO’s Trademark Electronic Search System (“TESS”)
database, and Exhibit C, a summary sheet apparently prepared by Applicants and
listing the purported goods or services in eight trademark applications where the
mark includes the term “dot.” Despite the fact that the Examining Attorney

1 Application Serial No. 86097894 was filed on October 22, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
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discusses some of the marks listed for the first time in Exhibits A and C, we have
not considered either exhibit in view of her explicit statement of objection. If
evidence is submitted for the first time with an applicant’s brief, and the examining
attorney objects to its introduction, it will ordinarily not be considered even if the
examining attorney discusses the evidence in his or her brief. See TMEP § 710.01(c)
(instructing examining attorneys that they “should: (a) object to the new evidence
but not substantively discuss it; (b) object to the new evidence and, while preserving
the objection, discuss why it in any event does not support the offeror’s position; or
(c) consider the new evidence.”). See also Sections 1203.02(e) and 1207.03 of the
Trademark Board Manual of Procedure (“TBMP”) (2015) (providing that untimely
evidence may be considered by the Board, despite its untimeliness, if the non-
offering party (1) does not object to the new evidence, and (2) discusses the new
evidence or otherwise affirmatively treats it as being of record); In re Quantum
Foods Inc., 94 USPQ2d 1375, 1377 n.2 (TTAB 2010) (sustaining examining
attorney’s objection to additional evidence attached to applicant’s brief); In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1244 n.4 (TTAB 2010) (noting that an
applicant may request remand if it wishes to make additional evidence of record).
Cf. In re Kent Pedersen, 109 USPQ 2d 1185 (refusing to consider late-filed evidence
submitted with appeal brief even though examining attorney did not explicitly
object to the evidence, because examining attorney did not discuss it or otherwise
treat it as being of record).2

2 Even if we had considered the listing in Exhibit A or the summary sheet of Exhibit C, we
would not reach a different conclusion. The marks listed in Exhibit A have not been
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The Examining Attorney did not object to Exhibit B, as it was made of record
during prosecution of the application, or to the prototype screen shot. We have thus
considered both.3
II. Applicable Law
Trademark Act § 2(e)(1) prohibits registration of a mark which is merely
descriptive of the applicant’s goods or services. A term is deemed to be merely
descriptive of goods or services, within the meaning of Section 2(e)(1), if it forthwith
conveys an immediate idea of an ingredient, quality, characteristic, feature,
function, purpose or use of the goods or services. In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also, In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In
re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)). 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 ingredient,
quality, characteristic, function, feature, purpose or use of the goods or services.
Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In re Gyulay, 3 USPQ2d at
1010. In other words, the question is not whether someone can guess at what the
goods or services are from viewing the mark, but whether someone who knows what

identified as to their status, goods or services involved, or whether any have been subject to
disclaimers or other qualifiers. The summary of Exhibit C simply purports to show goods or
services of some eight marks without any clarifying information about them. Neither
exhibit is probative on the question of descriptiveness of Applicants’ mark.
3 It was unnecessary to resubmit Exhibit B, as the evidence was already of record. See
TBMP § 1203.02(e).
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the services or products are will understand the mark immediately to convey
information about them. In re MBNA America Bank N.A., 340 F.3d 1328, 67
USPQ2d 1778, 1780 (Fed. Cir. 2003).
Applicants argue that the primary significance of the mark DOT-TAG is to
identify Applicants as the source of their services. The Examining Attorney, on the
other hand, argues that because the term TAG in the mark merely describes a
feature or characteristic of the Applicants’ services and DOT- merely refers to an
online web address lacking any source-identifying function, the mark as a whole
merely describes Applicants’ services.
There is no dispute that TAG is descriptive of Applicants’ online computer
services. Tagging is a means of categorizing content of websites using simple
keywords. The definition of a web-based “tag” is “a non-hierarchical keyword or
term assigned to a piece of information (such as an internet bookmark, digital
image, or computer file) [which] helps describe an item and allows it to be found
again by browsing or searching.”4 Tags are generally chosen “informally and
personally by the item’s creator or by its viewer, depending on the system.”5
Applicants’ interactive web-based application allows users to describe items and
access them at a future date. In other words, Applicants provide tagging services
where the users define the tags, store content associated with the tags

4 At http://en.wikipedia.org/wiki/Tag_(metadata). Attached to first Office Action.
5 Id.
Serial No. 86097894
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electronically, and utilize the tags to access the content. The word “tag” is merely
descriptive of this feature of Applicants’ services.6
As for the term DOT, it represents the standard pronunciation of the
punctuation mark (a period) that separates different address levels in an Internet
address,7 and, as used in the mark, would be perceived as merely indicating the
online nature of Applicants’ services. That is, “the term DOT in Applicant[s’]
applied-for mark advises prospective purchasers that Applicant[s’] web-based
application may be requested and provided via the Internet.” In re Driven
Innovations, Inc., ___ USPQ2d ___, slip op. at 15 (TTAB June 30, 2015) (DOTBLOG
held merely descriptive of services of providing information via the Internet). In this
regard, the term has no trademark significance.8 The “DOT-” designation may also
be perceived as substituting for a period in an Internet address used to form a top

6 We note that in their appeal brief, Applicants have requested entry of a voluntary
disclaimer of the term “tag.” Because Section 6 of the Trademark Act permits an applicant
to disclaim matter voluntarily, regardless of whether the matter is registrable or
unregistrable, such disclaimer is not tantamount to a concession that the disclaimed
portion is merely descriptive. See In re MCI Communications Corp., 21 USPQ2d 1534
(Comm’r. Pats. 1991). Nonetheless, the disclaimer may be viewed as an acknowledgement
that Applicants intend not to assert exclusive rights in the disclaimed component of the
mark standing alone. Id. (“The purpose of a disclaimer is to show that the applicant is not
making claim to the exclusive appropriation of such matter except in the precise relation
and association in which it appears in the drawing and description.”) (citing In re Franklin
Press,, Inc., 201 USPQ 662 (CCPA 1979).
7 See Microsoft Press, INTERNET & NETWORKING DICTIONARY (2003) (“In an Internet
address, the character that separates the different parts of the domain name, such as the
entity name from the domain”). Attached to first Office Action dated November 6, 2013.
8 We are unpersuaded by Applicants’ argument that the term “dot” would be perceived as
referring to the “dot-like” pictorial shapes that are intended for use on Applicants’ website
to signify the numerical value of the user-defined tags therein, or otherwise have meaning
as a double entendre.
Serial No. 86097894
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level domain (“TLD”) extension,9 and in this regard, the Examining Attorney argues
that due to the inclusion of the term “DOT-” in the mark, consumers will perceive
Applicants’ mark as the equivalent of a generic TLD (“gTLD”).10 Applicants argue
that the dash in the mark prevents it from being recognized as a generic top-level
domain name. However, the record evidence includes several news articles that use
the word “dot” followed by a dash (or hyphen) as a substitute for the leading period
when describing a domain name or identifying a gTLD.11 The evidence shows that
consumers are familiar with the convention of using the word “dot” followed by a
dash or hyphen in text instead of a period to describe top level domain names.
Hence, the presence of the dash exacerbates rather than diminishes the likely
perception of what follows as a gTLD.

9 A “top-level domain” in the domain-name system of Internet addresses is “any of the
broadest category of names, under which all domain names fit.” Microsoft Press, INTERNET
& NETWORKING DICTIONARY (2003). It is “one of the domains at the highest level in the
hierarchical Domain Name System of the Internet. The top-level domain names are
installed in the root zone of the name space. For all domains in lower levels, it is the last
part of the domain name, that is, the last label of a fully qualified domain name.” At
http://en.wikipedia.org/wiki/Top-level_domain. Attached to first Office Action.
10 A generic TLD is a type of TLD with three or more characters that can be either
sponsored by a private agency or unsponsored and operating directly under policies
established by ICANN for the global Internet community. See at
http://en.wikipedia.org/wiki/Top-level_domain. Attached to first Office Action. Examples
include dot-gov, dot-edu, dot-com.
11 For example, the record contains an article from USA Today, Ready or Not, Here Come
Hundreds of Dot-Whatevers (February 2, 2012) (“Internet users are familiar with the
handful of helpful names -- the dot-coms, the dot-orgs and dot-govs -- that proclaim a
website’s general category”); see also Jeff Gelles, Domain-Name Expansion Likely to Create
Turf Wars, THE PHILADELPHIA INQUIRER (June 30, 2011) (“Stand aside, dot-com, king
of the Web’s early years. … You can expect to see dot-Ford, dot-Google, and dot-Microsoft.”).
Attached to first Office Action.
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In this context, Applicants have submitted a listing from the CNN Money
website of “all 1,930 new TLDs proposed,”12 together with listings from ICANN’s
website13 and a search of ICANN’s website,14 to support their position that
consumers will not perceive their mark as a generic TLD. The listings and search
report do not include the word “tag” or “tags” in any of the newly proposed gTLDs.
However, given that applicants for top-level domains are entitled to pick their own
names, the potential for proposed TLDs is almost limitless;15 there are currently
1,930 applications for various names; and ICANN may allow up to 1,000 new
suffixes per year.16 It is reasonable to conclude that consumers could expect

12 At http://money.cnn.com/infographic/technology/new-gtld-list/. Applicants’ response to the
first Office Action, Exhibit A.
13 At https://gtldresult.icann.org/application-result/applicationstatus/viewstatus. Applicants’
response to the first Office Action, Exhibit B.
14 Applicants’ response to the first Office Action, Exhibit C.
15 See, e.g., Jeff Gelles, With new web addresses, Internet continues to grow, THE
PHILADELPHIA INQUIRER (July 7, 2011) (“Last month’s big Internet news was that by
2013, the exclusive club of top-level domains, such as dot-com and dot-org would be open to
just about any new member that can afford the dues. Dot-music, dot-sports, dot-anything-
you-can-imagine….”); Rachel Roubein, Cities could cash in on new domain extensions; but
companies might think twice about expense of securing their .name, USA TODAY (July 13,
2011) (“The gates are opening, but it’s unclear if a flood of applicants will rush to register
the name of their corporate or municipal website for a potentially longer ‘dot-anything’
suffix…”); Unattributed, Expanding Internet Domains, THE NEW YORK TIMES (December
26, 2011) (“Come January, the Internet Corporation for Assigned Names and Numbers
plans to allow businesses, nonprofits and others to apply for their own ‘top-level domain’
with their own online suffix, like the familiar .com and.org suffixes that now rule the
Internet.”). Attached to first Office Action.
16 See Eric Engleman, “A ‘revolving door’ at nonprofit keeper of domain names” THE
WASHINGTON POST (August 21, 2011) (“Under ICANN’s plan, the group will accept
applications for new domains from Jan. 12 to April 12. Applications will cost $185,000 per
domain name, and ICANN will allow up to 1,000 new suffixes per year, spokesman Brad
White said.”). We note that we have not considered this statement for the truth of the
matter asserted, but only as showing that the public has been exposed to the idea that a
proliferation of new domain names may be available, thus making it likely that “dot-tag”
could be among them).
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combinations of the prefix “dot” and any descriptive Internet-related term such as
the term “tag” in Applicants’ mark, to form a gTLD. Accordingly, when used in
association with Applicants’ services, even for those who see the term DOT-TAG as
a top level domain name extension, the mark would still be considered merely
descriptive of an application designed to enable a user to define and store computer
tags online. Cf. In re theDot Commc’ns Network LLC, 101 USPQ2d 1062, 1067
(TTAB 2011) (finding the term “.music” to engender the commercial impression of a
top-level domain name and to be merely descriptive of Internet services having
applications related to music).
Considering Applicants’ applied-for mark in its entirety, we find that each
component has retained its character as merely descriptive or without trademark
significance in relation to the services, and that the composite term does not present
a new meaning that is not itself merely descriptive. See, e.g., In re Driven
Innovations, slip op. at 16; In re Oppedahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370 (Fed. Cir. 2004) (PATENTS.COM held merely descriptive of
computer database management software); In re Tower Tech, Inc., 64 USPQ2d
1314, 1316-17 (TTAB 2002) (SMARTTOWER merely descriptive of commercial and
industrial cooling towers); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB
2001) (AGENTBEANS merely descriptive of computer programs for use in
developing and deploying application programs). Although Applicants combine the
words “dot” and “tag” into a single hyphenated term, the words do not lose their
descriptive characteristics when combined. Consumers will immediately understand
Serial No. 86097894
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the term DOT-TAG, when used in association with Applicants’ Internet-related
services, as describing their interactive web-based application that enables users to
define tags and store and access electronic content via the Internet by means of
tagging.
Conclusion
We have carefully considered the entire record, including all arguments and the
evidence submitted. We find that the mark is merely descriptive. When considered
as the coupling of a term (“dot-”) that indicates Applicant provides an Internet-
based service with a term (“tag”) that describes keywords (i.e., tags) used to
bookmark, store and access items on the Internet, DOT-TAG is merely descriptive
of Applicants’ services of “Online computer services, namely, providing an
interactive web-based application featuring technology that allows users to store
electronic content associated with user-defined tags, and access it and other related
content via a computer readable encoded tag.”
Decision: The refusal to register Applicants’ mark DOT-TAG under Trademark
Act § 2(e)(1) is affirmed.