DNI Holdings Ltd.

Trademark Trial and Appeal Board

Dec 6, 2005

No. 76331011 (T.T.A.B. Dec. 6, 2005)

Hearing: Mailed:
June 14, 2005 December 6, 2005
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re DNI Holdings Ltd.
(by assignment from Nortech Investments Ltd.)1
________

Serial No. 76331011
_______

Steven A. Gibson of Santoro Driggs Walch Kearney Johnson &
Thompson for DNI Holdings Ltd.

Michael P. Keating, Trademark Examining Attorney, Law
Office 113 (Odette Bonnet, Managing Attorney).
_______

Before Quinn, Hairston and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
DNI Holdings Ltd. seeks registration on the Principal
Register, or in the alternative, on the Supplemental
Register, of the mark SPORTSBETTING.COM (standard
character drawing) for services recited in the application as
follows:

1 This application was assigned from Nortech Investments
Ltd., the original applicant at the time of filing, to DNI
Holdings Ltd., a corporation of Antigua and Barbuda, as of August
2005. This assignment was recorded with the Assignment Division
of the United States Patent and Trademark Office at Reel 3147,
Frame 0465.
THIS OPINION IS CITABLE
AS PRECEDENT OF THE
TTAB
Serial No. 76331011
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“Provision of casino games on and through a
global computer network wherein there are no
actual monetary wagers; provision of
contests and sweepstakes on and through a
global computer network; providing a web
site on and through a global computer
network featuring information in the fields
of gaming, athletic competition and
entertainment” in International Class 41.2
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation based upon the ground that the
proposed mark is generic for the identified services. In
the alternative, the Trademark Examining Attorney contends
that in the event this term should be found not to be
generic for the identified services, it is merely
descriptive, and hence unregistrable on the Principal
Register.
Applicant and the Trademark Examining Attorney have
fully briefed this appeal, and at applicant’s request, a
hearing was held before this panel of the Board on June 14,
2005.
We affirm both alternative refusals to register, i.e.,
as to the Principal and Supplemental Registers.

2 Application Serial No. 76331011 was filed on October 25,
2001 based upon applicant’s allegation of first use anywhere and
first use in commerce at least as early as November 2, 1999.
Serial No. 76331011
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The Trademark Examining Attorney takes the position
that inasmuch as a term such as “sportsbetting” is a
compound word (i.e., two words combined without a space
between the words), and because the evidence of record
demonstrates that each of the constituent words is generic,
and because the separate words joined to form a compound
term have a meaning identical to the meaning common usage
would ascribe to those words as a compound, he has
established that the term “sportsbetting” is incapable of
functioning as a mark. In re Gould Paper Corp., 834 F.2d
1017, 5 USPQ2d 1110 (Fed Cir. 1987) [SCREENWIPE generic for
cleaning wipes for television and computer screens]. The
Trademark Examining Attorney has placed into the record
multiple examples of where these two words are actually
joined together into a single compound term and used
generically by applicant and by its competitors, for both
sports wagering and for providing information regarding
sports and betting. The Trademark Examining Attorney
argues that the “.com” portion of applicant’s applied-for
matter does not create source-identifying significance when
appended to this generic term. The Trademark Examining
Attorney also points out that applicant, in Reg. No.
2434774, disclaimed the terms “sportsbetting” and “com”
Serial No. 76331011
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apart from the special form mark as shown.3 Finally, even
if the applied-for term is found to be not generic, the
Trademark Examining Attorney argues that it is merely
descriptive and, thus, is barred from registration on the
Principal Register.
By contrast, applicant argues that even if it is true
that applicant is providing services through its website
wherein consumers are actually able to wager money on
sports, applicant is not seeking registration for these
services. In fact, it specifically limited the claimed
services so as to exclude monetary wagering. As a result,
applicant argues that the Trademark Examining Attorney’s
refusal to register its mark, based upon genericness for
services not claimed by applicant, cannot stand.
It has been repeatedly stated that “[d]etermining
whether a mark is generic … involves a two-step inquiry:
First, what is the genus of goods or services at issue?
Second, is the term sought to be registered or retained on
the register understood by the relevant public primarily to

3 Reg. No. 2434774 issued to Nortech Investments Ltd. for
services recited as “computer services, namely providing
databases featuring sports news,” on the Supplemental Register
on March 13, 2001. According to the
registration, applicant made no claim to the
exclusive right to use the terms SPORTSBETTING
and COM apart from the mark as shown.

Serial No. 76331011
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refer to that genus of goods or services?” H. Marvin Ginn
v. International Association of Fire Chiefs, Inc. 782 F.2d
987, 228 USPQ 528, 530 (Fed. Cir. 1986). In a proceeding
such as this, the genus of the services at issue is
determined by focusing on the recital of services in the
application itself. Magic Wand Inc. v. RDB Inc., 940 F.2d
638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) [“Thus, a proper
genericness inquiry focuses on the description of services
set forth in [the application or] certificate of
registration.”].
Moreover, the burden rests with the Trademark
Examining Attorney to establish that the mark sought to be
registered is generic for the services. In re Merrill
Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567,
4 USPQ2d 1141, 1143 (Fed. Cir. 1997). The Office must be
able to satisfy both elements of the test as set forth in
the controlling precedent of Marvin Ginn, bearing in mind
that “[a]ptness is insufficient to prove genericness.” See
In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d
1832, 1836 (Fed. Cir. 1999). It is incumbent upon the
Trademark Examining Attorney to make a “substantial showing
… that the matter is in fact generic.” Indeed, this
substantial showing “must be based on clear evidence of
Serial No. 76331011
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generic use.” Merrill Lynch, 4 USPQ2d at 1143. Thus, it
is beyond dispute that “a strong showing is required when
the Office seeks to establish that a term is generic.” In
re K-T Zoe Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787,
1788 (Fed. Cir. 1994). Furthermore, doubt on the issue of
genericness is resolved in favor of the applicant. In re
Waverly Inc., 27 USPQ2d 1620, 1624 (TTAB 1993).
Addressing the first part of the Marvin Ginn
genericness inquiry above, the Trademark Examining Attorney
repeatedly focused on applicant’s “sports betting services
via the Internet.” However, applicant argues that a proper
genericness inquiry focuses on the description of services
as recited in the application – not on whether applicant’s
website actually offers sports betting services. In fact,
it should be noted that applicant does offer sports betting
services, as revealed by claims on its own website:
“SPORTSBETTING.COM is the simplest and most popular
destination for sports betting on the Internet.” Applicant
argues as follows:
“ … Applicant may be providing services
wherein consumers can wager and win real
cash. However, Applicant at this time is
not claiming registration for such services.
Indeed, Applicant has specifically limited
the relevant services to not include
monetary wagering.”

Serial No. 76331011
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Applicant’s response to fourth Office action, p. 3.
In determining the first part of the Marvin Ginn
genericness inquiry in this case, we are faced immediately
with the question of whether it is consistent with the
letter and the spirit of the Lanham Act for an applicant to
carve out from the recitation contained in the application
what are arguably its core services in order to avoid a
likely finding of genericness. Specifically, applicant has
deftly carved out any reference to “sports betting
services,” all the while admitting that its website may
well offer sports betting services. Must this Board turn a
blind eye to the reality of what is being offered on the
named website, restricting our purview to the recitation of
services in the application itself, as suggested by the
Magic Wand case?
We do not believe that is what Magic Wand requires.
The Magic Wand case involved a petition to cancel the
registration of the service mark TOUCHLESS on the ground
that the term TOUCHLESS was generic for “automobile washing
services.” The petitioner in that case attempted to focus
on a “relevant public” that was unwarranted by the
description of services, namely, manufacturers and dealers
of car wash equipment, and not the automobile owners and
Serial No. 76331011
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operators to whom the automobile washing services would be
directed. Thus, the decision’s statement that “a proper
genericness inquiry focuses on the description of services
set forth in the certificate of registration” must be read
in that context, i.e., as an explanation of the error in
petitioner’s attempt to focus on a relevant public not
warranted by the actual recitation of services. Further,
the quoted reference from the Magic Wand case is preceded
by the Federal Circuit’s observation that “[t]he
description in the registration certificate identifies the
services in connection with which the registrant uses the
mark.” Magic Wand, supra at 1552. The Court also
observed: “According to the registration, the mark
TOUCHLESS is used in connection with automobile washing
services.” Id. [emphasis supplied]. Thus, it is clear
that the analytical focus on the recitation of services is
based on the premise that the recitation accurately
reflects actual conditions of use of the involved term.
See also, In re American Fertility Society, supra at 1836
[“The PTO must prove: (1) what the genus of the services
the Society provides is ….”], and In re Web Communications,
49 USPQ2d 1478, 1479 (TTAB 1998) [“We agree with applicant
that its services in the broadest sense would be considered
Serial No. 76331011
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‘consulting services.’ But there are many varieties of
consulting services and each would necessarily be further
identified as to the particular subject or focus of the
services being offered. Here applicant has described a
major focus of its services in the specimens of record as
‘publication and communication via the World Wide Web ….’
Applicant’s services enable its customers to achieve this
communication by assisting them in setting up their own Web
sites.” (emphasis supplied)].
We also note that the Federal Circuit, in describing
the genus of goods and services offered by the applicant in
In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420
(Fed. Cir. 2005), began by focusing on applicant’s amended
recitation of services [“computerized on-line retail
services in the field of pre-engineered metal buildings and
roofing systems”], but in deriving the correct genus of
goods and services, then went on to look at the actual
website and other evidence of record:
As an initial matter, this court examines
the Board’s understanding of the genus of
goods or services at issue. The applicant
defined its goods and services, in its
amended application, as “computerized on-
line retail services in the field of pre-
engineered metal buildings and roofing
systems.” Although the definitions of the
applicant and of the Board appear nearly
identical, the parties understand the phrase
Serial No. 76331011
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“computerized on-line retail services”
differently. Applicant sells steel
buildings on line, but the record indicates
it provides services beyond mere sales. In
other words, the services at issue are far
more than an on-line catalogue. The
applicant’s web site permits a customer to
first design, then determine an appropriate
price for, its own unique design. Finally,
the customer may purchase its unique
building on line. The web site features a
process that facilitates the customer’s
design of his building at his own computer
via a complex interactive process.

The STEELBUILDING.COM web site thus includes
more than a mere shopping guide for metal
building structures. As the program-user
develops the design, the program re-
calculates design elements as necessary to
meet codes and other engineering
requirements. The program then calculates a
price for the designed building. The
purchaser can compare prices of different
designs, and finally purchase a preferred
design. Therefore, while correctly
concluding that “[a] significant, if not
primary feature, of applicant’s services is
the sale of steel buildings,” id. at 4, the
Board fails to acknowledge the interactive
design feature of the applicant’s goods and
services.

Id. at 1422. In this vein, particularly where a single
website is offering a variety of interrelated, interactive
services, it seems appropriate to take all of those largely
undifferentiated services into consideration when defining
the genus of services. Accordingly, despite applicant’s
tactical decision to carve them out of its recitation of
Serial No. 76331011
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services, we find that the relevant genus of services
herein includes wagering on sporting events.
Even if we are constrained to ignore the realities of
use actually made by applicant because applicant has
purposely drafted a description omitting that use, this
does not end the first part of the Marvin Ginn inquiry into
possible genericness. Applicant’s recitation of services
includes the providing of a website “featuring information
in the fields of gaming, athletic competition and
entertainment.” That is, even if for purposes of this
inquiry, we were to ignore applicant’s clear offering on
its website of “sports betting services,” we nonetheless
find that the class or category of services described in
the application still clearly includes that of providing
information regarding sports and betting. See In re
CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002)
[BONDS.COM generic for identified information services
related to investment securities even where applicant does
not buy or sell bonds].
We turn then to the second part of the Ginn inquiry,
namely, whether the term sought to be registered is
understood by the relevant public primarily to refer to
that genus of services.
Serial No. 76331011
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Not surprisingly, the Trademark Examining Attorney did
not find the combined term “sportsbetting” as a single
entry in a dictionary. Nonetheless, the Trademark
Examining Attorney analyzed the meaning of the individual
components making up the term “sports betting”:
The term “sport” is defined in part as
"[p]hysical activity that is governed by a
set of rules or customs and often engaged in
competitively; a particular form of this
activity; an activity involving physical
exertion and skill that is governed by a set
of rules or customs and often undertaken
competitively." THE AMERICAN HERITAGE
DICTIONARY OF THE ENGLISH LANGUAGE (4 ed.
2000) (attached to Final Office Action of
July 13, 2004). The term “sports” is simply
a variant of the term, and may be defined in
part as “of relating to, or appropriate for
sports: sport fishing; sports equipment.”
Id. The term “betting” is a variant of the
term “bet,” which is defined in part as “an
agreement usually between two parties that
the one who has made an incorrect prediction
about an uncertain outcome will forfeit
something stipulated to the other, a wager.
2. An amount or object risked in a wager; a
stake. 3. One on which a stake is or can be
placed: Our team is a sure bet to win."
Id.

We find that these dictionary definitions show that
“sports betting” is the equivalent of “sports wagering” or
“wagering on sports.” We have no doubt but that joining
the separate words “sports” and “betting” creates a term
that, in context, would be generic for a service that
permits one to wager on sporting events. In this case, the
Serial No. 76331011
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combined term is not greater than the sum of its parts.
See Gould, supra.
This set of circumstances contrasts factually with In
re Steelbuilding.com, supra. There, the Court found an
absence of any evidence of use of “steelbuilding” as one
word. By contrast, the examples in the instant record,
infra, demonstrate that it is not at all unusual for
competitors to use the terms “sports betting” in website
headings and within normal text on web pages, connoting
wagering on sports events and related activities. And,
unlike the Steelbuilding.com case, we have many examples of
use of “sportsbetting” as one word, in website headings,
within normal text on web pages, as well as using them in
combination with other words, alpha-numerics, names and
symbols within their respective domain names, and again,
all connoting wagering on sports events and related
activities.
The Court in Steelbuilding.com also found that joinder
of the separate words “steel” and “building” with the TLD
“.com” created a “formulation” that, in context, could be
perceived by the relevant public as meaning either “steel
buildings” available via the Internet or “the building of
steel structures” via an Internet website. While not using
Serial No. 76331011
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the term “double entendre,” the Court’s reasoning in
Steelbuilding.com suggests a non-descriptive connotation
(perhaps not unlike SUGAR & SPICE for bakery products,4 THE
SOFT PUNCH for noncarbonated soft drink,5 and NO BONES ABOUT
IT for fresh pre-cooked ham6). The Court found that simply
joining the separate words “steel” and “building” and the
TLD “.com” does not necessarily create a compound term that
would be generic for “computerized online retail services
in the field of pre-engineered metal buildings and roofing
systems.” Specifically, given the interactive design
feature of that applicant’s goods and services, the Court
concluded that STEELBUILDING could also refer to “the
building of steel structures.”
Although applicant argues there are other possible
meanings for these two components,7 creating lots of

4 In re Colonial Stores Incorporated, 394 F.2d 549, 157 USPQ
382 (CCPA 1968).
5 In re Delaware Punch Co., 186 USPQ 63 (TTAB 1975).
6 In re National Tea Co., 144 USPQ 286 (TTAB 1965).
7 Applicant argues that the Trademark Examining Attorney
“completely ignor[es] other meanings of the terms ‘sports’
and ‘betting’ as set forth in his proffered dictionary
evidence, to wit: (a) with respect to ‘sports’ mockery,
jest, to play or frolic, to mutate, and designed for
outdoor or informal wear; and (b) with respect to ‘betting’
— to maintain confidentiality, to plan or option to be
considered, and to be of course (i.e., ‘you bet’).”
Applicant’s appeal brief, p. 11.
Then in its reply brief, applicant puts these other
meanings together to suggest alternative meanings for the
combination:
Serial No. 76331011
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seemingly nonsensical permutations when various dictionary
definitions are combined, it has not pointed convincingly
to a double entendre or to realistic multiple connotations
created by this compound term (e.g., “sports betting” or
SPORTSBETTING).
In defining the “relevant public” whose understanding
and perception of SPORTSBETTING.COM is critical to our
analysis (see Magic Wand Inc., supra at 1553), we must
include all persons having access to the Internet who might
potentially wager on sports. With that definition of
“relevant public” in mind, the Trademark Examining Attorney
characterizes the evidence in the file as follows:
It is similarly clear from the record herein
that the providers of sportsbetting services
use the term in reference to the providing
of information in this field, such as
sportsbetting information. The results of a
search of the GOOGLE® database attached to

“Moreover, the [sic] joining the individual terms to form
the Mark lends additional meaning to the Mark.
Specifically, a consumer can reasonably interpret the Mark
to be associated with any of the following, at a minimum,
or numerous other imaginative wonders:
a. SPORTSBETTING.COM, the risks and benefits of casual
wear.
b. SPORTSBETTING.COM, the reliance upon a friend,
companion or other good sport.
c. SPORTSBETTING.COM, feedback and rankings related to
comedic or amusement performances.
d. SPORTSBETTTNG.COM, the mocking of lottery ticket
purchasers.
… Indeed, the Applicant asserts that the Mark is an amalgam
of letters not identified in any known dictionary and is
therefore, not generic of the Claimed Services.”
Applicant’s reply brief, p. 9.
Serial No. 76331011
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the Office Action of December 15, 2003 for
the term “sportsbetting” resulted in
approximately 216,000 hits, and copies of
web pages viewed as part of the results of
said search and of record herein show use of
the mark in generic fashion for both betting
and providing of sportsbetting information.

As seen throughout this record, applicant’s own
website uses the expression “sports betting,” e.g., touting
itself as “the leader in online sports betting” and
providing tips on “sports betting” as a game of skill.
Furthermore, as the Trademark Examining Attorney has
demonstrated in this record, other entities competing with
applicant also use the term “sports betting” (and
“sportsbetting”) in generic fashion in describing their
wagering and information services:
Sports Betting
Online Sportsbetting Resources8

Sportsbooks Today: Your guide to
Sportsbooks and Sportsbetting …9

Sports betting odds at the #1 sportsbetting
destination on the internet.10

Sportsbetting Guide
Preferred Sportsbooks and Resources11

Online sports betting lines, odds … Sports
Betting on Football, Basketball, NFL, NBA,
NCAA … 12

8 http://www.casino-sportsbetting-directory.com/
9 http://www.sportsbooks-today.com/
10 http://www.1stsportsbetting.com/
11 http://www.winneronline.com/sports/
12 http://www.365dayssportsbetting.com/
Serial No. 76331011
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88 Sports Betting offers real-time sports
betting lines on every sports event … 13

24 Hour Sports Betting & Casino, bet on
sports from the comfort of your home 24
hours a day, 7 days a week!14

Sports Betting and Online Casino Since 199715

We note that some websites above use variations on
this term, with and without a space (e.g., “sports betting”
and “sportsbetting”), and sometimes both ways within the
same sentence. As a matter of trademark law, “sports
betting” is equivalent to “sportsbetting,” which in its
combined or collapsed form is not greater than the sum of
its parts. See In re Gould Paper, supra; [SCREENWIPE
generic for a wipe for cleaning television and computer
screens]; In re Abcor Dev., supra, [GASBADGE at least
descriptive for gas monitoring badges; three judges
concurred in finding that term was the name of the goods];
In re Planalytics Inc., 70 USPQ2d 1453 (TTAB 2004)
[GASBUYER merely descriptive of “on-line risk management
services in the field of pricing and purchasing decisions
for natural gas”]; In re Orleans Wines, Ltd., 196 USPQ 516
(TTAB 1977) [BREADSPRED descriptive for jams and jellies
that would be a spread for bread]; and In re Perkin-Elmer

13 http://www.88sportsbetting.com/
14 http://www.24hoursportsbetting.com/
15 http://www.sportbet.com/
Serial No. 76331011
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Corp., 174 USPQ 57 (TTAB 1972) [LASERGAGE merely
descriptive for interferometers utilizing lasers].
As to domain names, presumably international protocols
define a limited range of printable characters for second
level domain names, including that they cannot contain
spaces. We observe that, generally, adjacent words are
simply run together in domain names (or at the very least,
any spaces occurring naturally in normal English language
text must be replaced with a hyphen or similarly-approved
characters).
In the case at hand, assessed under American
Fertility, supra, we have voluminous evidence of use of the
designations “sports betting” and “sportsbetting” by
applicant and by its third-party competitors. All of this
evidence persuades us that members of the relevant public,
i.e., persons with Internet access who might wager on
sports, primarily perceive “sports betting” and
“sportsbetting,” usually set forth in lower case letters,
as generic. This is true even if applicant should be able
to demonstrate (which it has not) that a growing subset of
the gaming public may draw an association between applicant
and the services offered at the www.sportsbetting.com
website. In re American Institute of Certified Public
Serial No. 76331011
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Accountants, 65 USPQ2d 1972 (TTAB 2003) [the term CPA
EXAMINATION is generic for “printed matter, namely,
practice accounting examinations; accounting exams;
accounting exam information booklets; and prior accounting
examination questions and answers,” even if a sizable
subset of that public draws an association between the
AICPA and the UNIFORM CPA EXAMINATION.]. Hence, if the
genus of services is construed to include providing for
wagering on sports, “sports betting” is clearly generic for
such services.
We turn next to our alternative holding, based upon an
explicit exclusion of applicant’s “sports betting services”
from the genus of services (e.g., as discussed supra, in
the first part of the Marvin Ginn genericness inquiry).
As seen on applicant’s website – and, similarly, on
the websites of third-party competitors – much of the
discussion about “sports betting” (or “sportsbetting”)
focuses on the need to gather and analyze as much
information as one can to become knowledgeable about the
particular sport on which one is wagering. Hence, when it
comes to the activity of “sports betting,” we find that the
information piece of applicant’s recited services is
inextricably tied into the actual betting. This linkage is
Serial No. 76331011
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not unique to the field of gaming. This tying together of
information and the underlying activity is analogous, for
example, to our finding that the word “bonds” (and hence
the mark BONDS.COM) is generic for information services
related to debt instruments and other related investment
securities. CyberFinancial.Net, supra.16
Our adherence to the holdings of reported decisions
like CyberFinancial.Net is also not affected by the Court’s
discussion in Steelbuilding.com, supra, inasmuch as we can
find no reason why this would be one of those “unusual
cases” where the addition of the top level domain indicator
(TLD) expands the meaning of the mark to include services
beyond offering sports wagering or providing information
about sports wagering.17 When considered in its entirety,

16 In this alternative analysis, having found the applied-for
matter generic for the third portion of the recitation of
services, namely, ‘providing information regarding sports and
betting,’ registration is appropriately denied if the term is
generic for any of the goods or services for which registration
is sought. See In re Quik-Print Copy Shop, Inc., 616 F.2d 525,
205 USPQ 505, 507 (CCPA 1980). Accordingly, we do not find it
necessary to discuss further the first two portions of the
recitation of services in International Class 41, e.g., (1)
casino games for fun, and (2) contests and sweepstakes.
17 The Court of Appeals for the Federal Circuit introduced its
own hypothetical during oral argument in the case of In re
Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1373 (Fed.
Cir. 2004) [PATENTS.COM merely describes patent-related goods in
connection with the Internet]:
“… Under the hypothetical, a company seeks to register the
mark tennis.net for a store that sells tennis nets. The
applicant openly states that it does no business on the
Internet and has no intention to ever use the Internet.
Serial No. 76331011
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the addition of the TLD, or the “dot com” portion of the
alleged mark, SPORTSBETTING.COM, does not create a source
identifier if none exists in the combined term “sports
betting” or SPORTSBETTING. See In re Martin Container,
Inc., 65 USPQ2d 1058 (TTAB 2002) [“[T]o the average
customer seeking to buy or rent containers, CONTAINER.COM
would immediately indicate a commercial website on the
Internet which provides containers.”].
As to the arguments by the Trademark Examining
Attorney that applicant has admitted to the fact that these
individual components are not registrable by disclaiming
them in an earlier registration, we recognize that §6 of
the Lanham Act permits an applicant to disclaim matter
voluntarily – regardless of whether the matter is
registrable or unregistrable. See In re MCI Communications
Corp., 21 USPQ2d 1534 (Comm’r. USPTO 1991). Applicant’s

This hypothetical applicant’s mark consists of a
descriptive term — “tennis” — and a TLD — “.net.” The
“net” portion alone has no source-identifying significance.
The hypothetical mark as a whole, as is immediately
apparent, produces a witty double entendre relating to
tennis nets, the hypothetical applicant’s product.
Arguably, the attachment of the TLD to the other
descriptive portion of the mark could enhance the prospects
of registrability for the mark as a whole. This
hypothetical example illustrates that, although TLDs will
most often not add any significant source-identifying
function to a mark, a bright-line rule might foreclose
registration to a mark with a TLD component that can
demonstrate distinctiveness.
Serial No. 76331011
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earlier statement (in Reg. No. 2434774) that it made no
claim to the exclusive right to use the terms SPORTSBETTING
and COM apart from the composite mark as shown means that
as used in connection with the computer services enumerated
in that particular registration, no rights are being
asserted in the disclaimed component of the mark standing
alone. It is clear that a disclaimer does not preclude
registrant, as a matter of law, from later demonstrating in
another application, for example, rights in the disclaimed
matter if it can show that the disclaimed words have, with
time and use, become distinctive of such goods or services.
See Section 6(b) of the Trademark Act, 15 U.S.C. §1056(b);
See also, In re K-T Zoe Furniture Inc., supra at 1789.
However, it has long been held that the disclaimer of a
term constitutes an admission of the merely descriptive
nature of that term, as applied to the goods or services in
connection with which it is registered, and an
acknowledgment of the lack of an exclusive right therein at
the time of the disclaimer. See Quaker State Oil Refining
Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ 361, 363
(CCPA 1972). See also, In re Interco Inc., 29 USPQ2d 2037,
2038 (TTAB 1993).
Serial No. 76331011
- 23 -
Finally, we agree with the Trademark Examining
Attorney that in the event SPORTSBETTING.COM should be
found not to be generic for the identified services, it is
certainly merely descriptive. By definition, if merely
descriptive, it is not inherently distinctive, and
applicant has made no attempt to demonstrate acquired
distinctiveness for this matter, so as to permit
registration on the Principal Register under Section 2(f)
of the Act.
Decision: The refusal to register the designation
SPORTSBETTING.COM as incapable of registration under
Section 23 of the Lanham Act is hereby affirmed, and
registration to applicant on the Supplemental Register is
denied. In the alternative, should the applied-for term be
found not to be generic for the identified services, it is
merely descriptive. Hence, in the absence of a showing of
acquired distinctiveness, the refusal to register on the
Principal Register based upon Section 2(e)(1) of the Lanham
Act is hereby affirmed.