Douglas Elslager

Trademark Trial and Appeal Board

Aug 4, 2006

No. 76626384 (T.T.A.B. Aug. 4, 2006)

Mailed:
August 4, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Douglas Elslager
________

Serial No. 76626384
_______

Brian M. Mattson of Patents + TMS for Douglas Elslager.

Richard F. White, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Seeherman, Quinn and Hairston, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Douglas Elslager has appealed from the final refusal
of the Trademark Examining Attorney to register
ISLANDHOME.INFO in standard character form for “advertising
and marketing of real properties and other real estate
available for sale on or for lease in one or more islands.”1
Registration has been refused pursuant to Section 2(e)(1)
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76626384
2
of the Trademark Act, 15 U.S.C. §1052(e)(1), on the ground
that applicant’s mark is merely descriptive of his
identified services.
Applicant and the Examining Attorney have filed
briefs. An oral hearing was not requested.
Preliminarily, we note that in his appeal brief
applicant has made reference to certain registrations and
applications, but that copies of these documents were never
made of record. The Examining Attorney has not objected to
these references and, indeed, has discussed them in his
brief. Accordingly, we deem the Examining Attorney to have
stipulated to the information provided by applicant with
respect to these registrations, and have considered them
for whatever probative value they may have.
A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics of
the identified goods or services or if it conveys
information regarding a function, purpose, or use of the
goods or services. In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 217 (CCPA 1978). See also In re MBNA
America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778 (Fed. Cir.

1 Application Serial No. 76626384, filed December 28, 2004,
asserting first use first use and first use in commerce as of
October 2004.
Ser No. 76626384
3
2003); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987).
In order for a term to be descriptive, it need only
describe a single significant quality or property of the
goods or services. In re Venture Lending Associates, 226
USPQ 285 (TTAB 1985). See also In re Oppedahl & Larson
LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)
(“A mark may be merely descriptive even if it does not
describe the full scope and extent of the applicant’s
goods or services”) (internal quotation marks omitted).
The question of descriptiveness is decided not in a
vacuum but by considering the term in relation to the
goods or services; the test is not whether prospective
purchasers can guess what the goods or services are after
seeing applicant’s mark alone. Abcor, 200 USPQ at 218
(“Appellant’s abstract test is deficient – not only in
denying consideration of evidence of the advertising
materials directed to its goods, but in failing to require
consideration of its mark ‘when applied to the goods’ as
required by statute”).
It is the Examining Attorney’s position that
ISLANDHOMES.INFO is merely descriptive of a characteristic
of applicant’s services, namely, that applicant is
offering island homes, i.e., homes for lease or sale on
Ser No. 76626384
4
various islands, on its website. In support of his
position, the Examining Attorney has submitted evidence
taken from various websites that use “island home” in
connection with the sale and rental of real estate in
various islands. For example, “island homes” is the name
of the “Honolulu Star-Bulletin’s” real estate site, which
is said to offer “one of the most current and complete
real estate sites in Hawaii,” and depicts various homes
for sale. An article on the MSN website entitled “Why are
the rich buying island homes?” discusses why homes on
islands are popular, with particular mention of islands in
North Carolina, Georgia and Florida. The St. Lucia
Tourist Guide, under the general title “Island Homes,”
states, “HOMES & LOTS For those seeking the privacy of a
home or vacation villa, many well-established areas still
have lots available or homes for resale in some very
scenic spots.” The article references various residential
areas, and also discusses condominiums and townhouse
developments.
In addition, applicant’s own specimen makes it clear
that he is offering information about owning a home on an
island, specifically in the Caribbean: “Have you ever
dreamed of owning your own private home in the Caribbean?”
... “Islandhome.info gives you the ability to compare the
Ser No. 76626384
5
different islands to find the home that is right for you.
Our custom database allows us to help you refine your
search….”
As for the .INFO part of applicant’s mark, the
Examining Attorney has submitted evidence showing that
“.info” is:
a generic top level domain intended for
informative websites, although its use
is not restricted. It was a part of
ICANN’S highly publicized announcement,
in late 2000, of a phased release of
seven new generic top-level domains.2

The Examining Attorney asserts that, as a top level domain
name (“TLD”), .INFO has no source-indicating significance,
and does not change the merely descriptive nature of
ISLANDHOMES. In this connection, the Examining Attorney
has cited In re Microsoft Corp., 68 USPQ2d 1195, 1202
(TTAB 2003), for the proposition that “there is nothing in

2 Wikipedia, http://en.wikipedia.org/wiki/.info. Although we
are aware that there are some questions about the accuracy of
information in Wikipedia, because the Examining Attorney made
this excerpt of record with the first Office action, and because
applicant has not challenged it, we have accepted the entry as
showing that .info is a top level domain. Moreover, we take
judicial notice of an entry in Computer Desktop Encyclopedia, 9th
ed. © 2001: “New Domain Names. In November 2000, the Internet
Corporation for Assigned Names and Numbers (ICANN) announced the
following new top-level domains.” One of the domain names that
was listed is “.info” for “information services.” The Board may
take judicial notice of dictionary definitions. University of
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213
USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983).

Ser No. 76626384
6
the combination of a descriptive term and a TLD ...that
renders the composite registrable on the Principal
Register without a showing of acquired distinctiveness.”
Applicant argues that his mark is not merely
descriptive because it is “a combination of terms that
creates a distinct commercial impression, which is not
descriptive.” Brief, p. 3. Applicant also asserts that
this combination “does not result in a designation that
has a plain and readily understood meaning for the
services.” Brief, p. 4. It is applicant’s view that “the
relevant public would be required to gather more
information before determining that Appellant’s mark is
used to advertise and market real properties and other
real estate available for sale on or for lease in one or
more islands.” Brief, p. 5.
We conclude, on the basis of the evidence, that
“island home” is a recognized term for houses or other
real estate located on islands. As such, it immediately
and directly conveys to consumers a central characteristic
of “advertising and marketing of real properties and other
real estate available for sale on or for lease in one or
more islands,” applicant’s identified services. That is,
consumers seeing this term used in connection with such
identified services would immediately understand it as
Ser No. 76626384
7
conveying that the subject of the advertising and
marketing is real estate located on an island. The fact
that this term is run together in the mark as ISLANDHOME
does nothing to change this significance. Moreover, as
the case law indicates, in general the addition of a top
level domain name such as “.info” does nothing to change
this descriptive significance. “The addition of a TLD
such as ‘.com’ or ‘.org’ to an otherwise unregistrable
mark will typically not add any source-identifying
significance. Oppedahl, 71 USPQ2d at 1374 (PATENTS.COM
merely descriptive of computer software for managing a
database of records and for tracking the status of the
records by means of the Internet ). To the extent that
.INFO has any meaning, it is descriptive in that it tells
consumers that a feature of applicant’s services is that
they are performed in an on-line environment. See In re
Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420 (Fed.
Cir. 2005) (STEELBUILDING.COM held merely descriptive of
computerized on-line retail services in the field of pre-
engineered metal buildings and roofing systems). When the
words ISLAND, HOME and .INFO are combined as
ISLANDHOME.INFO, we find that the mark as a whole is
merely descriptive of applicant’s services.
Ser No. 76626384
8
We have considered applicant’s arguments that his
mark is not merely descriptive, but do not find them
persuasive. As noted, applicant asserts that when the
individual terms are combined to form the mark
ISLANDHOME.INFO, the mark as a whole creates a distinct
commercial impression. However, applicant does not
explain how he has reached this conclusion. The cases
applicant has cited to support his argument are
distinguishable from the present situation. For example,
applicant cites In re Shutts, 217 USPQ 363 (TTAB 1983) and
In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382
(CCPA 1968) as support for his statement that
ISLANDHOME.INFO is suggestive. However, the mark in
Shutts was SNO-RAKE, which was not a recognized term for a
snow-removal hand tool. Here, on the other hand, the
evidence shows that “island home” is a commonly used and
recognized term. In Colonial Stores, the mark SUGAR &
SPICE was found not merely descriptive of bakery products
because the mark suggested the nursery rhyme as well as
the ingredients of the products. Applicant has not
indicated what double entendre ISLANDHOME.INFO may have,
and none is apparent to us or, we believe, would one be
apparent to the consuming public. Applicant has also
cited Ice Cold Auto Air of Clearwater, Inc. v. Cold Air &
Ser No. 76626384
9
Accessories, Inc., 828 F.Supp. 925 (M.D. Fla. 1993) as
support for his statement that “it is well established
that common or ordinary words can be combined in a novel
or unique way and thereby achieve a degree of protection
denied to the words when used separately.” Brief, p. 3.
However, that case was a trademark infringement action.
In any event, our decision is not based on a finding that
the individual words are merely descriptive. As noted
above, because “island home” has a readily understood
meaning, and because of the lack of significance of the
TLD, we find that the mark as a whole is merely
descriptive.
As for applicant’s assertion that consumers would
have to gather more information before determining the
services for which applicant’s mark is to be used, we
reiterate the well-established principle, stated above,
that the term must not be considered in the abstract.
That is, the question is not whether consumers could guess
what the services are if they see only the mark, but
whether, when they see the mark used in connection with
the services, they will immediately understand from the
mark a significant characteristic, quality, function,
purpose or use of the goods or services. Moreover, as
stated above, a term need not describe all of the features
Ser No. 76626384
10
of the goods or services in order to be descriptive; it
need only describe a single significant quality or
property of the goods or services.
Finally, applicant has referenced various third-party
registrations, as well as an application which was
published for opposition, to show that other marks have
been found to be registrable. However, all of those
registrations/applications are for different marks and/or
goods or services. It appears that applicant has cited
them simply because they contain elements of applicant’s
mark, e.g., THE HOME DEPOT for retail home improvement
stores and TREASURE ISLAND for casino services. Applicant
also cites ISLAND HOUSE for mail order services in the
field of furniture, and ISLAND HOME for dinnerware and
stoneware. Applicant’s reliance on these third-party
marks is misplaced. Our decision should not be read to
say that any mark that contains the word HOME or ISLAND is
merely descriptive, or even that a mark which consists
only of the words ISLAND HOME must be, ipso facto, merely
descriptive. As stated previously, the question of
descriptiveness is determined by considering the term in
relation to the identified goods or services. Therefore,
a mark that is merely descriptive as used in connection
with certain goods or services may be arbitrary or
Ser No. 76626384
11
suggestive if used with different goods or services. The
record herein demonstrates that ISLANDHOME.INFO, as used
in connection with applicant’s identified ““advertising
and marketing of real properties and other real estate
available for sale on or for lease in one or more
islands,” is merely descriptive of those services.
Decision: The refusal of registration is affirmed.