Ectribution, Inc.

Trademark Trial and Appeal Board

Aug 28, 2008

No. 77340762 (T.T.A.B. Aug. 28, 2008)

Decision Mailed:
August 28, 2008
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Ectribution, Inc.
________

Serial No. 77340762
_______

Richard S. Ross. Esq. for Ectribution, Inc.

Linda M. King, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
_______

Before Hohein, Walters and Walsh, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Ectribution, Inc. has filed an application to register
on the Principal Register the mark "templates.com" and design, as
reproduced below,

for "on-line retail store services featuring downloadable
software for website development comprising pre-formatted
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 77340762
2
modifiable templates" in International Class 35 and "website
development [services] for others" in International Class 42.1
Registration has been finally refused under Section
6(a) of the Trademark Act, 15 U.S.C. §1056(a), on the basis of
applicant's refusal to comply with a requirement for a disclaimer
of the term "templates.com," which the Examining Attorney
maintains is merely descriptive of applicant's services within
the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), and therefore must be disclaimed apart from the mark
as shown.
Applicant has appealed and briefs have been filed. We
affirm the disclaimer requirement.
As a preliminary matter, we note that applicant does
not argue or otherwise disagree with the Examining Attorney's
finding that the term "templates.com" is merely descriptive of
applicant's services. In this regard, we concur with the
Examining Attorney that, as stated in her brief:
Clearly, the term TEMPLATES describes a
feature of the services identified and shown
in the Applicant's website offering the

1 Ser. No. 77340762, filed on November 30, 2007, which is based on an
allegation of a bona fide intention to use such mark in commerce. The
mark, including a claim as to color, is described as follows:

The mark consists of the word TEMPLATES with each
letter separately encased in a colored rectangle, as
follows: the first occasion of the letter "t" is in green,
as is the letter "l"; the first occasion of the letter "e,"
the letter "a" and the letter "s" are in blue; the letter
"m" and the second occasion of the letter "t" are in red;
the letter "p" and the second occasion of the letter "e" are
in orange; and ".com" is in gray and not surrounded in a
colored rectangle.

The color(s) green, blue, red, orange and gray is/are
claimed as a feature of the mark.

Ser. No. 77340762
3
services. The services constitute the sale
of "pre-formatted modifiable templates" which
are also used in the website development
services. Consequently, the term TEMPLATES
is at least highly descriptive of the
services.

Furthermore, the generic top-level
domain (TLD) ".com" merely indicates an
Internet address for use by commercial, for-
profit organizations and, in general, adds no
source identifying significance. E.g., In re
Oppendahl & Larsen LLP, 373 F.3d 1171, 1175-
76, 71 USPQ2d 1370, 1373-74 (Fed. Cir. 2004);
In re Martin Container, Inc., 65 USPQ2d 1058,
1060-61 (TTAB 2002); see TMEP §§1209.03(m)
[and] 1215.01.

Consequently, the entire term
TEMPLATES.COM is [merely] descriptive of the
services.

Applicant, instead, contends that its mark is unitary
and, in view thereof, a disclaimer of the merely descriptive term
"templates.com" is not warranted. Specifically, applicant
insists in its initial brief that the Examining Attorney "erred
in concluding [that] the proposed mark is not a unitary mark,
thus requiring a disclaimer, when she based her decision on the
finding that 'the colored blocks merely form a background for the
wording, which does not qualify the proposed mark as a unitary
mark.'" However, according to applicant, the test for
determining whether a mark is unitary is "whether the mark
creates a single and distinct commercial impression," citing Dena
Corp. v. Belvedere International, Inc., 950 F.2d 1555, 1561, 21
USPQ2d 1047, 1052 (Fed. Cir. 1991), in which the court listed the
following factors from the TMEP to assist in making such a
determination:
Whether it is physically connected to the
mark by lines or other design features; how
Ser. No. 77340762
4
close the matter is located to the mark and
whether side by side on the same line; the
meaning of the words and how the meaning
relates to each other and to the goods ....

950 F.2d at 1561, 21 USPQ2d at 1052.
Based on such factors, applicant asserts that a
disclaimer of the term "templates.com" is not required inasmuch
as an examination of the mark as a whole "discloses that its
elements are so merged together as to be regarded as indivisible
and distinct." Applicant argues in this regard that (emphasis in
original):
First, the wording TEMPLATES.COM is
integrally intertwined with the design
features of the Mark. Specifically, in the
word "templates," each letter is encased by
the design element of the Mark. Absent the
design element, in fact, the letters would
cease to exist as they are shown in the
"negative," surrounded by the "positive"
coloration of the design. Because the word
"templates" is connected to, and created by,
the design features of the mark, it is an
"indivisible symbol rather than two divisible
[elements]". Id. quoting Kuppenheimer &
Co[.] v. Kayser-Roth Corp., 326 F.2d 820,
822[, 140 USPQ 262, 263] (CCPA 1964).

Second, the Examiner's reliance on the
finding of the existence of a background is
insufficient by itself to support her
conclusion that the Mark is not unitary. A
greater and more in-depth analysis is
required. In Dena Corp., while the court
considered the background, it found that it
and the words EUROPEAN FORMULA were separable
elements. Id. at 1561. However, in the
proposed Mark, the background of colors, if
it is a background, positively binds each
letter that is contained in word "templates."
Therefore, in the present case, the wording
and the design are inseparable elements.

Third, because the design element of the
Mark is so intertwined with the wording, no
potential purchaser would possible perceive
Ser. No. 77340762
5
the Mark to convey separable impressions.
Contrary, in Dena Corp., the words EUROPEAN
FORMULA were physically separated from the
circular design element at issue. The same
is not true here. In the present Mark, there
is a complete melding of words and design.

The Examining Attorney, on the other hand, contends
that applicant's mark is not unitary, observing in her brief that
the mark "contains the wording TEMPLATES in white over a
background design of different colored blocks, with the term .COM
in gray to the right of the design." According to the Examining
Attorney, because the wording is written over the background
design and extends beyond such design, a disclaimer of the
wording "templates.com" is appropriate. In particular, as to
applicant's arguments, she notes among other things that:
[T]he term TEMPLATES is not carved out
of a design of templates or other design that
would merge the wording with the design.
Rather, the term TEMPLATES is written across
the backdrop of a series of colored blocks,
with the term .COM written outside of the
block design. Furthermore, the wording is
all in the same font and perfectly aligned
across the background design, rather than
each term being carved out of each block,
which would make the letters in the wording
uneven. Consequently, the commercial
impression of the mark is that the term
TEMPLATES.COM is on top of the background
design, making it separable.

....

As stated in Dena Corp., a mark is
unitary if the mark "has a distinct meaning
of its own independent of the meaning of its
constituent elements." Id. at 1561. Here,
the proposed mark does not have an
independent meaning apart from the
descriptive wording TEMPLATES.COM combined
with a colorful background design.

As stated in the Trademark Manual of
Examining Procedure, §1213.05, a mark is
Ser. No. 77340762
6
unitary if "the whole is something more than
the sum of its parts." Here, the whole is
not more than the sum of its parts. Rather,
the mark is exactly the sum of its parts, the
term TEMPLATES.COM and the background design
for the term TEMPLATES.

While we agree with applicant, as reiterated in its
reply brief, that the "colored blocks" or rectangles which
constitute the design element of its mark are more than a mere
"background design" as asserted by the Examining Attorney, we
nonetheless concur with the Examining Attorney, as additionally
stated in her brief, that "[h]aving wording on top of a design
does not make the design 'so intertwined with the wording' that
the mark is 'singular and inseparable,' as argued by the
Applicant." Instead, we find that the term "templates.com" makes
a separate and distinct commercial impression from the design
element of applicant's mark, which serves as a vehicle for the
display of such term, and thus that applicant's mark is not
unitary. In particular, we fail to see how the "templates"
portion of applicant's mark is so integrated with the colored
blocks or rectangular design element as to be regarded by
consumers as inseparable therefrom. Rather, just as the words
"european formula" in Dena Corp. were likewise displayed in the
"negative," that is, on a dark or "positive" background, and the
mark therein as a whole was found not to be unitary, the same is
true in this case, notwithstanding that the letters forming the
term "templates" are superimposed over the colored blocks or
rectangular design element in applicant's mark whereas the words
"european formula" did not touch a separate design element in the
mark involved in Dena Corp. Here, rather than being inseparable
Ser. No. 77340762
7
as contended by applicant, the merely descriptive term
"templates.com" stands out from the colored rectangles or blocks
which constitute a vehicle for its display and thus such term
conveys a separate and distinct commercial impression which is
properly subject to a requirement for a disclaimer.
Decision: The requirement for a disclaimer under
Section 6(a) is affirmed. Nevertheless, in accordance with
Trademark Rule 2.142(g), this decision will be set aside and
applicant's mark will be published for opposition if applicant,
no later than thirty days from the mailing date hereof, submits
an appropriate disclaimer of the merely descriptive term
"templates.com."2

2 See In re Interco Inc., 29 USPQ2d 2037, 2039 (TTAB 1993); and TMEP
§§1213.08(a)(i) and (ii) (5th ed. 2007).