F. Merrill Matlovich

Trademark Trial and Appeal Board

Jan 7, 2003

No. 75795407 (T.T.A.B. Jan. 7, 2003)

Hearing: Mailed: January 7, 2003
November 6, 2002 Paper No. 16
cl

UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re F. Merrill Matlovich, dba iCam Productions
________
Serial No. 75/795,407
_______
David L. Garrison of Garrison & Associates PS for F.
Merrill Matlovich, dba iCam Productions.
Maria-Victoria Suarez, Trademark Examining Attorney, Law
Office 102 (Thomas V. Shaw, Managing Attorney).
_______
Before Simms, Holtzman and Rogers, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:

F. Merrill Matlovich, dba iCam Productions (applicant)
has appealed from the final refusal of the Trademark
Examining Attorney to register the mark DOTSEX for
promoting the goods and services of others in the fields of
soft-core and hard-core pornographic photography by
providing a Web site at which members can link to the Web
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/795,407
2
sites of others.1 The Examining Attorney has refused
registration under Section 2(e)(1) of the Act, 15 USC
§1052(e)(1), on the basis that applicant’s mark is merely
descriptive of his services.2 Applicant and the Examining
Attorney have submitted briefs3 and an oral hearing was
held.
The Examining Attorney argues that applicant’s mark
DOTSEX is the phonetic equivalent of .sex and would be
pronounced dot sex, much like .com is pronounced dot com.
Here, the Examining Attorney contends that the term SEX in
applicant’s mark immediately describes a significant
feature or characteristic of applicant’s services in that
it tells users that applicant provides services of a sexual
nature or with adult content. Moreover, the addition of
the word DOT does not detract from the mere descriptiveness
of the word SEX in applicant’s mark, the Examining Attorney
contends.

1 Application Serial No. 75/795,407, filed October 4, 1999, based upon
applicant’s allegation of a bona fide intention to use the mark in
commerce.
2 The Examining Attorney has withdrawn an earlier refusal that
applicant’s asserted mark does not function as a service mark.
3 The Examining Attorney has objected to the new evidence (printouts from
Office records of third-party registrations and applications) submitted
with applicant’s brief. The Examining Attorney correctly observes
that, under Trademark Rule 2.142(d), the file in the application should
be complete prior to the filing of the notice of appeal. Accordingly,
because this evidence is untimely, the objection is sustained and the
evidence has not been considered. Similarly, applicant’s recently
obtained registration of the mark DOTXXX for similar services (Reg. No.
2,610,275, issued Aug. 20, 2002), offered at the oral hearing and
objected to by the Examining Attorney, will not be considered.
Serial No. 75/795,407
3
Marks that contain the phonetic
equivalent of a top-level domain (TLD)
(e.g., ABC DOTCOM) are treated in the
same manner as marks composed of a TLD
(e.g., ABC.COM). Hence, the presence
or absence of the punctuation, whether
in a symbolic or literal form, does not
change the meaning of the mark. The
term “DOTSEX” is, in fact, the
equivalent of “.SEX,” and is still
merely descriptive.
Consequently, the public will
recognized [sic] the wording “DOTSEX”
as signifying an adult-oriented
website. Although The Internet
Corporation for Assigned Names and
Numbers (ICANN) has not adopted “.sex”
as an acceptable TLD, it strongly has
been proposed as a future TLD
designating adult-oriented websites.
Accordingly, to the extent potential
consumers view the mark as a TLD, the
mark clearly names the nature of the
website provided by the applicant.
Whether or not the TLD “.sex” is
available is not relevant in a
trademark sense if potential consumers
will view the mark as accurately
describing a significant characteristic
of the applicant’s services.
Examining Attorney’s appeal brief, 4.
The Examining Attorney has made of record excerpts
from the Nexis database showing that “.sex” or “dot sex”
has appeared in numerous stories, and a dictionary
definition from High-Tech Dictionary indicating that “.com”
is pronounced “dot com.” Some of the evidence is quoted
below:
Serial No. 75/795,407
4
…for new TLDs from registry operators
and received 44 proposals representing
hundreds of possible TLDs ranging from
dot-kids to dot-sex…
The Record, March 5, 2001
…Even the Internet pornography industry
would agree that there could be many
benefits in having all pornography-
related web sites end in “dot sex”…
Newsday, December 3, 1999
…That means the dot-coms will likely be
joined by dot-biz, dot-sex and other
combinations…
The Seattle Times, November 4, 1999
…Child Online Protection Commission
discussed the extremely controversial
notion of creating an adults only
Internet domain such as .xxx or .sex.
Newsbytes, June 9, 2000
…adult sites could voluntarily station
their web sites at this new domain.
What would be the incentive to move
them off .com to maybe .sex or .xxx?
The Orange County Register, September
29, 1999
Proponents of such a proposal contend
that by creating a “.xxx” or “.sex”
Internet domain “harmful” pornographic
material could be isolated in a single
Internet neighborhood…
Newsbytes, June 8, 2000
Applicant, on the other hand, argues that his mark is
suggestive of the goods and services featured on his Web
Serial No. 75/795,407
5
site because it merely suggests that applicant’s services
may involve matter with sexual content, but does not
immediately convey the idea, quality or characteristic of
applicant’s services.
The service mark “DOTSEX” might
reasonably be thought by the ordinary
observer to suggest that the services
with which it is associated has [sic]
to do with products and services having
a sexual connotation, but the mark
DOTSEX is not merely descriptive
thereof. The addition of the “DOT”
might also suggest, to the perceptive
observer, that it has [to] do with
computer-based activities and services.
But the mark clearly “requires the
consumer to exercise the imagination in
order to draw a conclusion as to the
nature of goods and services”… The
mark itself does not convey any
specific information about applicant’s
services or its intended consumers;
rather it requires imagination to
connect the term “DOTSEX” to the
service of providing a website…
Clearly, the reason for rejecting
the applicant’s mark is the presence of
SEX as a part of the mark. This
rejection is without basis other than
the unsupported concept that a mark
should not contain these three letters.
The Patent and Trademark Office should
not undertake the role of societal
censor without a clear statutory
requirement to do so. [Emphasis in
original]
Applicant’s appeal brief, 2-3, 6. Applicant states that he
has been using the applied-for service mark since December
Serial No. 75/795,407
6
29, 1999, although applicant has not filed an amendment to
allege use.
The test for determining whether a mark is merely
descriptive is whether the term or phrase immediately
conveys information concerning a significant quality,
characteristic, function, ingredient, attribute or feature
of the product or service in connection with which it is
used or is intended to be used. In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); In re Eden
Foods Inc., 24 USPQ2d 1757 (TTAB 1992); and In re Bright-
Crest, Ltd., 204 USPQ 591 (TTAB 1979). Further, it is
well-established that the determination of mere
descriptiveness must be made, not in the abstract or on the
basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the term or phrase is being used or is intended to be
used on or in connection with those goods or services, and
the impact that it is likely to make on the average
purchaser of such goods or services. In re Consolidated
Cigar Co., 35 USPQ2d 1290 (TTAB 1995); and In re Pennzoil
Products Co., 20 USPQ2d 1753 (TTAB 1991). Consequently,
“[w]hether consumers could guess what the product [or
service] is from consideration of the mark alone is not the
test.” In re American Greetings Corp., 226 USPQ 365, 366
Serial No. 75/795,407
7
(TTAB 1985). Rather, the question is whether someone who
knows what the goods or services are will understand the
term or phrase to convey information about them. In re
Home Builders Association of Greenville, 18 USPQ2d 1313
(TTAB 1990).
Upon careful consideration of this record and the
arguments of the attorneys, we agree with the Examining
Attorney that the asserted mark DOTSEX is merely
descriptive of applicant’s services.
First, as noted, we must consider the question of
descriptiveness in the context of actual or prospective
use, not whether potential consumers or users will be able
to guess what the services are but rather whether the mark,
as used in connection with the services, describes a
quality, feature or characteristic of the services.
Therefore, we consider the mark DOTSEX as used on or in
connection with a Web site providing links to other Web
sites containing matter of a sexual nature.
Although applicant is not using or intending to use
the asserted mark as a top level domain name, we note in
passing what the Trademark Manual of Examining Procedure
states with regard to the question of mere descriptiveness
of terms such as Internet domain names:
Serial No. 75/795,407
8
Internet domain names raise some unique
trademark issues. A mark comprised of an
Internet domain name is registrable as a
trademark or service mark only if it
functions as an identifier of the source of
goods or services. Portions of the uniform
resource locator (URL) including the
beginning, (“http://www.”) and the top
level Internet domain name (TLD) (e.g.,
“.com,” “.org,” “.edu,”) function to
indicate an address on the World Wide Web,
and therefore generally serve no source-
indicating function. See TMEP §§1215 et
seq. regarding marks comprising domain
names. TLDs may also signify abbreviations
for the type of entity for whom use of the
cyberspace has been reserved. For example,
the TLD “.com” signifies to the public that
the user of the domain name constitutes a
commercial entity. See Goodyear’s India
Rubber Glove Mfg. Co. v. Goodyear Rubber
Co., 128 U.S. 598, 602 (1888)(“The addition
of the word ‘Company’ [to an otherwise
generic mark] only indicates that parties
have formed an association or partnership
to deal in such goods . . . .” and does not
render the generic mark registrable).
If a proposed mark includes a TLD such
as “.com”, “.biz”, “.info”, the examining
attorney should present evidence that the
term is a TLD, and, if available, evidence
of the significance of the TLD as an
abbreviation (e.g. “.edu” signifies an
educational institution, “.biz” signifies a
business).
Because TLDs generally serve no source-
indicating function, their addition to an
otherwise unregistrable mark typically
cannot render it registrable. See
Goodyear, 128 U.S. at 602 (the
incorporation of a term with no source-
indicating function into an otherwise
generic mark cannot render it registrable).
For example, if a proposed mark is composed
of merely descriptive term(s) combined with
Serial No. 75/795,407
9
a TLD, the examining attorney must refuse
registration on the Principal Register
under Trademark Act §2(e)(1), 15 U.S.C.
§1052(e)(1), on the ground that the mark is
merely descriptive. See TMEP §1215.04.
Similarly, if a proposed mark is
composed of generic term(s) for the
applicant’s goods or services and a TLD,
the examining attorney must refuse
registration on the ground that the mark is
generic. See TMEP §§1209.01(c)(i) and
1215.05.

See TMEP §1209.03(m).
Here, while applicant’s mark does not function as a
top level domain name such as “.com” (or, as pronounced,
“dot com”), nevertheless there is no question but that
applicant’s mark DOTSEX is the literal equivalent of the
expression “.SEX” or “.sex”. The computer literate, and
presumably the users of applicant’s services would be in
that category, would, of course, be familiar with the
pronunciation of such expressions as “.com”, “.org”,
“.net”, etc. Moreover, the evidence of possible future use
of “.sex” as a top level domain name is significant, not
because it may become one, but rather because a significant
segment of the relevant public may view applicant’s mark as
having the descriptive significance of an Internet site
providing connections of a sexual nature.4

4 We note that some of the excerpts of record discussing possible use of
“.sex” as a top level domain name precede applicant’s filing date. The
Serial No. 75/795,407
10
It is our opinion that the character “.”, or the word
“dot,” when used in connection with the promotion or
display of a Web site (rather than as part of the Web
site’s address), does not serve to alter the essential
significance thereof. The character “.” or its literal
equivalent “dot,” has significance, according to this
record, of indicating an online or Internet connection.
The word “dot” (or “DOT”) along with the word “SEX,” used
in conjunction with applicant’s online services,
immediately tells prospective customers and users that
applicant’s Web site provides access to content of a sexual
nature. The fact that applicant does not use the asserted
mark as a TLD but rather only to identify a Web site that
provide links to other sites of a sexual nature, does not
serve to detract from the direct information conveyed by
the term. The term DOTSEX, used in connection with a Web
site that provides links to other sites of a sexual nature,
does not require the use of imagination or perception to
understand the term’s descriptive significance. The term
is more than suggestive; it is merely descriptive. We
conclude that the asserted mark DOTSEX merely describes a
significant quality, feature or characteristic of

application was filed on the basis of an allegation of bona fide
intention to use the mark in commerce.
Serial No. 75/795,407
11
applicant’s services of providing a Web site with links to
other sites of a sexual nature. Compare In re
CyberFinancial.Net, Inc., ___USPQ2d___, Serial No.
75/482,561 (TTAB August 28, 2002)(BONDS.COM held
unregistrable for, among other things, online informational
services regarding such financial products as debt
instruments and related investments); and In re Martin
Container, Inc., 65 USPQ2d 1058 (TTAB 2002)(where the Board
found the designation CONTAINER.COM to be generic and
incapable of registration on the Supplemental Register when
used in connection with “retail store services and retail
services offered via telephone featuring metal shipping
containers” and “rental of metal shipping containers.”
Decision: The refusal to register is affirmed.