F. Merrill Matlovich

Trademark Trial and Appeal Board

Jun 21, 2002

No. 75795272 (T.T.A.B. Jun. 21, 2002)

Mailed: June 21, 2002
Paper No. 9
HRW

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re F. Merrill Matlovich, dba iCam Productions
________

Serial No. 75/795,272
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David L. Garrison of Garrison & Associates PS
for F. Merrill Matlovich.

Maria-Victoria Suarez, Trademark Examining Attorney, Law
Office 102 (Thomas V. Shaw, Managing Attorney).
_______

Before Seeherman, Hohein and Wendel, Administrative
Trademark Judges.

Opinion by Wendel, Administrative Trademark Judge:

F. Merrill Matlovich, dba iCam Productions, has filed
an application to register .SEX for “computerized online
retail store services bringing together, for the benefit of
others, a variety of adult oriented products, namely, adult
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/795,272
2
novelties and toys, marital aids, erotica, and lingerie
available via a global computer network.”1
Registration has been finally refused under Section
2(e)(1) on the ground that the mark would be merely
descriptive, if used in connection with applicant’s recited
services. The refusal has been appealed and both applicant
and the Examining Attorney have filed briefs. An oral
hearing was not requested.
The Examining Attorney maintains that, when applied to
applicant’s online retail store services featuring “adult-
oriented” products, the term SEX immediately describes a
feature or characteristic of these services, i.e., that the
products intended to be sold are sexual in nature. As
evidence of the descriptiveness of the term “sex” when used
in this manner, the Examining Attorney has made of record
copies of several third-party registrations in which the
term SEX has been disclaimed when used as part of a mark
for sexual-related goods and services.
The Examining Attorney further argues that the
addition of the period or dot to the term SEX does not
detract from the descriptiveness of the mark as a whole.
She insists that the public will recognize .SEX as

1 Serial No. 75/795,272, filed October 4, 1999, based on an
allegation of a bona fide intention to use the mark in commerce.
Ser No. 75/795,272
3
signifying an adult-oriented website. In addition, she
points out, as shown from excerpts of articles retrieved
from the Nexis database, the designation .sex has been
proposed as a future TLD (top level domain) for adult-
oriented sites. Thus, she argues, “to the extent potential
consumers view the mark as a TLD, the mark clearly names
the nature of the website provided by the applicant.”
(Brief p. 4).
Applicant contends that the Examining Attorney has
improperly dissected the mark and ignored an important
element, namely the dot proceeding the letters SEX.2 Looking
to the mark as a whole, applicant argues that, although
.SEX might reasonably “suggest that the services with which
it is associated has [sic] to do with products and services
having a sexual connotation” and that, although the dot
“might also suggest, to the perceptive observer, that it
has to do with computer based activities and services,” the
mark is not merely descriptive of applicant’s services.
(Brief p. 2). The mark, according to applicant, requires
the exercise of imagination in order to come to a
conclusion as to the nature of these services.

2 While stressing that the mark should be considered as a whole,
applicant has, in its brief, offered to make a disclaimer of the
word SEX apart from the composite mark, if found to be
appropriate.

Ser No. 75/795,272
4
A term is merely descriptive within the meaning of
Section 2(e)(1) if it immediately conveys information about
a significant characteristic or feature of the services
with which it is being used, or is intended to be used.
See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir
1987); In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215 (CCPA 1978). Whether or not a particular term is
merely descriptive is determined not in the abstract, but
rather in relation to the services for which registration
is sought, the context in which the designation is being
used, and the significance the designation is likely to
have to the average purchaser as he or she encounters the
services bearing the designation, because of the manner in
which it is used. See In re Bright-Crest, Ltd., 204 USPQ
591 (TTAB 1979).
We are fully convinced that the connotation of the
term SEX, when used in connection with retail store
services specializing in the variety of adult oriented
products intended to be offered by applicant, would be
readily and immediately understood by the average purchaser
of these types of products. Applicant’s products are
sexual in nature and the term SEX clearly conveys this
information.
Ser No. 75/795,272
5
Moreover, we fail to see how the addition of a dot to
the term SEX, resulting in .SEX, raises the designation as
a whole above the level of mere descriptiveness. As
pointed out above, the issue of mere descriptiveness is not
determined in the abstract, but rather in relation to the
particular services with which the mark is being used, or
is intended to be used. Applicant’s services are online
retail store services made available via a global computer
network. In other words, the retail services are offered
over the Internet. The use of a dot in Internet addresses
is certainly familiar to all potential purchasers.
Although applicant is using the dot as part of its mark,
and not as an address, the implication that this is an
Internet-related service is clearly conveyed to purchasers.
There is no element of suggestiveness here, as argued by
applicant. There is no need to exercise any imagination in
order to come to a conclusion as to the nature of the
products and the manner in which the products are made
available when the designation .SEX is, or will be used, in
connection with the online retail store services of
applicant in which a variety of adult oriented products are
offered. If perchance there are some potential purchasers
who would not perceive the dot as an indication of an
Internet-related service, we believe to such purchasers the
Ser No. 75/795,272
6
dot would simply be seen as a punctuation mark with little
or no trademark significance.
Although we find no need to consider the potential use
in the future of .sex as a TLD for adult-oriented sites in
order to uphold this refusal, we note that this is yet
another indication of the merely descriptive nature of the
designation when used in connection with adult oriented
goods or services made available via a global computer
network.
Accordingly, we find .SEX is merely descriptive, if
used as intended with applicant’s online retail store
services featuring adult oriented products.
Decision: The refusal to register under Section
2(e)(1) is affirmed.

Ser No. 75/795,272
7