Freda

Trademark Trial and Appeal Board

Feb 9, 2004

No. 75888260 (T.T.A.B. Feb. 9, 2004)

Mailed: February 9, 2004
Paper No. 13
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Freda
________
Serial No. 75888260
_______
Keith M. Stolte of McDermott Will & Emery for Gerald P. Freda.
Karla Perkins, Trademark Examining Attorney, Law Office 102
(Thomas Shaw, Managing Attorney).
_______
Before Hohein, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Gerald P. Freda, a United States citizen, has filed an
application to register the term "FOODBIDS.COM" as a service mark
for "on-line auction services in the area of wholesale food and
related products; [and] providing a web site on global computer
networks featuring an interactive on-line auction and bidding
process featuring food products, food preparation products, food
service products, food handling services, food distribution
services, food storage services, food transport services, food
inspection services, and restaurant, kitchen and dining room
equipment and products."1
1 Ser. No. 75888260, filed on January 5, 2000, which is based on an
allegation of a bona fide intention to use such term in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75888260
2
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis
that, when used in connection with such services, the term
"FOODBIDS.COM" is merely descriptive of them.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it forthwith conveys
information concerning any significant ingredient, quality,
characteristic, feature, function, purpose, subject matter or use
of the goods or services. See, e.g., In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987) and In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It is not
necessary that a term describe all of the properties or functions
of the goods or services in order for it to be considered to be
merely descriptive thereof; rather, it is sufficient if the term
describes a significant attribute or idea about them. Moreover,
whether a term is merely descriptive is determined not in the
abstract but in relation to the goods or services for which
registration is sought, the context in which it is being used or
is intended to be used on or in connection with those goods or
services and the possible significance that the term would have
to the average purchaser of the goods or services because of the
manner of such use. See In re Bright-Crest, Ltd., 204 USPQ 591,
593 (TTAB 1979). Thus, "[w]hether consumers could guess what the
Ser. No. 75888260
3
product [or service] is from consideration of the mark alone is
not the test." In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
Preliminarily, we note as background that applicant, in
its response to the second Office Action, stated that it "is
still in the process of developing how the auction services would
operate." Applicant further indicated, however, that:
Again, Applicant has not yet adopted the
exact system for the bidding process, but
contemplates that the process may include
suppliers setting a firm price for their
goods and services, and consuming entities
agreeing to this set price. Alternatively or
even concurrently, consuming entities may be
invited to describe their needs for goods and
services and invite suppliers to set a
purchase price at which they would sell the
goods and services. The bidding process may
also permit the supplier to set a minimum
price and invite consuming entities to place
competing bids until a set time is reached--
the highest bidder is then obligated to
purchase the goods or services at the highest
bid price. The bidding process may also
permit the consuming entity to describe its
needs and set a maximum price and invite
suppliers to place competitive lower bids for
prices at which the suppliers would sell the
goods or services--the lowest supplier is
then obligated to sell the goods or services
at the lowest price bid. The bidding process
may well have a combination of these
procdures [sic].
Applicant argues in its brief that the record in this
appeal reflects that there nonetheless has been a failure "to
demonstrate a prima facie case that the mark is merely
descriptive" of its on-line auction services. In particular, as
to the evidence made of record with the final refusal, which
applicant characterizes as "20 terse Nexis excerpts out of a
field of 193 in which the word food appeared near a formative of
Ser. No. 75888260
4
the word bid," applicant contends that "[n]one of these excerpts,
on their face, ... describe[s] a formal auction service involving
food or food service products and services." While additionally
pointing out that, in response to applicant's request for
reconsideration, "the Examining Attorney supplied five more
complete Nexis articles, a dictionary excerp [sic] for the term
auction (demonstrating that bids are made at auctions) and three
... third[-]party web page printouts," applicant asserts that
"[n]one of these materials show[s] the use of the term FOODBIDS
or FOOD BIDS in connection with an on-line auction service in the
food service industry." Applicant maintains, in view thereof,
that:
[B]ased on the record now before the Board,
it has simply not been established that
Applicant's mark, when used on or in
connection with its online auction services
..., conveys an immediate idea about the
services with any degree of particularity.
The Examining Attorney has failed to
demonstrate how the relevant purchasers would
likely regard the term FOODBIDS.COM and there
is no evidence that the relevant consumers
would readily understand a connection between
the mark and the Applicant's services.
Instead, Applicant respectfully submits that
the significance of the mark and specifically
what it describes about the services is
ambiguous and unclear. The Examining
Attorney has left too much for speculation
and assumption.
Applicant also indicates in its brief that it "is
unable to locate any definition in any dictionary that defines
the word FOODBIDS" and "submits that this term is not used by the
trade or any other persons in the food service industry." Thus,
applicant argues, "no one would be inconvenienced by the
Applicant obtaining an exclusive right to use the word as a whole
Ser. No. 75888260
5
as a source indicator for its services." Moreover, applicant
asserts that "FOODBIDS does not directly and only mean" an on-
line auction service "featuring foods, various food related
services or kitchen and dining room equipment" inasmuch as "[a]
series of mental actions must take place in the mind of a
prospective consumer before he or she arrives at the possibility
that FOODBIDS might have this meaning." That such a "series of
mental activities" is necessary, applicant contends, demonstrates
that "the mark as a whole is suggestive, not merely descriptive."
The Examining Attorney, on the other hand, maintains in
her brief that "applicant's mark, FOODBIDS.COM, merely describes
a feature and characteristic of the applicant's services." In
particular, she contends that "[u]pon encountering the
applicant's mark, prospective consumers will immediately and
directly know that the services allow consumers to make or
procure bids on food." As such, she urges that "[t]he mark
forces no mental pause or flight of imagination to determine the
nature of the services" and, thus, that "the mark is merely
descriptive and is not entitled to registration on the Principal
Register."
In support of her position, the Examining Attorney
observes that "applicant's composite mark consists of the
descriptive words FOOD and BIDS and a top level domain name
.COM." She insists that, when considered "[a]s a whole, the
combination FOODBIDS.COM fails to create a unitary mark with a
separate and distinctive meaning." Instead, according to the
Examining Attorney, "[t]he combined wording continues to import
Ser. No. 75888260
6
the same meaning as the individual component parts." Relying,
specifically, on copies of certain dictionary definitions which
she furnished with her brief,2 the Examining Attorney argues that
(footnote omitted; italics in original):
The wording FOOD is defined as
"[m]aterial, usually of plant or animal
origin, that contains or consists of
essential body nutrients, such as
carbohydrates, fats, proteins, vitamins, or
minerals, and is ingested and assimilated by
an organism to produce energy, stimulate
growth, and maintain life." The American
Heritage Dictionary of the English Language
684 (4th ed. 2000). BIDS is the plural form
of the word BID which is relevantly defined
as "[t]o offer or propose (an amount) as a
price," "[t]o mark an offer to pay or accept
a specified price," "[a]n offer or proposal
of a price" and "[t]he amount offered or
proposed ...." Id. at 178. One need only
consider the plain meaning of the words FOOD
and BIDS to a have a clear understanding of
significant aspects of the applicant's
services.
The top level domain .COM fails to
function as a source indicator. Instead, it
merely indicates that the user of the domain
name is a commercial entity. The wording
.COM is defined as an abbreviation of
"commercial organization (in Internet
addresses)." The American Heritage
Dictionary of the English Language 367 (4th
ed. 2000). COM is also defined as a "type of
Internet domain assigned to URLs which are
business or commercial entities ...."
Newton's Telecom Dictionary 188 (2003).
Furthermore, the ... Board has held that the
top level domain designation ".com" does not
2 We grant the Examining Attorney's request therein that "the Board
take judicial notice of the dictionary definitions for FOOD, BID and
COM" attached to her brief since it is settled that the Board may
properly take judicial notice of dictionary definitions. See, e.g.,
Hancock v. American Steel & Wire Co. of New Jersey, 203 F.2d 737, 97
USPQ 330, 332 (CCPA 1953); University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); and Marcal Paper Mills,
Inc. v. American Can Co., 212 USPQ 852, 860 (TTAB 1981) at n. 7.
Ser. No. 75888260
7
have trademark significance or source
indicating capability. In re Martin
Container, Inc., 65 USPQ2d 1058, 1060 (TTAB
2002) (The Board held CONTAINER.COM to be
generic ... when used in connection with
"retail store services featuring metal
shipping containers" and "rental of metal
shipping containers."); In re
CyberFinancial.Net, Inc.[,] 65 USPQ2d 1789
(TTAB 2002) (The Board found as a whole
BONDS.COM was no less generic than its
constituents for use with, inter alia, online
informational services regarding such
financial products as debt instruments and
related investments.)
The composite wording FOODBIDS.COM
instantly conveys that the services involve
the offer to pay or accept a specified price
for material that is ingested in order to
maintain life. Simply stated, the mark
directly communicates that the services
involve bids on food.
As further support for her position, the Examining
Attorney relies on various excerpts of record from the "NEXIS"
database which, she asserts, demonstrate that "the relevant
purchasing public encounters the terms 'food bid' and 'food
bids' used in a manner which descriptively refer to services
involving bidding or the results of bidding services." The
following excerpts are representative (emphasis added):
"Approved food bids for ice cream, juice
and milk." -- Times Union (Albany, NY),
August 9, 2001 (article headlined:
"GOVERNMENT ACTION");
"The taste test winners will then be
considered as the school district prepares
food bids for next year." -- Atlanta Journal
& Constitution, February 15, 2001 (article
headlined: "A lesson on school meals");
"Food bids Here's how Priceline.com
grocery shopping works: *Name your price on
the Web site *Your bid is accepted or ...."
Ser. No. 75888260
8
-- Sun Herald (Biloxi, MS), July 23, 2000
(article headlined: "SHOPPING.CHEAP
PRICELINE LETS SHOPPERS NAME THEIR PRICE AT
SUPERMARKETS");
"The food bids the board approved Monday
will feed students from Aug. 5 through Jan.
14." -- Indianapolis Star, July 16, 2000
(article headlined: "Board gives its
blessing to semester food bids");
"Approved the school lunch food bid
awards to Ginsberg, Quandt's and Bevaco food
services." -- Times Union (Albany, NY),
February 26, 1998;
"Canteen's management fee was the
highest among the four bidders, but its food
bid was the lowest.
All bids are maximum allowable amounts,
and if savings are realized through low food
prices or other means, they will be ...." --
Morning Call (Allentown, PA), July 11, 1997
(article headlined in part: "COUNTY PRISON
HAS RECEIVED A BID TO MAKE MEALS AT A COST OF
86-1/2 CENTS"); and
"In Tulsa, School Superintendent Harry
Gowans and the school board were sorting out
food bids to meet a state directive that a
free school lunch program be established." --
Tulsa World, January 18, 1997.
In addition, the Examining Attorney points out that
"the website evidence, included in the record, shows use of the
[same] descriptive wording by those in the relevant industry.
For instance, as to the two printouts furnished with the final
refusal, the page from the "Virginia Market News Service" refers
to "Food Bids & Purchases" under the heading "Market News," while
the page from the "PROCUREMENT SERVICES GROUP" lists "Food Bids"
for such "Solicitation Items" as "Bakery and Pudding Mixes,"
"Apple Juice," "Coffee, Decaffinated [sic]," "Mayonnaise, Reduce
Calorie" and "Food Container with Lid." Similarly, with respect
Ser. No. 75888260
9
to the printouts attached to the denial of the request for
reconsideration, a page from the "Cobb County Public Schools FOOD
& NUTRITION SERVICES" states in reference to "food bids" that
"[b]ids are awarded to the vendors who have the highest quality
products and [the] best prices," with all "bids" being "annual
bids, except produce." The other two examples consist of a
reference to "Food Bids" in a page from an Indiana School Board
website and a mention of "Food Bid Awards" in a page from the
"KEDC BIDDING CONSORTIUM"3 website. The Examining Attorney
maintains that such "website excerpts illustrate food bids in the
context of government procurement through a bidding process."
We concur with the Examining Attorney that, when
considered in its entirety, the term "FOODBIDS.COM" is merely
descriptive of a significant characteristic or feature of
applicant's services, namely, the food bids requested through and
received by applicant's commercially available "on-line auction
services in the area of wholesale food and related products,"
which it renders by "providing a web site on global computer
networks featuring an interactive on-line auction and bidding
process featuring food products," etc. The word "auction," the
record shows, is defined by The American Heritage Dictionary of
the English Language (3rd ed. 1992) in relevant part as meaning
"[a] public sale in which property or items of merchandise are
sold to the highest bidder." Strictly speaking, applicant is
correct in arguing that none of the "[NEXIS] excerpts, on their
3 "KEDC" is indicated in the excerpt to stand for "Kentucky Educational
Development Corporation."
Ser. No. 75888260
10
face, ... describe[s] a formal auction service involving food or
food service products and services." Nonetheless, it is clear
that large institutions such as school districts and prisons
routinely contract for their food needs with suppliers through
what is essentially an auction process involving what are
referred to in the trade as "food bids." The website excerpts,
moreover, reflect the fact that such auctions can be, and in fact
some are, conducted on-line through websites, which post food
bids advertised by institutions and those offered by suppliers.
Consequently, as both the evidence of record and applicant's
remarks concerning the contemplated operation of its services
make plain, food bids serve as the means by which, for example,
institutional consumers can indicate to suppliers the highest
prices which they would be willing to pay for various specified
food items, while suppliers, for instance, can utilize food bids
to seek buyers for their particular food products at the highest
prices which they are willing to offer to institutional
customers.
The record, in short, is sufficient to demonstrate
prima facie that the term "FOODBIDS.COM" immediately describes,
without the need for speculation or conjecture, a commercial
website which provides a listing of food bids as part of an on-
line auction service in the area of wholesale food and related
products. Nothing in such term is ambiguous, incongruous or
otherwise requires the use of imagination or the gathering of
further information in order for purchasers and potential
customers of applicant's services to readily understand that bids
Ser. No. 75888260
11
on various food products may be made or obtained through the use
of applicant's services. The "FOODBIDS" portion of the term
sought to be registered by applicant has the same readily
conveyed connotation as the combination of the words "FOOD" and
"BIDS" into the phrase "FOOD BIDS" and, as will be later
explained, nothing therein is changed or modified by the addition
of the top level domain name ".COM" as an indicator of a
commercial organization. See, e.g., In re CyberFinancial.Net
Inc., 65 USPQ2d 1789, 1792 (TTAB 2002) [when used in connection
with such services as "providing information regarding financial
products and services via a global computer network ..., with
respect to taxable and tax exempt debt instruments," the "public
would not understand BONDS.COM to have any meaning apart from the
meaning of the individual terms ['BONDS' and '.COM'] combined"].
Furthermore, even if, as asserted by applicant, any
potential competitor "would not be inconvenienced" by applicant's
contemplated use of the term "FOODBIDS.COM," the fact that others
in applicant's line of contemplated business may choose to
describe the same or similar auction services by different words
does not mean that the term "FOODBIDS.COM" is not merely
descriptive of applicant's services. See, e.g., Roselux Chemical
Co., Inc. v. Parsons Ammonia Co., Inc., 299 F.2d 855, 132 USPQ
627, 632 (CCPA 1962). It is also pointed out that, even if
applicant intends to be or is the first or sole user of such
term, that fact would not entitle it to registration thereof
where, as here, the term has been shown to project only a merely
descriptive significance in the context of applicant's services.
Ser. No. 75888260
12
See, e.g., In re National Shooting Sports Foundation, Inc., 219
USPQ 1018, 1020 (TTAB 1983).
Finally, we note that although applicant does not
appear to argue otherwise, the Examining Attorney is correct that
the term ".COM," which serves as a top-level domain name in the
context of applicant's services, "does not have trademark
significance or source indicating capability." See, e.g., 555-
1212.com Inc. v. Communication House International Inc., 157 F.
Supp. 2d 1084, 59 USPQ2d 1453, 1457-59 (N.D. Cal. 2001) [term
"555-1212.com" held merely descriptive of "providing databases
featuring telephone and directory information accessible via
electronic communication networks" because, "[m]uch like the
telephone number '411' for local calls, '555-1212' is the number
one would dial (after an area code) to seek out telephone and
directory information services outside of one's local area code"
and, thus, "[t]o the average consumer, '555-1212.com' would
indicate a commercial web site on the Internet which provides
similar telephone and directory information"]; and 1 J. McCarthy,
McCarthy on Trademarks & Unfair Competition §7:17.1 (4th ed.
2002) at 7-28.1 ["a top level domain ['(TLD)'] indicator [such as
'.com'] has no source indicating significance and cannot serve
any trademark [or service mark] purpose" and "[t]he same is true
of other non-distinctive modifiers used in domain names, such as
'http://www" and "html"; consequently, because "the TLD '.com'
functions in the world of cyberspace much like the generic
indicators 'Inc.,' "Co.,' or 'Ltd.' placed after the name of a
company," "[a] top level domain indicator like '.com' does not
Ser. No. 75888260
13
turn an otherwise unregistrable designation into a distinctive,
registrable trademark [or service mark]"]. Thus, as indicated
previously, the result is that the merely descriptive
significance of the words "food" and "bids," when combined to
form the term "FOODBIDS," is not lost or diminished by the
addition thereto of the designation ".COM" to form the term
"FOODBIDS.COM." The designation ".COM," being a top level domain
name, would instead be regarded as indicating a commercial
website by the actual and potential customers of applicant's on-
line auction services and by visitors to the website it provides.
Such designation, therefore, is lacking in service mark
significance. See, e.g., In re Martin Container Inc., 65 USPQ2d
1058, 1060 (TTAB 2002) ["CONTAINER.COM" for services of buying,
selling and renting metal shipping containers "would immediately
indicate a commercial web site on the Internet which provides
containers"].
Accordingly, when used in connection with applicant's
"on-line auction services in the area of wholesale food and
related products" and its services of "providing a web site on
global computer networks featuring an interactive on-line auction
and bidding process featuring food products, etc.," the term
"FOODBIDS.COM" in its entirety immediately conveys information
that a significant feature or characteristic of such commercial
services is the food bids which are part of the procurement
process which applicant intends to render in connection with the
wholesaling of food and food related products. Such term,
Ser. No. 75888260
14
therefore, is merely descriptive of applicant's services within
the meaning of the statute.
Decision: The refusal under Section 2(e)(1) is
affirmed.