Herzog-Elmiger Inc.

Trademark Trial and Appeal Board

May 20, 2002

No. 75898699 (T.T.A.B. May. 20, 2002)

5/20/02 Paper No. 9
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Herzog-Elmiger Inc.
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Serial No. 75/898,699
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Jay S. Horowitz, Esq. for Herzog-Elmiger Inc.

David C. Reihner, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney).
_______

Before Simms, Cissel and Hohein, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Herzog-Elmiger Inc. has filed an application to
register the term "VENEERONLINE.COM" as a service mark for
"wholesale mail order, catalog order, and on-line order services
in the field of wood veneers."1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the

1 Ser. No. 75/898,699, filed on January 19, 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. 75/898,699
2
basis that, when used in connection with applicant's services,
the term "VENEERONLINE.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-
Ser. No. 75/898,699
3
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Thus, "[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 (TTAB 1985).
Applicant, in its brief, candidly admits that it "does
not dispute that its mark is formed from descriptive terms."
Applicant submits, however, that among other things, "its mark
as a whole should not be regarded as descriptive" because "the
term VENEERONLINE.COM does not merely describe Applicant's
services."2 Although the reason for such assertion is not

2 Over half of applicant's brief is devoted, however, to what seems to
be an argument that the mere descriptiveness refusal is premature
because applicant has yet to submit specimens of use of the term it
seeks to register as its mark. Applicant's argument appears to be
predicated on the Examining Attorney's citation in his final refusal
to In re Eilberg, 49 USPQ2d 1955 (TTAB 1998), a case involving a
refusal to register the term "WWW.EILBERG.COM" on the basis of the
failure thereof to function as a mark rather than on the ground of
mere descriptiveness. Such case was cited in support of the
proposition that the "ONLINE.COM" portion of the term which applicant
seeks to register is not source-indicative because it "form[s] a
commonly used internet address for those who have web sites."
However, apparently because the Examining Attorney went on to state
that "because the designation appears to form part of an address
commonly used by internet users and merely indicates the location on
the internet where applicant's web cite could appear, it does not
indicate the source of applicant's services," applicant contends that
a refusal to register in the absence of its having commenced use is
premature.

While applicant would be correct to the extent that a refusal of
registration on the ground of failure to function as a mark would be
premature absent the submission of specimens of use (and, we further
note, would also be premature by virtue of its having been raised for
the first time in the final refusal), the sole ground of refusal which
is properly before us on appeal is that of mere descriptiveness. As
the Examining Attorney, citing Eastman Kodak Co. v. Bell & Howell
Document Management Products Co., 994 F.2d 1569, 26 USPQ2d 1912, 1915
(Fed. Cir. 1993) correctly observes in his brief, mere descriptiveness
Ser. No. 75/898,699
4
explicitly stated, it appears from applicant's citation to Q-
Tips, Inc. v. Johnson & Johnson, 206 F.2d 144, 98 USPQ 86, 88
(3rd Cir. 1953) at n. 8, for the proposition that "two or more
descriptive terms may be combined to form a valid, arbitrary
trademark," that applicant is contending that the combination of
the admittedly descriptive terms comprising the term
"VENEERONLINE.COM" results in a nondescriptive phrase or
designation. However, as stated by the Board in, for example,
In re Medical Disposables Co., 25 USPQ2d 1801, 1804 (TTAB 1992),
in order for such to be the case:
[T]he mere act of combining does not in
itself render the resulting composite a
registrable trademark. Rather, it must be
shown that in combination the
descriptiveness of the individual words
[and/or term] has been diminished, [such]
that the combination creates a term so
incongruous or unusual as to possess no
definitive meaning or significance other
than that of an identifying mark for the
goods [or services]. See In re Calspan
Technology Products, Inc., 197 USPQ 647
(TTAB 1977).

We concur with the Examining Attorney that the
combination of the admittedly descriptive terms "VENEER" and

and failure to function as a mark "are different issues." Thus, as
the Examining Attorney also properly notes, the refusal on the former
ground may be determined in the absence of specimens of use inasmuch
as such "refusal is not predicated upon how the mark is used in
commerce, as was the situation in Eilberg, supra, but [upon] the
descriptive aspect of the designation [sought to be registered]
itself." The refusal on the basis of mere descriptiveness, therefore,
is not premature.

Ser. No. 75/898,699
5
"ONLINE.COM" to form the term "VENEERONLINE.COM" is merely
descriptive of applicant's "wholesale mail order, catalog order,
and on-line order services in the field of wood veneers."
Combining such terms does not create a composite which is so
incongruous or unusual, or which otherwise possesses a new
meaning different from its constituent terms, as to possess no
definitive meaning or significance other than that of an
identifying mark for applicant's services. Instead, as
succinctly noted by the Examining Attorney in his brief:
The word "veneer" identifies the goods that
are the central characteristic of
applicant's services and the designation
"online.com" identifies a computer address
commonly used on the Internet, which when
combined indicates that a potential
purchaser could access, by way of the
Internet, applicant's services involving
wood veneers.

As support for the latter, the Examining Attorney has
made of record definitions from the Microsoft Press Computer
Dictionary (3d ed. 1997) which in relevant part defines ".com"
as connoting "1. In the Internet's Domain Name System, the top-
level domain that identifies addresses operated by commercial
organizations. The domain name .com appears as a suffix at the
end of the address" and "online" as meaning "3. In reference to
a user, currently connected to the Internet, an online service,
or a BBS or using a modem to connect to another modem." In
addition, the Examining Attorney, by a search of the "NEXIS"
Ser. No. 75/898,699
6
online database, has made of record numerous examples, of which
the following are representative, of commercial websites which
utilize "online.com" as a portion of their domain names:
"Textileparts - online
(www.textileparts- online.com) hopes to use
the Internet to electronically link textile
machinery suppliers and buyers while
addressing supply chain inefficiencies." --
Textile World, November 2000 (article
headlined: "NEW FIRM SPECIALIZES IN
PARTS"); and

"Lloyd's ... recently introduced an on-
line system for buying total loss only (TLO)
reinsurance via the internet.
The syndicates say that www. tlo-
online.com has been developed to speed the
process of obtaining cover in this
relatively specialized area of marine
reinsurance." -- Reinsurance Magazine,
October 9, 2000.

Clearly, in light of the above evidence (and
regardless of applicant's admission of the descriptiveness of
the component elements thereof), the term "VENEERONLINE.COM"
directly conveys significant information about the nature of
applicant's services, namely, that they involve, among other
things, the online commercial ordering of veneers.
Specifically, inasmuch as the language "wood veneers" appears in
applicant's recitation of services, there is simply no question
that the word "VENEER" in the term "VENEERONLINE.COM" signifies
to customers for such services its ordinary meaning and thus
merely describes that one of the central features of applicant's
Ser. No. 75/898,699
7
"wholesale mail order, catalog order, and on-line order services
in the field of wood veneers" is the sale of such products.
Moreover, as to the term "ONLINE.COM," not only is the ".COM"
portion thereof lacking in service mark significance because, as
a top level domain name, it would be regarded as designating a
commercial website by actual and potential customers of
applicant's services, but the "ONLINE" portion thereof plainly
indicates the online nature of such services and would likewise
be so understood. 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" is 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-
Ser. No. 75/898,699
8
distinctive modifiers used in domain names, such as 'http://www"
and "html"; thus, 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 turn an otherwise
unregistrable designation into a distinctive, registrable
trademark [or service mark]"].
Consequently, when used in connection with applicant's
"wholesale mail order, catalog order, and on-line order services
in the field of wood veneers," the term "VENEERONLINE.COM"
immediately describes, without conjecture or speculation, that
the nature, purpose or subject matter of such services includes
online commercial ordering of veneers. Plainly, when viewed in
the context of applicant's services, persons desiring to find
information on the Internet which pertains to ordering of wood
veneers will know directly, without the need for the exercise of
imagination, cogitation or mental processing or the gathering of
further information, that applicant's "VENEERONLINE.COM"
services encompass a commercial online website devoted to
veneers. Nothing in such term, as noted previously, is
ambiguous, incongruous or perhaps susceptible to any other
plausible meaning. The term "VENEERONLINE.COM" is accordingly
merely descriptive of applicant's services within the meaning of
the statute. See, e.g., In re Putnam Publishing Co., 39 USPQ2d
Ser. No. 75/898,699
9
2021, 2022 (TTAB 1996) ["FOOD & BEVERAGE ON-LINE" for "a news
and information service updated daily for the food processing
industry, contained in a database" held merely descriptive
because the term "ON-LINE" describes the mode through which the
service is rendered and the term "FOOD & BEVERAGE" describes its
subject matter; therefore, "the relevant class of consumers will
immediately understand, without the need for imagination,
thought or perception, that applicant's FOOD & BEVERAGE ON-LINE
news and information service provides food and beverage news and
information via interactive computer access"].
Decision: The refusal under Section 2(e)(1) is
affirmed.