Industrial Risk Insurers

Trademark Trial and Appeal Board

Feb 14, 2008

No. 76097495 (T.T.A.B. Feb. 14, 2008)

Mailed: 2/14/08

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Industrial Risk Insurers
________

Serial No. 76097495
_______

Hugh D. Jaeger for Industrial Risk Insurers.

Ronald E. Aikens, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Quinn, Zervas and Wellington, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Industrial Risk Insurers filed an application to
register the mark “industrialrisk.com” (standard character
form in lowercase letters) for “insurance underwriting in
the field of fire, accident and casualty loss for
industries.”1

1 Application Serial No. 76097495, filed July 27, 2000, alleging
first use anywhere and first use in commerce on August 15, 1997.
Applicant subsequently changed the filing basis, deleting the use
basis under Section 1(a) and substituting therefor an intent-to-
use basis under Section 1(b). Applicant later filed a statement
of use setting forth the same dates of first use.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 76097495
2
The trademark examining attorney refused registration
under Sections 1, 3 and 45 of the Trademark Act on the
basis that the matter sought to be registered is used by
applicant only in the informational designation
“industrialrisk.com,” which is merely an address or domain
name and, as such, fails to function as a service mark.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Given the unusual history of the involved application
after the appeal, a brief review of this history is in
order. When the examining attorney issued a final refusal
based on the finding that the specimen of record did not
show use of the proposed mark as a service mark, applicant
appealed. The original notice of appeal was filed on May
23, 2002, almost six years ago. The notice of appeal
included a request for an oral hearing. After receiving
extensions of time to file a brief, applicant filed its
appeal brief on March 17, 2003. The Board, in an order
dated April 30, 2003, indicated that the appeal brief did
not conform to the requirements of Trademark Rule
2.142(b)(2). The Board accordingly ruled that it would not
consider the nonconforming brief, but that the appeal would
not be dismissed. The examining attorney filed a brief and
an oral hearing was scheduled. Before the oral hearing was
Ser No. 76097495
3
held, applicant filed a request for remand, asserting that
it desired to change the filing basis of its application,
from a use-based application under Section 1(a) to an
intent-to-use application under Section 1(b).
Notwithstanding the late juncture of the appeal, the Board,
on February 27, 2004, remanded the application to the
examining attorney due to the fact that the proposed change
in filing basis might obviate the refusal to register.
Applicant filed, on March 22, 2004, a communication wherein
it noted the suspension of the appeal and remand to the
examining attorney, and further stated “it is believed that
the oral hearing likewise will be deferred, if even ever
necessary.” The examining attorney accepted the proposed
change in filing basis, and the mark was published as an
intent-to-use mark. When no opposition was filed, the
Office issued a notice of allowance. Applicant
subsequently filed a statement of use, accompanied by a
specimen showing the alleged mark as actually used in
commerce, and the examining attorney once again issued a
refusal based on his view that the matter sought to be
registered failed to function as a mark. Applicant
responded by submitting a substitute specimen, but the
examining attorney was not persuaded, and he issued a final
refusal. Applicant filed a new notice of appeal on March
Ser No. 76097495
4
17, 2006. After being granted several requests to extend
its time to file an appeal brief, applicant finally filed a
“brief” on May 17, 2007. The entirety of the brief is as
follows: “Applicant has registered marks, as attached, for
IRI INDUSTRIAL RISK INSURERS, Reg. Nos. 1,1740,188 and
2,073,280. The above mark INDUSTRIALRISK.COM is a
derivative mark.” The examining attorney then filed his
brief. Applicant neither filed a reply brief nor a renewed
request for an oral hearing.
We affirm the refusal to register.
A mark comprising of an Internet domain name is
registrable as a service mark only if it functions as an
identifier of the source of the services. As indicated in
Section 1215.01 of the Trademark Manual of Examining
Procedure (TMEP) (5th ed. 2007):
A domain name is part of a Uniform
Resource Locator (“URL”), which is the
address of a site or document on the
Internet. In general, a domain name is
comprised of a second-level domain, a
“dot,” and a top-level domain (“TLD”).
The wording to the left of the “dot” is
the second-level domain, and the
wording to the right of the “dot” is
the TLD.

Example: If the domain name is
“ABC.com,” the term “ABC” is a second-
level domain and the term “com” is a
TLD.

Ser No. 76097495
5
A domain name is usually preceded in a
URL by “http://www.” The “http://”
refers to the protocol used to transfer
information, and the “www” refers to
World Wide Web a graphical hypermedia
interface for viewing and exchanging
information.

The mark as depicted on the specimen must be presented in a
manner that will be perceived by potential purchasers to
indicate source and not merely an informational indication
of the domain name address used to access a web site. See
In re Eilberg, 49 USPQ2d 1955 (TTAB 1998). It is the
perception of the relevant ordinary consumer that
determines whether the asserted mark functions as a mark,
not the applicant’s intent, hope or expectation that it
does so. See In re Standard Oil Co., 275 F.2d 945, 125
USPQ 227 (CCPA 1960). See also TMEP §§1209.03(m),
1215.02(a). If the proposed mark is used in a way that
would be perceived as nothing more than an Internet address
where the applicant can be contacted, registration must be
refused.
Applicant submitted two different copies of the same
webpage. The original specimen of record is a screen
capture of the webpage, and the second specimen is a
printed copy of the text contained on the screen capture.
Applicant’s specimens of record show use of the applied-for
mark only in the URL of the displayed webpage (in the
Ser No. 76097495
6
address window of the Microsoft Explorer Web browser), and
at the bottom left corner edge of a printed copy of the
webpage (where printers note the source of the copy).
Moreover, in both instances, the applied-for mark appears
only in the form “http://www.industrialrisk.com”. No other
reference to “industrialrisk.com” is found in the
specimens.
The applied-for mark is used in the specimens in a way
that would be perceived as nothing more than part of
applicant’s domain name address or location on the
Internet. The specimens only show the term embedded in
applicant’s web site address. The applied-for mark is
purely informational in that it is used only to direct one
to a particular website, and not as a source indicator. In
re Eilberg, 49 USPQ2d at 1956.
Applicant’s contention that the applied-for mark is a
“derivative mark” and, thus, capable of registration, is
not understood. Firstly, we are unaware of any special
category of mark described as a “derivative mark.”
Secondly, to the extent that applicant is claiming that its
registration of other marks, such as IRI and IRI INDUSTRIAL
RISK INSURERS, is relevant to the issue of registrability
of the involved mark, this argument is ill founded. The
fact that applicant owns these other registrations is
Ser No. 76097495
7
irrelevant to the issue herein, that is, whether the
applied-for mark, that is different in nature from
applicant’s registered marks, functions as a service mark.
Each case must stand on its own merits, and registrability
is determined on the record. Further, we would add that
the mere registration of a term as a domain name does not
establish any trademark rights. Brookfield Communications
Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 50
USPQ 1545, 1555 (9th Cir. 1999).
Decision: The refusal to register is affirmed.