Maplegate Media Group, Inc.

Trademark Trial and Appeal Board

Jun 10, 2008

No. 78814834 (T.T.A.B. Jun. 10, 2008)

Mailed:
June 10, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Maplegate Media Group, Inc.1
________

Serial No. 78814834
_______

Jeffrey L. Van Hoosear of Knobbe, Martens, Olson & Bear,
LLP for Maplegate Media Group, Inc.

Hannah M. Fisher, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney).
_______

Before Walters, Zervas and Walsh, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

Maplegate Media Group, Inc. is the owner of an
application (Serial No. 78814834) filed on February 14,
2006 to register WWW.BOTMAG.COM ROBOT (in standard
character form) for services ultimately identified as
“journals and magazines for hobbyists of robots, robotics,
and computers” in International Class 16. Applicant has

1 On December 19, 2006, the Assignment Branch of the United
States Patent and Trademark Office recorded an assignment of the
application involved in this appeal from Hobby Products
THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Ser No. 78814834
2
claimed use of its mark anywhere on June 20, 2005 and use
of its mark in commerce on September 30, 2005 pursuant to
Trademark Act §1(a), 15 U.S.C. §1051(a). Applicant has
also disclaimed the word ROBOT.
The examining attorney has finally refused
registration under Section 2(e)(1) of the Trademark Act,
15 U.S.C. §1052(e)(1), on the ground that applicant's
proposed mark, if applied to applicant's goods, would be
merely descriptive of them. When the refusal was made
final, applicant filed this appeal and requested
reconsideration. The examining attorney denied the request
for reconsideration and the appeal was resumed. Both
applicant and the examining attorney have filed briefs. We
affirm the refusal to register.
A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics of
the goods or services or if it conveys information
regarding a function, purpose, or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215 (CCPA 1978). See also In re Nett Designs, 236
F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). To be merely
descriptive, a term need only describe a single significant

International Holdings, Inc., the original applicant, to
Maplegate Media Group, Inc. See Reel No. 3447, Frame No. 0661.
Ser No. 78814834
3
quality or property of the goods or services. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Also, “[t]he perception of the relevant purchasing public
sets the standard for determining descriptiveness. Thus, a
mark is merely descriptive if the ultimate consumers
immediately associate it with a quality or characteristic
of the product or service. On the other hand, if a mark
requires imagination, thought, and perception to arrive at
the qualities or characteristics of the goods or services,
then the mark is suggestive.” In re MBNA America Bank
N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003)
(citations and internal quotation marks omitted).
In arguing that BOTMAG is merely descriptive, the
examining attorney relies on entries for “bot” and “mag”
from various online sources. She has made of record an
entry from abbreviations.com providing that “bot” is an
abbreviation for “robot” and on entries from
acronyms.thefreedictionary.com, dictionary.com and Merriam-
Webster Online Dictionary at m-w.com providing that “mag”
is an abbreviation for “magazine.” Applicant has also
submitted a definition of “bot” with its request for
reconsideration from the American Heritage Dictionary
(located a dictionary.reference.com) that identifies “bot”
as “short for robot.” This evidence establishes that in
Ser No. 78814834
4
the context of applicant's goods, i.e., “journals and
magazines for hobbyists of robots, robotics and computers,”
both “bot” and “mag” are generally recognized and have
meaning. The combination of these two abbreviations,
BOTMAG, simply communicates to purchasers that the subject
matter of applicant's magazines is robots, or robotics.2
Applicant, in arguing that BOTMAG is at most merely
suggestive, points out that its two-page list of search
results from the Google search engine for “bot mag” made of
record with its request for reconsideration demonstrates
that “BOTMAG is not a recognized abbreviation or
contraction for ‘robot magazine’”; and that applicant's
“evidence in the nature of printouts from several online
dictionaries [shows] not only is ‘botmag’ … not listed
among the entries, the term ‘bot’ is either not listed, or
is listed as having a variety of meanings, and where it
does refer to an etymology from the word ‘robot,’ it
specifically refers to software robots”; and that “[s]uch
negative dictionary evidence demonstrates that ‘bot’ is not
a generally-recognized abbreviation for ‘robot’ ….” Brief
at unnumbered p. 6. For the following reasons, we do not
find applicant's arguments persuasive. First, that BOTMAG

2 Applicant's specimen of use, the cover of applicant's premier
issue of its magazine, states that “Robot” magazine is “The
Ser No. 78814834
5
is not identified in any dictionary or that there are no
other third-party uses of BOTMAG is not significant; even
if applicant were the only user of BOTMAG in connection
with journals and magazines for hobbyists of robots,
robotics and computers, that fact would not require
reversal of the refusal to register. “[A] word need not be
in common use in an industry to be descriptive, and the
mere fact that an applicant is the first to use a
descriptive term in connection with its goods, does not
imbue the term with source-identifying significance.” In
re Hunter Fan Co., 78 USPQ2d 1474, 1476 (TTAB 2006). See
also In re Ruffin Gaming LLC, 66 USPQ2d 1924 (TTAB 2002).
Second, the fact that a term has significance in a second
field or in a different context is not controlling on the
issue of mere descriptiveness inasmuch as a term may
properly be considered to be merely descriptive so long as
any one of its meanings is descriptive. See, e.g., In re
Chopper Industries, 222 USPQ 258 (TTAB 1984); In re
Champion International Corp., 183 USPQ 318 (TTAB 1974).
In view of the foregoing, even though the evidence
applicant has submitted into the record from
dictionary.reference.com does not indicate that that
“botmag” has any English language meaning, “botmag,” in the

latest in hobby, science and consumer robotics.”
Ser No. 78814834
6
context of applicant's goods, would be immediately
perceived by consumers without imagination, thought and
perception, as an abbreviation for “robot magazine,” or
that the goods are magazines about robots or robotics.3
We next consider the www. and “.com” portions of
applicant's proposed mark. BOTMAG is the only element of
WWW.BOTMAG.COM which provides any source identifying
information; the “www” and “.com” portions of applicant's
proposed mark have no trademark significance. Top-level
Internet domain names (“TLD”) (e.g., “.com,” “.org,”
“.edu”) function to indicate an address on the World Wide
Web, and therefore generally serve no source-indicating
function. Because TLDs generally serve no source-
indicating function, their addition to an otherwise
unregistrable mark typically cannot render it registrable.
See In re Reed Elsevier Properties Inc., 482 F.3d 1376, 82
USPQ2d 1378 (Fed. Cir. 2007) (LAWYERS.COM generic for
“providing an online interactive database featuring
information exchange in the fields of law, legal news and
legal services”); In re Oppedahl & Larson LLP, 373 F.3d
1171, 71 USPQ2d 1370 (Fed. Cir. 2004) (PATENTS.COM merely

3 Applicant's evidence from the Google search engine that “bot
mag” refers to “botanical magazine” is of limited probative
value. “Bot,” in the context of a journal regarding robots or
bots, would not be construed as an abbreviation for “botanical.”

Ser No. 78814834
7
descriptive of computer software for managing a database of
records and for tracking the status of the records by means
of the Internet). See also 1 J. McCarthy, McCarthy on
Trademarks and Unfair Competition, § 7:17.50 (4th ed. 2008)
(footnotes omitted):
The author agrees that a top level domain
designation has no ability to distinguish one
source from another and thus, has no trademark
significance. Such a top level domain indicator
has no source indicating significance and cannot
serve any trademark purpose. The same is true of
other nondistinctive modifiers used in domain
names, such as “http://www” and “html.” … The
average person that uses the Internet is aware of
the standard format for a domain name and knows
that the designations “http,” “www,” and a TLD
like “.com” are a part of every Internet domain
name and identifier. Thus, 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.

We find, therefore, that the Internet address
WWW.BOTMAG.COM immediately identifies a feature of
applicant's goods.
Turning next to the word ROBOT, as mentioned earlier
in this decision, applicant has disclaimed the term. It
has long been held that the disclaimer of a term
constitutes an admission of the merely descriptive nature
of that term, as applied to the goods or services in
connection with which it is used, and an acknowledgment of
the lack of an exclusive right therein at the time of the
Ser No. 78814834
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disclaimer. See Quaker State Oil Refining Corp. v. Quaker
Oil Corp., 453 F.2d 1296, 172 USPQ 361 (CCPA 1972). See
also In re Interco Inc., 29 USPQ2d 2037 (TTAB 1993).
Applicant has argued that “[t]he mark is
WWW.BOTMAG.COM ROBOT, not BOT MAG nor ROBOT MAGAZINE, and
must be analyzed in its entirety. Any descriptive
connotation that may be conveyed by each term on its own is
obviated by combining the terms in a unitary fashion in the
compound term WWW.BOTMAG.COM ROBOT.” Brief at unnumbered
p. 5. However, when descriptive terms are combined, a
suggestive term may be formed only if the compound mark in
its entirety evokes a new and unique commercial impression
that is not merely descriptive. If each component of the
compound mark retains its merely descriptive significance
in relation to the goods, without creating a unique or
incongruous meaning, then the resulting combination is also
merely descriptive. In re Tower Tech., Inc., 64 USPQ2d
1314 (TTAB 2002); In re Disc Jockeys Inc., 23 USPQ2d 1715
(TTAB 1992). In applicant's mark, each component retains
its merely descriptive significance in relation to the
goods and does not create a unique or incongruous meaning.
Also, applicant's mark is merely a combination of
applicant's internet address, with BOTMAG providing
information about applicant's goods, and the term ROBOT,
Ser No. 78814834
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which is at a minimum descriptive of applicant's goods,
and, as evidenced by applicant's specimen and the first
entry in the Google search results, appears to be the name
opposer uses for its magazine. We see nothing in
applicant's mark – including the combination of BOT and MAG
- that makes it a unitary combination of terms, and
applicant has not indicated why it is unitary.
Applicant has also argued that its mark is suggestive
“owing to the multi-step reasoning process necessary to
come to any descriptive meaning of the elements of the
mark.” Reply brief at unnumbered p. 2. We are not
persuaded by applicant's argument because consumers will
consider WWW.BOTMAG.COM ROBOT in the context of applicant's
goods, which include magazines about robots. “Bot” and
“mag” are not obscure abbreviations for “robot” and “mag.”
Consumers of applicant's goods would immediately recognize
the meaning of the terms in the mark.
In view of the above, we find that the examining
attorney has established prima facie that applicant's mark
is merely descriptive of a feature of applicant's goods and
that applicant has not rebutted the examining attorney’s
prima facie case. Additionally, we find that the
combination of WWW.BOTMAG.COM and ROBOT does not evoke a
unique commercial impression, and is not incongruous or
Ser No. 78814834
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bizarre as applied to the goods. Accordingly, we find that
applicant's mark is merely descriptive of a significant
feature of “journals and magazines for hobbyists or robots,
robotics, and computers,” and that applicant's mark is
unregistrable under Section 2(e)(1).
Decision: The refusal to register under Section
2(e)(1) is affirmed.