Nortech Investments Ltd.

Trademark Trial and Appeal Board

Jan 28, 2013

No. 77843825 (T.T.A.B. Jan. 28, 2013)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Hearing: December 6, 2012 Mailed: January 28, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Nortech Investments Ltd.
________

Serial No. 77843825
_______

Steven A. Gibson of Dickinson Wright PLLC for Nortech
Investments Ltd.

Dominick Salemi, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Kuhlke, Cataldo and Taylor,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Nortech Investments Ltd. seeks registration on the
Principal Register, with a claim of acquired
distinctiveness under Trademark Act Section 2(f), 15 U.S.C.
§1052(f), of the designation DOGRACING.COM (in standard
characters) for services recited in the application as:
“providing an on-line computer database in the field of
gaming, athletic competition and entertainment information”
Ser. No. 77843825
2
in International Class 41.1
This case is now before the Board on appeal from the
final refusal of the trademark examining attorney to
register this designation based upon the ground that the
proposed mark is generic for the identified services under
Trademark Act Section 2(e)(1), 15 U.S.C. §1051(e)(1), and
that applicant has made an insufficient showing that its
mark has acquired distinctiveness under Trademark Act
Section 2(f).2
Applicant and the examining attorney have fully
briefed this appeal.3 In addition, applicant and the
examining attorney presented arguments directed to the
matters under appeal before this panel of the Board at an

1 Application Serial No. 77843825 was filed on October 7, 2009,
based upon applicant’s assertion of April 1, 2000 as a date of
first use of the mark anywhere and in commerce in connection with
the services. In response to the examining attorney’s
requirement, applicant claimed ownership of Registration No.
2641171 on the Supplemental Register for the same mark and
services as recited in the involved application.

2 Applicant has conceded the mere descriptiveness of the
designation sought to be registered by seeking registration
pursuant to Section 2(f). See Yamaha International Corp. v.
Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed.
Cir. 1988); and In re Leatherman Tool Group, Inc., 32 USPQ2d 1443
(TTAB 1994).

3 We note that with its main brief, applicant resubmitted
materials that previously were made of record. As such, these
materials are at best duplicative and cumulative of evidence
timely made of record, and thus need not and should not be
resubmitted. See Life Zone, Inc. v. Middleman Group, Inc., 87
USPQ2d 1953, (TTAB 2008).

Ser. No. 77843825
3
oral hearing on December 6, 2012.
Issues on Appeal
The issues on appeal are (1) whether the term
DOGRACING.COM is generic for applicant’s services; and,
alternatively (2) if such term is found to be not generic,
whether it has acquired distinctiveness.
Genericness
A term is generic and not a mark if it refers to the
class, genus or category of goods and/or services on or in
connection with which it is used. See In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807
(Fed. Cir. 2001), citing H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986). The test for
determining whether a mark is generic is its primary
significance to the relevant public. See Section 14(3) of
the Act. See also In re American Fertility Society, 188
F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc.
v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991);
and H. Marvin Ginn Corp., 228 USPQ at 530. The examining
attorney has the burden of establishing by clear evidence
that a mark is generic and thus unregistrable. See In re
Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141 (Fed. Cir. 1987). Evidence of the
Ser. No. 77843825
4
relevant public’s understanding of a term may be obtained
from any competent source, including testimony, surveys,
dictionaries, trade journals, newspapers, and other
publications. See In re Northland Aluminum Products, Inc.,
777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985).
In support of the refusal to register, the examining
attorney has introduced into the record the following
dictionary definitions of “dog racing:”
“a race between dogs; usually an occasion for betting
on the outcome;”4
“with reference to greyhound racing, as dograce,
dogracer, dogracing;”5 and
“a race between dogs.”6
The examining attorney further made of record the following
encyclopedia entry for “dog racing:”
The racing of greyhounds around an enclosed track
in pursuit of an electrically controlled and
propelled mechanical hare (rabbit). Dog racing
is a 20th century outgrowth of the older sport of
coursing (q.v.) in which dogs hunted by sight
rather than scent.7

The determination of whether a term is generic
involves a two-part inquiry: First, what is the category
or class of the goods or services at issue? Second, is the

4 WordNet® 3.0 (2006).
5 OED Oxford English Dictionary, www.oed.com.
6 Dictionary.babylon.com
7 Encyclopedia Britannica, (2008).
Ser. No. 77843825
5
term sought to be registered understood by the relevant
public primarily to refer to that category of goods or
services? See H. Marvin Ginn Corp., 228 USPQ at 530. With
respect to the first part of the genericness inquiry, and
based upon the recitation of services in the involved
application, we find that “providing an on-line computer
database in the field of gaming, athletic competition and
entertainment information” is the name of a genus of
services. Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19
USPQ2d 1551, 1552 (Fed. Cir. 1991) (“[A] proper genericness
inquiry focuses on the description of services set forth in
the [application or] certificate of registration”).
However, we note that a screenshot from applicant’s
Internet website, submitted with its original application
both as a specimen of record and also as evidence in
support of applicant’s claim of acquired distinctiveness,
clearly indicates that applicant is engaged in providing
information, inter alia, in the field of dog racing. The
screenshot is reproduced below:

Ser. No. 77843825
6

Ser. No. 77843825
7
As a result, we find based upon the above evidence
that the class or category of services at issue here
clearly includes providing a computer database in the field
of information concerning watching and wagering on a race
between dogs, or “dog racing.” Applicant strenuously
argues that its services do not identify “dog racing;” and
that, as a result, the designation DOGRACING.COM is not a
generic term for the category or class of its services.
Applicant’s contentions notwithstanding, it is clear
from applicant’s own specimen of use that its recited
“providing an on-line computer database in the field of
gaming, athletic competition and entertainment information”
includes providing a database of information on dog racing.
The facts in this case are analogous to those
presented in In re DNI Holdings Ltd. (by assignment from
Nortech Investments Ltd.), 77 USPQ2d 1435 (TTAB 2005). In
that case, involving the designation SPORTSBETTING.COM,
this tribunal found that despite applicant’s omission from
its recitation of services terms related to sports wagering
apparently to avoid a finding of genericness, “the relevant
genus of services herein includes wagering on sporting
events.” Id. at 1439. See also In re Steelbuildings.com,
415 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005). The
Board further observed:
Ser. No. 77843825
8
Even if we are constrained to ignore the
realities of use actually made by applicant
because applicant has purposely drafted a
description omitting that use, this does not end
the first part of the Marvin Ginn inquiry into
possible genericness. Applicant’s recitation of
services includes the providing of a website
“featuring information in the fields of gaming,
athletic competition and entertainment.” That
is, even if for purposes of this inquiry, we were
to ignore applicant’s clear offering on its
website of “sports betting services,” we
nonetheless find that the class or category of
services described in the application still
clearly includes that of providing information
regarding sports and betting. See In re
CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB
2002) [BONDS.COM generic for identified
information services related to investment
securities even where applicant does not buy or
sell bonds].

Id. Similarly, in the case before us, even if we
ignore applicant’s own specimen of use indicating that it
provides a database containing information on dog racing,
we would find that the broadly worded services recited in
the involved application clearly include providing such
information.8 See In re Oppendahl & Larson LLP, 373 F.3d

8 Because “dog racing” has been shown to be used as a generic
unitary term of art in the relevant field, we need not consider
the generic significance of the words “dog” and “racing” alone.
See In re Shiva Corp., 48 USPQ2d 1957 (TTAB 1998). For the same
reason, it is unnecessary for us to engage in a determination of
whether DOGRACING.COM, which combines a generic term with the top
level domain (.tld) indicator “.COM,” is a compound word or
phrase for purposes of analyzing the examining attorney’s burden
of proof. See In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d
1110, 1111-1112 (Fed. Cir. 1987); and In re American Fertility
Society, 188 F.3d 1341, 51 USPQ2d 1832, 1837 (Fed. Cir. 1999).

Ser. No. 77843825
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1171, 71 USPQ2d 1370 (Fed. Cir. 2004); and In re Reed
Elsevier Properties Inc., 77 USPQ2d 1649 (TTAB 2005).
We next turn to the second step of the Ginn inquiry,
that is, whether the relevant public understands the term
DOGRACING.COM to refer to that category of services. We
find that the term is so understood.
There appears to be no dispute that the relevant
public for applicant’s services consists of all typical
customers of the services, including those who would be
interested in watching or wagering on a game, athletic
competition, or entertainment in the nature of a dog race.
We have considered all the evidence of record bearing on
purchaser perception of DOGRACING.COM, including the
evidence submitted by applicant in opposition to the
refusal to register.
The evidence of record, including evidence from
applicant’s own Internet website, clearly establishes that
“dog racing” is the focus, or a key focus, of applicant’s
online computer database services. Because the term “dog
racing” names a key aspect of applicant’s services, i.e., a
central purpose of applicant’s computer database services,
the term is generic for such services.
The term DOGRACING.COM is no more registrable than the
generic word “dog racing” alone. We take judicial notice
Ser. No. 77843825
10
of the following definition of “.com” as “ABBREVIATION:
commercial organization (in Internet addresses).”9 We
further take judicial notice of the following definition of
“TLD” as “(Top-Level-Domain) The Highest level domain
category in the Internet domain naming system. There are
two types, the generic top-level domains, such as .com,
.org, and .net….”10 The term “.com,” in itself, has no
source-identifying significance. See In re Hotels.com,
L.P., 87 USPQ2d 1100 (TTAB 2008). Rather, it serves only
to signify that the user of the domain name is a commercial
entity, and that the goods or services offered by the
entity involve use of the Internet. See Id. See also In
re Oppendahl & Larson LLP, 71 USPQ2d at 1374. “While there
is no bright-line rule that appending a top-level domain
name such as ‘.com’ to an otherwise generic term will never
affect registrability (see Oppendahl, supra), in this case
it does not.” See In re Hotels.com, 87 USPQ2d at 1114.
The terms “dog racing” and “.com” both have clear and
readily understood meanings, and the combined term
communicates just as clearly and directly that applicant
operates a commercial Internet database service that
enables users to view, wager on, and watch dog racing.

9 The American Heritage Dictionary of the English Language, (4th
Ed. 2000).
Ser. No. 77843825
11
We are not persuaded by applicant’s argument that
because other of its pending applications, for the marks
CASINO INFO, SPORTSBET, SPORTSBET.COM, and PACHINKO.COM,
have not been refused registration on the ground of
genericness, the designation DOGRACING.COM likewise should
not be found generic.11 First, we observe that the
submitted Office actions clearly indicate that the
designation in each of applicant’s other pending
applications may be generic and that the question of
genericness has yet to be conclusively decided. Thus, the
Office actions issued in these applications do not appear
to support applicant’s contention. Furthermore, and as is
often noted by the Board and the Courts, each case must be
decided on its own merits. See, e.g., In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
See also In re Kent-Gamebore Corp., 59 USPQ2d 1373 (TTAB
2001); and In re Wilson, 57 USPQ2d 1863 (TTAB 2001).
Simply put, the Office need not refuse all of applicant’s
applied-for designations on the ground of genericness in
order for the Board to find DOGRACING.COM generic in this
case.

10 McGraw Hill Computer Desktop Encyclopedia (9th ed. 2001).
11 In support thereof, applicant submitted copies of final Office
actions from the examining attorney assigned to each application
as exhibits to its October 12, 2011 request for reconsideration.

Ser. No. 77843825
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Similarly, the existence of applicant’s prior
Registration No. 2641171 for DOGRACING.COM on the
Supplemental Register for services identical to those
recited herein does not compel a determination that the
designation is registrable herein. First, we have no
information of record regarding applicant’s prior
registration, nor are we familiar with the prosecution
history or evidentiary record thereof. As just stated, and
said many times before, each application must be judged on
its own merit based on the evidence of record, and we are
not bound by the decisions of examining attorneys in
considering different applications for different marks and
different goods or services. The Board must make its own
findings of fact, and that duty may not be delegated by
adopting the conclusions reached by an examining attorney.
See In re Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994);
and In re BankAmerica Corp., 231 USPQ 873, 876 (TTAB 1986).
It is clear from the website of applicant as well as
the dictionary definitions and encyclopedia entry that
consumers who are interested in watching and wagering on
dog racing would immediately understand that DOGRACING.COM
identifies an Internet database that provides such
services. In addition, this evidence demonstrates a
competitive need for others to use as part of their own
Ser. No. 77843825
13
domain names, trademarks and service marks, the term that
applicant is attempting to register. Thus, the designation
sought to be registered should not be subject to exclusive
appropriation, but rather should remain free for others in
the industry to use in connection with their dog racing
services. See In re Boston Beer Co. L.P., 198 F.3d 1370,
53 USPQ2d 1056 (Fed. Cir. 1999).
Therefore, we conclude that the examining attorney has
met the substantial burden of establishing that
DOGRACING.COM is generic and hence incapable of identifying
and distinguishing the source of the identified services.
Acquired Distinctiveness
As noted above, by seeking registration pursuant to
Section 2(f), applicant has conceded the mere
descriptiveness of the designation sought to be registered.
Yamaha, 6 USPQ2d at 1005; and Leatherman, 32 USPQ2d at
1444. In addition, and as discussed in our genericness
determination, supra, the record at a minimum establishes
that DOGRACING.COM is highly descriptive of the recited
services.
In finding that the designation DOGRACING.COM is
incapable of being a source identifier for applicant’s
services, we have considered, of course, all of the
evidence touching on the public perception of this
Ser. No. 77843825
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designation, including the evidence of acquired
distinctiveness. As to acquired distinctiveness, applicant
has the burden to establish a prima facie case of acquired
distinctiveness. See Yamaha International Corp. v. Hoshino
Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed.
Cir. 1988).
Applicant submitted the declaration under Trademark
Rule 2.20 of Geracio P. Masula, its vice-president, stating
that between March 23, 2009 and April 22, 2009, applicant’s
www.dogracing.com website received 5,735 unique visitors
and 6,971 page views; and that these numbers are
representative of its monthly visitors and page views since
April 1, 2000. In addition, and as noted above, applicant
submitted an additional copy of its specimen of record in
support of its claim of acquired distinctiveness.
Applicant’s length of use and number of visitors to
its Internet website suggest that applicant’s website has
enjoyed a degree of popularity. Nonetheless, this evidence
demonstrates only the relative popularity of applicant’s
website, not that the relevant customers of the services
available thereby have come to view the designation
DOGRACING.COM as applicant’s source-identifying service
mark. See In re Bongrain International Corp., 894 F.2d
1316, 13 USPQ2d 1727 (Fed. Cir. 1990); and In re Recorded
Ser. No. 77843825
15
Books Inc., 42 USPQ2d 1275 (TTAB 1997). The issue here is
the achievement of distinctiveness, and the evidence falls
far short of establishing this. Notably, the record is
completely devoid of evidence that the relevant classes of
purchasers of applicant’s services recognize DOGRACING.COM
as a distinctive source indicator for such services.12 We
further observe that while ownership of a prior
registration on the Principal Register may constitute
evidence of acquired distinctiveness, applicant’s prior
registration on the Supplemental Register for DOGRACING.COM
does not serve to buttress applicant’s claim under Section
2(f). See generally TMEP § 1212.04 and authorities cited
therein.
Accordingly, even if the designation DOGRACING.COM
were found to be not generic, but merely descriptive, given
the highly descriptive nature of the designation
DOGRACING.COM, we would need to see a great deal more
evidence (especially in the form of direct evidence from

12 We are not implying that an applicant must submit affidavits or
declarations asserting recognition of the subject matter sought
to be registered as a mark, or that applicant must submit survey
evidence, or that any other specific type of evidence is required
to prove that a term has acquired distinctiveness. Nonetheless,
we require evidence clearly demonstrating the effectiveness of
applicant’s use of its designation to cause the purchasing public
to identify the subject matter sought to be registered with the
source of the product. Such evidence is not present in this
case.

Ser. No. 77843825
16
customers) than what applicant has submitted in order to
find that the designation has become distinctive of
applicant’s services. That is to say, the greater the
degree of descriptiveness, the greater the evidentiary
burden on the user to establish acquired distinctiveness.
See Yamaha Int'l. Corp. v. Hoshino Gakki Co., 6 USPQ2d at
1006; and In re Merrill Lynch, Pierce, Fenner & Smith,
Inc., 4 USPQ2d at 1144. The sufficiency of the evidence
offered to prove secondary meaning should be evaluated in
light of the nature of the designation. Highly descriptive
terms, for example, are less likely to be perceived as
trademarks and more likely to be useful to competing
sellers than are less descriptive terms. More substantial
evidence of secondary meaning thus will ordinarily be
required to establish their distinctiveness.13

13 In its briefs, applicant requests remand of the involved
application to submit additional evidence of acquired
distinctiveness, and argues that it did not submit all of the
evidence it possesses during examination of its application due
to the examining attorney’s position that DOGRACING.COM is
generic and cannot acquire secondary meaning. We note, however,
that the examining attorney discussed applicant’s evidence of
acquired distinctiveness both in his first and final Office
actions. Applicant thus was afforded two opportunities in which
to submit additional evidence. However, applicant did not submit
additional evidence during prosecution of its application, and
will not now be heard to argue for the first time in its briefs
that it seeks an additional opportunity to do so. See Trademark
Rule 2.142(g). See also TBMP §1218 (October 2012). Accordingly,
applicant’s request for remand is denied.

Ser. No. 77843825
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Decision: The refusal under Section 2(e)(1) of the
Act on the ground that the proposed mark is generic is
affirmed; and even in the event the proposed mark was found
to be not generic, the refusal under Section 2(e)(1) of the
Act on the ground that the mark is at least merely
descriptive and the Section 2(f) showing is insufficient
likewise is affirmed.