Parisi

Trademark Trial and Appeal Board

May 28, 2004

No. 75291235 (T.T.A.B. May. 28, 2004)

Hearing: Mailed:
February 25, 2004 May 28, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Parisi
________
Serial Nos. 75291235 and 75354127
_______
Michael J. Calvey of Calvey & Amon, LLP for Dan Parisi.
Anne Madden, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______
Before Hairston, Chapman and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Dan Parisi, an individual United States citizen, has
applied to register on the Principal Register WHITEHOUSE as
a trademark for "printed publications, namely, magazines
featuring adult entertainment," in International Class 16,1
1 Serial no. 75354127, asserting, in the application form itself,
August 1, 1997 as the date of first use and first use of the mark
in commerce. The heading for the drawing sheet for this
application lists July 1, 1997 as the date of first use and first
use in commerce. The Office relied on the dates set forth in the
signed application rather than in the unsigned drawing, as have
we.
This Opinion is Not
Citable as Precedent
of the TTAB
Serial Nos. 75291235 and 75354127
2
and as a service mark for services ultimately identified as
"providing entertainment featuring adult subject matter via
a multi-user global computer information network," in
International Class 41.2
The current examining attorney assumed responsibility
for review of both applications after issuance of an
initial refusal of registration in each. She issued one
final refusal supported by very extensive, albeit
duplicative, exhibits, stating that it applied to each
application. Applicant thereafter appealed the refusal in
each case. The main brief for the applicant addressed the
refusals issued in both applications. The examining
attorney, noting that the application for registration of
WHITEHOUSE as a mark for magazines had been abandoned,
filed a main brief only in regard to the application for
registration of WHITEHOUSE as a mark for applicant's
website. Subsequently, the abandoned application was
revived and the examining attorney filed a main brief in
that case. Applicant filed a consolidated reply brief. An
oral hearing was held at which both applicant's counsel and
the examining attorney appeared.
2 Serial no. 75291235, asserting April 1, 1996 as the date of
first use and first use of the mark in commerce. For ease of
reference, we will refer to this application as the one seeking
registration of WHITEHOUSE for applicant's website.
Serial Nos. 75291235 and 75354127
3
Each application has been refused under Sections 2(a)
and 2(e)(1) of the Lanham Act, 15 U.S.C. §§ 1052(a) and
1052(e)(1), and on the ground that there is insufficient
evidence of acquired distinctiveness under Section 2(f), 15
U.S.C. § 1052(f), to overcome the Section 2(e)(1) refusal.
We address each refusal in turn, addressing, as necessary,
differences in the record or legal analysis attributable to
the fact that one application seeks registration of a mark
for a publication and one seeks registration for a web
site.
The Section 2(a) Refusals
In regard to the first refusal, based on Section 2(a),
the examining attorney asserts that The White House is a
juristic person, insofar as that term stands for the
executive branch of the government of the United States;
that the building in which the president of the United
States resides while in office is a national symbol;3 and
that WHITEHOUSE, as used by applicant, falsely suggests a
connection with such juristic person and symbol. We find
the examining attorney's conclusion in error and reverse
3 We use WHITEHOUSE to refer to that which applicant seeks to
register as a mark and White House or The White House to refer to
the executive branch and the building at 1600 Pennsylvania
Avenue, N.W., Washington, DC.
Serial Nos. 75291235 and 75354127
4
the refusal of registration based on this section of the
Lanham Act.
We agree with the examining attorney that the
president, the cabinet and the upper levels of the
executive branch of the government of the United States may
broadly be referred to as The White House, and that such
term is used to identify one or more juristic persons
within the executive branch. We note, in this regard, the
dictionary definition defining White House as "the
executive department of the U.S. government" (exhibit W to
final refusal of registration) and the article excerpts
retrieved by the examining attorney from the NEXIS database
that discuss various lawsuits brought against The White
House (exhibit Y to final refusal).4 We also agree that the
residence of the president, named the White House, is
widely regarded as a national symbol (NEXIS excerpts in
exhibit X to final refusal).
There can be no doubt that use of The White House to
identify the upper levels of the executive branch and the
residence of the president antedate any use of WHITEHOUSE
by applicant, for his magazine or his website. In re North
4 For the analysis we must bring to bear on the involved
applications and record, it matters little whether we consider
the executive branch to be a juristic person or an institution.
Serial Nos. 75291235 and 75354127
5
American Free Trade Association, 43 USPQ2d 1282, 1284 (TTAB
1997) citing In re Nuclear Research Corp., 16 USPQ2d 1316,
1317 (TTAB 1990) ("the phrase 'falsely suggest a connection
with' in Section 2(a) necessarily requires by implication
that the person or institution with whom a connection is
suggested must be the prior user").
Applicant argues, nonetheless, that there are so many
uses of "Whitehouse" – for example, as a surname, as a
business name, as a geographic place name for various towns
or cities, and even as the name of the building in which
the Russian parliament sits – that the term cannot be
"unmistakably" associated with either the political
institution that consists of the upper levels of the
executive branch of the government of the United States, or
the national symbol that is the residence of the president.
Applicant, however, has put in no evidence to establish
that, as he asserts, Whitehouse is the name of various
cities or towns. Further, the evidence on which he relies
to establish that Whitehouse is a common surname and that
Whitehouse or White House is a frequently used term in
business names is not probative. The surname evidence
purports to be a list of names, addresses and telephone
numbers for various individuals. Applicant has not,
however, stated the source of this list, and the list
Serial Nos. 75291235 and 75354127
6
itself bears no indication of its source. The same is true
of the list of purported businesses including the term
Whitehouse or White House in their names.
In further support of his assertion that Whitehouse is
not unmistakably associated with The White House, applicant
has also put in the record search reports from a private
search firm showing that various marks including the term
Whitehouse have been registered in various states, in
Canada and in various European countries; and has submitted
a list of purported federally registered marks including
the term Whitehouse or White House. This evidence
concerning other marks is of limited, if any, value.
Applicant's proffer does not include information on the
status of the state, Canadian or European registrations,
not to mention any indication about the extent of use, if
any, of these marks. Likewise, the list of federal
registrations lists only marks, not goods or services,
register information, disclaimers or other explanatory
information, or status.5
5 In addition, many of the marks in the list of purported federal
registrations are not for Whitehouse, but for foreign terms, such
as Maison Blanche or Casa Blanca, which do not bear on the
question of whether consumers would consider Whitehouse to be
unmistakably associated with the executive branch or the
presidential residence, for there is no evidence that either is
referred to by foreign equivalents.
Serial Nos. 75291235 and 75354127
7
Notwithstanding the infirmities afflicting much of
applicant's evidence on the question whether Whitehouse is
widely used by individuals or other entities besides the
The White House, there is at least sufficient probative
evidence on which to conclude that the term is not only
associated with The White House. Cf. West Florida Seafood
Inc. v. Jet Restaurants Inc., 31 F.3d 1122, 31 USPQ2d 1660,
1663 (Fed. Cir. 1994) (Evidence should be considered in its
entirety, not by undue focus on individual items). The
examining attorney does not dispute that the record shows
"White House" is also the name of a Russian government
building; that a fruit products company uses "White House"
as a trademark for its products; that the term appears in
other trademarks; and that it is a surname and used in
business names.
The examining attorney essentially contends that it is
sufficient for the Section 2(a) refusal if the term
Whitehouse or White House is predominantly used to refer to
The White House, even if there are other uses. Applicant
disagrees that this is sufficient, and we believe he is
correct in arguing that the law of Section 2(a) requires
more than that the term in issue be more prominently or
more often associated with one entity (in this case, the
executive branch or a national symbol) than another (a
Serial Nos. 75291235 and 75354127
8
Russian government building, a fruit products company, or
as an individual's surname). See The University of Notre
Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703
F.2d 1372, 217 USPQ 505, 509 (Fed. Cir. 1983) (Section 2(a)
requires that the name or mark claimed to be appropriated
must be "unmistakably associated with" the particular
entity and "point uniquely" to it). Compare the Notre Dame
case (where an opposition based on Section 2(a) was
dismissed because Notre Dame was found not to be solely
associated with the plaintiff university) with the North
American Free Trade Association case, 43 USPQ2d at 1286
(where NAFTA was refused registration under Section 2(a)
because it did "not have a variety of well-known meanings"
and would be associated with the North American Free Trade
Agreement).
We do not find the case law to preclude a false
suggestion of a connection merely because there may be some
obscure individual or entity with the same name or mark,
but the case law clearly requires more than that the use of
the name or mark is most often associated with a particular
individual or entity. See, e.g., In re Cotter & Co., 228
USPQ 202, 204-05 (TTAB 1985) (though "West Point" may have
been a city or town in New York state, the Board found the
Serial Nos. 75291235 and 75354127
9
"term has come to be solely associated with and points
uniquely to the United States Military Academy").
The Notre Dame case also holds that if we were to find
evidence of record of an intent by applicant to identify
The White House by his use of WHITEHOUSE, that "would be
highly persuasive that the public will make the intended
false association." Notre Dame, 217 USPQ at 509. There is
evidence in the record, in the form of many NEXIS excerpts
from articles based in part on interviews of applicant
concerning his website, that applicant adopted WHITEHOUSE
as a mark for his website6 for the purpose of creating a
site dealing with politics and parody of politicians and
political subjects. This evidence also suggests that the
website actually was used for such purposes, for a time,
but was not generating any money. Thus, applicant
transformed his website to one with adult content.7
6 In essence, when we discuss applicant's adoption of WHITEHOUSE
as a mark, we are necessarily referring to his acquisition of the
domain name WHITEHOUSE.COM and use of that as the address of his
website. The record does, however, show use of WHITEHOUSE per se
on the website.
7 See for example, an article in the Los Angeles Times of March
2, 1998:
Parisi says he started the site as a political parody
but "after investing about $30,000 in it, I wasn't
making any money." He then read a newspaper story
about how adult Web sites were making money. "I asked
my attorneys and they said that it wouldn't be a
trademark violation for me to use the name
'Whitehouse' for an adult site." continued…
Serial Nos. 75291235 and 75354127
10
We cannot tell from the record whether applicant's web
site ever was devoid of sexual imagery or whether, even
when he was engaged in political parody, the site's content
was essentially sexual. The record includes a declaration
from applicant that he purchased the domain name in May
1997 and a NEXIS excerpt of a story in the Chicago Daily
Herald of September 23, 1997 reporting that the site
"treats visitors to a fake photo of a shirtless Bill
Clinton wearing a dog collar as a leather-clad Hillary
leads him around on a leash. This is followed by an
extensive listing of X-rated web sites…."
We do not believe that the Notre Dame statement on the
persuasiveness of evidence of intent has application in
this case. This Board has previously held that the
question of whether a proposed mark falsely suggests a
connection with the federal government, or a branch or
See also an excerpt from an article in the San Francisco
Chronicle of June 3, 1998:
After plunking down $10,000 to buy the rights to
www.whitehouse.com in May 1997, Dan Parisi of
Secaucus, N.J., started the site as a "pure parody of
U.S. politics," but few cared.
"I was losing $10,000 a month until I discovered how
popular adult sites are," Parisi said.
While we recognize the hearsay problems inherent in such
evidence, there are numerous stories in numerous publications
repeating the same basic explanation of how applicant's web site
came to its current incarnation (including asserted quotations of
applicant). Moreover, applicant has not, in briefing the appeal,
suggested that any of the NEXIS evidence put in by the examining
attorney suffers from errors in its content.
Serial Nos. 75291235 and 75354127
11
agency thereof, "must be determined on a case-to-case basis
in connection with the specific goods or services with
which [the proposed mark] is used and the impact of such
use upon the relevant section of the purchasing public."
In re National Intelligence Academy, 190 USPQ 570, 572
(TTAB 1976). See also, In re Cotter, supra, and In re U.S.
Bicentennial Society, 197 USPQ 905 (TTAB 1978).
In each of the three cases cited above, the products
or services were of a type such that prospective purchasers
might reasonably believe there were some government
authorization if not origin. In contrast, see Heroes Inc.
v. The Boomer Esiason Hero's Foundation Inc., 1997 WL
335807, 43 USPQ2d 1193, 1197 (D. D.C. 1997), wherein
defendant alleged in a counterclaim under Section 2(a) that
plaintiff's registered service mark falsely suggested a
connection with the United States government. The court
dismissed the counterclaim on a motion for summary
judgment, notwithstanding inclusion of a representation of
the U.S. Capitol building in the composite word and design
mark, because the government "does not ordinarily provide
charitable services," and consumers would not think
otherwise. Id.
It appears beyond dispute that applicant acquired the
domain name WHITEHOUSE.COM for his asserted political
Serial Nos. 75291235 and 75354127
12
parody site precisely because it would conjure up thoughts
of The White House, and, to that extent, intended an
association between his site and The White House. On the
other hand, when we consider the involved application to
register WHITEHOUSE as a mark for a website "featuring
adult subject matter," it is not reasonable on this ex
parte record to conclude that applicant intended
prospective visitors to his site to think that it was
sponsored or authorized by The White House. Thus, we do
not find evidence of the kind of intent that the Federal
Circuit indicated, in Notre Dame, would serve in lieu of
evidence of an unmistakable and unique association of
applicant's WHITEHOUSE with The White House.
The examining attorney has placed great emphasis on
the mistaken visits by many individuals to applicant's
website,8 thinking that they were accessing the
WHITEHOUSE.GOV website of The White House. However, the
mere knowledge by applicant that he might attract visitors
who were careless in typing web addresses, or who would, by
certain web browsers, be directed to his site by default
8 The record is replete with NEXIS excerpts from stories
recounting visits by the unsuspecting to applicant's website, and
of concerns among many, including members of Congress, that these
unsuspecting web surfers, including children, have been exposed
to applicant's web site when they intended to visit the
WHITEHOUSE.GOV website of The White House.
Serial Nos. 75291235 and 75354127
13
when a web surfer typed WHITEHOUSE but neglected to add a
top-level-domain, is not sufficient to show an intent to
cause prospective visitors to his site to conclude that it
was officially sponsored or authorized by The White House.
Mere generation of traffic for applicant's website in this
manner is not equivalent to intent to cause consumers to
falsely conclude that applicant's web site is a site
maintained by or authorized by The White House.
On this record, we cannot conclude that "Whitehouse"
is a term so uniquely and unmistakably associated with The
White House, or intended by applicant to be taken by
consumers as falsely suggesting a connection between his
website "featuring adult subject matter" and The White
House, that refusal under Section 2(a) is warranted.
Accordingly, we reverse the refusal to register under
Section 2(a) as to applicant's application to register
WHITEHOUSE as a mark for his website.
Turning to applicant's application to register
WHITEHOUSE for a magazine, we note that the record contains
little information indicating that this is a significant
enterprise for applicant. The copies of applicant's
magazine submitted for the record include no advertising,
as a typical magazine would, and applicant essentially has
acknowledged the magazine is a means for promoting
Serial Nos. 75291235 and 75354127
14
applicant's website. For largely the same reasons
discussed above in regard to applicant's website, we
reverse the refusal under Section 2(a) as to applicant's
application to register WHITEHOUSE as a mark for his
magazine "featuring adult entertainment." There is nothing
in the record to establish that The White House publishes
magazines with such content or that consumers would think
The White House authorized such publications.
The Section 2(e)(1) Refusals
We now consider whether applicant should be refused
registration of WHITEHOUSE as a mark for his magazine and
website on the ground that the term is descriptive or
deceptively misdescriptive. The examining attorney, in her
discussion of the refusals under Section 2(e)(1), includes
only one paragraph addressed to an alternative theory of
deceptive misdescriptiveness. It is clear that this is
only an alternative and that the significant issue is
whether WHITEHOUSE is a descriptive term when used on or in
connection with applicant's magazine and website.
In essence, the examining attorney argues that both
the website and magazine have featured items that parody
political figures, including residents of The White House
or those who have aspired to the presidency. Applicant
Serial Nos. 75291235 and 75354127
15
essentially argues that WHITEHOUSE is arbitrary as applied
to both its magazine and website. Moreover, applicant
contends that he has ceased using the business cards that
promoted the website as featuring "government
entertainment."
We consider the magazine first. Titles for
publications such as newspapers and magazines often present
perplexing problems, because of the tendency of their
publishers to use the titles to convey some idea of the
content of their publications. See H. Marvin Ginn Corp. v.
Int’l Assn. Of Fire Chiefs, 782 F.2d 987, 228 USPQ 528,
530-31 (Fed. Cir. 1986). As a result of this tendency,
many reported cases dealing with titles of publications
focus on the question of whether the asserted marks are
descriptive or generic, not descriptive or suggestive. See
Technical Publishing Co. v. Lebhar-Friedman, Inc., 729 F.2d
1136, 222 USPQ 839, 841 (7th Cir. 1984); Scholastic, Inc.
v. MacMillan, Inc., 650 F.Supp. 866, 2 USPQ2D 1191
(S.D.N.Y. 1987). As was the case for the Scholastic court,
however, “the difficulty of discerning between descriptive
and generic” need not concern us; applicant argues that his
mark is not descriptive but arbitrary.
"A term is descriptive if it forthwith conveys an
immediate idea of the ingredients, qualities or
Serial Nos. 75291235 and 75354127
16
characteristics of the goods [or services].” In re Abcor
Development Corporation, 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978) citing Abercrombie & Fitch Co. v. Hunting
World, Inc., 537 F.2d 4, 189 USPQ 759, 765 (2nd Cir. 1976).
Abcor also reminds us that the determination of whether a
term is descriptive is to be made from the perspective of
the average prospective purchaser. Abcor, supra, 200 USPQ
at 218. Moreover, the determination is made not by
considering the term in the abstract but by considering it
in relation to the identified goods or services, and in the
context within which the term is used. Id.
Earlier, in discussing the Section 2(a) refusal, we
noted that it was insufficient for the examining attorney
to establish that the predominant meaning for "White House"
is The White House. In the context of the Section 2(e)(1)
descriptiveness refusal, however, this is significant. The
record shows that the definition for White House in the
dictionary is as the executive branch or the residence of
the president of the United States. The NEXIS excerpts
tend to establish that many individuals searching for
information on The White House do so simply by typing
WHITEHOUSE into a web browser search line.
In his application to register WHITEHOUSE as a title
for a magazine featuring adult entertainment, applicant has
Serial Nos. 75291235 and 75354127
17
submitted as specimens copies of two issues of his
magazine. Both bear the legend, on the bottom front cover,
"A Magazine of Parody and Adult Entertainment." One issue
includes a constructed photo of a female figure with Monica
Lewinsky's head. On its inside cover are photos of former
President Clinton. Its interior pages (including the front
and back covers the magazine totals 8 pages) include an
"article" titled "ICANN Domain System?" and which states
"President Clinton through an executive order privatized
the system." Finally, on the back cover of the magazine is
a spoof of a STAR WARS movie poster titled "STARR WARS" and
which features images of former special prosecutor Kenneth
Starr, President and Mrs. Clinton, and Monica Lewinsky. In
short, this issue of the magazine includes a good deal of
content focusing on the Clinton White House. The other
issue of the magazine (12 pages, including covers) in the
record includes an article on the 2000 presidential
election and numerous cartoons lampooning candidates.9
Considering applicant's proposed mark WHITEHOUSE in
this context, we have no doubt that the title of
applicant’s magazine “forthwith conveys an immediate idea”
about a significant feature thereof. Specifically, because
9 This issue appears to have been published prior to the
nominations of former Vice President Al Gore and current
Serial Nos. 75291235 and 75354127
18
"White House" is defined in the dictionary to mean the
executive branch of the government of the United States and
applicant's magazine includes content focusing on
presidential politics, the term WHITEHOUSE describes such
content. See Scholastic Inc. v. Macmillan Inc., 650
F.Supp. 866, 2 USPQ2d 1191 (S.D.N.Y. 1987) (CLASSROOM
descriptive of magazine featuring material for teachers and
students); American Association for the Advancement of
Science v. The Hearst Corporation, 498 F.Supp. 244, 206
USPQ 605 (D. D.C. 1980)(SCIENCE descriptive of magazine
featuring articles in the field of science); and In re
Waverly Inc., 27 USPQ2d 1620 (TTAB 1993) (MEDICINE
descriptive of content of medical journal).
We affirm the Section 2(e)(1) refusal to register
WHITEHOUSE as a mark for applicant's "printed publications,
namely, magazines featuring adult entertainment," in
International Class 16.
We now turn to consider the Section 2(e)(1) refusal in
regard to applicant's website. Among the items in the
record are reprints of applicant's "home" page on the world
wide web (dated June 23, 2000), and other pages accessed
from the home page. (See exhibit V to the examining
president George W. Bush, as it includes cartoons regarding the
candidacies of Bill Bradley and John McCain.
Serial Nos. 75291235 and 75354127
19
attorney's final refusal.) The home page
(http://www.whitehouse.com) includes a link to photos of
"WhiteHouse First Ladies"; includes the phrase "This
WhiteHouse has been featured on ABCNews, CNN, C/Net, MSNBC,
NBC DateLine, and Newsweek"; includes a disclaimer of
affiliation with or endorsement by the government of the
United States; and includes a link to MyWhiteHouse for
news, stocks and sports information. A subpage or
connected page (http://www.whitehouse.com/whitehouse-
cartoons/cartoons/whitehousecartoons1.html) is entitled
"WhiteHouseCartoons and Voting." This page features an
image of The White House; manufactured or constructed
photos of former president Clinton and former first lady
Hillary Clinton; an invitation to become a member to see
more cartoons; and a link to "view the money spent and
received by the candidates."10 The cartoons page also
offered visitors the opportunity to vote for either George
Bush or John McCain as the Republican candidate for
president, and reported on the results of an earlier poll,
showing that visitors chose Al Gore over Bill Bradley as
the Democratic candidate for president.
10 The listing shows monies purportedly raised and spent by nine
candidates in the primaries for the 2000 presidential election.
Serial Nos. 75291235 and 75354127
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An "archive cartoons" page includes additional
enhanced or altered photos of the Clintons, Ross Perot and
Jesse Ventura. There is also a page featuring photos of
"WhiteHouse Interns."
An earlier version of applicant's homepage (dated
April 7, 1999), submitted in support of a response to an
Office action, includes a link to "LewinskyGate-The Song."
Numerous NEXIS excerpts report that the website has had
links to "Kenneth Starr's famous Starr Report."
It appears from the record that material of this
nature was featured on applicant's website from at least
September 1997 through June 2000 and thus presidential
politics has been a constant subject of the site. The
Chicago Daily Herald story referenced earlier in this
decision reports the presence of White House-themed content
on applicant's website as early as September 1997.
Applicant acknowledges in his brief (p. 3) that former
White House counsel Charles Ruff wrote a letter of
complaint to applicant in December 1997. Many NEXIS
excerpts in the record report the continuing presence of
the White House-themed content on the website in 1998.
Finally, reprints of applicant's home pages from 1999 and
2000 show the continuing presence of such content. We also
note that the specimens of record for the application to
Serial Nos. 75291235 and 75354127
21
register WHITEHOUSE as a mark for applicant's website are
business cards titled "WHITEHOUSE GOVERNMENT
ENTERTAINMENT."
Considering applicant's proposed mark in this context,
we have no doubt that WHITEHOUSE is descriptive when used
in connection with applicant's website, as it readily
identifies a subject with which the site has been
consistently concerned, i.e., the occupants of The White
House and presidential politics. The term is not rendered
arbitrary, as applicant argues, by virtue of the website
being one that offers "adult subject matter." Some of the
information accessible at the site, such as the link to the
Starr Report or information on campaign fundraising, has
nothing to do with "adult subject matter," while other
items, such as manipulated photos of occupants of The White
House clearly would fall in the realm of that type of
"adult subject matter." That applicant's website may
contain both types of White House-themed content does not
obviate the descriptiveness of the term WHITEHOUSE used on
or in conjunction with the site.
Further, it is well settled that a term need not
describe all aspects of a product or service to be held
unregistrable as descriptive. It is sufficient if the term
describes a significant feature of the product or service.
Serial Nos. 75291235 and 75354127
22
See In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 205
USPQ 505, 507 (CCPA 1980), In re International Nickel Co.,
262 F.2d 806, 120 USPQ 293, 294 (CCPA 1959). See also, In
re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539
(TTAB 1998).
In this case, White House-themed content has been a
significant, continuing feature of applicant's website. We
therefore affirm the Section 2(e)(1) refusal to register
WHITEHOUSE as a mark for applicant's service of "providing
entertainment featuring adult subject matter via a multi-
user global computer information network," in International
Class 41.
The Section 2(f) Evidence
Applicant prosecuted each of his involved applications
on the alternative theories that WHITEHOUSE is not
descriptive for his magazine or website and, even if it
were found to be descriptive, that the term has acquired
distinctiveness under Section 2(f).
Our primary reviewing court has explained that a
descriptive term may be registered on a "showing of
acquired distinctiveness or secondary meaning." In re K-T
Zoe Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787, 1789 (Fed.
Cir. 1994). "The showing that may be deemed adequate will
Serial Nos. 75291235 and 75354127
23
of course depend on the particular facts; the requisite
weight of evidence will vary with the degree of
descriptiveness of the mark. … The evidence must relate to
the specific [goods or] services set forth in the
application, and the specific mark for which registration
is sought. See In re Failure Analysis Associates, 1 USPQ2d
1144, 1146 (TTAB 1986)." Id.
In applications for registration, a claim of acquired
distinctiveness or secondary meaning can be based on (1)
ownership of prior registrations for the same mark, (2) a
claim of five years of continuous and substantially
exclusive use of the mark, or (3) actual evidence, whether
direct or indirect, of consumer perception. See TMEP
Section 1212 (3rd ed., rev. 2, May 2003). Applicant has
not claimed ownership of any prior registrations for
WHITEHOUSE, but has submitted evidence of the other two
types.
Section 2(f) of the Lanham Act does not prescribe that
a "five years of use" statement will be sufficient, and
only provides the USPTO with discretion to accept such a
statement as prima facie evidence of acquired
distinctiveness. The examining attorney has rejected
applicant's claim of five years of continuous and
substantially exclusive use of WHITEHOUSE, asserting that
Serial Nos. 75291235 and 75354127
24
it is insufficient to show secondary meaning in the term
for either applicant's magazine or his website.
We agree.
It is clear that applicant had not actually been using
the mark for five years for either his magazine or his
website when he made the declaration of five years use on
April 19, 2000. Applicant's declaration states that "the
mark in question has been in continuous use as a domain
name, under the '.com' top level domain, for over five
years." In support of this statement, applicant offers an
exhibit to show that the domain name was "created at least
as early as January 21, 1995." Yet applicant also states
that he did not purchase that domain name until May 1997.
The record reveals that applicant purchased the domain name
from L.Q. White's House of Gunz, but there is nothing in
the record to indicate whether the previous owner was
actually using the domain name and, if so, whether such use
was in conjunction with a magazine featuring adult
entertainment and/or a website featuring adult subject
matter. Read carefully, applicant's declaration really is
nothing more than a claim that WHITEHOUSE has been used in
conjunction with the top level domain ".com" for five years
and therefore "has attained a secondary meaning as a
commercial [web] site." We find the declaration
Serial Nos. 75291235 and 75354127
25
insufficient by its own terms as a claim of five years of
use of WHITEHOUSE as a mark for applicant's web site
featuring adult subject matter11 and we find the declaration
claims no use whatsoever of the mark for a magazine
featuring adult entertainment. The examining attorney
correctly rejected the declaration as insufficient evidence
of acquired distinctiveness for either of the involved
applications. Washington Speakers Bureau Inc. v. Leading
Authorities Inc., 33 F.Supp.2d 488, 49 USPQ2d 1893, 1896
n.3 (E.D. Va. 1999) (Registration of a mark or name as a
domain name does not confer any federal trademark rights on
the registrant).
In regard to what actual evidence there is that
WHITEHOUSE has acquired distinctiveness as a mark for
applicant's magazine, we find nothing in the record
attesting to the number of subscribers to applicant's
magazine, or to any advertising expenditures specifically
promoting the magazine, as opposed to expenditures
11 We also note that there are certain NEXIS excerpts which refer
to use of WHITEHOUSE.NET and WHITEHOUSE.ORG for websites
featuring pornography or adult subject matter. See, for example,
the transcript of a CBS This Morning broadcast from March 16,
1999 (in exhibit D to the examining attorney's final refusal of
registration) and an article in the SF Weekly, March 31, 1999 (in
exhibit L to the examining attorney's final refusal of
registration). These and other reports cast doubt on the
veracity of applicant's claim to substantially exclusive use of
WHITEHOUSE as a mark for a website featuring adult subject
matter.
Serial Nos. 75291235 and 75354127
26
promoting his website. Moreover, the copies of the two
magazine issues in the record tend to counter applicant's
claim in the application that he has actually been using
WHITEHOUSE for a magazine since August 1, 1997.
As the two issues comprise a total of only 20 pages,
including covers, we have reviewed them in their
entireties. One undated issue includes an inside statement
that it is the first issue of a semi-annual series. The
other issue, which states within its pages that it is the
second issue, bears a January 2000 issue date.12
In essence, applicant's claim of acquired
distinctiveness relies largely on unsolicited media
coverage of his website and the asserted large number of
visitors to his website. None of the evidence purportedly
establishing these matters, however, specifically relates
to use of WHITEHOUSE as a mark for a magazine. Rather, the
record is virtually devoid of evidence that WHITEHOUSE has
acquired distinctiveness as a mark for a magazine.
Accordingly, we affirm the examining attorney's refusal to
12 The self-proclaimed first issue includes a report that a new
ICANN domain name system will be in place sometime in 1999 but
also includes a report on the "IA2000" convention in Orlando.
Thus, either the first issue came out sometime in early or mid-
1999, with the second following in or about January 2000, or the
magazine has not been published on its stated semi-annual basis.
Serial Nos. 75291235 and 75354127
27
accept applicant's claim that his mark is registrable under
Section 2(f) for his magazine.
The last matter we must consider is whether applicant
has provided sufficient evidence that WHITEHOUSE has
acquired distinctiveness as a mark for his website. As
noted earlier, our primary reviewing court has stated that
evidence of acquired distinctiveness must "relate to … the
specific mark for which registration is sought." K-T Zoe,
29 USPQ2d at 1789. Thus, a significant threshold question
is whether applicant may rely on unsolicited media coverage
of his WHITEHOUSE.COM website as evidence that WHITEHOUSE
alone has acquired distinctiveness as a mark for his
website, for it is clear from the record that the
WHITEHOUSE.COM website has received a great deal of media
attention.13
There are at most a handful of NEXIS excerpts that
discuss applicant in conjunction with a "White House"
website. See, for example, The Boston Globe story of
November 15, 1998 on ICANN as overseer of the internet,
which refers to applicant as "an engineer for the White
13 Almost all of the media attention given applicant's website
focuses on the assumption that applicant adopted the domain name
to take advantage of inattentive or sloppy users of the internet
who actually seek information on The White House, and whether
there is anything that any governmental authority can do to halt
use of the domain name.
Serial Nos. 75291235 and 75354127
28
House's web site." (This is within exhibit S to the
examining attorney's final refusal.) Even here, however,
it is unclear whether the author was referring to
applicant's website or mistakenly thought applicant was an
engineer for the website of The White House. In any event,
almost every instance of unsolicited media reporting on the
existence of applicant's website takes pains to point out
that it is not the only "White House" website but, rather,
that applicant's site is the WHITEHOUSE.COM website, and
that it is very different in content from the
WHITEHOUSE.GOV website.
Applicant, in his declaration of April 19, 2000,
states in part that Whitehouse used in conjunction with
".com," "as opposed to any other type of site, such as a
government related site under the '.gov' top level domain,"
"has thus attained a secondary meaning as a commercial
site." We are not, however, faced with the task of
deciding whether WHITEHOUSE.COM and WHITEHOUSE.GOV can be
distinguished from each other by virtue of the top level
domain designations each website employs. Rather, we are
faced with the task of deciding whether all the unsolicited
media attention accorded the WHITEHOUSE.COM website
featuring adult subject matter has created a secondary
meaning in the term WHITEHOUSE alone for applicant's
Serial Nos. 75291235 and 75354127
29
website. We find that it has not, precisely because such
media attention has been pointed in drawing a distinction
between WHITEHOUSE.COM and WHITEHOUSE.GOV.
Nor are we persuaded by the purported evidence of the
number of visitors viewing applicant's website that
WHITEHOUSE alone has acquired secondary meaning as a mark
for that website.14 See DeGidio v. West Group Corp., 355
F.3d 506, 69 USPQ2d 1538, 1543 (6th Cir. 2004) (In
discounting affidavits from visitors to a website, the
court noted, "Mere use of a website does not equal
identification with a particular provider." In addition,
the court stated its agreement with the district court's
rejection as irrelevant of evidence of "rankings by
WebsMostLinked.com, a site that ranks websites based upon
the number of other sites that link to them."). See also,
555-1212.com Inc. v. Communication House International
Inc., 157 F.Supp.2d 1084, 59 USPQ2d 1453, 1459 (N.D. Cal.
2001) (In discounting declarations used to introduce
reports on the number of visitors to a website as evidence
14 We note that we have reservations about the weight to be
accorded the specific items of evidence that applicant has
submitted to show frequent, large numbers of visitors to his
site. Much of the material appears to be excerpts from larger
reports and is without context or attribution other than by
counsel's statements as to the source and significance of the
material. Nonetheless, it is clear from the overall record that
applicant's website is likely a frequently visited one.
Serial Nos. 75291235 and 75354127
30
of secondary meaning, the court said, "The Media Metrix
report only provides that a large number of Internet users
visit plaintiff's web site. It does not provide any
reasonable inference to conclude that these users perceive
plaintiff's domain name as a brand name instead of a merely
descriptive Internet address."). Indeed, we have no way of
knowing, based on the record before us, how many of the
visitors to applicant's site are intentionally seek its
adult subject matter, how many have made their way to the
site by mistake (whether through sloppy web browsing or
typing, or by being taken to the site when some unrelated
domain name was typed into a web browser15), or how many
went to the website in search of parodies of The White
House and who would have viewed WHITEHOUSE.COM as
descriptive of a site containing such content.
As for funds spent promoting applicant's website, we
find the evidence sketchy and lacking credibility. We
have, at best, reports by applicant's counsel of round
numbers with no detailed information on specific means of
promotion of applicant's website.
15 In regard to visitors being taken to applicant's website when
they did not even so much as type the word WHITEHOUSE into a web
browser, we note the numerous NEXIS excerpts that discuss another
party owning a large number of domain names that web users would
likely believe were affiliated with individual celebrities.
These stories explain that web users searching for these
Serial Nos. 75291235 and 75354127
31
We affirm the examining attorney's refusal to accept
applicant's claim that WHITEHOUSE is registrable under
Section 2(f) as a mark for a website featuring adult
subject matter.
We do not reach applicant's allegations that he has
been refused registration as the result of a concerted,
unconstitutional effort to prevent registration of his
marks because of displeasure with the content of his
website.
Decision: The refusal of registration under Section
2(a) of the Lanham Act, based on the argument that
applicant's mark falsely suggests a connection with The
White House, is reversed in regard to each application.
The refusal of registration under Section 2(e)(1) that
WHITEHOUSE is descriptive in regard to the goods or
services in each of the involved applications is affirmed.
Finally, the refusal to allow registration under Section
2(f), on the ground that the evidence of acquired
distinctiveness is insufficient to show secondary meaning
in WHITEHOUSE as a mark for applicant's goods or services
is affirmed.
celebrity sites were, for a time, being forwarded automatically
to applicant's website.