Shawn M. Lynch

Trademark Trial and Appeal Board

Sep 25, 2012

No. 77892923 (T.T.A.B. Sep. 25, 2012)

Mailed:
September 25, 2012

United States Patent and Trademark Office
Trademark Trial and Appeal Board
________
In re Lynch
________
Serial No. 77892923
_______
Shawn M. Lynch, applicant, appearing pro se.
Michael Tanner, Trademark Examining Attorney, Law Office 117 (Brett
Golden, Managing Attorney).1
_______
Before Cataldo, Mermelstein and Lykos, Administrative Trademark Judges.
Opinion by Lykos, Administrative Trademark Judge:
On November 14, 2009, Shawn M. Lynch (“applicant”) filed an applica-
tion2 to register the mark INTERIORSUSA.NET as a mark in standard char-
acter format for “on-line retail store services featuring a wide variety of con-
sumer goods of others” in International Class 35. The Trademark Examining
attorney refused registration of the mark on the grounds that the applied-for
mark is primarily geographically descriptive of the origin of applicant’s ser-

1 The application was originally assigned and examined by Trademark Examining
Attorney Charlotte K. Corwin. Michael Tanner represented the Office at oral hear-
ing.

2 Application Serial No. 77892923, based on Section 1(a) of the Trademark Act, alleg-
ing May 4, 1999 as the date of first use anywhere and in commerce.

This Opinion is NOT a
Precedent of the TTAB
Serial No. 77892923

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vices within the meaning of Trademark Act Section 2(e)(2), 15 U.S.C.
§ 1052(e)(2), and that applicant has failed to demonstrate acquired distinc-
tiveness of its applied-for mark under Section 2(f) of the Trademark Act, 15
U.S.C. § 1052(f).3
The examining attorney has also refused registration on the grounds that
applicant’s mark fails to function as a service mark and that the mark in the
drawing is not a substantially exact representation of the mark as used on the
specimens.
Applicant has appealed the examining attorney’s final refusals to regis-
ter. Both applicant and the examining attorney have filed briefs and an oral
hearing was held.
I. Evidentiary Issues
In her brief, the examining attorney objects to new evidence applicant
submitted with his appeal brief, namely, a Google definition search summary
and a definition of the word “Internet.” The objection is sustained. The record
should be complete prior to filing an appeal. Trademark Rule 2.142(d); 37
C.F.R. § 2.142(d). Because the evidence was untimely, it has been given no
consideration. See e.g., In re Trans Continental Records Inc., 62 USPQ2d

3 In her appeal brief, the examining attorney withdrew the final refusal to register
applicant’s mark on the ground that it is merely descriptive pursuant to Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1).

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1541 (TTAB 2002) (materials from web search engines submitted with appeal
brief not considered).4
II. Procedural History and Applicant’s Claim of Acquired Distinctive-
ness

Before discussing the merits of the appeal, the Board is compelled to
comment on the procedural history.
In his Office Action Response dated September 21, 2010, applicant
amended the involved application to seek registration under Section 2(f). Ap-
plicant’s claim was not made in the alternative, and applicant did not present
any arguments regarding the Section 2(e)(2) refusal in his response. See Of-
fice Action Response dated September 21, 2010. At this point, it would have
been entirely proper for the examining attorney to construe applicant’s
amendment as a concession that applicant’s mark is geographically descrip-
tive under Section 2(e)(2) and not inherently distinctive. Cf. The Cold War
Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626,
1629 (“where an applicant seeks registration on the basis of Section 2(f), the
mark’s descriptiveness is a nonissue; an applicant’s reliance on Section 2(f)
during prosecution presumes that the mark is descriptive”). See also TMEP
§ 1212.02(b) and cases cited therein. Instead, in the next office action, the ex-
amining attorney maintained and continued to argue the merits of the Section
2(e)(2) refusal, and ultimately made the refusal final. See Office Actions dat-

4 In any event, even if we were to consider the evidence, we would reach the same re-
sult in this case.
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ed October 14, 2010 and May 16, 2011. We disagree with the procedural pos-
ture adopted by the examining attorney in this case. Nonetheless, because
the examining attorney did not inform the applicant he could no longer argue
the merits of the Section 2(e)(2) refusal, and instead continued and made final
the refusal, applicant was misled to believe he had preserved the issue on ap-
peal. For this reason, we will consider the merits of the Section 2(e)(2) re-
fusal. See In re Binion, 93 USPQ2d 1531, 1538 (TTAB 2009) (although appli-
cant did not couch his Section 2(f) claim of acquired distinctiveness in the al-
ternative when he argued against surname refusal, because applicant and the
examining attorney treated the claim as an alternative one, the Board did as
well); and In re Central Sprinkler Co., 49 USPQ2d 1194, 1195 n.3 (TTAB
1998) (Board considered registrability on both Principal and Supplemental
Registers even though applicant’s amendment to the Supplemental Register
was originally not made in the alternative, noting that the examining attor-
ney continued to refuse registration on both registers, and subsequent papers
of both applicant and examining attorney, including request for reconsidera-
tion and decision on that request, discussed the amendment as being in the
alternative).
III. Section 2(e)(2) Refusal
Section 2(e)(2) of the Trademark Act prohibits the registration of a mark
which, when used on or in connection with the goods or services of an appli-
cant, is primarily geographically descriptive of them. In order to establish
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that a mark is primarily geographically descriptive, the examining attorney
must show that (1) the primary significance of the mark as it is used is a gen-
erally known geographic place; and (2) the relevant public would be likely to
make a goods/place association, i.e., believe that the goods for which the mark
is sought to be registered originate in that place. See In re Jacques Bernier
Inc., 894 F.2d 389, 13 USPQ2d 1725 (Fed. Cir. 1990); In re Societe General des
Eaux Minerals de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987);
In re Spirits of New Merced LLC, 85 USPQ2d 1614, 1616 (TTAB 2007). More-
over, where there is no genuine issue that the geographical significance of a
term is its primary significance, and where the geographical place named by
the term is neither obscure nor remote, a public association of the goods or
services with the place may ordinarily be presumed from the fact that the ap-
plicant's goods or services come from the geographical place named by or in
the mark. See, e.g., In re JT Tobacconists, 59 USPQ2d 1080, 1082 (TTAB
2001); In re Carolina Apparel, 48 USPQ2d 1542, 1543 (TTAB 1998); In re Cal-
ifornia Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988); and In re Handler
Fenton Westerns, Inc., 214 USPQ2d 848, 850 (TTAB 1982). In addition, the
presence of generic or highly descriptive terms in a mark which also contains
a primarily geographically descriptive term does not serve to detract from the
primary geographical significance of the mark as a whole. See, e.g., In re JT
Tobacconists, 59 USPQ2d at 1082; In re Carolina Apparel, 48 USPQ2d at
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1543; In re Cambridge Digital Systems, 1 USPQ2d 1659, 1662 (TTAB 1986);
and In re BankAmerica Corp., 231 USPQ 873, 875 (TTAB 1986).
“Under the first prong of the test — whether the mark's primary signifi-
cance is a generally known geographic location — a composite mark such as
applicant's proposed mark must be evaluated as a whole.... It is not errone-
ous, however, for the examiner to consider the significance of each element
within the composite mark in the course of evaluating the mark as a whole.”
In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778, 1782 (Fed.
Cir. 2001) [internal citations omitted].
Based on the evidence of record, we find first that “USA” is a well known
acronym for “United States of America,” and that clearly the term is geo-
graphically descriptive with no other meaning or connotation. See definition
of “USA” from Encarta at msn.encarta.com submitted with Office Action dated
March 22, 2010. See In re U.S. Cargo Inc., 49 USPQ2d 1702, 1703 (TTAB
1998) (“[W]e may take judicial notice of the fact that ‘U.S.’ means the United
States, and that the United States is a geographic area with defined bounda-
ries. Indeed, we believe the exclusive significance of ‘U.S.’ to most purchasers
would be the geographic area.”).
We further find that the term “INTERIORS” in applicant's mark is de-
scriptive of applicant's “on-line retail store services featuring a wide variety of
consumer goods of others.” The word “interior” is defined as “the inside of a
building or room considered especially with regard to its decoration and fur-
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nishing.” See definition of “interior” from Encarta at msn.encarta.com sub-
mitted with Office Action dated March 22, 2010. Applicant’s online retail
store services are broadly worded in a manner to encompass the sale of interi-
or design furnishings and home products as evidenced from the print outs ap-
plicant submitted from his web site during ex parte prosecution. Thus, the
presence of the highly descriptive term “INTERIORS” in applicant's mark
does not detract from the primary geographical significance of the mark as a
whole. See In re Save Venice New York Inc., supra.
The addition of the top-level domain “.NET” does not alter our finding
that applicant’s mark INTERIORSUSA.NET is geographically descriptive. In
general, top-level domains do not add any source identifying significance to a
mark. Cf. In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682
(Fed. Cir. 2009) (MATTRESS.COM generic for “online retail store services in
the field of mattresses, beds, and bedding”); In re Hotels.com, L.P., 573 F.3d
1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (HOTELS.COM generic for “ provid-
ing information for others about temporary lodging; travel agency services,
namely, making reservations and bookings for temporary lodging for others by
means of telephone and the global computer network”); In re Reed Elsevier
Props. Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007) (LAWYERS
.COM generic for “providing access to an online interactive database featuring
information exchange in the fields of law, lawyers, legal news, and legal ser-
vices”); In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed.
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Cir. 2004) (PATENTS.COM merely descriptive of “computer software for
managing a database of records and for tracking the status of the records by
means of the Internet”).
We next turn to the second prong of the test, i.e., whether purchasers
would make a goods/place association between applicant’s goods and the place
named in the mark. Applicant acknowledges that its services originate from
the United States. Furthermore, to state the obvious, there is nothing in the
record to suggest that the United States is either an obscure or remote geo-
graphic location. Hence, because applicant’s services originate in the United
States, a goods/place association may be presumed. In re Chalk's Internation-
al Airlines Inc., 21 USPQ2d 1637 (TTAB 1991); In re California Pizza Kitchen
Inc., supra. Further, applicant has not presented any evidence to rebut this
presumption of a goods/place association.
We have considered all of the arguments and evidence made of record by
applicant and the examining attorney, including any arguments and evidence
not specifically discussed herein. We find that applicant's mark,
INTERIORSUSA.NET, identifies a well-known geographic location, and that
purchasers would make a goods/place association between applicant’s online
retail store services and the place named in the mark. Because both elements
of the Section 2(e)(2) refusal have been established, we find that the examin-
ing attorney has established, prima facie, that applicant’s mark is primarily
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geographically descriptive of applicant's goods services. The Section 2(e)(2)
refusal is affirmed.
IV. Section 2(f) Refusal
We now turn to the question of whether applicant’s mark,
INTERIORSUSA.NET, has acquired distinctiveness under Section 2(f).
It is applicant's burden to prove acquired distinctiveness. Yamaha Int'l
Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed.
Cir. 1988); In re Cabot Corp., 15 USPQ2d 1224, 1229 (TTAB 1990); In re Hol-
lywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954) (“[T]here
is no doubt that Congress intended that the burden of proof [under Section
2(f)] should rest upon the applicant.”). In determining whether the proposed
mark has acquired distinctiveness, the following factors are generally consid-
ered: (1) length and exclusivity of use of the mark in the United States by ap-
plicant; (2) the type, expense and amount of advertising of the mark in the
United States; and (3) applicant’s efforts in the United States to associate the
mark with the source of the goods and/or services, such as unsolicited media
coverage and consumer studies. See In re Steelbuilding.com, 415 F.3d 1293,
75 USPQ2d 1420, 1424 (Fed. Cir. 2005).
To support of its claim of acquired distinctiveness, applicant relies pri-
marily on the fact that it has been in use for eleven years and evidence re-
garding the level of web site traffic. More specifically, applicant points to its
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website which has had a total of 12,086 visitors and averages 926 views per
year. Response to Office Action dated September 21, 2010.
At the outset, we note that even if applicant's unverified declaration of
eleven years of use were proper, because applicant’s mark is highly geograph-
ically descriptive, additional evidence is required to establish acquired distinc-
tiveness. In re Bongrain Intern. (Am.) Corp., 894 F.2d 1316, 1317, 13 USPQ2d
1727, n.4 (Fed. Cir. 1990) (“the greater the degree of descriptiveness the term
has, the heavier the burden to prove it has attained secondary meaning”).
Section 2(f) provides that the Director may accept proof of such use as prima
facie evidence that the mark has become distinctive. However, Trademark
Rule 2.141(b) makes it clear that this is discretionary, and that while such a
statement may be accepted as prima facie evidence of distinctiveness, further
evidence may be required.
Applicant’s evidence of web site traffic, considered in connection with the
years of use, falls short of what is required to prove acquired distinctiveness.
Cf. In re Country Music Association, 100 USPQ2d 1824, 1834 (TTAB 2011)
(acquired distinctiveness established where applicant, among other evidence,
introduced evidence that its web site promoting is association services had
over 15 million hits in a single year). Other than the web site traffic, it is
noteworthy that applicant has not provided any other type of evidence in sup-
port of its claim of acquired distinctiveness, such as specific dollar sales under
the mark, advertising figures, samples of advertising, consumer or dealer
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statements of recognition of the mark as a source identifier, or affidavits. See
In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (CCPA 1975). Thus, we
find that applicant has failed to prove that INTERIORSUSA.NET has ac-
quired distinctiveness as a mark, and affirm the examining attorney’s refusal
to register under Section 2(f).
V. Specimen Refusals
Before considering the remaining issues on appeal, we turn first to a
formality. Although applicant filed his application based on Section 1(a), he
did not submit a specimen with his application. In response to the examining
attorney’s requirement for a specimen, applicant submitted printouts from his
web site, including the page displayed below:

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As the examining attorney pointed out in her final Office action, and her
brief on appeal, applicant failed to provide the required verification that the
specimens were in use in commerce at least as early as the filing date of the
application. See Trademark Rules 2.59(a) and 2.193(e)(1); 37 C.F.R. § 2.59(a)
and § 2.193(e)(1). We agree, finding the examining attorney’s requirement for
verification entirely proper.
A. Proposed Mark Not Used as a Service Mark
We will now discuss the examining attorney’s refusal to register the
mark INTERIORSUSA.NET on the ground that applicant's specimen of rec-
ord does not show the applied-for mark used in direct connection with the sale
or advertising of the recited services. For the reasons discussed herein, the
refusal to register on this basis is affirmed.
A service mark is used in commerce “when it is used or displayed in the
sale or advertising of services and the services are rendered in commerce, or
the services are rendered in more than one State or in the United States and a
foreign country and the person rendering the services is engaged in commerce
in connection with the services.” Trademark Act Section 45, 15 U.S.C. § 1127.
Trademark Rule 2.56(a) provides, in part, that an application under section
1(a) of the Act, i.e., an application based on use in commerce, such as the ap-
plications at issue herein, must include one specimen showing the mark as
used on or in connection with the sale or advertising of the services in com-
merce. Trademark Rule 2.56(b)(2) further specifies that a “service mark spec-
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imen must show the mark as actually used in the sale or advertising of the
services.” When used in advertising services, the service mark must not
merely appear in the advertising material that also discusses or offers the
services, but must be associated with the services in such a manner as would
be sufficient to indicate to potential purchasers or users of the services that
the mark identifies the services and their source. See In re Universal Oil
Products Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973) (“The minimum
requirement is some direct association between the offer of services and the
mark sought to be registered therefor.”).
The intended mark, as depicted on the specimen, must be presented in a
manner that will be perceived by potential purchasers to indicate source and
not as merely an informational indication of the domain name address used to
access a website. See In re Roberts, 87 USPQ2d 1474, 1479 (TTAB 2008); In
re Eilberg, 49 USPQ2d 1955, 1957 (TTAB 1998).
In the seminal case of In re Eilberg, the Board held that a term that only
serves to identify the applicant’s domain name or the location on the Internet
where the applicant’s website appears, and does not separately identify appli-
cant’s services, does not function as a service mark. The applicant’s proposed
mark was WWW.EILBERG.COM, and the specimen submitted was the busi-
ness card of William H. Eilberg, Attorney at Law, 820 Homestead Road, P.O.
Box 7, Jenkintown, Pennsylvania 19046, 215-855-4600, email
whe@eilberg.com. The Board affirmed the examining attorney’s refusal of
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registration on the ground that the matter presented for registration did not
function as a mark, stating that:
[T]he asserted mark, as displayed on applicant’s letterhead, does
not function as a service mark identifying and distinguishing
applicant’s legal services and, as presented, is not capable of do-
ing so. As shown, the asserted mark identifies applicant’s In-
ternet domain name, by use of which one can access applicant’s
Web site. In other words, the asserted mark WWW .EILBERG
.COM merely indicates the location on the Internet where appli-
cant’s Web site appears. It does not separately identify appli-
cant’s legal services as such.

Similarly, in the case of In re Roberts, 87 USPQ2d 1474, 1479 (TTAB
2008), the Board held that applicant’s proposed mark “irestmycase” did not
function as a mark for legal services, where it was used only as part of an
online email address by means of which one may reach applicant’s website.
Here, we are presented with similar circumstances.
Applicant’s proposed INTERIORSUSA.NET mark appears only as part of
an email address on his specimen – “info@interiorsusa.net” It does not sepa-
rately identify applicant’s online retail store services but rather serves only as
a link for facilitating email contact with customers. Hence, prospective con-
sumers, when encountering applicant’s web page, will only perceive the term
“interiorsusa.net” merely as part of applicant’s email address and not as a
service mark. As such applicant’s proposed mark fails to function as a service
mark and the refusal to register is affirmed.
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B. Drawing Not a Substantially Exact Representation of Mark on
Specimen

The examining attorney has also refused registration of applicant’s
INTERIORSUSA.NET mark on an additional ground, namely that the mark
as it appears on the drawing is not a substantially exact representation of the
mark on the specimen pursuant to Trademark Rule 2.51(a), 37 C.F.R.
§ 2.51(a). The “drawing depicts the mark sought to be registered.” Trade-
mark Rule 2.52; 37 CFR § 2.52. “An applicant may seek to register any por-
tion of a composite mark if that portion presents a separate and distinct com-
mercial impression.” In re Lorillard Licensing Co., 99 USPQ2d 1312 (TTAB
2011), citing In re 1175854 Ontario Ltd., 81 USPQ2d 1446 (TTAB 2006). In
other words, “the mark as actually used must not be so entwined (physically
or conceptually) with other material that it is not separable from it in the
mind of the consumer.” In re Yale Sportswear Corp., 88 USPQ2d 1121 (TTAB
2008), quoting In re Chem. Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828,
1830 (Fed. Cir. 1988).
In instances where the applied-for mark comprises an Internet domain
name, the Trademark Manual of Examining Procedure (TMEP) Section
1215.02(c) provides the following guidance in assessing differences between
the mark on the drawing and the mark on the specimens:
Sometimes the specimen fails to show the entire mark sought to
be registered (e.g., the drawing of the mark is
HTTP://WWW .ABC.COM, but the specimen only shows ABC). If
the drawing of the mark includes a TLD, or the terms
“http://www.” or “www.,” the specimen must also show the mark
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used with these terms. Trademark Act § 1(a)(3)(C), 15 U.S.C.
§ 1051(a)(3)(C).

Example: If the drawing of the mark is ABC.COM, a speci-
men that only shows the term ABC is unacceptable.

This is precisely the set of circumstances presented here. On his draw-
ing, applicant’s mark appears as INTERIORSUSA.NET. However, that same
service mark does not appear on the specimen of record. The specimen depicts
the term INTERIORSUSA at the top of the web page (seemingly used in the
manner of a service mark), but that is not the same as the mark in the draw-
ing, which includes “.NET.” Although we are not bound by hypotheticals dis-
cussed in the TMEP, in this particular case, we do find the above hypothetical
persuasive. The addition of the top-level domain “.net” to the term “interior-
susa” transforms the inherent character of the mark. In other words, the lit-
eral element of “INTERIORSUSA” cannot be “severed” from the top level do-
main “.NET” without altering the commercial impression of the mark. As
such, the “.NET” portion at the end of the composite “INTERIORSUSA” is
“entwined” as an integral part of the mark as used in commerce. Cf. In re
Guitar Straps Online, LLC, 103 USPQ2d 1745 (TTAB 2012) (“the question
mark at the end of the phrase “GOT STRAPS” is “entwined” as an integral
part of the mark as used in commerce”). We therefore find that applicant's
drawing of the mark is not a substantially exact representation of the mark as
used in commerce. See Trademark Rule 2.51(a).
DECISION: The refusals to register are affirmed.