Steelbuild-ing.com

Trademark Trial and Appeal Board

Mar 24, 2004

No. 75934927 (T.T.A.B. Mar. 24, 2004)

Hearing: Mailed: 24 MAR 2003
22 JAN 2004 Paper No. 27
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Steelbuilding.com
________
Serial No. 75934927
_______
Michael M. Zadrozny of Shlesinger, Arkwright & Garvey,
L.L.P., for Steelbuilding.com.
Khanh M. Le, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______
Before Walters, Rogers and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
Steelbuilding.com (applicant) applied to register the
mark STEELBUILDING.COM in typed form for services
ultimately identified as “computerized on-line retail
services in the field of pre-engineered metal buildings and
roofing systems” in International Class 35. The
application (Serial No. 75934927) was filed on March 3,
2000, and it was based on an allegation of a bona fide
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 75934927
2
intention to use the mark in commerce. In an amendment to
allege use dated November 15, 2001, applicant asserted a
date of first use and a date of first use in commerce of
September 29, 2000.
The examining attorney initially refused registration
on the ground that the mark STEELBUILDING.COM is merely
descriptive of the services. 15 U.S.C. § 1052(e)(1). In
the final refusal, the examining attorney also advised
applicant “that the proposed mark appears to be generic as
applied to the services.” Office Action dated May 15, 2001
at 2. In response, applicant argued that its mark was
neither generic nor merely descriptive, but it also
offered, as an alternative, to amend the application to
seek registration under Section 2(f) of the Trademark Act
(15 U.S.C. § 1052(f)) and it submitted evidence of acquired
distinctiveness. Amendment and Request for Reconsideration
dated November 15, 2001. The examining attorney denied the
request for reconsideration on the additional grounds of
genericness and, in the alternative, even if the mark were
found only merely descriptive, lack of acquired
distinctiveness.
Applicant filed a notice of appeal and an oral hearing
was held on January 22, 2004.
Ser. No. 75934927
3
Evidence
We begin our discussion by reviewing the evidence of
record both as to the question of whether the mark is
merely descriptive or generic for applicant’s services, and
on the question of whether applicant’s mark, if only merely
descriptive but not generic, has acquired distinctiveness.
There is no doubt that the metal buildings that
applicant provides include “steel buildings.” Applicant’s
own website permits one to “design your steel building with
our advanced interactive system.” An article in Metal
Construction News featuring an interview with Scott House
of applicant starts by noting that applicant describes
“itself as ‘the first true e-commerce supplier of steel
buildings.’” In applicant’s advertisement, also in Metal
Construction News (January 2001), applicant refers to
itself as follows: “E-commerce website offers instant
pricing and online sales of steel buildings, mini storage
systems, building accessories, component parts and all-
steel homes.”
The examining attorney has made of record numerous
printouts from the NEXIS database that show that the term
“steel building” is a commonly used term to identify
buildings made of steel. Some examples are set out below.
Ser. No. 75934927
4
They also helped workers at the company – which builds
pre-engineered steel buildings.
The Sunday Oklahoman, September 23, 2001.
The structure will consist mainly of a prefabricated
steel building, chosen because it will be relatively
inexpensive.
St. Petersburg Times, October 18, 2001.
He attended the North Dakota School of Science in
Wahpeton. He owned and operated Quality Design Built
Inc., which manufactured pre-engineered steel
buildings.
Denver Post, October 10, 2001.
Bagley owns Teton West Construction of Rexburg, a
company he started in 1974, specializing in steel
building construction.
Idaho Falls Post Register, October 3, 2001.
He pays about $25,000 a year in rent for 600 acres, a
bit of yard, six grain bins and a small steel
building.
Star Tribune (Minneapolis, MN), September 16, 2001.
Primarily selling steel buildings and buying and
selling RVs, other vehicles and boats, Northwest
Enterprises has been at the location between Lake City
Engineering and Polaris for nearly two years.
Spokesman-Review (Spokane, WA), May 2, 2001.
Missing bolts in the roof assembly of the
prefabricated steel building, which opened in 1974,
were cited as cause for concern.
Union Leader (Manchester, NH), April 18, 2001.
Ganneston Construction designed a pre-engineered steel
building.
Bangor Daily News, September 25, 1996.
Star Building Systems is a manufacturer of pre-
engineered steel buildings.
Springfield Business Journal, April 6, 1998.
In addition to applicant’s use of the term “steel
building” and the publications’ use of the term to identify
Ser. No. 75934927
5
a type of building, i.e. a steel building, others who
appear to be applicant’s competitors or at least in the
construction industry use the term “steel building(s)” as
the name of their products.
One of the most interesting examples of the use of the
term “steel buildings” is the use of the term in the
publication RentSmart! that applicant submitted.
Applicant’s advertisement appears under the heading “steel
buildings.” In addition to applicant’s, two other
advertisements appear under the heading “steel buildings.”
The first is an ad for Express Steel Building. The other
is for Heritage Building Systems that includes the
following language: “Build it Yourself and Save! 10,000
sizes, Bolt-Together Steel Buildings & Homes.”
In another advertisement, this time in Metal
Construction News (January 2001) on the same page with
applicant’s listing, there appears an advertisement for
Steelway Buildings Systems that identifies itself as
offering “Steel building systems and components.”
Applicant introduced evidence of a poll regarding its
recognition in the metal building manufacturing field.
Other names in the poll include BC Steel Buildings, Bigbee
Steel Buildings, JRS Pre-Engineered Steel Buildings,
Lifetime Steel Buildings, Northern Steel Buildings, Dura-
Ser. No. 75934927
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Steel Buildings, Pioneer Steel Buildings, Premier Steel
Buildings, and Southern Steel Buildings.
Applicant also introduced declarations from customers
and others associated with the metal building industry.
Even these declarations refer to the use of applicant’s
mark “in the field of pre-engineered steel buildings.” Ron
Holder declaration. See also Ginn Declaration (“I am
thoroughly familiar with the marketplace in the field of
pre-engineered steel buildings”). Key Declaration (“I am
employed as Vice President of Operations of Heritage
Building Systems, Inc. (‘HBS’)1, which is one of the
retailers of pre-engineered steel buildings in the United
States”).
Applicant also submitted emails from customers to show
that its term has acquired distinctiveness, but even here
the customers use the term “steel building(s)” other than
as a mark. Bjorneboe email (“I have researched over twenty
steel building manufacturers”); and Brookbank email (“When
I choose to buy a steel building, it will be from your
company”).
1 The witness went on to explain that HBS and applicant “consider
themselves to be ‘sister’ companies.” Key declaration at 2.
Ser. No. 75934927
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Applicant has submitted the declaration of its
marketing director, Tom Hockersmith. Mr. Hockersmith
declares (¶ 2) that:
The primary products offered by Steelbuilding.com are
various types of pre-engineered metal buildings. More
specifically, within the overall class of pre-
engineered metal buildings, Steelbuilding.com confines
itself to simpler and smaller designs, ranging from
900 square feet up to 30,000 square feet and even
larger. Some typical uses for our products include
agricultural buildings, small warehouses, mini-storage
complexes, work shops, auto garages, and various types
of utility and storage buildings.
Mr. Hockersmith also declares (¶ 3) that
“Steelbuilding.com provides the only method and medium by
which potential buyers can get an accurate price quote for
a particular building without the aid of trained
estimators.” Submitted with the declaration of Mr.
Hockersmith were the results of various Internet polls
taken by MetalBuilding.com, a website applicant’s witness
identifies as “an Internet-based central information
exchange for the industry.” Hockersmith, ¶ 11. The
declarant (¶ 12) emphasizes that the “current poll lists
Steelbuilding.com among the choices along with four of its
competitors: Package Industries, Parkline, Steelox, and US
Structures. At the time of this declaration, 64% of the
respondents had listed Steelbuilding.com as the most
recognizable.” The printout of the Internet poll does not
Ser. No. 75934927
8
indicate how many responses were tallied. The
MetalBuilding.com website polls included such questions as
“Will Mark McGuire’s home run record be broken this
season?”; “Is now a good time to invest in the stock
market?”; “Timothy McVeigh will be executed…”; “Who will be
the first #1 seed to exit the NCAA men’s basketball
tournament?”; and “Are we headed toward a recession?”.
Mr. Hockersmith goes on to explain (¶ 17) that
applicant’s primary form of advertising is to focus on
Internet banner advertising. “For example, each time a
person uses Yahoo! to search for information on a term like
‘metal building,’ a graphical banner advertisement
promoting Steelbuilding.com will be displayed at the top
and bottom of every page that lists the results of this
search.”
Finally, Mr. Hockersmith provided information on the
number of price quotes (¶ 29) applicant issued in October
2001 (9000) and the number of new (200) and repeat (200)
users who enter the interactive pricing system every day
(¶ 25).
Genericness
We begin by addressing the issue of whether the term
STEELBUILDING.COM is generic for applicant’s services. The
Court of Appeals for the Federal Circuit has held that:
Ser. No. 75934927
9
“The critical issue in genericness cases is whether members
of the relevant public primarily use or understand the term
sought to be protected to refer to the genus of goods or
services in question.” H. Marvin Ginn Corp. v. Int’l
Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ
528, 530 (Fed. Cir. 1986). Ginn goes on to explain that:
Determining whether a mark is generic therefore
involves a two-step inquiry: First, what is the genus
of goods or services at issue? Second, is the term
sought to be registered or retained on the register
understood by the relevant public primarily to refer
to that genus of goods or services?
Id.
A term that is the generic name of a particular
product or category of goods is likewise generic for any
services that are directed to or focused on that product or
class of goods. See In re Log Cabin Homes Ltd., 52 USPQ2d
1206 (TTAB 1999) (LOG CABIN HOMES, which is generic for a
particular type of building, is also generic for
architectural design services directed to that type of
building and for retail outlets featuring kits for
construction of that type of building); In re A La Vielle
Russie Inc., 60 USPQ2d 1895 (TTAB 2001) (RUSSIANART generic
for particular field or type of art and also for dealership
services directed to that field).
Ser. No. 75934927
10
The evidence in this case convinces us that the term
STEELBUILDING.COM is generic for applicant’s computerized
on-line retail services in the field of pre-engineered
metal buildings and roofing systems. A significant, if not
primary feature, of applicant’s services is the sale of
steel buildings. Applicant identifies itself as providing
steel buildings, applicant’s website invites customers to
“design your steel building,” and applicant lists its
services under a generic heading “steel buildings.”
Furthermore, applicant’s competitors use the term “steel
buildings” generically, see, e.g., “Bolt-Together Steel
Buildings & Homes” and “Express Steel Building.” Others in
the trade use the term generically. See Metal Building
Today (October 2001) at 4 (“R & M Steel Company … Steel
Building Excellence – Since 1969”) and 8 (“The company also
placed the concrete floors before erecting the steel
building”). A poll at MetalBuilding.com identifies several
other metal building manufacturers that use the term “Steel
Buildings” in their name. As discussed previously,
applicant’s declarants and customers use the term “steel
building” generically, e.g., “one of the retailers of pre-
engineered steel buildings in the United States” and
“[w]hen I choose to buy a steel building.” Finally,
Ser. No. 75934927
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numerous publications discussed earlier provide abundant
examples of the generic use of the term.
Next, we address the “.com” part of applicant’s mark.
This issue is not a case of first impression. The term
“.com” is a “domain name suffix denoting commercial
entities such as corporations and companies.” Official
Internet Dictionary (1998). The addition of “.com” to a
generic term does not convert the term into a non-generic
term. See In re Martin Container Inc., 65 USPQ2d 1058,
1060-61 (TTAB 2002) (“A top level domain indicator like
‘.com’ does not turn an otherwise unregistrable designation
into a distinctive, registrable trademark” (internal
quotation marks and punctuation omitted)). See also In re
CyberFinancial.Net Inc., 65 USPQ2d 1789, 1792 (TTAB 2002)
(The TLD (top level domain) .com “has no source-identifying
significance”). As the board explained at length in
CyberFinancial.Net Inc., 65 USPQ2d at 1791 (footnote
omitted), a case involving the mark BONDS.COM:
The term “.com” is defined in the following ways: “a
domain type used for Internet locations that are part
of a business or commercial enterprise” CNET Glossary
(1998); “abbreviation of commercial organization (in
Internet addresses)” The American Heritage Dictionary
of the English Language (4th ed. 2000); and “Internet
abbreviation for company: used to show that an
Internet address belongs to a company or business”
Cambridge Dictionaries Online (2001). The record also
includes definitions of “Dot Com Company” as “[a]
company which operates its business mainly on the
Ser. No. 75934927
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Internet, using ‘.com’ URLs,” Newton’s Telecom
Dictionary (2001); and “dot-com company” as “[a]n
organization that offers its services or products
exclusively on the Internet.” The Computer Glossary
(9th ed. 2001).
The issue presently before us was squarely addressed
by the Board in the recent decision of In re Martin
Container, Inc., 65 USPQ2d 1058 (TTAB June 11, 2002)
(application Serial No. 75/553,426). In that case,
the Board found the designation CONTAINER.COM to be
generic and incapable of registration on the
Supplemental Register when used in connection with
“retail store services and retail services offered via
telephone featuring metal shipping containers” (Class
35) and “rental of metal shipping containers” (Class
39). The Board concluded that:
what applicant seeks to register is simply a
generic term [“container”], which has no source-
identifying significance in connection with
applicant’s services, in combination with the top
level domain indicator [“.com”], which also has
no source-identifying significance, and that
combining the two does not create a term which
has somehow acquired the capability of
identifying and distinguishing applicant’s
services.
The Board viewed CONTAINER.COM more like a compound
term than a phrase, and cited to In re Gould Paper
Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987)
in finding it generic. The Board stated that “to the
average customer seeking to buy or rent containers,
‘CONTAINER.COM’ would immediately indicate a
commercial web site on the Internet which provides
containers.” In making its determination, the Board
analogized to the cases of In re Paint Products Co., 8
USPQ2d 1863 (TTAB 1988) [PAINT PRODUCTS CO. held
incapable of identifying and distinguishing paints],
and In re E.I. Kane, Inc., 221 USPQ 1203 (TTAB 1984)
[OFFICE MOVERS, INC. held incapable of identifying and
distinguishing office facilities moving services].
The Board also cited to the views espoused by
Professor McCarthy:
Ser. No. 75934927
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a top level domain [“TLD”] indicator [such as
“.com”] has no source indicating significance and
cannot serve any trademark [or service mark]
purpose. The same is true of other non-
distinctive modifiers used in domain names, such
as http://www and “html”... [because] 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.
A top level domain indicator like “.com” does not
turn an otherwise unregistrable designation into
a distinctive, registrable trademark [or service
mark]. Thus, for example, adding a “.com” to a
generic term, such as would not
change the basic generic nature and the composite
will probably be found generic and unregistrable
for the service of providing information in the
field of banking. 1 J. McCarthy, McCarthy on
Trademarks and Unfair Competition, § 7:17.1 at
pp. 7-28.1 to 7-29 (4th ed. 2002).
Therefore, the addition of the term “.com” to
applicant’s generic term is not significant. We add that
while applicant’s mark is an Internet domain name,2 “[i]t is
necessary in the registration of an internet address to
eliminate spaces and possessive punctuation. It is
necessary, furthermore, to add a top-level domain at the
end of the address. Thus, consumers would see the domain
2 Applicant’s website is www.steelbuilding.com. There is no
practical difference between steelbuilding.com and
www.steelbuilding.com. 1-800 Contacts Inc. v. WhenU.com, 69
USPQ2d 1337, 1359 (S.D.N.Y. 2003) (Defendant’s mark “differs from
Plaintiff’s trademark only in the omission of spaces and
grammatical marks, and in the addition of the “www” and “.com.”
These distinctions are not significant’). We also note that “a
misspelling of a generic name which does not change the generic
significance to the buyer, is still generic.” 2 McCarthy on
Trademarks and Unfair Competition, § 12.38 (4th ed. 2003).
Ser. No. 75934927
14
name ‘thechildrensplace.com/.net’ as employing functionally
the same name as ‘The Children’s Place.” TCPIP Holding Co.
v. Haar Communications Inc., 244 F.3d 88, 57 USPQ2d 1969,
1980 (2d Cir. 2001).
Furthermore, the term “.com” is a designation for a
commercial entity on the Internet much like the older
expression “company” or its abbreviation “co.” The Supreme
Court held more than 100 years ago that adding a term such
as “company” to a generic term did not magically change an
unregistrable term to a registrable term:
[P]arties united to produce or sell wine, or to raise
cotton or grain, might style themselves Wine Company,
Cotton Company, or Grain Company; but by such
description they would in no respect impair the equal
right of others engaged in similar business to use
similar designations, for the obvious reason that all
persons have a right to deal in such articles, and to
publish that fact to the world. Names of such
articles cannot be adopted as trade-marks, and be
thereby appropriated to the exclusive right of any
one; nor will the incorporation of a company in the
name of an article of commerce, without other
specification, create any exclusive right to use of
the name.
Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear
Rubber Co., 128 US 598, 602-03 (1888).
We find that the evidence, including applicant’s own
evidence, shows that the genus for its services would be
the sale of pre-engineered “steel buildings” on the
Internet. The addition of non-distinctive matter such as
Ser. No. 75934927
15
“[t]he top level domain indicator [“.com”], which also has
no source-identifying significance, and combining the two
does not create a term which somehow has acquired the
capability of identifying and distinguishing applicant’s
services.” CyberFinancial.Net, 65 USPQ2d at 1791.
Next, we look at whether the term is understood by the
relevant public to refer to the product included in the
genus of the services. Ginn, 228 USPQ at 530. “Evidence
of the public's understanding of the term may be obtained
from any competent source, such as purchaser testimony,
consumer surveys, listings in dictionaries, trade journals,
newspapers, and other publications.” In re Merrill Lynch,
Fenner and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143
(Fed. Cir. 1987). “The critical issue in genericness cases
is whether members of the relevant public primarily use or
understand the term sought to be protected to refer to the
genus of goods or services in question.” Ginn, 228 USPQ at
530. Here, the relevant public would understand that the
term “steelbuilding.com” refers to the genus of the
services. Combining generic words can result in the
combined term also being generic. See In re Gould Paper
Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987)
(SCREENWIPE generic for a wipe for cleaning television and
computer screens); In re Abcor Dev. Corp., 588 F.2d 811,
Ser. No. 75934927
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200 USPQ 215 (CCPA 1978) (GASBADGE at least descriptive for
gas monitoring badges; three judges concurred in finding
that term was the name of the goods); In re American
Institute of Certified Public Accountants, 65 USPQ2d 1972
(TTAB 2003) (CPA EXAMINATION found generic).
However, a failure to provide evidence that the public
uses the term to refer to the genus of the goods or
services can result in the Office failing to satisfy its
burden of proof. In re American Fertility Society, 188
F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999) (SOCIETY FOR
REPRODUCTIVE MEDICINE held not generic for association
services because there was no evidence of generic use of
the term); In re Dial-A-Mattress Operating Corp., 240 F.3d
1341, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001) (“There is no
record evidence that the relevant public refers to the
class of shop-at-home telephone mattress retailers as ‘1-
888-M-A-T-R-E-S-S’”).
We find that the evidence supports a conclusion that
the term STEELBUILDING.COM, when viewed in relationship to
the services, would be viewed by relevant purchasers as the
genus of the goods, i.e. a website that provides
computerized on-line retail services in the field of pre-
engineered metal buildings including steel buildings. Just
as the public would understand that the terms “wine
Ser. No. 75934927
17
company,” “cattle company,” “BONDS.COM,” and
“CONTAINER.COM” refer to entities that market or provide
information on wine, cattle, bonds, and storage containers,
applicant’s mark is simply the name of a website that
sells, inter alia, steel buildings.
We also hold that STEELBUILDING.COM is a compound
word. See CyberFinancial.Net, 65 USPQ2d at 1794
(“BONDS.COM is properly considered a compound word in this
analysis. The terms ‘bond’ and ‘.com’ are joined as
compound word and appear without any space or separation
between them”). The board in that case held that the term
BONDS.COM was analogous to the term SCREENWIPE in Gould
Paper and, therefore, different from the terms SOCIETY FOR
REPRODUCTIVE MEDICINE in American Fertility and 1-888-
MATRESS in Dial-A-Mattress. We agree that the result is
the same in this case.
In arriving at this conclusion, we have considered all
the evidence of record. Regarding the declaration of
potential customers and competitors, these declarations
contain statements that the declarants associate
applicant’s term with “retail services in the field of pre-
engineered steel buildings” and they are familiar with
“several companies offering retail services in the field of
Ser. No. 75934927
18
pre-engineered steel buildings.” Holder and Ginn
declarations.
Obviously, a domain name is a unique address.
However, the mere fact that a domain name is registered
does not mean that the name is no longer generic. See
Martin Container (CONTAINER.COM) and CyberFinancial.Net, 65
USPQ2d at 1793 (The “term BONDS CO. would be generic for
services relating to bonds, and competitors should be
allowed to freely use marks such as ACME BONDS CO. and
UNITED BONDS CO. to identify and distinguish their
services. In the same manner, a designation such as
BONDS.COM should be freely available for others to adopt so
that designations such as ACMEBONDS.COM or UNITEDBONDS.COM
could be used by competitors to identify and distinguish
their services from others in the field”). The same
reasoning should apply here. Applicant has identified
numerous competitors or manufactures with names such as the
following: Lifetime Steel Buildings, Dura-Steel Buildings,
and O’Steel Buildings. Internet users assume that many
companies’ web address is simply the company’s name with a
“.com” ending. Lockheed Martin Corp. v. Network Solutions
Inc., 985 F. Supp. 949, 44 USPQ2d 1865, 1868 (C.D. Calif.
1997) (“Because most businesses with a presence on the
Internet use the ".com" top-level domain, Internet users
Ser. No. 75934927
19
intuitively try to find businesses by typing in the
corporate or trade name as the second-level domain name, as
in "acme.com." Second-level domain names, the name just to
the left of ".com," must be exclusive”), aff’d, 193 F.3d
980, 52 USPQ2d 1481 (9th Cir. 1999). Therefore, it would
not be unexpected that some of the companies and
manufacturers that applicant has identified would use or
would have a need to use domain names such as
LifetimeSteelBuildings.com, DuraSteelBuildings.com, and
OSteelBuildings.com. Indeed, applicant’s own evidence
points to an even closer use. One of its customers
reported the following problem: “I also wanted to let you
know that when I typed steelbuilding.com tonight, I
inadvertently added an ‘s’ at the end of steelbuilding, and
it took me to somebody else’s site. Too bad you can’t get
those close spellings redirected to your site.” Chipsoles
email. On the Internet, steelbuilding.com and
steelbuildings.com are distinguishable. For trademark
purposes, the evidence demonstrates that the terms “steel
building” and “steel buildings” are equally generic.
On this point, we do not find that applicant’s
evidence of non-genericness dissuades us from our finding
that, under the record before us, the term
“steelbuilding.com” is clearly generic.
Ser. No. 75934927
20
Descriptiveness
For the sake of completeness, we now address the issue
of whether applicant’s term STEELBUILDING.COM is merely
descriptive, in the event that applicant’s term is
subsequently determined to not be generic. “As often
stated, genericness is the ultimate in descriptiveness.”
In re Central Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB
1998). See also Ginn, 228 USPQ at 530. For a mark to be
merely descriptive, it must immediately convey knowledge of
the ingredients, qualities, or characteristics of the
services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009
(Fed. Cir. 1987); In re Quik-Print Copy Shops, Inc., 616
F.2d 523, 205 USPQ 505, 507 (CCPA 1980); In re MBNA America
Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir.
2003) (A “mark is merely descriptive if the ultimate
consumers immediately associate it with a quality or
characteristic of the product or service”).
We look at the mark in relation to the goods or
services, and not in the abstract, when we consider whether
the mark is descriptive. Abcor, 200 USPQ at 218. See also
MBNA, 67 USPQ2d at 1783 (“Board correctly found MBNA’s
emphasis on the regional theme through marketing promotions
and picture designs provides circumstantial evidence of how
Ser. No. 75934927
21
the relevant public perceives the marks in a commercial
environment”).
Applicant argues that “[w]hile the words ‘steel
building’ characterize one product sold by Applicant, it is
not the primary feature of Applicant’s services, nor does
it describe all buildings constructed of metal … nor
roofing systems.” Applicant’s Brief at 11. To be “merely
descriptive,” a term need only describe a single
significant quality or property of the goods or services.
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987); Meehanite Metal Corp. v. International Nickel Co.,
262 F.2d 806, 120 USPQ 293, 294 (CCPA 1959). While we are
not sure exactly what applicant means when it says that
“steel building” is not the primary feature of applicant’s
services, applicant’s own website lists as its first
feature: “Design your steel building with our advanced
interactive system.” One of applicant’s advertisements
contains the following information: “E-Commerce website
offers instant pricing and online sales of steel buildings,
mini storage systems, building accessories, component parts
and all-steel homes.” An article that applicant submitted
contains the following sentence: “Describing itself as
‘the first true e-commerce supplier of steel buildings,’
Steelbuilding.com promises…” We, frankly, are at a loss to
Ser. No. 75934927
22
understand that if the retail sale of steel buildings is
not the primary feature of applicant’s services, what is.
However, whether steel buildings are the “primary feature”
of applicant’s services is not determinative, because they
are at least a significant feature of applicant’s services.
In re Pencils, Inc., 9 USPQ2d 1410, 1411 (TTAB 1988) (“We
agree with applicant that the sale of pencils is not the
central characteristic of applicant's services.
Nevertheless, pencils are significant stationery/office
supply items that are typically sold in a store of
applicant's type, that is, a stationery and office supply
store. While applicant's stores may carry a variety of
products, pencils are one of those products, and, thus, the
term ‘pencils’ is merely descriptive as applied to retail
stationery and office supply services”). Accord In re
CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 (TTAB 2002)
(“[I]f applicant’s mark BONDS.COM is generic as to part of
the services applicant offers under its mark, the mark is
unregistrable”).
In addition, when we consider the issue of
descriptiveness, we must consider not only the term “steel
building” but also the “.com” feature and the mark in its
entirety. As discussed previously, the addition of a
Ser. No. 75934927
23
“.com” to an unregistrable term does not convert the term
into registrable mark.
When a descriptive term is combined with a top level
domain name, the combined term simply means that services
associated with the generic term are performed in an online
or “e-commerce” environment. Therefore, applicant’s
combined term is also merely descriptive. In re Microsoft
Corp., 68 USPQ2d 1195, 1203 (TTAB 2003) (“The combination
of the specific term and TLD at issue, i.e., OFFICE and
.NET, does not create any double entendre, incongruity, or
any other basis upon which we can find the composite any
more registrable than its separate elements. The
combination immediately informs prospective purchasers that
the software includes ‘office suite’ type software and is
from an Internet business, i.e., a ‘.net’ type business”).
We conclude that applicant’s term is, at least, merely
descriptive for applicant’s computerized on-line retail
services in the field of pre-engineered metal buildings and
roofing systems.
Acquired Distinctiveness
We now address the last issue, acquired
distinctiveness. If applicant’s mark is generic then
evidence of acquired distinctiveness cannot establish the
registrability of the term. In re Northland Aluminum
Ser. No. 75934927
24
Products, Inc., 777 F.2d 1556, 227 USPQ 961, 964 (Fed. Cir.
1985). If subsequently it should be determined that
applicant’s term is descriptive but not generic, it is
important that we discuss the evidence on this issue.
Applicant has the burden of proving that its mark has
acquired distinctiveness. In re Hollywood 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”).
“[L]ogically that standard becomes more difficult as the
mark’s descriptiveness increases.” Yamaha Int’l Corp. v.
Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1008 (Fed.
Cir. 1988).
We begin here with a discussion of applicant’s
Internet poll. See Hockersmith declaration (¶¶ 12 and 13).
This evidence refers to a poll at a website named
MetalBuilding.com. Apparently, a regular feature of this
website is a poll question normally about current events or
sports (“Who will win Election 2000?”, “Who will win the
Super Bowl?”, “Who will win the NBA title”?, and “Is now a
good time to invest in the stock market?”). In between
these questions, visitors were asked “Which one of the
following building manufacturers is the most recognizable?”
Mr. Hockersmith points out that when applicant was compared
Ser. No. 75934927
25
to “Package Industries,” “Parkline,” “Steelox,” and “US
Structures,” it was by far “the most recognizable.”
“There is no provision in the Trademark Rules of Practice
concerning the applicability of the Federal Rules of
Evidence to ex parte appeals before the Board.” TBMP
§ 101.02. However, the fact that the Federal Rules do not
apply does not mean that we do not evaluate evidence
critically. See In re American Olean Tile Co., 1 USPQ2d
1823, 1824 n.2 (TTAB 1986) (“The third-hand report of a
statement made by an unknown representative of registrant
is inadmissible hearsay which can be accorded no probative
value in our determination of the appeal”).
Applicant’s evidence of the results of an Internet
poll is devoid of any foundation that would convince us of
its reliability. We do not know how many people
participated, whether any attempt was made to prevent
people from voting more than once, whether any attempt was
made to prevent interested parties, i.e. representatives,
friends, or associates of applicant from participating, or
even if the participants were prospective purchasers of
retail services involving pre-engineered metal buildings.
The Internet poll is not even remotely similar to a
trademark survey. It should be taken with the same degree
of seriousness as investors would take the responses to the
Ser. No. 75934927
26
poll’s questions on the economy as a basis for making
investment decisions (“Is now a good time to invest?” and
“Are we entering a recession?”).
Concerning the specific question (Which of the
following metal building manufacturers is the most
recognizable?), it appears that of the five choices
(Package Industries, Parkline, Steelox, Steelbuilding.com,
and US Structures), applicant’s own name
“steelbuilding.com” uniquely provides all the information a
person who was guessing needs to answer the question.
We have also considered the declarations from
individuals who describe themselves as being familiar with
companies offering “pre-fabricated steel buildings.” See
Holder and Ginn declarations. We also have considered the
emails from customers. Again here, these customers often
recognize the genericness of the basic term. Kittler email
(“I have researched over twenty other steel building
manufacturers”); Fisher email (“When I choose to buy a
steel building”). We find that these letters provide some
de facto evidence that, occasionally, people may recognize
applicant’s term as a trademark but much of this evidence
may be attributable to domain name recognition.
We also have considered Mr. Hockersmith’s declaration
concerning how applicant does business, the volume of its
Ser. No. 75934927
27
website’s hits, and its advertising. This evidence does
not show that purchasers recognize applicant’s term as a
trademark. In re Leatherman Tool Group Inc., 32 USPQ2d
1443, 1450 (TTAB 1994) (“Absent, therefore, anything to
link applicant's gross sales of over $20 million and
advertising expenditures of $200,000, which were generated
and spent in connection with its marketing of in excess of
one million tools during a nearly ten-year period, with use
in contexts which would condition customers to react to or
recognize the designation ‘POCKET SURVIVAL TOOL’ as an
indication of source rather than as a description of a
category of product, there is no convincing basis for
finding that such designation functions other than as a
generic name”). Applicant’s advertising expenses are at a
much smaller level and rely heavily on Internet banner
advertisements that directly send potential purchasers
searching the terms metal buildings and the like to
applicant’s site.
In this case, if the terms “steel building” and “.com”
are not generic, they are at least highly descriptive.
Applicant’s burden of demonstrating that its mark has
acquired distinctiveness increases as the level of
Ser. No. 75934927
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descriptiveness increases. We find that applicant’s
evidence falls far short of its burden here.3
CONCLUSION
We agree with the examining attorney that the term
STEELBUILDING.COM is merely descriptive and generic for the
services recited in the application and that applicant has
not demonstrated that it has acquired distinctiveness.
Decision: The refusals to register are affirmed.
3 Applicant has also introduced numerous registrations, which it
says “comprise a generic term or word for the identified services
or goods together with a ‘dot.com’ suffix.” Supplemental
response dated November 14, 2002 at 1. To the extent that
applicant is still relying on this evidence, we note that most of
these registrations issued or were published prior to the board’s
precedential decisions in Martin Container and
CyberFinancial.Net, which provided some clarification to the
examining attorneys on this issue. Furthermore, each trademark
case must be decided on its own merits and even “if some prior
registrations had some characteristics similar to Nett Designs'
application, the PTO's allowance of such prior registrations does
not bind the Board or this court.” In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). The record in
this case provides clear evidence of the genericness of
applicant’s term.