Steelbuilding.com, Inc.

Trademark Trial and Appeal Board

Dec 12, 2006

No. 76280390 (T.T.A.B. Dec. 12, 2006)

Hearing: Mailed:
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
18 April 2007 12 December 2007
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Steelbuilding.com, Inc.1
________

Serial Nos. 76280389 and 76280390
_______

Michael M. Zadrozny of Shlesinger, Arkwright & Garvey,
L.L.P., for Steelbuilding.com, Inc.

Khanh M. Le, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______

Before Rogers, Drost, and Walsh, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On July 3, 2001, applicant, Steelbuilding.com, Inc.,
applied to register two marks on the Principal Register for
services ultimately identified as “computerized on-line
retail services in the field of pre-engineered steel

1 On November 8, 2007, the Office recorded an assignment of the
marks at issue in this appeal to NCI Group, Inc., a Nevada
corporation. Reel/Frame No. 3658/0162.
Ser. Nos. 76280389 and 76280390
buildings and roofing systems” in Class 35. The first
application (Serial No. 76280389) is for the mark:

The second application (Serial No. 76280390) is for the
mark STEELBUILDING.COM THE FUTURE OF METAL BUILDINGS in
typed or standard character form and applicant has
disclaimed the term “Metal Buildings.” Both applications
alleged a date of first use anywhere of June 1, 2000 and a
date of first use in commerce of September 29, 2000.
The examining attorney required a disclaimer of the
term “Steelbuilding.com” in both applications under Section
6 of the Trademark Act on the ground that the term is
merely descriptive of applicant’s services. 15 U.S.C.
§§ 1052(e)(1) and 1058. Applicant responded by seeking
registration of its marks with a claim of acquired
distinctiveness as to the term “Steelbuilding.com” under
Section 2(f) of the Trademark Act. 15 U.S.C. § 1052(f).
The examining attorney was not persuaded that the term
“Steelbuilding.com” had acquired distinctiveness. After
applicant appealed to this board, on July 12, 2006, it
2
Ser. Nos. 76280389 and 76280390
requested that the appeals be consolidated. The board, in
an order dated October 19, 2006, granted that request.2
Issue
The issue in both cases is whether the term
STEELBUILDING.COM has acquired distinctiveness.
Background
After the applications were initially refused
registration, action on the cases was suspended pending the
outcome of the appeal of the board’s decision involving
another application (No. 75934927) filed by applicant for
the mark STEELBUILDING.COM for virtually identical
services.3 On July 11, 2005, the Federal Circuit held, with
one judge concurring in part and dissenting in part, that
the term STEELBUILDING.COM was not generic, that it was
merely descriptive, and that applicant had not demonstrated
that the term had acquired distinctiveness. In re
Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420 (Fed. Cir.
2005). In affirming on the descriptiveness and lack of
acquired distinctiveness issues, the Court held that the

2 References to the record in this opinion will be to the record
in Serial No. 76280389.

3 We note that in the 75934927 application, the services were
identified as being in the field of “… pre-engineered metal
buildings.” Steelbuilding.com, 75 USPQ2d at 1421. In the
current applications, the field is identified as “… pre-
engineered steel buildings.”
3
Ser. Nos. 76280389 and 76280390
“… proposed mark is highly descriptive. Therefore,
applicant had the burden to show a concomitantly high level
of secondary meaning. The Board correctly determined that,
on this record, ‘applicant’s evidence falls far short of
its burden.’” 75 USPQ2d at 1424.
Subsequently, applicant in these consolidated cases
submitted a claim that its marks had become distinctive as
a result of its five years use in commerce as well as
additional evidence. The examining attorney denied
applicant’s request for reconsideration and an oral hearing
was held on April 18, 2007.
In light of the Federal Circuit’s determination that
the term STEELBUILDING.COM was highly descriptive and
applicant’s amendment to seek registration of the involved
marks on the Principal Register under Section 2(f) of the
Trademark Act, the only issue in this case involves the
question of whether applicant has met its burden of showing
that the term STEELBUILDING.COM has acquired
distinctiveness. Yamaha Int’l Corp. v. Hoshino Gakki Co.,
840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988)
(“Where, as here, an applicant seeks a registration based
on acquired distinctiveness under Section 2(f), the statute
accepts a lack of inherent distinctiveness as an
established fact”). Applicant has the burden of
4
Ser. Nos. 76280389 and 76280390
establishing acquired distinctiveness in ex parte
proceedings before the USPTO. Id. at 1004. See also 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”). The Federal Circuit has commented
that “logically that standard becomes more difficult to
meet as the mark's descriptiveness increases.” Yamaha at
1008.
Evidence
Applicant and the examining attorney submitted a
significant amount of evidence before and after the
applications were suspended pending the outcome in
Application No. 75934927. Applicant relies, inter alia, on
the declarations of its marketing director, Tom
Hockersmith. Mr. Hockersmith provided the following
information:
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
about 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.

Though products similar in type and quality to those
of Steelbuilding.com are available through numerous
5
Ser. Nos. 76280389 and 76280390
sources, Steelbuilding.com offers a unique service.
Through Steelbuilding.com’s web site and its
proprietary interactive systems, Steelbuilding.com
provides the only method and medium by which potential
retail buyers can get an accurate price quote for a
particular building design without the aid of trained
estimators. Steelbuilding.com’s system is so unusual
and so useful that no one who is actively considering
purchasing a pre-engineered metal building is likely
to forget it once he or she has used it. It even
offers advantages over the computer-based pricing
systems that are available to industry professionals.
Most pricing systems require extensive training in the
use of the system as well as specialized knowledge of
pre-engineered metal buildings. Steelbuilding.com’s
system requires neither and can be easily operated by
almost everyone who knows what kind of building he or
she wants.

Hockersmith declaration, ¶¶ 2 and 3.

Applicant describes its promotional efforts as
follows:
The marketing efforts of Steelbuilding.com are aimed
at two distinct types of consumers of pre-engineered
metal buildings: end-users and resellers.

Hockersmith declaration, ¶ 4.

Applicant’s print advertisement efforts directed
toward resellers include special account agreements
under their “private label program” marketing
campaign. For the period extending from September 6
to November 12, 2001, Applicant adopted twenty-one new
resellers into the program, two of which resulted in
purchases between $49,000 and $80,000.

Request for Reconsideration of October 18, 2002 at 6. See
also Hockersmith declaration, ¶ 10.
6
Ser. Nos. 76280389 and 76280390
In addition, applicant has placed full page ads in
Metal Construction News, Inside Self-Storage, and Self-
Storage Now. Hockersmith declaration, ¶¶ 5 and 6.
Applicant also points to its sales figures for 2002
($11,930,838), 2003 ($12,379,618), 2004 ($22,535,464), and
2005 ($21,472,368) and the money it spent on advertising
promotions for 2002 ($673,296), 2003 ($560,423), 2004
($986,805), and 2005 ($981,040) as evidence that its mark
has acquired distinctiveness. Moore declaration dated
March 9, 2006, ¶¶ 3 and 4.
Furthermore, during “2005, website traffic to our
STEELBUILDING.COM website ranged between 49,789 visitors
per month to 102,806 visitors per month” and that visitor
“traffic to our STEELBUILDING.COM website is greater than
that of any of our competitors and among our competitors we
are currently ranked first in visitor traffic.” Moore
declaration dated March 9, 2006, ¶¶ 5 and 6.
Earlier, applicant explained its internet advertising
strategy as follows:
Steelbuilding.com has established long-term contracts
with four of the best known and most popular search-
engines on the Internet – Yahoo!, Microsoft Network
(msn.com), AltaVista, and America Online (aol.com) –
for exclusive advertising rights for the search
results on the key terms related to its products and
services. For example, each time a person uses Yahoo!
to search for information on a term like “metal
building,” a graphical banner advertisement promoting
7
Ser. Nos. 76280389 and 76280390
Steelbuilding.com will be displayed at the top and
bottom of every page that lists the results of this
search.

Currently, Steelbuilding.com banners on these four
search engines are being displayed about 75,000 times
a month in conjunction with the results of searches
for information related to pre-engineered metal
buildings. It can be assumed that exposure to these
graphical advertisements is increasing awareness of
Steelbuilding.com’s offer of products and services
among a substantial number of potential consumers;
however, evidence suggests that Steelbuilding.com’s
tightly focused banner campaign is also very effective
at directing people to Steelbuilding.com’s place of
business – its Internet site. The average “click-
through rate” – the number of times viewers click the
hyperlinked banner to be taken to the advertised web
site compared to the total number of times a banner is
displayed, expressed as a percentage – is less than
one per-cent for Internet banner ads.
Steelbuilding.com’s banners receive click-through
rates as high as 8% on highly relevant search terms
like “metal building.”

Hockersmith declaration, ¶¶ 16 and 17.

Applicant also relies on its claim that it has
substantially exclusive and continuous use of
STEELBUIDING.COM for at least five years. Moore
declaration dated November 11, 2005. Other evidence
includes declarations and statements from customers as well
as professionals in the metal building industry. Some
examples are set out below:
I am employed as Vice-President, Marketing at Ceco
Building Systems, one of the leading companies in the
metal building industry since 1947…
For me, the mark STEELBUILDING.COM does not indicate
any particular characteristic of retail services or
computerized on-line retail services in the field of
8
Ser. Nos. 76280389 and 76280390
pre-engineered steel buildings and roofing systems but
rather indicates the particular retail services
offered by Steelbuilding.com, Inc.

Jurney declaration dated November 9, 2001.

1. I am employed as National Sales Manager of Bay
Insulation, which is the largest producer and
distributor of a complete line of metal building
insulation materials and accessories with 22
locations…
2. I became aware of STEELBUILDING.COM through
conversations with its owners.
3. I associate the term STEELBUILDING.COM with retail
services in the field of pre-engineered steel
buildings and roofing systems offered by
STEELBUILDING.com, Inc. and not with any other company
offering retail services in the same field.

Ron Holder declaration dated November 13, 2001.

2. I am employed as Chairman of the Board of NCI
Building Systems, which is the largest producer and
distributor of metal components for the construction
industry and the third largest producer of pre-
engineered metal building systems in the United
States…
3. I became aware of STEELBUILDING.COM through
conversations with its owners and visits to its
Internet site.
4. I associate the term STEELBUILDING.COM with retail
services in the field of pre-engineered steel
buildings and roofing systems offered by
STEELBUILDING.com, Inc. and not with any other company
offering retail services in the same field.

Ginn Declaration dated November 6, 2001.
Applicant also submitted emails from customers to show
that STEELBUILDING.COM has acquired distinctiveness. See
Kunke email (“I appreciate your position and that of
Steelbuilding.com”); Smith email (“You can rest assure[d]
that Steelbuilding.com will be the first stop on our list
9
Ser. Nos. 76280389 and 76280390
when we get ready to purchase our structures”); Bjorneboe
email (“I have researched over twenty steel building
manufacturers using the WEB, none of them even come close
to providing the information Steelbuilding.com provides”);
Steklenski email (“I will definitely keep steelbuilding.com
at the top of my list”); and Brookbank email (“When I
choose to buy a steel building, it will be from your
company… and your website will be a big part of the reason
why I’ll choose steelbuilding.com over the competition”).
Applicant’s declarant submits that it “continues to
receive a great deal of attention from the trade press.
Steelbuilding.com was the subject of feature articles
published in Metalmag (July/August 2002) and Inside Self
Storage (September 2002)… Moreover, I was approached by the
magazine Commercial Building and asked to write a four-page
article discussing technological trends in the metal-
building industry using Steelbuilding.com’s successful
application of Internet technology as a primary example.”
Hockersmith supplemental declaration, ¶ 3.
During prosecution of the applications, the examining
attorney also submitted evidence to support her position.
Some of the evidence demonstrates common use of the term
“pre-engineered steel building.”
10
Ser. Nos. 76280389 and 76280390
They also helped workers at the company – which builds
pre-engineered steel buildings – improve their safety
training…
The Sunday Oklahoman, September 23, 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.

Engineers attributed the damage to the heavy snow load
on the pre-engineered steel building during the past
year.
Union Leader (Manchester, NH), May 23, 2001.

Although the majority of his pre-engineered steel
buildings are for commercial customers, they can be
built in any size.
Virginian-Pilot, May 26, 2000.

They’re a dealer in pre-engineered steel buildings and
will work all the way from showing catalogs of
available designs to turnkey operation of commercial
space.
Middlesex Magazine & Business Review, February 1999.

Ganneston Construction designed a pre-engineered steel
building to “meet Guilford’s needs.” He said.
Bangor Daily News, September 25, 1996.

Star Building Systems is a manufacturer of pre-
engineered steel buildings.
Springfield Business Journal, April 6, 1998.

The examining attorney also provided definitions that
explain the significance of the term “.com.” See, e.g.,
Office Action dated March 25, 2003, attachment (“A domain
name suffix denoting commercial entities such as
corporations and companies”). Furthermore, the examining
attorney included examples of other entities using
11
Ser. Nos. 76280389 and 76280390
variations of “steelbuilding.com” in internet domain names.
See Office Action dated April 24, 2006, attachments:
www.unitedsteelbuilding.com
Price Your Building Now!
Price a steel building online using our easy to use
system

Metal buildings from Best-Steel-Building.com
Best-Steel-Buildings.com Metal buildings Buildings
cost significantly less than other types of
construction… Best-Steel-Building.com is the leader in
Metal buildings.
www.metal-buildings.best-steel-building.com

The examining attorney also submitted the results of
Google searches. These results included several examples
for websites apparently using “steel-building.com” as part
of their respective domain names. A sample of the
information provided by the results is set out below
(punctuation and wording appears as it does in the
original):
Metal Building Depot is the worlds leading online
retailer of commercial buildings, steel homes, mini
storage and component parts … contractor aircraft
hanger prefabricated steel building prefabricated
steel building … of these custom designs allow for …
steel building system can be designed, manufactured,
delivered…
www.curvco-steel-building.com

There are two other similar website results for
www.surplus-steel-building.com and www.premier-steel-
building.com, at least one of which contains a similar
reference to the same entity (Metal Building Depot)
12
Ser. Nos. 76280389 and 76280390
identified in the Curvco website. Because we only have
abbreviated search results for these sites rather than
information from the sites themselves, we cannot give this
evidence much weight. In re Remacle, 66 USPQ2d 1222, 1222
n.2 (TTAB 2002) ("The examining attorney's print-out of the
results of an Internet search by the Yahoo search engine
are of little probative value, largely because insufficient
text is available to determine the nature of the
information and, thus, its relevance"). See also In re
Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828,
1833 (Fed. Cir. 2007) (“Search engine results — which
provide little context to discern how a term is actually
used on the webpage that can be accessed through the search
result link — may be insufficient to determine the nature
of the use of a term or the relevance of the search results
to registration considerations”).
We add that applicant itself submitted an example of
another entity apparently using the internet address
www.steelbuildings.com. See Chipsoles email (“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”). In addition, the examining attorney has also
13
Ser. Nos. 76280389 and 76280390
included information from a website identified as
www.steelbuilding.net as follows:
Steelbuilding
… Today we specialize in steel buildings for
residential, business and commercial

We also note that, with applicant’s Response dated
September 12, 2003, it submitted copies of numerous
registrations for various marks that it argues (p.7)
“comprise a generic term or word for the identified
services or goods with a ‘dot.com’ suffix.” The vast
majority of these registrations are registered on the
Supplemental Register.
Additionally, applicant submitted a poll from a
website. We will give this poll the same weight that it
was given previously:
The Board considered applicant's Internet poll on name
recognition. The poll, at a web site named
MetalBuilding.com, first asked visitors a few
questions about current events or sports, e.g., “Who
will win Election 2000? Who will win the NBA title?,”
then asked “which one of the following building
manufacturers is the most recognizable?” In the poll,
the applicant was more recognizable than the others on
the list: “Package Industries,” “Parkline,” Steelox,”
and “US Structures.” This court agrees with the Board
that this particular poll lacked sufficient signs of
reliability. For instance, the poll results do not
indicate the number of actual participants. The poll
did not attempt to prevent visitors from voting more
than once. The poll did not prevent interested
parties, such as friends or associates or even
employees of the applicant, from voting multiple times
to skew the results. In sum, this poll does not even
remotely follow the precepts of standard trademark
14
Ser. Nos. 76280389 and 76280390
name-recognition polls. Although the Board was
correct to consider the survey for its very limited
value, the survey did not show sufficient reliability
to constitute sufficient evidence of acquired
distinctiveness. Id. at *12 (“occasionally, people
may recognize applicant's term as a trademark but much
of this evidence may be attributable to domain name
recognition”).

Steelbuilding.com, 75 USPQ2d at 1424.
Acquired Distinctiveness
Inasmuch as the issues of whether the term
STEELBUILDING.COM is generic or merely descriptive have
been resolved, the only issue in this case is whether
applicant has shown that the term in its marks has acquired
distinctiveness. Because applicant has submitted
substantial new evidence on the issue of acquired
distinctiveness, we take a new look at this issue. Accord
In re Superior Outdoor Display, Inc., 478 F.2d 1388, 178
USPQ 151, 153 (CCPA 1973) ("[T]the earlier decision, though
it may have been correct on an earlier and different
record, is irrelevant here. The question is not whether
the additional evidence (the agreement) overcame the
earlier decision. Nor is it whether the agreement negated
the statute or stripped the Patent Office of its
responsibility. Congress alone can do that. The question
is whether the total record, now including the agreement,
indicates a likelihood or nonlikelihood of confusion").
15
Ser. Nos. 76280389 and 76280390
As we indicated earlier, applicant has the burden and
“logically that standard becomes more difficult as the
mark’s descriptiveness increases.” Yamaha, 6 USPQ2d at
1008. Furthermore, simply because an applicant can show
significant sales and advertising, this does not
necessarily equate with acquired distinctiveness. See 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.

We also note that recently the Federal Circuit decided
the case of In re Reed Elsevier Properties Inc., 482 F.3d
1376, 82 USPQ2d 1378 (Fed. Cir. 2007). In that case, the
Court held that the term LAWYERS.COM was generic for an
online interactive database featuring information exchange
in the fields of law, legal news, and legal services.
Among other things, the Court held that:
Moreover, in determining what the relevant public
would understand LAWYERS.COM to mean, the board
considered eight websites containing “lawyer.com” or
“lawyers.com” in the domain name, e.g.,
www.massachusetts-lawyers.com, www.truckerlawyers.com,
16
Ser. Nos. 76280389 and 76280390
and www.medialawyer.com. It discussed the services
provided by these websites in order to illuminate what
services the relevant public would understand a
website operating under Reed's mark to provide. These
websites are competent sources under In re Merrill
Lynch, 828 F.2d at 1570, and they provide substantial
evidence to support the board's finding.

Id. at 1381.
When we review and weigh the evidence of record, we
are persuaded that applicant has demonstrated that the term
STEELBUILDING.COM has acquired distinctiveness.
We start by noting that the issue in this case is not
the genericness of the term STEELBUILDING.COM. After the
Federal Circuit’s decision in Steelbuilding.com, the
examining attorney withdrew the genericness refusal.
Second, applicant has now been using the term for more
than five years.
Third, applicant has shown that its sales have
increased from approximately $11 million in 2002 to more
that $21 million in 2005. Over that same period
applicant’s advertising expenses have risen from $673,000
to almost a million dollars. Applicant points out that the
advertising has had some effect to the extent that:
Visitor traffic to our STEELBUILDING.COM website is
greater than that of any of our competitors and among
our competitors we are currently ranked first in
visitor traffic.

Moore declaration dated March 6, 2006, ¶ 6.
17
Ser. Nos. 76280389 and 76280390
Applicant has also advertised or been featured in
various trade publications. One of the magazines is Metal
Construction News, which “has a circulation of about 36,000
subscribers, virtually all of whom are either metal
building manufacturers, dealers, resellers, contractors, or
erectors.” Hockersmith declaration, ¶ 4.
Applicant has also compared itself to its sister
corporation, Heritage Building Systems, which it described
as “one of the best known, most widely respected, and most
successful companies in the metal building industry.”
Hockersmith declaration, ¶ 22. In 2001, shortly after its
September 29, 2000 alleged date of first use in commerce of
its STEELBUILDING.COM mark in its previous application, its
sales were already approximately 25% of the Heritage
company in number of units and approximately 12% in the
number of dollars. Hockersmith declaration, ¶ 24. Four
years later, applicant’s sales nearly doubled. Applicant
is also issuing four times the price quotes of the Heritage
company. Hockersmith declaration, ¶ 10. It also ranks
among all websites, Yahoo being first, as the 120,570th most
visited website, while Heritage Building Systems website is
the 259,264th most visited website. Moore declaration dated
March 6, 2006, ¶ 6 and Ex. A.
18
Ser. Nos. 76280389 and 76280390
Applicant has also submitted evidence in the form of
declarations and emails to show that competitors, others in
the building industry, and consumers recognize the term
Steelbuilding.com as a reference to applicant. Indeed,
applicant also reports that it has between approximately
50,000 to 100,000 visitors to its website each month in
2005. Moore declaration dated March 6, ¶ 5. Earlier,
applicant’s declarant reported that its “banners receive
click-through rates as high as 8% on highly relevant search
terms” while the average rate “is less than one per-cent.”
Hockersmith declaration, ¶ 17.
When we view this evidence, we find that applicant has
shown that it has substantially increased its sales and
advertising between 2001 and 2005. Applicant first began
using its involved STEELBUILDING.COM marks in 2000. During
that period of time, it has achieved substantial success.
Numerous competitors and others in the building trade have
indicated that they recognize the term STEELBUILDING.COM as
a term that identifies applicant. Potential purchasers
have emailed applicant and referred to it by the term
STEELBUILDING.COM. It has achieved success that is in a
league with its sister corporation. We note that it
prominently displays the term STEELBUILDING.COM on its
website and in its advertising. Indeed, it is not clear
19
Ser. Nos. 76280389 and 76280390
how else purchasers could refer to applicant besides by
Steelbuilding.com. We note that applicant often uses the
TM symbol in association with the term STEELBUILDING.COM.
See Hockersmith declaration, Exhibits 2, 3b, and 4. We
consider this as some evidence of applicant’s efforts to
educate the public that it considers STEELBUILDING.COM its
trademark. In re Industrial Washing Machine Corporation,
201 USPQ 953 (TTAB 1979):
In the present case, “INDUSTRIAL” has been strongly
emphasized in the trade name signature in the
advertisements by the size and color of the type used
for “INDUSTRIAL” contrasted with the typography used
for ‘Washing Machine Corporation’ and, in some
instances, by the use of the symbol “TM” next to the
word “INDUSTRIAL”, which shows applicant's intention
to claim “INDUSTRIAL” per se as a trademark.

See also In re Mine Safety Appliances Co., 66 USPQ2d 1694,
1700 (TTAB 2002):
While, among other things, it is well settled that use
of the symbol “TM” in connection with otherwise
unregistrable matter does not make such matter a
trademark, the use thereof by applicant in connection
with its advertising and promotional materials for its
“WORKMASK” self-contained breathing apparatus is
evidence of applicant's attempts and intent to educate
the trade and purchasing public that it regards the
term “WORKMASK” as its trademark for such goods.

When we view this evidence as a whole, we disagree
with the examining attorney’s argument that “the public
understanding of the words ‘steelbuilding.com’ remains
their ordinary descriptive meanings rather than as an
20
Ser. Nos. 76280389 and 76280390
indicator of a single source for the services.” Brief at
unnumbered p. 7. The few scattered uses of steel-
building.com with other material for different websites
does not demonstrate that in light of the evidence of
record that the term STEELBUILDING.COM has not acquired
distinctiveness in relation to applicant’s identified
services. The fact that the term may be used descriptively
in these web addresses does not necessarily prohibit
applicant’s descriptive term from acquiring
distinctiveness. Industrial Washing Machine Corp., 201
USPQ at 957 (“This letter not only attests to the
reputation of the source indicator ‘INDUSTRIAL’ but also
shows that it is possible to distinguish between the
trademark significance of ‘INDUSTRIAL’ and the common
adjectival meaning of ‘industrial’”). See also In re The
Chesapeake Corporation of Virginia, 420 F.2d 754, 164 USPQ
395, 396-97 (CCPA 1970) (“In response to the board's view
that the registration here sought would preclude others
from describing the finish of their products, we note this
court's observation in In re Automatic Radio Mfg. Co., 56
CCPA 817, 404 F.2d 1391, 160 USPQ 233, 236 (1969), that
‘descriptive words may become trademarks and subject to
protection as such, without inhibiting the use of the same
words in a non-trademark sense’”).
21
Ser. Nos. 76280389 and 76280390
Ultimately, we conclude that the applicant has shown
that the term STEELBUILDING.COM in its involved marks has
acquired distinctiveness. See In re Women's Publishing Co.
Inc., 23 USPQ2d 1876, 1878 (TTAB 1992):
We have reviewed applicant's evidence of acquired
distinctiveness, including the affidavits relating to
the promotion and use of the mark over the years and
the affidavits of individuals who state that they
recognize applicant's mark as identifying and
distinguishing applicant's magazines from those of
others. We agree with applicant that its evidence of
extensive and successful use and promotion of the mark
DECORATING DIGEST demonstrates, at least prima facie,
that these words have become distinctive of
applicant's magazines and that they are registrable on
the Principal Register.

Decision: The refusals to register applicant’s marks
on the ground that the term STEELBUILDING.COM must be
disclaimed because it is merely descriptive and that
applicant has not shown that the term has acquired
distinctiveness are reversed.
22