Thomson Multimedia Inc.

Trademark Trial and Appeal Board

Aug 22, 2003

No. 75584716 (T.T.A.B. Aug. 22, 2003)

Mailed: August 22, 2003
Paper No. 25
csl
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Thomson Multimedia Inc., by change of name from
Thomson Consumer Electronics, Inc.1
________
Serial No. 75/584,716
_______
Scott J. Stevens of Woodard, Emhardt, Moriarty, McNett &
Henry LLP for Thomson Consumer Electronics, Inc.
Brendan Regan, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______
Before Simms, Seeherman and Holtzman, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:

Thomson Multimedia Inc. (applicant), a Delaware
corporation, by change of name from Thomson Consumer
Electronics, Inc., has appealed from the final refusal of
the Trademark Examining Attorney to register the mark
SECURITY.TV for the following amended description of goods

1 On January 29, 2001, the change of name was recorded in this
Office at Reel 2222 Frame 0402.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/584,716
2
and services: television receivers used in home security
systems, in Class 9; and home security services, namely,
monitoring and controlling home security systems, in Class
42.2 The Examining Attorney has refused registration under
Section 2(e)(1) of the Act, 15 USC §1052(e)(1), arguing
that the mark is merely descriptive of applicant’s goods
and services. Applicant and the Examining Attorney have
submitted briefs but no oral hearing was requested.3
We affirm.
This case has had a relatively long procedural
history. In the first refusal, the original Examining
Attorney found that applicant’s mark was merely descriptive
because the mark identified the subject matter of
applicant’s goods and the purpose of applicant’s services.
Then, in the next Office action, the Examining Attorney
made this refusal final, arguing that each part of
applicant’s mark was descriptive of a feature or

2 Application Serial No. 75/584,716, filed November 9, 1998, based
upon applicant’s allegation of a bona fide intention to use the
mark in commerce.
3 It is noted that the Examiner Attorney's brief in this file is
simply a copy of the brief in a companion application, Serial No.
75/584,718, for the mark E-MAIL.TV. Apparently this copy was
placed in the file in error. It is clear that applicant, who
discussed the Examining Attorney's arguments with respect to the
SECURITY.TV mark in its reply brief, received the correct brief.
Accordingly, the actual brief for the SECURITY.TV mark has now
been placed in this file, and it is this brief which we have
considered in rendering our decision herein.

Serial No. 75/584,716
3
characteristic of applicant’s goods and services in that
applicant’s mark consisted of the highly descriptive term
“SECURITY” with the descriptive term “TV”. Applicant then
filed its initial appeal brief arguing that its mark has
“incongruity” because of the presence of the “dot” in its
mark.
The pervasive presence of the internet in
virtually all of today’s advertising has
inundated the public’s vernacular so that a
high level of sensitivity has emerged to
words and expressions that include the
internet “dot.” The word immediately
conjures up a variety of thoughts in the
minds of consumers, from on-line shopping,
to ready access to information on a variety
of subjects, to bill paying, to trading
stocks and bonds. The multitude of
activities and functions that can be
accommodated and performed over the internet
provides an almost endless palate of choices
for the consumer. Because of this variety
of choices, and the capabilities of
internet-based functions which grow each
day, consumers do not readily know or
appreciate what features or functions are
performed by trademarks or names that
include the internet “dot.”…
As described above, the mark
SECURITY.TV is suggestive of an internet
domain name. The “dot tv” is the top level
domain name for the country of Tuvalu, but
the mark is not intended to describe a
domain name for Tuvalu. The mark therefore
has a double meaning; one that suggests a
country specific domain name, and one that
suggests some relationship between the terms
“security” and “tv.”
Appeal brief, 3, 4.
Serial No. 75/584,716
4
After the filing of this appeal brief, a new Examining
Attorney requested remand in order to supplement the record
with additional evidence. The Board granted that request
and the Examining Attorney issued a new refusal. In that
refusal, the Examining Attorney held that applicant’s mark
was merely descriptive because it consisted of the
descriptive term “SECURITY,” which is assertedly
descriptive of applicant’s security-related goods and
services, and the top level domain (TLD)“.TV”. The
Examining Attorney referred to Examination Guide 2-99, in
effect at that time, which instructed Examining Attorneys
to refuse registration if the mark is composed of a merely
descriptive term combined with a TLD. The Exam Guide noted
that a TLD is perceived as part of an Internet address and
does not add any source-identifying significance to the
mark. The Examining Attorney also submitted the following
information from Tech Encyclopedia, obtained from the
Internet:
(dotTV Corporation, Pasadena, CA, www.tv)
The registrar for Internet addresses that
end in .tv. The .tv top level domain is the
country code for the Pacific island of
Tuvalu, which has approximately 10,000
inhabitants. For granting exclusive
registration rights to dotTV, Tuvalu
receives part of the proceeds from
registration fees. dotTV provides an
auction for bidding on names, and the
winning bid becomes the registration fee for
Serial No. 75/584,716
5
two years, which is increased in subsequent
years.
The Examining Attorney also submitted a copy of the Web
page site where one may register .tv domain names, as well
as an article from the Internet (retrieved in January 2001)
explaining how the TLD .tv came to be.
COUNTRY FOR SALE
…The money came as a result of a contract
with a California company called Dot TV,
which had a different sort of dream from
that of the people of Tuvalu. The idea was
to sell to the public what they consider to
be prime real estate on the World Wide Web:
Web addresses that end in “.tv”.
But to do that required making a deal
with Hon. Ionatana and his country, for they
were the ones who were lucky enough to be
assigned “.tv” when domain names were
assigned to countries back in 1991. They
agreed to license the name in exchange for
an equity stake in the company and roughly
$50 million over the next decade…
…Though he won’t give specific numbers about
the number of domain names registered to
date, Kerner said he’s been amazed at how
quickly the company has grown since
launching last April, how global the reach
has been, and how vast an array of
businesses have registered names.
“Real estate, retailers, and banks have
been among our top registrants,” he said.
The notion is that as broadband opens up a
new world for streaming media on the Web,
more companies will want to have the Dot TV
domain as their online presence.
The Examining Attorney also attached a copy of Exam Guide
2-99 indicating that, with respect to country code TLDs,
each country determines who may use its code, and that,
Serial No. 75/584,716
6
while some countries require that users of their code be
citizens or have some association with the country, other
countries do not.
The Examining Attorney eventually issued a final
refusal under Section 2(e)(1).
In his brief, the Examining Attorney continues to
argue that “SECURITY” merely describes a feature of
applicant’s goods and services and, relying upon In re
CyberFinancial.Net, Inc., 65 USPQ2d 1789 (TTAB
2002)(holding BONDS.COM to be generic for certain services
available over the Internet), that the TLD “.TV” does not
serve a source-indicating function but merely indicates an
address on the World Wide Web.
Applicant, on the other hand, while agreeing that the
mere addition of a TLD such as “.com” to a term may not by
itself convey any added significance, argues that the “.TV”
portion of its mark does not fall within this category of
well-known Internet domain names. It is the applicant’s
position that the TLD “.TV” in its mark may suggest some
connection to the Internet, but that it does not provide
more than a mere suggestion of what that connection could
be. This TLD, according to the applicant, is not a
“typical” TLD and should not be treated as such in
determining the registrability of a trademark. Applicant
Serial No. 75/584,716
7
contends that consumers do not have a “well-founded
understanding” of the significance of “.tv” as a TLD, that
the TLD “.tv” has a “relative unknown quality” and is “not
immediately recognizable by consumers as a TLD in the same
manner that they would associate ‘.com’ or ‘.net’” with the
Internet. Applicant states that it is anticipated that its
services will involve some form of interactive monitoring
of a customer’s home via an Internet-based service.
Customers will be able to use their television sets to
communicate with the service provider to monitor the status
of various systems in their homes, to provide instructions
for the operation of those system and to report medical
emergencies (applicant’s Response, filed July 30, 2001).
In another Response, filed April 24, 2002, applicant
indicates that it is its intention to acquire the domain
name “security.tv” in order to “enhance its ability to
market its goods and services” under the mark.
In addition to arguments made in applicant’s initial
appeal brief, applicant argues that its mark is only
suggestive because the presence of the “dot” in its mark
creates a mental pause in the minds of consumers.
Applicant contends that its mark is more than just a TLD
because “.TV” has more than one meaning to a consumer,
including both a suggestion that there is some association
Serial No. 75/584,716
8
with the Internet4 as well as some association with
television.
[T]he mark SECURITY.TV could suggest some
security function that could be provided
through a television, or it could suggest
security services that are available over
the internet, or it could suggest a
television that provided some feature that
made it difficult to steal, or it could
suggest a television that provides
protection against viewing undesirable
programming, or it could suggest a
television that could be used in a prison…
Applicant’s reply brief, 3. Applicant also mentions in its
reply brief, for the first time, such third-party
registrations as ALUMINIUM.COM for brokerage of aluminum
and commodity trading services, and CAFÉ.COM for restaurant
services. Applicant argues, therefore, that the Office
does permit registration of words with TLDs.5
A term is considered to be merely descriptive of goods
or services within the meaning of Section 2(e)(1) if it
forthwith conveys information about a significant quality,
characteristic, feature, function, purpose or use of the
goods or services. See In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009, 1009-10 (Fed. Cir. 1987) and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA

4 Applicant does not argue that consumers will know that “.tv”
is the country code domain name of Tuvalu.
5 Aside from the fact that applicant did not submit copies of
these registrations, new evidence attempted to be made of record
for the first time in an appeal brief is untimely. See Trademark
Rule 2.142(d).
Serial No. 75/584,716
9
1978). In this regard, it is not necessary that a term
describe all of the characteristics or functions of the
goods or services in order for it to be considered merely
descriptive thereof. Rather, it is sufficient if the term
describes a significant attribute or quality about the
goods or services. Moreover, whether a term is merely
descriptive is determined, not in the abstract, but in
relation to the goods or services for which registration is
sought, the context in which it is being used on or in
connection with the goods or services and the possible
significance that the term may have to the average
purchaser of the goods or services because of the manner of
its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979). Therefore, "[w]hether consumers could guess what
the product [or service] is from consideration of the mark
alone is not the test." In re American Greetings Corp.,
226 USPQ 365, 366 (TTAB 1985).
On the other hand, a mark is suggestive if, when the
mark is used on or in connection with the goods or
services, a multi-stage reasoning process, or imagination,
thought or perception is required in order to determine the
attributes or characteristics of the goods or services
offered under the mark. In re Abcor Development Corp.,
supra at 218, and In re Mayer-Beaton Corp., 223 USPQ 1347,
Serial No. 75/584,716
10
1349 (TTAB 1984). We have often stated that there is a
thin line of demarcation between a suggestive mark and a
merely descriptive one, with the determination of which
category a mark falls into frequently involving subjective
judgment. See In re Atavio, 25 USPQ2d 1361 (TTAB 1992) and
In re TMS Corp. of the Americas, 200 USPQ 57, 58 (TTAB
1978).
In evaluating the registrability of applicant’s mark,
we note what Section 1209.03(m) of Trademark Manual of
Examining Procedure (3rd ed. Rev June 2003) states
concerning the registrability of descriptive or generic
terms with domain names:
Internet domain names raise some unique
trademark issues. A mark comprised of an
Internet domain name is registrable as a
trademark or service mark only if it
functions as an identifier of the source of
goods or services. Portions of the uniform
resource locator (URL) including the
beginning, (“http://www.”) and the top level
Internet domain name (TLD) (e.g., “.com,”
“.org,” “.edu,”) function to indicate an
address on the World Wide Web, and therefore
generally serve no source-indicating
function. See TMEP §§1215 et seq. regarding
marks comprising domain names. TLDs may
also signify abbreviations for the type of
entity for whom use of the cyberspace has
been reserved. For example, the TLD “.com”
signifies to the public that the user of the
domain name constitutes a commercial entity.
In re Martin Container, Inc., 65 USPQ2d
1058, 1060-1061 (TTAB 2002) ("[T]o the
average customer seeking to buy or rent
containers, "CONTAINER.COM" would
Serial No. 75/584,716
11
immediately indicate a commercial web site
on the Internet which provides
containers.")…
If a proposed mark includes a TLD such
as “.com”, “.biz”, “.info”, the examining
attorney should present evidence that the
term is a TLD, and, if available, evidence
of the significance of the TLD as an
abbreviation (e.g. “.edu” signifies an
educational institution, “.biz” signifies a
business).
Because TLDs generally serve no source-
indicating function, their addition to an
otherwise unregistrable mark typically
cannot render it registrable. In re
CyberFinancial.Net, Inc., 65 USPQ2d 1789,
1792 (TTAB 2002) ("Applicant seeks to
register the generic term 'bonds,' 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
combining the two terms does not create a
term capable of identifying and
distinguishing applicant's services."); In
re Martin Container, 65 USPQ2d at 1061
("[N]either the generic term nor the domain
indicator has the capability of functioning
as an indication of source, and combining
the two does not result in a compound term
that has somehow acquired this
capability.")… For example, if a proposed
mark is composed of merely descriptive
term(s) combined with a TLD, the examining
attorney must refuse registration on the
Principal Register under Trademark Act
§2(e)(1), 15 U.S.C. §1052(e)(1), on the
ground that the mark is merely descriptive.
See TMEP §1215.04.
Similarly, if a proposed mark is
composed of generic term(s) for the
applicant’s goods or services and a TLD, the
examining attorney must refuse registration
on the ground that the mark is generic. See
TMEP §§1209.01(c)(i) and 1215.05.
Serial No. 75/584,716
12
Section 1215.04, referred to in this section, provides:
If a proposed mark is composed of a
merely descriptive term(s) combined with a
TLD, the examining attorney should refuse
registration under Trademark Act §2(e)(1),
15 U.S.C. §1052(e)(1), on the ground that
the mark is merely descriptive. This
applies to trademarks, service marks,
collective marks and certification marks.
Example: The mark is SOFT.COM for
facial tissues. The examining attorney must
refuse registration under §2(e)(1).
Example: The mark is NATIONAL
BOOK OUTLET.COM for retail book store
services. The examining attorney must
refuse registration under §2(e)(1).
The TLD will be perceived as part of an
Internet address, and does not add source
identifying significance to the composite
mark. In re CyberFinancial.Net, Inc., 65
USPQ2d 1789, 1792 (TTAB 2002) ("The public
would not understand BONDS.COM to have any
meaning apart from the meaning of the
individual terms combined"); In re Martin
Container, Inc., 65 USPQ2d 1058, 1060 (TTAB
2002) ("[T]o the average customer seeking to
buy or rent containers, "CONTAINER.COM"
would immediately indicate a commercial web
site on the Internet which provides
containers.")…
Upon careful consideration of this record and the
arguments of the attorneys, we agree with the Examining
Attorney that applicant’s mark used in connection with
television receivers incorporated into home security
systems as well as home security services is merely
descriptive of those goods and services available at a
Serial No. 75/584,716
13
“.tv” Web site. First, the word “SECURITY” has obvious
descriptive significance in connection with home security
systems and home security services. This term, coupled
with the TLD “.TV”, which is nothing more than a recently
available Web address (through an arrangement with the
country of Tuvalu) maintains its descriptive significance
for applicant’s home security systems and home security
services available on the Internet at the “.tv” Web
address.
While applicant has argued that its asserted mark may
have a variety of connotations, including that of a
television that protects against undesirable programming or
one used in a prison, as noted above we must analyze
applicant’s mark as used or intended to be used with its
specified goods and services. When so viewed, we conclude
that applicant’s mark merely describes a significant
feature or characteristic of its goods and services used in
the home security field and that the TLD “.TV”, indicative
of an Internet address, does not detract from that
descriptive significance. See In re CyberFinancial.Net,
Inc., supra, and In re Martin Container, Inc., supra.
Finally, applicant argues in a Response (filed July
30, 2001, 3) that it is possible to register a descriptive
word with an Internet TLD which “add[s] a new or
Serial No. 75/584,716
14
unanticipated meaning.” Applicant posits, for example, the
hypothetical mark FISHING.NET for “a sporting goods store
that outfits fishermen.” First, assuming that FISHING.COM
were merely descriptive of a service offered over the
Internet of promoting or selling goods for the sport of
fishing, it is not at all certain to us that the
hypothetical mark FISHING.NET would not be descriptive
merely because of the use of the TLD “.net” in the mark
rather than the TLD “.com”. But, even assuming that
FISHING.NET were not merely descriptive, that hypothetical
example, which is a play on words (that is, “fishing net”
and the hypothetical Web address FISHING.NET), is
distinguishable from this case. Either as an Internet
address offering home security television receivers and
home security services (which is, we believe, the manner
that most consumers or users of applicant’s goods and
services will perceive the mark) or simply as
SECURITY[.]TV, the “.TV” portion of applicant’s mark is not
a play on words but will be seen as the well-accepted
shorthand reference to “television,” which is a component
of applicant’s goods (television receivers used in home
security systems) or a significant feature of its home
security services. There will be no potential non-
descriptive significance imparted by this mark, even if not
Serial No. 75/584,716
15
seen as an Internet address, as there might be in the
hypothetical example FISHING.NET.
Decision: The refusal of registration is affirmed.
Seeherman, Administrative Trademark Judge, dissenting:
I respectfully dissent from the majority view that
SECURITY.TV is merely descriptive of applicant's goods and
services.
I agree with the majority that the word "security" in
applicant's mark is merely descriptive of its goods and
services. The goods are identified as television receivers
used in home security systems, and the services are
identified as home security services. Further, applicant
has acknowledged that its mark is to be used in connection
with a home security system.
However, applicant's mark is not SECURITY; rather, it
is SECURITY.TV, and I believe that the addition of ".TV"
suggests an additional meaning, such that the mark should
not be considered merely descriptive.
As the majority notes, the present Examining Attorney
takes the position that the mark is merely descriptive
because the word "SECURITY" is merely descriptive, and the
addition of ".TV", which is a top level domain name
signifying the country of Tuvalu, does not obviate the
Serial No. 75/584,716
16
descriptive nature of this word. In doing so, the
Examining Attorney has followed the instructions provided
in the Trademark Manual of Examining Procedure, which is
quoted at length in the majority opinion, and which, in
particular, states:
If a proposed mark is composed of a
merely descriptive term(s) combined
with a TLD, the examining attorney
should refuse registration under
Trademark Act §2(e)(1), 15 U.S.C.
§1052(e)(1), on the ground that the
mark is merely descriptive.
Section 1215.04.
However, as explained in TMEP Section 1215.04, the
principle behind the policy that the addition of a top
level domain to a descriptive term will not avoid a finding
of mere descriptiveness is that this element does not have
source-identifying significance to the public. Therefore,
the question that I think should be addressed is whether
the top level domain will be viewed only as part of an
internet address, or whether it has another significance to
the public. I agree that top level domains such as ".com,"
".edu" and ".gov" are in such common use that the public
will view these suffixes, when used as part of a mark,
merely as addresses, and will not accord them source-
indicating significance. In this sense, the top level
Serial No. 75/584,716
17
domain is similar to company terms such as "Inc." or "Ltd."
However, I do not believe that we should apply this policy
so formulaically that a top level domain should never be
considered in gauging consumer reaction to the mark. There
are top level domains that, in addition to their meaning as
Internet addresses, have meanings because they are common
English words or abbreviations. For example, the domain
name for India is ".in"; Italy is ".it" and Turkmenistan is
".tm." If the top level domain name ".in" were combined
with the term "dive" to form the mark DIVE.IN for dive shop
services, I suggest that the mark as a whole would not be
merely descriptive, despite the descriptiveness of the word
"dive." Rather, this is a situation in which a descriptive
term is combined with a top level domain in a manner that
conveys a meaning separate from that of the domain name,
and therefore the top level domain would have source-
indicating significance.
In the present case, the top level domain ".TV" has a
separate and readily recognized meaning that is different
from the top level domain signifying the country of Tuvalu,
i.e., the meaning of "television." Thus, I believe that
".TV" in the mark SECURITY.TV has source-indicating
significance, and that the consideration of whether the
Serial No. 75/584,716
18
term is descriptive should not be made on the basis of the
word SECURITY alone.
The majority makes the comment that ".TV" is "a
recently available Web address (through an arrangement with
the country of Tuvalu)." It should be noted that ".TV" has
been and remains the top level domain for the country of
Tuvalu. An article which is of record indicates that
Tuvalu has recently entered into an arrangement with a
private company to register domain names with this TLD.
Although this private company may be registering ".TV"
domain names, this TLD is not a new top level domain name,
such as the recently created TLDs ".info" and ".biz"; to be
clear, this is not a new domain name that has been
designated for businesses involved with television or the
television industry.
Because the ".TV" portion of applicant's mark will not
be viewed as merely a top level domain without source-
identifying significance, the question is whether the mark
SECURITY.TV in its entirety is merely descriptive. As the
majority points out, there is often a thin line of
demarcation between a suggestive mark and a merely
descriptive one, and the determination of the category into
which a mark falls frequently involves subjective judgment.
In my judgment, SECURITY.TV falls on the suggestive side of
Serial No. 75/584,716
19
the line. When the suffix ".TV" is combined with the word
"SECURITY" in the mark SECURITY.TV, and used in connection
with applicant's goods and services, it suggests a security
system that involves computers and the Internet and
television. The fact that the mark is used in the format
of an Internet address conveys a meaning that is something
more than that of the descriptive words "SECURITY TV,"
while the ".TV" portion of the mark, because it has a
meaning as "television" as well as being a top level
domain, causes this element to have a source-identifying
significance in the mark, as opposed to the examples and
case law set forth in the TMEP section quoted in the
majority opinion.
Finally, it is a well-established principle that if
there is doubt on the issue of descriptiveness, that doubt
should be resolved in favor of publishing the mark. I
believe that, at the very least, there is doubt as to
whether SECURITY.TV is merely descriptive, and I would
therefore reverse the refusal of registration.