Thomson Multimedia Inc.

Trademark Trial and Appeal Board

Aug 22, 2003

No. 75584718 (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. 75/584,718
_______
Scott J. Stevens and James M. Durlacher 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 E-
MAIL.TV for the following amended description of goods and

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. 75/584,718
2
services: television receivers incorporating circuitry to
receive data services in the fields of information,
education and entertainment, in Class 9; computerized on-
line ordering services in the fields of electronic
products, apparel, automobile parts, food, furniture,
jewelry, sporting goods, and appliances, in Class 35; on-
line bill payment services; on-line banking transaction
services, in Class 36; electronic mail services; providing
multiple user access to a global computer information
network, in Class 38; and on-line 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.
We affirm the refusal as to the class of goods (9) and
as to one of the classes of services (38) but reverse as to
the other classes.
This case has had a relatively long procedural
history. In the first refusal, the original Examining

2 Application Serial No. 75/584,718, filed November 9, 1998, based upon
applicant’s allegation of a bona fide intention to use the mark in
commerce.
Serial No. 75/584,718
3
Attorney found that applicant’s mark was merely descriptive
because the mark identified the subject matter of
applicant’s goods (televisions) and the purpose of
applicant’s services (some involving e-mail). 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 characteristic of
applicant’s goods and services in that applicant’s mark
consisted of the highly descriptive term “E-MAIL” with the
descriptive term “TV”. The term as a whole describes that
consumers access e-mail through their televisions, the
Examining Attorney contended. The Examining Attorney
placed in the record excerpts from an electronic database
(with the search request of articles discussing both e-mail
and television). The Examining Attorney retrieved articles
discussing “e-mail on TV screens,” “send[ing] emails
through their television sets,” “email television sets,” “a
new TV-based email service” and “interactive TV for email.”
Applicant responded that, while it intends to use its
goods to help provide e-mail (or electronic mail) services,
e-mail is only one of a number of services that applicant
intends to provide. Applicant envisions that its
television receivers will provide one aspect of an overall
Serial No. 75/584,718
4
system that allows consumers to perform a variety of
functions including allowing access to the Internet.
Applicant then filed its initial appeal brief arguing
that its mark has “incongruity” because of the presence of
the “dot” in its mark.
[T]he 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.”…
As described above, the mark EMAIL.TV
[sic, should be E-MAIL.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 “email” and “tv.”
Appeal brief, 4-5.
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 “E-MAIL,” which is assertedly descriptive
of applicant’s goods and services, and the top level domain
(TLD) “.TV”. The Examining Attorney referred to
Serial No. 75/584,718
5
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
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
(indicating that e-mail.tv was not available), 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
Serial No. 75/584,718
6
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,
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 “E-MAIL” merely describes a feature of
applicant’s goods and services and, relying upon In re
CyberFinancial.Net, Inc., 65 USPQ2d 1789 (TTAB
Serial No. 75/584,718
7
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. It is the Examining
Attorney’s position that it is not necessary that a mark
describe all of applicant’s goods and services in order to
be found merely descriptive.
Applicant, on the other hand, while agreeing that “E-
MAIL” has the meaning of “electronic mail” and 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 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
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
Serial No. 75/584,718
8
Internet. In another Response, filed April 24, 2002,
applicant indicates that it is its intention to acquire the
domain name “e-mail.tv” in order to “enhance its ability to
market its goods and services” under the mark. While
applicant admits that it will offer e-mail services,
applicant contends that most of its services do not involve
e-mail. 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 and
that imagination is needed to determine the attributes of
applicant’s goods and services. Applicant argues that here
the TLD “.TV” enhances or conveys additional meaning, one
not anticipated by consumers. In this regard, applicant
contends that its mark conveys such meanings as a
suggestion that there is some association with the Internet3
as well as some association with television. According to
applicant, the mark may suggest such multiple meanings as a
television that incorporates e-mail capabilities or
services that allow viewers to interact with TV
personalities, and that, in any event, the “.TV” in its
mark enhances the mark and makes it more distinctive.

3 Applicant does not argue that consumers will know that “.tv” is the
country code domain name of Tuvalu.
Serial No. 75/584,718
9
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.4 Finally, applicant asks us to resolve any
doubt on the question of mere descriptiveness in its favor,
in accordance with precedent.
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
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

4 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. 75/584,718
10
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,
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).
Serial No. 75/584,718
11
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
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
Serial No. 75/584,718
12
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.
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.
Serial No. 75/584,718
13
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 incorporating circuitry to receive
data services as well as electronic mail services is merely
descriptive of those goods and services available at a
“.tv” Web site. First, the word “E-MAIL” has obvious
descriptive significance in connection with both television
sets that may be equipped to send and receive e-mail as
well as electronic mail services. This term, coupled with
the TLD “.TV”, which is nothing more than a recently
available Web address (through an arrangement with the
Serial No. 75/584,718
14
country of Tuvalu) maintains its descriptive significance
for applicant’s television receivers which may send and
receive e-mail and its electronic mail services available
on the Internet at the “.tv” Web address.
While applicant has argued that its asserted mark may
have a variety of connotations, 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 its
electronic mail services 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.
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 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
Serial No. 75/584,718
15
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 television
receivers, which may have the capability to send and
receive e-mail, as well as electronic mail services (which
is the manner in which we believe consumers of applicant’s
goods and services will perceive the mark) or simply as E-
MAIL[.]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) or a
significant feature of its e-mail services, which may be
sent or received on television sets. There will be no
potential non-descriptive significance imparted by this
mark, even if not seen as an Internet address, as there
might be in the hypothetical example FISHING.NET.
However, as to applicant’s on-line ordering services
of various goods, its bill paying and banking services as
well as its on-line security services, the Examining
Attorney has simply provided no evidence that the asserted
mark E-MAIL.TV is merely descriptive of those services. Of
Serial No. 75/584,718
16
course, because this is an intent-to-use application where
applicant has not begun use, such evidence may not be
available to applicant. Nevertheless, there is simply
nothing in this record to indicate that e-mail is in any
way involved in the rendering of on-line ordering, on-line
bill paying, on-line banking and on-line security services,
services which are most likely to be rendered over the
Internet and not by way of e-mail. We hasten to point out,
however, that if and when applicant submits its statement
of use with evidence of use of the mark E-MAIL.TV, the
Examining Attorney is at that time free to again refuse
registration under Section 2(e)(1) as to these services
should it become apparent that the mark is merely
descriptive of an aspect or feature of those services.
Decision: The refusal of registration is affirmed
with respect to applicant’s goods and its electronic mail
services in Class 38; the refusal is reversed as to all
other classes.
Serial No. 75/584,718
17
Seeherman, Administrative Trademark Judge, concurring in
part and dissenting in part:
I concur with the majority’s reversal of the refusal
with respect to applicant’s services in Classes 35, 36 and
42, but I respectfully dissent from the majority view that
E-MAIL.TV is merely descriptive of applicant's goods and
services in Classes 9 and 38.
I agree with the majority that the word "e-mail" in
applicant's mark is merely descriptive of its goods and its
electronic mail services. However, applicant's mark is not
E-MAIL; rather, it is E-MAIL.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 "E-MAIL" is merely descriptive, and the
addition of ".TV", which is a top level domain name
signifying the country of Tuvalu, does not obviate the
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:
Serial No. 75/584,718
18
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
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
Serial No. 75/584,718
19
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 E-MAIL.TV has source-indicating
significance, and that the consideration of whether the
term is descriptive should not be made on the basis of the
word E-MAIL 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
Serial No. 75/584,718
20
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
E-MAIL.TV in its entirety is merely descriptive of the
goods and services in Classes 9 and 38. 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,
E-MAIL.TV falls on the suggestive side of the line. When
the suffix ".TV" is combined with the word "E-MAIL," and
the resulting mark E-MAIL.TV is used in connection with
“television receivers incorporating circuitry to receive
data services in the fields of information, education and
entertainment,” it suggests television receivers that
involve computers and the Internet and e-mail. However,
Serial No. 75/584,718
21
the combination is suggestive because some thought process
is necessary; E-MAIL.TV does not immediately and directly
convey information about applicant’s goods. See In re
Nalco Chemical Co., 228 USPQ 972 (TTAB 1986)(VERI-CLEAN
suggestive of chemical anti-fouling additives). 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 word "E-MAIL," 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. For similar reasons,
E-MAIL.TV is suggestive of applicant’s “electronic mail
services.”
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 E-MAIL.TV is merely descriptive, and I would
therefore reverse the refusal of registration with respect
to Classes 9 and 38 as well as Classes 35, 36 and 42.