Web Communications

Trademark Trial and Appeal Board

Nov 12, 1998

No. 74588773 (T.T.A.B. Nov. 12, 1998)

Paper No. 19
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 11/2/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Web Communications
________
Serial No. 74/588,773
_______
Anthony V. Lupo of Arent Fox Kintner Plotkin & Kahn for
applicant.
Fred Mandir, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______
Before Quinn, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Web Communications filed an application to register
WEB COMMUNICATIONS on the Principal Register for
“consulting services to businesses and individuals who want
to establish a site on a global computing network.”
Although originally filed as an intent-to-use application,
the application was subsequently amended to allege use and
to seek registration on the Supplemental Register.
Ser No. 74/588,773
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Registration has been finally refused under Section 23
of the Trademark Act on the ground that the proposed mark
WEB COMMUNICATIONS is generic and, thus, incapable of
distinguishing applicant’s services from those of others.
Applicant and the Examining Attorney have filed
briefs, but no oral hearing was requested.
As background for the general meaning ascribed to the
term “Web communications,” the Examining Attorney has
submitted several excerpts from the Nexis database which
show generic use of “Web communications” or “Web
communication” in reference to transmissions on the Web.1
Examples include (emphasis added):
...staff in Tucson have already undergone an extensive
training program created by AlphaGraphics Inc.,...
covering web site services marketing and design,
Internet technology and effective web communication.
(Business Wire, July 28, 1997)
...spending several hours trawling the Web looking at
all the content you can find in a specific category
provides an insight into Web communications about that
category, even if there are no specific sites to
discuss. (New Media Age, August 7, 1997).
Presenters will examine how technology enhances
communication between students and teachers. Examples
will include use of technology to increase equity, Web
communications, televideo and desktop conferencing,
and to extend traditional office hours.(News & Record
(Greensboro, NC, May 11, 1997).

1 The Examining Attorney has submitted a definition from The
Internet Dictionary (1995) of the word “Web” as “the most
commonly used name for the World Wide Web”.
Ser No. 74/588,773
3
Applicant’s services are directed to the assistance of
businesses and individuals “who want to establish a site on
a global computing network.” In its specimens, applicant
more fully describes its services as providing “easy-to-use
tools, resources and services for publication and
communications via the World Wide Web, FTP and electronic
mailing lists.” Thus, the Examining Attorney takes the
position that the relevant public would understand the term
“Web communications”, when used by applicant, primarily to
refer to the fact that its consulting services include, as
a significant feature, assisting its customers in
communications on the Web. As such, he contends,
applicant’s services are in the field of “Web
communications” and the proposed mark is generic.
Applicant argues that although it may be using the
word “Web” in a generic sense, the word “Communications” is
not generic for consulting services of the type provided by
applicant. Instead, according to applicant, WEB
COMMUNICATIONS is a distinctive unitary term2 which is fully

2 Applicant has also introduced copies of previously issued
third-party registrations containing either the word “Web” or
“communications”, without disclaimers thereof, and argued that
the present refusal of registration is inconsistent with prior
Office action. But since none of the previously issued
registrations is for WEB COMMUNICATIONS, which we agree with
Ser No. 74/588,773
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capable of functioning as a mark when used in connection
with applicant’s consulting services related to helping its
customers establish sites on the Web. Even if the
Examining Attorney has shown that “Web communications” is
merely descriptive, or generic, when used in connection
with transmissions on the Web, applicant insists this is
not the service provided by applicant. Applicant only
proffers consulting services which enable others to set up
Web sites.
Generic terms are by definition incapable of
indicating source and thus can never attain trademark
status. In re Merrill, Lynch, Pierce, Fenner, and Smith
Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987). The
critical issue in determining whether a term is generic is
whether the members of the relevant public primarily use or
understand the term sought to be registered to refer to the
genus of goods or services in question. H. Marvin Ginn
Corp. v. International Association of Fire Chiefs Inc., 782
F. 2d 987, 228 USPQ 528 (Fed. Cir. 1986). Evidence of the
public’s understanding of a particular term may be obtained
from any competent source, including listings in

applicant is a unitary term, the third-party registrations are
irrelevant.
Ser No. 74/588,773
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dictionaries, trade journals, newspapers, and other
publications. In re Merrill Lynch, 4 USPQ2d at 1143.
We agree with applicant that its services in the
broadest sense would be considered “consulting services.”
But there are many varieties of consulting services and
each would necessarily be further identified as to the
particular subject or focus of the services being offered.
Here applicant has described a major focus of its services
in the specimens of record as “publication and
communication via the World Wide Web.... .” Applicant’s
services enable its customers to achieve this communication
by assisting them in setting up their own Web sites.
The Examining Attorney has demonstrated, by evidence
obtained from the Nexis database, that “Web
communications”, or “Web communication”, is a term in
general use to describe just such “communication...via the
Web.” Thus, we agree with the Examining Attorney that
members of the relevant public, i.e., those who would be
interested in communication on the Web, primarily would
understand the term “Web communications” as a reference to
the type of consulting service being offered, rather than
the source of the service. The services are consulting
services in the field of “Web communications”. The
situation here is not dissimilar to that in In re Harcourt
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Brace Jovanovich, Inc., 222 USPQ 821 (TTAB 1984), in which
we held the term LAW & BUSINESS to be incapable of
distinguishing the applicant’s services of arranging and
conducting business law seminars from those of others, the
term being no more than a designation of the subject matter
of these seminars.
Furthermore, the fact that the term “Web
communications” is also used to refer to communication on
the Web in itself does not detract from its generic
significance in relation to consulting services in this
field. See In re Reckitt & Colman, North America Inc., 18
USPQ2d 1389 (TTAB 1989)[term “Perma Press” generic not only
for a type of fabric but also for soil and stain removers
designed for use on this particular type of fabric]. In
addition, since the term “Web communications” has been
shown to be used as a generic unitary phrase in the
relevant field, we need not consider the generic
significance of the word “communications” alone. See In re
Shiva Corp., ___USPQ2d ___ (TTAB 1998)[TARIFF MANAGEMENT
found to be a phrase used in the trade to describe computer
programs for selecting least expensive long distance
carrier].
Looking at the issue of genericness from a slightly
different perspective, in a recent decision by the Board,
Ser No. 74/588,773
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In re Central Sprinkler Co., ___USPQ2d ___ (TTAB
1998)[ATTIC held to be generic term for fire sprinklers for
protection of attics], we held that in determining whether
a term is generic in reference to the goods or services
involved, consideration must be given to the fact that a
product or service may fall not only into a broad category,
but also into a narrower category within this broad
category. Thus, while the broad category of services in
the present case may arguably be consulting services, there
are clearly narrower categories within this broad category,
directed to the type or focus of the particular consulting
service in question, the designations of which would also
be generic terms. Here “Web communications” serves as just
such a generic designator of the focus of applicant’s
consulting services.
Accordingly, we find the term WEB COMMUNICATIONS to be
generic and incapable of distinguishing applicant’s
services from those of others.
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Decision: The refusal to register on the Supplemental
Register is affirmed.
T. J. Quinn
B. A. Chapman
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board

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