William H. Eilberg

Trademark Trial and Appeal Board

Dec 30, 1998

No. 75162788 (T.T.A.B. Dec. 30, 1998)

Paper No. 11
RLS/cj
THIS DECISION IS CITABLE AS
PRECEDENT OF THE TTAB DEC. 30, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re William H. Eilberg
________
Serial No. 75/162,788
_______
William H. Eilberg, pro se.
Gary R. Thayer, Trademark Examining Attorney, Law Office
103 (Michael A. Szoke, Managing Attorney).
_______
Before Simms, Seeherman and Hohein, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:
William H. Eilberg has appealed from the final refusal
of the Trademark Examining Attorney to register the
asserted mark WWW.EILBERG.COM on the Supplemental Register,
for legal services in the field of intellectual property.1

1 Application Serial No. 75/162,788, originally filed on the
Principal Register on September 9, 1996, under Section 1(b) of
the Act, 15 USC §1051(b), based upon applicant’s bona fide
intention to use the mark in commerce. Applicant filed an
amendment to the Supplemental Register on June 4, 1997, along
with an amendment to allege use. Applicant indicates that he
Ser No. 75/162,788
2
In the original application applicant indicated that the
mark will be applied to materials which advertise the
services and “will also be used as an Internet domain
name.” In an amendment, applicant indicates that the mark
is used in connection with the services by placing it on
letterheads and business cards which advertise the
services. Applicant’s letterhead is reproduced below.
It is the Examining Attorney’s position that the
specimens of record fail to show use of the asserted mark
in a manner that functions as a service mark.2 While the
Examining Attorney contends that the asserted mark would be
capable of functioning as a mark if used in an appropriate
and sufficiently distinctive manner (in a fashion that will

first used the mark in commerce at least as early as April 9,
1997.
2 The Examining Attorney, we believe incorrectly, cited (and
continued to cite) the statutory sections 1, 2, 3 and 45 of the
Trademark Act, 15 USC §§1051, 1052, 1053 and 1127. Because the
instant mark is now sought to be registered on the Supplemental
Register, the appropriate statutory refusal is Section 23 of the
Act, 15 USC §1191.
Ser No. 75/162,788
3
be recognized as identifying and distinguishing applicant’s
legal services), the Examining Attorney maintains that:
To function as a service mark, a mark
must be used in such fashion that it
will be recognized as identifying or
distinguishing the recited services –
rather than, in contrast, merely for
the purpose of identifying or providing
information about the applicant...
In this case, the specimens of record
show the proposed mark WWW.EILBERG.COM
used inconspicuously in a very small
and subdued typeface on applicant’s
letterhead. Furthermore, compared with
other text in the letterhead, the mark
appears with even less prominence and
below other merely informational
indications of applicant’s mailing
address, phone, fax and e-mail
addresses and on the same line and same
type face as a merely informational
indication [of] applicant’s area of
specialization...
In addition, the substance of the mark
itself...is merely the domain name or
Internet address which is used to
contact applicant’s Web site on the
Internet. As such, the mark merely
imparts information, in the same manner
as an address, phone number or other
informational statement, about how to
reach the applicant. Where the
substance of a term or statement is
merely informational in nature, there
may properly be a presumption that the
use thereof is for merely informational
purposes...
Ser No. 75/162,788
4
Examining Attorney’s appeal brief, 2, 3. The Examining
Attorney has made of record copies of advertisements where
various business entities have included references to their
Internet addresses or domain names. Copies of the relevant
portions of a few of those advertisements are shown below.
Ser No. 75/162,788
5
Applicant, on the other hand, argues that the asserted
mark functions as a service mark to identify and
distinguish applicant’s services. First, applicant
indicates that the specimen letterheads show three ways of
contacting applicant —- by telephone, by fax and by e-mail.
Applicant maintains that the asserted mark is not a means
of “contacting” applicant and that it is significant that
applicant’s specimens do not consist of the entire Internet
address and contain no instructions on the need to add the
prefix “http://.”3 Moreover, applicant points out that,
unlike most of the examples noted by the Examining
Attorney, no designation such as “visit our Web site at” or
“contact us at” appears near the asserted mark.
This manner of display of the mark was
intentionally chosen by Appellant, so
that the mark would be perceived as a
service mark, and not just as a part of
an Internet domain name.
Appellant submits further that, by
displaying the mark without any other
text in its vicinity, Appellant has
used the mark as an emblem or insignia
which designates Appellant’s services.
The board can take judicial notice that
this kind of emblem is now widely used
by commercial entities in virtually
every field, and seems to have become
almost a requirement for doing business
in the 1990s.

3 In response to this argument, the Examining Attorney notes that
Internet domain names may appear either with or without the
prefix “http://”, and that some browsers do not require entry of
this prefix in order to access a Web site.
Ser No. 75/162,788
6
Applicant’s brief, 2-3. Applicant argues, therefore, that,
since the asserted mark is presented alone, without
supporting text, and set apart from the various means of
contacting applicant, it can and does function as a service
mark. Applicant maintains that it purposely did not
portray its asserted mark in a “brash and offensive”
manner, that a service mark does not have to be of a
particular size, and that the only requirement is that it
be perceived as identifying applicant’s services. The fact
that the asserted mark may also be used as the address of
applicant’s Internet Web site does not negate its ability
to function as a designator of applicant’s services,
according to applicant.
Upon careful review of this record and the arguments
of the attorneys, we agree with the Examining Attorney that
the asserted mark, as displayed on applicant’s letterhead,
does not function as a service mark identifying and
distinguishing applicant’s legal services and, as
presented, is not capable of doing so. As shown, the
asserted mark identifies applicant’s Internet domain name,
by use of which one can access applicant’s Web site. In
other words, the asserted mark WWW.EILBERG.COM merely
indicates the location on the Internet where applicant’s
Web site appears. It does not separately identify
Ser No. 75/162,788
7
applicant’s legal services as such. Cf. In re The Signal
Companies, Inc., 228 USPQ 956 (TTAB 1986).
This is not to say that, if used appropriately, the
asserted mark or portions thereof may not be trademarks or
services marks. For example, if applicant’s law firm name
were, say, EILBERG.COM and were presented prominently on
applicant’s letterheads and business cards as the name
under which applicant was rendering its legal services,
then that mark may well be registrable. However, this is
not the case before us.
Decision: The refusal of registration is affirmed.
R. L. Simms
E. J. Seeherman
G. D. Hohein
Administrative Trademark
Judges, Trademark Trial
and Appeal Board