On July 11, 2005, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit“ or “Court“) found that attaching terms such as “.COM” and “.NET” to a mark may render an otherwise descriptive term sufficiently distinctive for trademark registration. This decision is also noteworthy because while the Federal Circuit upheld the Trademark Trial and Appeal Board (“TTAB” or the “Board”) determination that STEELBUILDING.COM could not be registered as a trademark, it vacated the TTAB’s analysis of whether the mark was generic for “a website that provides computerized on-line retail services in the field of pre-engineered metal buildings including steel buildings.” In re Steelbuilding.com, Appeal No. 04-1447 (July 11, 2005).

The TTAB Erred in the Genericness Analysis

The TTAB had held that the mark, STEELBUILDING.COM, could not be registered as a trademark because it was generic, or at least highly descriptive, and because the term “.COM” in the mark was without source-identifying significance. In vacating this decision, the Court held that the TTAB had incorrectly construed the “genus” of the goods or services at issue in concluding that the mark was generic. The TTAB found that STEELBUILDING.COM was generic for “the sale of pre-engineered ‘steel buildings’ on the Internet,” and “computerized on-line retail services in the field of pre-engineered metal buildings including steel buildings.”

The Federal Circuit, on the other hand, noted that the applicant defined its goods and services as “computerized on-line retail services in the field of pre-engineered metal buildings and roofing systems” and that the Board failed to recognize, among other things, that the applicant’s website features a process whereby a customer can design and price its own building through a complex interactive process. Therefore, the Court concluded, the mark was not generic. In addition, the Federal Circuit also suggested that the TTAB failed in its genericness analysis when it considered “STEELBUILDING” and “.COM” separately, and when it failed to consider the meaning of the composite term STEELBUILDING. According the Federal Circuit, the Board should have recognized that STEELBUILDING may not just be generic for “steel buildings,” but may denote “the building of steel structures.”

The Addition of .COM May Add to a Mark’s Distinctiveness

Another noteworthy portion of the recent Federal Circuit decision, is the Court’s discussion of the significance of top level domain (“TLD“) indicators, such as “.COM” and “.NET” in trademarks. In this case, in considering the effect of attaching the term “.COM” to “STEELBUILDING,” the TTAB concluded that that “.COM” was “no more a designation of a commercial entity on the Internet, like ‘company.’” Thus, according the Board, the combination of “STEELBUILDING” and “.COM” was no more registrable than “STEELBUILDING” alone.

The Federal Circuit, however, took issue with the TTAB’s findings related to TLD indicators. Specifically, the Court recognized that in rare circumstances “a TLD may render an otherwise descriptive term sufficiently distinctive for trademark registration.” According to the Federal Circuit, in those rare instances, “a term that is not distinctive by itself may acquire some additional meaning from the addition of a TLD, such as ‘.com,’ ‘.net,’ etc.” To support its reasoning, the Court cited to In re Oppedahl & Larson LLP, 71 USPQ2d 1370, 1373 (Fed. Cir. 2004), where the Federal Circuit had previously held that “the PTO has not applied a bright-line rule that the addition of a TLD to an otherwise descriptive term will never under any circumstances affect the registrability of a mark.”

In the end, the Court concluded that “the addition of the TLD indicator expanded the meaning of the mark to include goods and services beyond the mere sale of steel buildings,” and in fact “expanded the mark to include internet services that include building or designing structures on the web site and then calculating an appropriae price before ordering the unique structure.” For this reason, the Federal Circuit found that the Board erred by dismissing the addition of the TLD indicator despite its expansion of the meaning “STEELBUILDING.COM.”

This latest Federal Circuit decision may force the TTAB to ensure that it properly and adequately construes the genus of an applicant’s goods and services in making findings related to genericness. It may also alert the Board to the need to look closely at TLD indicators and specifically at when terms like “.COM” and “.NET” do in fact render an otherwise descriptive term sufficiently distinctive for trademark registration. The Arent Fox Intellectual Property Group closely monitors all developments in this area of the law.

Elizabeth Cohen
202.857.6166
cohen.elizabeth@arentfox.com

David S. Modzeleski
202.857.6073
modzeleski.david@arentfox.com