Cyber-Financial.Net, Inc.

Trademark Trial and Appeal Board

Aug 28, 2002

No. 75482561 (T.T.A.B. Aug. 28, 2002)

Paper No. 15
TJQ
Mailed: August 28, 2002
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re CyberFinancial.Net, Inc.
________
Serial No. 75/482,561
_______
Denise A. Ciampitti of Butera, Beausang, Cohen & Brennan
for applicant.
Erica D.B. Glembocki, Trademark Examining Attorney, Law
Office 102 (Thomas V. Shaw, Managing Attorney).
_______
Before Quinn, Bucher and Bottorff, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
CyberFinancial.Net, Inc. filed an application to
register on the Supplemental Register the designation
BONDS.COM for “providing information regarding financial
products and services via a global computer network and
providing electronic commerce services via a global
computer network, namely, investment research, subscription
services, market commentary, portfolio analysis, debt
instrument conversion, yield performance, and pricing
analysis, with respect to taxable and tax exempt debt
THIS DECISION IS CITABLE
AS PRECEDENT OF THE
TTAB
Ser No. 75/482,561
2
instruments, and other related investment products and
services, namely, investment securities.”1
The Trademark Examining Attorney refused registration
under Section 23 of the Trademark Act on the ground that
the designation sought to be registered is generic and,
thus, incapable of registration on the Supplemental
Register.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney submitted briefs.
Applicant did not request an oral hearing.
The Examining Attorney maintains that the designation
BONDS.COM is generic because it comprises the generic term
“bonds” and an entity designator which lacks trademark
significance, namely, the generic top-level domain (“TLD”)
“.com.” In support of the refusal, the Examining Attorney
submitted dictionary definitions of “bond,” “.com,” and
“dot com company”; excerpts of Web sites of entities in the
financial trade; and Examination Guide No. 2-99, dated
September 29, 1999, pertaining to the registrability of
marks comprising, in whole or in part, domain names.
1 Application Serial No. 75/482,561, filed May 11, 1998, alleging
a bona fide intention to use the mark in commerce. Applicant
subsequently filed an amendment to allege use setting forth a
date of first use anywhere and a date of first use in commerce of
June 9, 1999. The application originally was filed by John B.
Beausang, and subsequently was assigned to the above-mentioned
applicant. The assignment is recorded in the Office records.
Ser No. 75/482,561
3
In urging that the refusal be reversed, applicant
asserts that “.com” is not a word and is not a generic term
for selling via the Internet. Applicant goes on to state
that “there is no evidence that the relevant public refers
to this class of retailers as ‘BONDS.COM.’” (brief, p. 4).
Applicant also points to the absence of any listings of
“bonds.com” in dictionaries, and relies on the fact that
there are multiple meanings for the term “bond(s).” In
addition to the dictionary evidence, applicant submitted
promotional materials covering its services and an
affidavit of John B. Beausang, applicant’s president,
wherein he asserts that the relevant public would not
understand applicant’s mark BONDS.COM to be an alternative
for the generic term “bond.” Mr. Beausang states that
BONDS.COM is a unique composite mark, that there are
multiple meanings of the term “bonds,” that applicant does
not buy or sell bonds, and that applicant’s services, as
recited in the application, encompass a broad range of
financial tools, e.g., stocks, options, debentures banking
and taxes, which the term “bonds” does not encompass.
Section 23 of the Trademark Act provides for
registration on the Supplemental Register of marks “capable
of distinguishing applicant’s goods or services and not
registrable on the Principal Register.” Generic terms are
Ser No. 75/482,561
4
common names that the relevant purchasing public
understands primarily as describing the class of goods or
services being sold. In re Merrill Lynch, Pierce, Fenner &
Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir.
1987). They are by definition incapable of indicating a
particular source of the goods or services, and cannot be
registered as trademarks. In re Dial-A-Mattress Operating
Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir.
2001). The Office bears the burden of proving that a term
is generic. In re The American Fertility Society, 188 F.3d
1341, 51 USPQ2d 1832, 1834 (Fed. Cir. 1999).
The determination of whether a term is generic
involves a two-part inquiry: First, what is the category
or class of the goods or services at issue? Second, is the
term sought to be registered understood by the relevant
public primarily to refer to that category of goods or
services? H. Marvin Ginn Corp. v. International
Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ
528, 530 (Fed. Cir. 1986).
With respect to the first part of the genericness
inquiry, the class or category of services at issue here is
that of information and electronic commerce services
regarding financial products, including bonds, provided via
Ser No. 75/482,561
5
the Internet. Applicant’s homepage describes its Web site
as a “financial resource guide.”
We next turn to the second step of the Ginn inquiry,
that is, whether the relevant public understands the term
BONDS.COM to refer to the category of services at issue,
namely, information and electronic commerce services
regarding financial products, including bonds, provided via
the Internet.2 We find that the term is so understood.
The term “bond” is defined as “a certificate of debt
issued by a government or corporation guaranteeing payment
of the original investment plus interest by a specified
future date.” The American Heritage Dictionary of the
English Language (3rd ed. 1992). The term “bond” is the
name of a specific product in the financial field. As
noted above, applicant’s Internet information services and
electronic commerce services are directed, in part, to
bonds. Because “bonds” is the name of one of the financial
products which comprise the subject matter of applicant’s
services, the term is likewise a generic name for the
information services and electronic commerce services
themselves. Those wishing to provide Internet information
2 Although applicant’s president states in his affidavit that
applicant does not buy or sell bonds, we find that the term
“financial products” in the recitation of services includes
“bonds.”
Ser No. 75/482,561
6
services and electronic commerce services involving bonds
would need to use, and are entitled to use, the generic
term in connection with such services.
The Board has held in the past that a term which is
the generic name of a particular category of goods is
likewise generic for any services which are directed to or
focused on that class of goods. See: In re A La Vieille
Russie Inc., 60 USPQ2d 1895 (TTAB 2001)[RUSSIANART generic
for particular field or type of art and also for dealership
services directed to that field]; In re Log Cabin Homes
Ltd., 52 USPQ2d 1206 (TTAB 1999)[because LOG CABIN HOMES is
generic for a particular type of building, it is also
generic for architectural design services directed to that
type of building, and for retail outlets featuring kits for
construction of that type of building]; In re Web
Communications, 49 USPQ2d 1478 (TTAB 1998)[because WEB
COMMUNICATIONS is generic for publication and communication
via the World Wide Web, it is also generic for consulting
services directed to assisting customers in setting up
their own Web sites for such publication and
communication); and In re Harcourt Brace Jovanovich, Inc.,
222 USPQ 820 (TTAB 1984)[LAW & BUSINESS incapable of
distinguishing applicant’s services of arranging and
conducting seminars in the field of business law].
Ser No. 75/482,561
7
In the present case, although the recitation of
services relates to a variety of financial products, we
find that the “taxable and tax exempt debt instruments”
listed in the present application encompass bonds. And, if
applicant’s mark BONDS.COM is generic as to part of the
services applicant offers under its mark, the mark is
unregistrable. In re Analog Devices Inc., 6 USPQ2d 1808,
1810 (TTAB 1988), aff’d without pub. op., 871 F.2d 1097, 10
USPQ2d 1879 (Fed. Cir. 1989); and In re Allen Electric and
Equipment Co., 458 F.2d 1404, 173 USPQ 689, 690 (CCPA
1972)[genericness is determined on the basis of the goods
and/or services identified in the involved application].
The term “.com” is defined in the following ways: “a
domain type used for Internet locations that are part of a
business or commercial enterprise” CNET Glossary (1998);
“abbreviation of commercial organization (in Internet
addresses)” The American Heritage Dictionary of the English
Language (4th ed. 2000); and “Internet abbreviation for
company: used to show that an Internet address belongs to
a company or business” Cambridge Dictionaries Online
(2001). The record also includes definitions of “Dot Com
Company” as “[a] company which operates its business mainly
on the Internet, using ‘.com’ URLs,” Newton’s Telecom
Dictionary (2001); and “dot-com company”as “[a]n
Ser No. 75/482,561
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organization that offers its services or products
exclusively on the Internet.” The Computer Glossary (9th
ed. 2001).3
The issue presently before us was squarely addressed
by the Board in the recent decision of In re Martin
Container, Inc., ___USPQ2d___ (TTAB June 11, 2002)
(application Serial No. 75/553,426). In that case, the
Board found the designation CONTAINER.COM to be generic and
incapable of registration on the Supplemental Register when
used in connection with “retail store services and retail
services offered via telephone featuring metal shipping
containers” (Class 35) and “rental of metal shipping
containers” (Class 39). The Board concluded that
what applicant seeks to register is
simply a generic term [“container”],
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 that
combining the two does not create a
term which has somehow acquired the
3 The last four definitions were attached to the Examining
Attorney’s appeal brief. We grant the request to take judicial
notice of this evidence. See: University of Notre Dame du Lac
v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). In doing
so, we recognize that one of the definitions is from an online
resource. However, as indicated in the Web page printout, the
Cambridge International Dictionary of English is available in
book form. Cf.: In re Total Quality Group Inc., 51 USPQ2d 1474,
1475-76 (TTAB 1999).
Ser No. 75/482,561
9
capability of identifying and
distinguishing applicant’s services.
The Board viewed CONTAINER.COM more like a compound term
than a phrase, and cited to In re Gould Paper Corp., 834
F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) in finding it
generic. The Board stated that “to the average customer
seeking to buy or rent containers, ‘CONTAINER.COM’ would
immediately indicate a commercial web site on the Internet
which provides containers.” In making its determination,
the Board analogized to the cases of In re Paint Products
Co., 8 USPQ2d 1863 (TTAB 1988) [PAINT PRODUCTS CO. held
incapable of identifying and distinguishing paints], and In
re E.I. Kane, Inc., 221 USPQ 1203 (TTAB 1984) [OFFICE
MOVERS, INC. held incapable of identifying and
distinguishing office facilities moving services]. The
Board also cited to the views espoused by Professor
McCarthy:
a top level domain [“TLD”] indicator
[such as “.com”] has no source
indicating significance and cannot
serve any trademark [or service mark]
purpose. The same is true of other
non-distinctive modifiers used in
domain names, such as “http://www” and
“html”...[because] the TLD “.com”
functions in the world of cyberspace
much like the generic indicators
“Inc.,” “Co.,” or “Ltd.” placed after
the name of a company.
Ser No. 75/482,561
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A top level domain indicator like
“.com” does not turn an otherwise
unregistrable designation into a
distinctive, registrable trademark [or
service mark]. Thus, for example,
adding a “.com” to a generic term, such
as would not change
the basic generic nature and the
composite will probably be found
generic and unregistrable for the
service of providing information in the
field of banking.
1 J. McCarthy, McCarthy on Trademarks and Unfair
Competition, § 7:17.1 at pp. 7-28.1 to 7-29 (4th ed. 2002).
We reach the same result here as did the Board in
Martin Container. 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. The public would not
understand BONDS.COM to have any meaning apart from the
meaning of the individual terms combined. In re Gould
Paper Corp., supra. Simply put, the TLD “.com,” as shown
by the Examining Attorney’s evidence, signifies to the
public that the user of the domain name constitutes a
commercial entity.
Ser No. 75/482,561
11
We are not the first to find that the TLD designation
“.com” has no trademark significance. This finding is
consistent with the Ninth Circuit’s decision in Brookfield
Communications, Inc. v. West Coast Entertainment Corp., 174
F.3d 1036, 50 USPQ2d 1545, 1558 [“the ‘.com’ top-level
domain signifies the site’s commercial nature”] as well as
some lower court decisions. See: 555.1212.com Inc. v.
Communication House International Inc., 157 F.Supp2d 1084,
59 USPQ2d 1453, 1458 (N.D. Cal. 2001) wherein the court
stated the following:
While no Circuit Court has specifically
addressed this issue [of when one adds
a “.com” to a generic term], the Ninth
Circuit has held that “[t]he domain
name is more than a mere address: like
trademarks, second-level domain names
communicate information as to source.”
Brookfield Communications, Inc. v. West
Coast Entertainment Corp., 174 F.3d
1036, 50 USPQ2d 1545. Second-level
domain names are the words before the
“.com.” The “.com” is considered a
top-level domain name. Thus, the Ninth
Circuit has implied that the source
identifying nature of a domain name, if
any, lies in the characters which
precede a “.com” not the “.com” itself.
Following the Ninth Circuit’s lead in
Brookfield, one district court has held
that generic top level domain names
such as “.com” are not source
identifying words and are therefore
generic.
Ser No. 75/482,561
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See, also: Image Online Design, Inc. v. Core Association,
120 F.Supp2d 870, 877 (C.D. Cal. 2000); and Nissan Motor
Co. v. Nissan Computer Corp., 204 F.R.D. 460, 466-67 (C.D.
Cal. 2001).
In the same manner that the designation BONDS CO.
(“CO. standing for “COMPANY”) would be generic and not
registrable for applicant’s services, we find the
designation BONDS.COM likewise to be unregistrable. Over
100 years ago, the Supreme Court, in the case of Goodyear’s
India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 US
598, 602 (1888), indicated that “[t]he addition of the word
‘Company’ [to an otherwise unregistrable mark] only
indicates that parties have formed an association or
partnership to deal in such goods...” and does not render
the mark registrable. The Supreme Court noted that adding
“company” to “wine” or “cotton” or “grain” did not
magically create a term that was no longer generic:
[P]arties united to produce or sell
wine, or to raise cotton or grain,
might style themselves Wine Company,
Cotton Company, or Grain Company; but
by such description they would in no
respect impair the equal right of
others engaged in similar business to
use similar designations, for the
obvious reason that all persons have a
right to deal in such articles, and to
publish that fact to the world. Names
of such articles cannot be adopted as
trade-marks, and be thereby
Ser No. 75/482,561
13
appropriated to the exclusive right of
any one; nor will the incorporation of
a company in the name of an article of
commerce, without other specification,
create any exclusive right to use of
the name. Id. at 602-03.
In its hypothetical, the Supreme Court did not hint that
the outcome was somehow contingent upon whether there was
evidence showing that the public used the exact term “wine
company.” We view the Supreme Court’s reasoning, although
expressed so long ago, to be equally applicable today to
cyberspace domain names.
Following the reasoning of the Supreme Court, the term
BONDS CO. would be generic for services relating to bonds,
and competitors should be allowed to freely use marks such
as ACME BONDS CO. or UNITED BONDS CO. to identify and
distinguish their services. In the same manner, a
designation such as BONDS.COM should be freely available
for others to adopt so that designations such as
ACMEBONDS.COM or UNITEDBONDS.COM could be used by
competitors to identify and distinguish their services from
others in the field. See also: Trademark Manual of
Examining Procedure, §§ 1209.03(m) and 1215.05 (3rd ed.
2002).
Applicant relies heavily on the holding in Dial-A-
Mattress. In that case, the Federal Circuit reversed the
Ser No. 75/482,561
14
Board’s holding affirming the genericness refusal to
register 1-888-MATRESS as a mark for “telephone shop-at-
home services in the field of mattresses.” In arguing that
“1-800-” phone number and “.com” designations are analogous
and should be treated the same, applicant points to
Examination Guide 2-99, dated September 29, 1999, which
essentially indicates that such designations would be
similarly treated by the Office. After Dial-A-Mattress,
the argument goes, “.COM” marks should be registrable to
the same extent as are phone number marks.
We would point out, though, that Examination Guide 2-
99 has been superceded. The foreword to the recently
revised edition of the TMEP (dated January 2002) indicates
that “[p]olicies stated in this revision supercede any
previous policies stated in the second edition, examination
guides, or any other statement of Office policy, to the
extent that there is any conflict.” The revision
distinguishes the Office’s treatment of phone numbers (§
1209.03(l)), recognizing the import of the holding in Dial-
A-Mattress, from domain names (§ 1209.03(m)).
We recognize, of course, as did the Board panel in
Martin Container, that there are similarities between a
toll-free telephone number and a domain name in that
neither is the name of the category of services, and each
Ser No. 75/482,561
15
typically can be used by only one entity at a time.
However, we view the present case as distinguishable from
Dial-A-Mattress because, although telephone numbers are
unique, that is, a given ten-digit number can be used by
only one entity at a time, domain names may be up to sixty-
three numbers or characters (plus the characters used to
identify the TLD), so that many domain names could contain
the same root terms (in many instances, generic root
terms), combining them with different numbers or letters as
prefixes and/or suffixes. Financial entities that compete
with applicant have a competitive need to use the matter
sought to be registered, BONDS.COM, as part of their own
domain names and trademarks. In this connection, we point
to the Examining Attorney’s evidence that at least two
others in the financial field are using the root term
“bonds.com” as an element of their domain names.
Specifically, two Web sites show the adoption of the
generic designation BONDS.COM and the addition of other
matter to it to form the domain names of “bonds-online.com”
and “investinginbonds.com.”
We likewise find Dial-A-Mattress distinguishable from
the present case for the other reasons set forth in Martin
Container (slip opinion at pp. 10-11):
Ser No. 75/482,561
16
The mark there was a toll-free
telephone number which featured a
misspelled generic term instead of the
usual seven-digit number following the
area code. As the Court characterized
it, the proposed mark was a mnemonic
combining numbers with a word, which
was more of a “phrase” than a “compound
word.” Here the mark consists of a
correctly spelled generic term followed
by “.com.” Unlike the toll-free area
code in Dial-A-Mattress, the “.com”
portion of applicant’s mark indicates
that applicant is a commercial
enterprise.
**********
In the case before us, contrary to
Dial-A-Mattress, the mark cannot be
characterized as a mnemonic phrase. It
is instead a compound word, a generic
term combined with the top level domain
indicator, “.COM.”
In finding that the designation BONDS.COM as a whole
is no less generic than its constituents, we recognize the
Federal Circuit’s statement relative to Gould in American
Fertility Society (at p. 1837):
Gould is limited, on its facts,
language, and holding, to compound
terms formed by the union of words. It
is legally erroneous to attempt to
apply the language quoted below to
phrases consisting of multiple terms,
which are not “joined” in any sense
other than appearing as a phrase.
The compound immediately and
unequivocally describes the
purpose, function and nature of the
goods as Gould itself tells us.
Gould has simply joined the two
Ser No. 75/482,561
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most pertinent and individually
generic terms applicable to its
product, and then attempts to
appropriate the ordinary compound
thus created as its trademark. In
this instance, the terms remain as
generic in the compound as
individually, and the compound thus
created is itself generic.
Gould, 834 F.2d at 1019, 5 USPQ2d at
1112 (citations omitted).
BONDS.COM is properly considered a compound word in
this analysis. The terms “bond” and “.com” are joined as a
compound word and appear without any space or separation
between them. This is analogous to Gould, where “screen”
and “wipe” appeared as the compound “screenwipe,” and
differs from American Fertility, where the Federal Circuit
held that the terms “Society for Reproductive Medicine”
were not “...‘joined’ in any sense other than appearing as
a phrase.” American Fertility Society, supra at 1837.
In reaching our conclusion, we have considered the
designation sought to be registered as a whole. See:
Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252
U.S. 538, 545-46 (1920). We would add that even if the
designation BONDS.COM were viewed as a phrase, we would
reach the same result here.
Applicant’s ownership of the previously issued
Registration No. 2,401,043 for the designation STOCKS.COM
Ser No. 75/482,561
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for “providing information about investment securities for
online investors and professional traders via a global
computer network” does not compel a different result
herein.4 The registration issued on October 31, 2000 on the
Supplemental Register. While uniform treatment under the
Trademark Act is an administrative goal, our task in this
appeal is to determine, based on the record before us,
whether applicant’s particular mark sought to be registered
here is generic. As is often stated, each case must be
decided on its own merits. See, e.g.: In re Best Software
Inc., 58 USPQ2d 1314 (TTAB 2001). Neither the current
Examining Attorney nor the Board is bound by the prior
action of the Examining Attorney who examined applicant’s
earlier-filed application, now registration. In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001) [“Even if some prior registrations had some
characteristics similar to [applicant’s] application, the
PTO’s allowance of such prior registrations does not bind
the Board or this court.”].
Decision: The refusal to register is affirmed.
4 Applicant failed to submit a photocopy of the registration, and
merely referred to it in a response. See: In re Duofold Inc.,
184 USPQ 638, 640 (TTAB 1974). However, the Examining Attorney
treated the registration to be of record and, thus, we have
considered the registration in reaching our decision.