Martin Container, Inc.

Trademark Trial and Appeal Board

Jun 11, 2002

No. 75553426 (T.T.A.B. Jun. 11, 2002)

6/11/02

Paper No. 20
RFC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Martin Container, Inc.
________

Serial No. 75/553,426
_______

Scott J. Major of Milan, White, Zelant & Branigan for
Martin Container, Inc.

Scott Baldwin, Trademark Examining Attorney, Law Office 112
(Janice O’Lear, Managing Attorney).
_______

Before Simms, Cissel and Hanak, Administrative Trademark
Judges.

Opinion by Cissel, Administrative Trademark Judge:
On September 15, 1998, applicant filed the above-
identified application to register the mark “CONTAINER.COM”
on the Principal Register for “buying, selling, and renting
metal shipping containers,” in Class 35. The basis for the
application was applicant’s claim that it had used the mark
in connection with the services in commerce since July 20,
1998.
THIS DISPOSITION IS
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/553,426
2
The original Examining Attorney1 refused registration
under Section 2(e)(1) of the Lanham Act, 15 U.S.C. Section
1052(e)(1), on the ground that the mark is merely
descriptive in connection with the services identified in
the application. He noted that the mark was a combination
of a descriptive term and a top level domain (“TLD”)
indicator, which does not serve any trademark function as
an indication of source. The Examining Attorney reasoned
that when the word “CONTAINER,” which is merely descriptive
in connection with retail sales and rental of containers,
is combined with “.COM,” which simply signifies that the
user of the domain name is a commercial entity, the
resulting combination merely describes the services
applicant set forth in the application.
In addition to refusing registration on the ground of
descriptiveness, the Examining Attorney also found the
recitation of services in the application to be
unacceptable because of the use of the words “buying” and
“selling.” Noting that buying or selling one’s own goods
is not considered to be a service within the meaning of the
Lanham Act, the Examining Attorney suggested that applicant

1 The Examining Attorney identified above was assigned this
application following the reassignment of the original Examining
Attorney to a different position within the agency.
Ser No. 75/553,426
3
adopt the following language: “distributorship services
featuring metal shipping containers,” in Class 35; and
“rental of metal shipping containers,” in Class 39.
Applicant responded to the first Office Action by
amending the application to seek registration on the
Supplemental Register, and amending the recitation of
services to read as follows: “retail services featuring
metal shipping containers,” in Class 35; and “rental of
metal shipping containers,” in Class 39.
The Examining Attorney refused registration on the
Supplemental Register under Section 23 the Lanham Act, 15
U.S.C. Section 1091, on the ground that applicant’s mark is
incapable of identifying applicant’s services and
distinguishing them from similar services provided by
others. He reasoned that the term “CONTAINER” is generic
in connection with services such as the rental and retail
sale of containers, and that combining this generic term
with the TLD “.COM” does not result in a mark registrable
on the Supplemental Register because the TLD has no source-
identifying significance that it can add to the generic
term.
The Examining Attorney accepted the amended recitation
of services for class 39, but found the recitation in Class
Ser No. 75/553,426
4
35 unacceptably indefinite because applicant had not
specified the type of retail services it renders. He
suggested adoption of the following, if accurate: “retail
store services featuring metal shipping containers,” in
Class 35.
Applicant responded by amending the services in Class
35 to read as follows: “retail store services and retail
services offered via telephone featuring metal shipping
containers.” Applicant also argued that the refusal to
register under Section 23 of the Act was not well taken, in
that applicant’s retail and rental services “are not web
based.” Applicant stated that its customers purchase its
services from a physical location in California or via
telephone, and that its Web site is used strictly for
advertising purposes. Applicant conceded that “CONTAINER”
is a generic term, but argued that the addition of the
suffix “.COM” “creates a distinctive composite, or at
minimum a composite worthy of registration on the
Supplemental Register.”
The Examining Attorney accepted the amended recitation
of services in Class 35, but continued and made final the
refusal to register under Section 23 of the Act. He
referred to dictionary definitions of the term “container”
as “a receptacle, such as a carton, can, or jar, in which
Ser No. 75/553,426
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material is held or carried…” or “a large reusable
receptacle that can accommodate smaller cartons or cases in
a single shipment, designed for efficient handling of
cargo.” Two computer dictionaries were quoted in reference
to the fact that the TLD “.COM” is assigned to corporations
or businesses. For example, Prentice Hall’s Illustrated
Dictionary of Computing, Third Ed., 1998, defines “.com” as
“in data communications, the code used to identify an
Internet user as one operating (or belonging to) a
commercial organization (business).” The Examining
Attorney repeated his contention that the TLD lacks the
ability to serve as an indication of source in the same way
that terms such as “company,” “corporation,” “Co.” and
“Inc.” do, and that combining such a term with a generic
word results in a mark like “CONTAINER.COM,” which is
incapable of identifying applicant’s services and
distinguishing them from similar services rendered by
others.
Applicant timely filed a Notice of Appeal, which was
followed by a request for suspension of the appeal and
remand to the Examining Attorney for consideration of the
recent ruling of the United States Court of Appeals for the
Federal Circuit in In re Dial-A-Mattress Operating
Corporation, 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir.
Ser No. 75/553,426
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2001). The application was remanded to the Examining
Attorney, but after reconsidering the refusal to register
in light of the new case argued by applicant, he was not
persuaded to withdraw the refusal to register. The Board
resumed action on the appeal, applicant filed its appeal
brief, the Examining Attorney filed his brief, and
applicant filed a reply brief. Applicant did not request
an oral hearing before the Board.
Section 23 of the Lanham 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.”
We affirm the refusal to register because the matter
for which registration is sought, “CONTAINER.COM,” is
incapable of identifying the source of applicant’s retail
and rental services featuring containers. Even applicant,
as noted above, concedes that “CONTAINER” is generic in
connection with its services.2 We agree with the Examining
Attorney that what applicant seeks to register is simply a
generic term, which has no source-identifying significance
in connection with applicant’s services, in combination

2 Had applicant not made this concession, the burden would have
remained on the Examining Attorney to put in evidence
demonstrating generic use of the term, preferably in addition to
dictionary evidence of genericness.
Ser No. 75/553,426
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with the top level domain indicator, which also has no
source-identifying significance, and that combining the two
does not create a term which has somehow acquired the
capability of identifying and distinguishing applicant’s
services.
This case is analogous to the cases cited by the
Examining Attorney, such as 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], wherein
combinations of generic terms along with designations
identifying the types of entities as companies or
corporations were held to be no more registrable than the
generic terms would be by themselves. Just as “555-
1212.com” was held to be merely descriptive of providing
databases featuring telephone and directory information
accessible via electronic communication networks in 555-
1212.com Inc. v. Communication House International Inc.,
157 F.Supp.2d 1084, 59 USPQ2d 1453, 1457-59 (N.D. Cal.
2001), to the average customer seeking to buy or rent
containers, “CONTAINER.COM” would immediately indicate a
commercial web site on the Internet which provides
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containers. See also: 1 J. McCarthy, Mc Carthy on
Trademarks & Unfair Competition, Section 7:17.1 (4th ed.
2002) at 7-28.1 [“ a top level domain [‘TLD)’] indicator
[such as ‘com.’] has no source indicating significance and
cannot serve any trademark [or service mark] purpose” and
“[t]he same is true of other non-distinctive modifiers used
in domain names, such as ‘http://www” and “html”; thus,
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,” “[a] top
level domain indicator like ‘.com’ does not turn an
otherwise unregistrable designation into a distinctive,
registrable trademark [or service mark].
Applicant presents an interesting argument in
connection with the Dial-A-Mattress case, cited above. In
that case, the Court reversed the Board’s holding affirming
the refusal to register “1-888-MATRESS” as a mark for
“telephone shop-at-home services in the field of
mattresses” based on the assertion of a bona fide intention
to use the mark in commerce. The application was based on
a claim of acquired distinctiveness predicated on
applicant’s use and registrations of other, similar marks.
The Court found the following: it was undisputed that
the genus for the type of services rendered by the
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applicant was “telephone shop-at-home services for retail
mattresses” (which we interpret as meaning telephone retail
sales of mattresses); the area code designation of “888” in
the proposed mark was itself devoid of significance as a
source identifier; “MATRESS” was the equivalent of
“MATTRESS”; and the word “MATTRESS” is generic for retail
services in the field of mattresses.
The Court held that the Board “had applied the wrong
test in holding that the Director meets his burden of
proving an alphanumeric telephone number generic merely by
showing that it is composed of a non-source-indicating area
code and a generic term.” The Court stated that the matter
sought to be registered in that case was “a mnemonic formed
by the union of a series of numbers and a word,” and that,
as such, it “bears closer conceptual resemblance to a
phrase than a compound word.” Further, it was noted that
refusing registration based on genericness required
production of evidence establishing “the meaning the
relevant purchasing public accords to the proposed mnemonic
mark ‘as a whole.’”
The instant appeal is distinguishable from the
decision in that case because the matter sought to be
registered here is not a mnemonic formed by combining
numbers with a word. It is not a telephone number, but
Ser No. 75/553,426
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instead is an Internet address, but this fact does not, in
and of itself, mandate registration. Just as in the Dial-
A-Mattress case, what is sought to be registered is not the
name of the genus or category of services, and in a sense
similar to the toll-free telephone number scenario, the
combination of the generic word “CONTAINER” and the TLD
“.COM,” considered in its entirety, is not the common
descriptive name of the services at issue. In a similar
sense, domain names, just like telephone numbers, typically
can be used by only one entity at a time.
Notwithstanding these similarities between the cited
case and the one at hand, the instant appeal presents an
issue which differs from the one resolved by the Court in
Dial-A-Mattress. 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.
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The Dial-A-Mattress case is further distinguishable
because although telephone numbers are truly unique, i.e.,
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, so that many domain names could contain the
same root terms, combining them with different numbers or
letters as prefixes and/or suffixes. Container suppliers
who compete with applicant may in fact be using or have a
competitive need to use the matter sought to be registered
as part of their own domain names and trademarks.
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 proving
genericness, the Office may satisfy its burden by showing
that these separate generic words have a meaning identical
to the meaning common usage would ascribe to those words as
a compound. In re Gould Paper Corp., 834 F.2d 1017, 5
USPQ2d 1110 (Fed. Cir. 1987). In a similar sense, neither
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.
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Applicant also argues that the mark is not generic
because applicant’s services are not Web-based. While it
may be that applicant currently does not sell its goods
over the Internet, that may not always be the case. In any
event, applicant currently advertises its goods on the
Internet.
DECISION: The refusal to register this term on the
Supplemental Register is affirmed.