Quiring Monuments, Inc.

Trademark Trial and Appeal Board

May 29, 2002

No. 75911990 (T.T.A.B. May. 29, 2002)

Paper No. 12
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Quiring Monuments, Inc.
________
Serial No. 75/911,990
_______
Mark J. Nielsen of Law Office of Mark J. Nielsen for Quiring
Monuments, Inc.
Asmat A. Khan, Trademark Examining Attorney, Law Office 104
(Sidney Moskowitz, Managing Attorney).
_______
Before Cissel, Quinn and Hohein, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
Quiring Monuments, Inc. has filed an application to
register the term "MONUMENTS.COM" as a service mark for the
"design for others of cemetery, commemorative and decorative
memorials made of stone."1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis
that, when used in connection with applicant's services, the term
"MONUMENTS.COM" is merely descriptive of them.
1 Ser. No. 75/911,990, filed on February 7, 2000, which is based on an
allegation of a bona fide intention to use such term in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/911,990
2
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it forthwith conveys
information concerning any significant ingredient, quality,
characteristic, feature, function, purpose, subject matter or use
of the goods or services. See, e.g., In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987) and In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It is not
necessary that a term describe all of the properties or functions
of the goods or services in order for it to be considered to be
merely descriptive thereof; rather, it is sufficient if the term
describes a significant attribute or idea about them. Moreover,
whether a term is merely descriptive is determined not in the
abstract but in relation to the goods or services for which
registration is sought, the context in which it is being used or
is intended to be used on or in connection with those goods or
services and the possible significance that the term would have
to the average purchaser of the goods or services because of the
manner of such use. See In re Bright-Crest, Ltd., 204 USPQ 591,
593 (TTAB 1979). Thus, "[w]hether consumers could guess what the
product [or service] is from consideration of the mark alone is
not the test." In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
Ser. No. 75/911,990
3
Applicant, relying upon several electronic dictionary
definitions of the term "monument" and numerous websites
mentioning such term which were located by its counsel using
various search engines, argues in its initial brief that, in the
abstract:
The primary meaning of "monument" is
large scale buildings, sculptures or parks
typically dedicated to events or places of
historical significance. "Monument" refers
only secondarily to "cemetery, commemorative
and decorative memorials made of stone."
This view of the meaning of "monument" is
amply supported by both dictionary
definitions and evidence of customary usage
demonstrated by web searches. .... Examples
of the primary use of "monuments" include the
Washington Monument, the Bunker Hill
Monument, the Mount St. Helens National
Volcanic Monument, and Bandelier National
Monument.
In view thereof, applicant stresses that its design services "do
not encompass buildings, sculptures or parks." While applicant
"acknowledges that a secondary meaning of 'monument' includes
headstones, cemetery markers and other smaller scale stone
memorials," applicant argues that "'monument' refers to a broad
range of distinct things and therefore does not directly and
immediately convey information about the kinds of products that
might result from the Applicant's design services." Applicant
consequently contends that "an indefinite term like 'monument' is
not merely descriptive of Applicant's design services because
additional thought or conjecture is necessary to determine the
nature of Applicant's services."
Continuing to premise its arguments improperly upon the
meaning of the term "monument" in the abstract rather than in
Ser. No. 75/911,990
4
relation to the definitions thereof which are pertinent with
respect to applicant's services of designing, for others,
cemetery, commemorative and decorative memorials made of stone,
applicant submits that the excerpts made of record from the
Examining Attorney's searches of the "NEXIS" database "are
insufficient to demonstrate that MONUMENTS.COM is merely
descriptive" of such services. Specifically, applicant asserts
that:
The Examining Attorney submitted a
selection of articles from two searches, one
for "monuments w/s headstones" and one for
"cemetery monuments." The absence of any
search results for "monuments" alone confirms
the Applicant's view that the primary meaning
and most common usage of "monuments" is to
refer to large scale buildings, sculptures
and parks dedicated to events and places of
historical significance. .... The Examining
Attorney apparently found relevant articles
only by searching for "monument" with other
words like "headstone" and "cemetery" that
clearly elicited one of the secondary
meanings of the word. Thus, the Examining
Attorney's evidence tacitly supports the
Applicant's contention that the primary
meaning of "monument" does not include
"cemetery, commemorative and decorative
memorials of stone."
Thus, according to applicant, the term "'monuments' has broader,
primary meanings so that it does not convey an immediate idea of
the kinds of goods that might eventually result from the
Applicant's design services."
Finally, applicant maintains that "the Examining
Attorney has not adequately considered the meaning of the subject
mark as a whole." Instead, according to applicant, "the
Examining Attorney has followed Examination Guide No. 2-99 and
dissected the mark into two elements, an allegedly descriptive or
Ser. No. 75/911,990
5
generic term and a top-level domain [name]." Such an approach,
applicant insists, is improper inasmuch as it is contrary to In
re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807
(Fed. Cir. 2001), which requires consideration of "the commercial
significance of the mark as a whole."
We concur with the Examining Attorney, however, that
the combination of the descriptive terms "MONUMENTS" and ".COM"
to form the term "MONUMENTS.COM" is merely descriptive of
applicant's services of the "design for others of cemetery,
commemorative and decorative memorials made of stone." Combining
such terms does not create a composite which, when considered in
its entirety, is so incongruous or unusual, or which otherwise
possesses a new meaning different from its constituent terms, as
to possess no definitive meaning or significance other than that
of an identifying mark for applicant's services.2 Instead, as
pointed out in the Examining Attorney's brief:
[T]he term "monument" may be defined as "a
structure, such as a building or sculpture,
erected as a memorial; an inscribed marker
placed at a grave; tombstone." The top level
domain [name] ".com" merely signifies to the
public that the user of the domain name
constitutes a commercial entity. In this
2 See, e.g., In re Medical Disposables Co., 25 USPQ2d 1801, 1804 (TTAB
1992), which notes with respect to the well settled proposition that
otherwise descriptive terms may be combined to form a valid, arbitrary
mark that:
[T]he mere act of combining does not in itself render the
resulting composite a registrable trademark. Rather, it
must be shown that in combination the descriptiveness of
the individual words [and/or term] has been diminished,
[such] that the combination creates a term so incongruous
or unusual as to possess no definitive meaning or
significance other than that of an identifying mark for the
goods [or services]. See In re Calspan Technology
Products, Inc., 197 USPQ 647 (TTAB 1977).
Ser. No. 75/911,990
6
regard, much like such terms as, "Inc.["],
["]Corp.["] or ["]Co.," the ".com" portion of
the proposed mark does not function in a
distinctive, source identifying capacity."
....
The Examining Attorney, in view thereof, maintains that in the
context of applicant's services, "[n]o amount of thought or
imagination is necessary to determine that "MONUMENTS.COM" for
the aforementioned services merely describes a character[istic],
feature of purpose of the identified design services." We agree.
As support for the above position, the Examining
Attorney has made of record a definition from The American
Heritage Dictionary of the English Language (3d ed. 1992) which
defines "monument," in relevant part, as "1. A structure, such as
a building or sculpture, erected as a memorial. 2. An inscribed
marker placed at a grave; tombstone."3 The definitions of such
term submitted by applicant with its request for reconsideration
are to the same effect. Specifically, Merriam-Webster's
Collegiate Dictionary lists "monument" in relevant part as
meaning "3 a (1) : a lasting evidence, reminder, or example of
someone or something notable or great ... b : a memorial stone or
a building erected in remembrance of a person or event," while
the Encarta World English Dictionary (N. American ed. 2001) sets
forth such term as meaning "1. large stone statue or carving:
3 In addition, we judicially notice in this regard that the same
dictionary defines "memorial" in pertinent part as "1. Something, such
as a monument or holiday, intended to celebrate or honor the memory of
a person or an event." It is settled that the Board may properly take
judicial notice of dictionary definitions. See, e.g., Hancock v.
American Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330,
332 (CCPA 1953); University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d
Ser. No. 75/911,990
7
something designed and built as a lasting public tribute to a
person, a group of people, or an event ... 3. carved headstone:
a tombstone, plaque, or ornamental stone structure placed on
somebody's grave. A monument in a cemetery is usually inscribed
with the name and dates of birth and death of the deceased
person, and often a religious quotation or verse." In addition,
we judicially notice that the Microsoft Press Computer Dictionary
(3d ed. 1997) sets forth ".com" in pertinent part as connoting
"1. In the Internet's Domain Name System, the top-level domain
that identifies addresses operated by commercial organizations.
The domain name .com appears as a suffix at the end of the
address."
Also of record in support of the Examining Attorney's
position are excerpts retrieved from searches of the "NEXIS"
electronic database using the search requests "MONUMENTS W/S
HEADSTONES" and "CEMETERY MONUMENTS." Such evidence, the
Examining Attorney maintains, shows that as stated in the final
refusal, "[t]he term 'monuments' is commonly used in relation to
cemetery, commemorative and decorative memorials, [which are] the
subject matter of the applicant's design services." In
particular, of the ten excerpts selected and printed from the 978
excerpts located through use of the former, the following are
especially probative as to the significance which the term
"monument" would project in the context of applicant's services
of designing, for others, cemetery, commemorative and decorative
memorials made of stone:
1372, 217 USPQ 505 (Fed. Cir. 1983); and Marcal Paper Mills, Inc. v.
Ser. No. 75/911,990
8
"A man in the monument business donated
a custom-designed headstone. A Philadelphia
police officer offered an escort for the
drive from the church to the cemetery." --
Philadelphia Inquirer, March 1, 2001 (article
headlined: "7 years later, a stranger's
devotion leads to a slain boy's burial");
"I also paid the monument company to
etch my parents names on my sister's
headstone." -- St. Petersburg Times, February
10, 2001; and
"MANY HEADSTONES WERE toppled and
damaged when vandals tumbled cylindrical
monuments through Hillgrove Cemetery." --
Dayton Daily News, February 4, 2001.
Similarly, with respect to the 50 excerpts located with
the latter search request, the following are the most significant
of the dozen made of record by the Examining Attorney as evidence
of the meaning which the term "monument" would convey in the
context of applicant's services:
"Products: Customized cemetery
monuments, garden art and statuary, décor and
gift items." -- Business First, July 7, 2000;
"Arthur L. Yoerk was so attached to the
cemetery monument store he founded 31 years
ago, it remained a part of his life years
after he sold the business .... He was 71.
Before opening his cemetery monument
business in 1965, the Olean native had long
careers as an electrician and a truck driver.
....
Yoerk sold his cemetery monument
business to Gibney Monument Works of Ferry
but continued working at the store part-time
...." -- Buffalo News, May 15, 1996 (article
headlined: "ARTHUR L. YOERK, OWNED MONUMENT
STORE");
"These cemetery monuments believed
stolen from area cemeteries were found in a
Buffalo antique shop after the owner phoned
police." -- Buffalo News, July 16, 1996
American Can Co., 212 USPQ 852, 860 (TTAB 1981) at n. 7.
Ser. No. 75/911,990
9
(article headlined: "MISSING MONUMENT FOUND;
SUSPECT CHARGED");
"When a grieving mother asked Bill
McIninch to design a cemetery monument for
her 7-year-old son, who had died of leukemia,
the owner of McIninch Monuments in Waterford
combined his design ....
....
McIninch's work has been a part of
Waterford's landscape--literally--for more
than 10 years. In nearby cemeteries,
monuments shaped like a truck, a Lear jet and
a mermaid rise above more traditional
headstones." -- Detroit News, September 4,
1996; and
"CEMETERY MONUMENT FALLS, KILLS BOY: A
13-year-old boy died after the 3-foot granite
top of a cemetery monument fell on his head
while he and several friends were playing
hide-and-seek, authorities said." -- Atlanta
Journal & Constitution, February 22, 1996.
Finally, while we have not ignored the fact that most
of the websites referred to by applicant mention the word
"monument" in the sense of its alternate meaning of large scale
buildings, sculptures or parks which are dedicated typically to
places or events or places of historical significance, such a
connotation is plainly inapposite in the context of applicant's
services. Rather, as shown by other website references, such as
those (including the mention of applicant) noted below, the word
"monument," in the context of designing and/or manufacturing
cemetery, commemorative and decorative memorials, clearly has the
meaning of a memorial headstone and/or gravesite marker, just as
it does in the case of the relevant "NEXIS" excerpts relied upon
by the Examining Attorney:
"Final Plans Choose from a selection of
headstones, monuments, tombstones, benches
and urns. Visit the display room and compare
Ser. No. 75/911,990
10
prices." -- http://www.nov.com/finalplans,
May 31, 2001;
"Pet Memorials, Pet Monuments, Grave
Markers, Pet Gravestones and Pet Memorial
Headstones for pet loss Pet memorial and
monuments carved in granite. Dog & Cat
memorial headstones, pet memorial grave
markers, memorial gravestones for pet loss.
Pet names beautifully carved in stone.
Companion memorials for dogs, cats, birds."
-- http://www.oldyeller.net/, February 28,
2001;
"Davis Monuments - Cemetery Monuments,
Headstones, Grave Markers in Massachusetts
Davis Monuments are expert craftsmen in
granite, marble, slate and bronze cemetery
monuments and memorials" --
http://www.davismonuments.com/, April 18,
2000;
"Quiring Monuments, the Nation's Most
Creative, Personalized Granite Memorial
Website About Quiring Monuments Quiring
Monuments' Services Memorial Planning
Cremation Services Warranty Information Get a
Quote For further in formation, please
contact: Quiring Monuments, Inc. ..." --
http://www.monuments.com/, August 29, 1999;
and
"Donohoe & Carroll Monuments Donohoe &
Carroll Memorials Quality in the Best
Tradition Donohoe & Carroll has been
providing the Bay Area with fine quality
granite and marble products since 1875. We
have done inscription lettering in all San
Francisco Bay Area cemeteries." --
http://www.zice.com/donohoe, July 1, 1999.
Accordingly, while the term "monument" has several
meanings in the abstract, we agree with the Examining Attorney
that, in light of the above evidence, there can be no doubt that
the term "MONUMENTS.COM, when used in relation to applicant's
cemetery and commemorative stone design services, immediately
conveys to consumers that the applicant designs 'monuments,' a
Ser. No. 75/911,990
11
recognized term for cemetery tombstones." Such evidence is
clearly sufficient to demonstrate the mere descriptiveness of the
term "MONUMENTS.COM" with respect to applicant's services.
Specifically, the evidence demonstrates that, in the
context of applicant's services, the word "MONUMENTS" in the term
"MONUMENTS.COM" directly conveys significant information about
the nature of applicant's services, namely, that they involve the
design for others of cemetery, commemorative and decorative
memorials made of stone inasmuch as such memorials, being a
central characteristic or feature of applicant's design services,
are commonly known and referred to by the synonym "monuments." A
term which forthwith conveys information as to the nature of the
goods provided by the associated services is merely descriptive
of those services. See, e.g., In re Wickerware, Inc., 227 USPQ
970, 971 (TTAB 1985) ["WICKERWARE" for "mail order and
distributorship services in the field of wicker furniture and
accessories" designates "a central characteristic of appellant's
services" and thus is not registrable].
The merely descriptive significance of the word
"MONUMENT," moreover, is not lost or otherwise changed by its
combination with the designation ".COM" to form the term
"MONUMENTS.COM." This is because the ".COM" portion of the term
"MONUMENTS.COM," being a top level domain name, would be regarded
as designating a commercial website by the actual and potential
customers of applicant's stone memorial design services and thus
is lacking in service mark significance. See, e.g., 555-1212.com
Inc. v. Communication House International Inc., 157 F. Supp. 2d
Ser. No. 75/911,990
12
1084, 59 USPQ2d 1453, 1457-59 (N.D. Cal. 2001) [term "555-
1212.com" is merely descriptive of "providing databases featuring
telephone and directory information accessible via electronic
communication networks" because, "[m]uch like the telephone
number '411' for local calls, '555-1212' is the number one would
dial (after an area code) to seek out telephone and directory
information services outside of one's local area code" and thus,
"[t]o the average consumer, '555-1212.com' would indicate a
commercial web site on the Internet which provides similar
telephone and directory information"]; and 1 J. McCarthy,
McCarthy on Trademarks & Unfair Competition §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]"].
Consequently, when used in connection with applicant's
services of the "design for others of cemetery, commemorative and
decorative memorials made of stone," the term "MONUMENTS.COM" in
its entirety immediately describes, without conjecture or
speculation, that a significant characteristic, feature, or
subject matter of such services is the commercial design of
Ser. No. 75/911,990
13
monuments of stone for cemetery, commemorative and decorative
purposes. Plainly, in the context of applicant's services, no
imagination, cogitation, mental processing or gathering of
further information is necessary in order for customers to
readily understand that applicant commercially designs monuments
for others. Nothing in such term, as indicated previously, is
ambiguous, incongruous or perhaps susceptible to any other
plausible meaning. The term "MONUMENTS.COM" is accordingly
merely descriptive of applicant's services within the meaning of
the statute.
Decision: The refusal under Section 2(e)(1) is
affirmed.