Reed Elsevier Properties Inc.

Trademark Trial and Appeal Board

Dec 16, 2005

No. 75530795 (T.T.A.B. Dec. 16, 2005)

Hearing: Mailed:
June 14, 2005 December 16, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Reed Elsevier Properties Inc.
________

Serial No. 75530795
_______

Katherine M. DuBray, Tara M. Vold, and J. Paul Williamson
of Fulbright & Jaworski L.L.P. for Reed Elsevier
Properties, Inc.

Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______

Before Grendel, Rogers and Drost,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

Reed Elsevier Properties Inc. [applicant] initially
applied to register LAWYERS.COM, in standard character
form, as a mark for services identified as "providing
access to an online interactive database featuring
information exchange in the fields of law, lawyers, legal
news and legal services," in Class 42. The application
sought registration on the Principal Register and was based
This Opinion is
Citable as Precedent
of the TTAB
Ser No. 75530795
2
on applicant's claim of use of the designation in commerce,
with July 30, 1998 asserted as the date of first use and
first use in commerce.

Examination History/Evidence

The examining attorney refused registration, asserting
that the designation is merely descriptive for the
identified services, because it signifies only that
applicant provides information about lawyers via the
Internet.1 See Lanham Act Section 2(e)(1), § 15 U.S.C.
1052(e)(1). In addition, the examining attorney provided
applicant with information about a prior-filed application
which, the examining attorney reported, might present a bar
to registration of LAWYERS.COM if the prior-filed
application resulted in issuance of a registration. In a
subsequent action, however, the examining attorney stated
that no such refusal would be issued.
In response to the initial refusal under Section
2(e)(1), applicant refused to concede that either LAWYERS
or .COM is descriptive of its services and further argued
that the combination LAWYERS.COM, "considered as a whole …
does not immediately convey an idea of the ingredients,

1 As an alternative basis for refusal under Section 2(e)(1), the
examining attorney stated that the designation might be
deceptively misdescriptive. That refusal, however, was
subsequently withdrawn and is not a subject of this appeal.
Ser No. 75530795
3
qualities and characteristics of these identified
services." Applicant explained that information "about
lawyers is not necessarily the whole or even the primary
emphasis of Applicant's service," and that the composite
designation "is vague, at best, in terms of conveying any
specific information."
Notwithstanding applicant's argument, the examining
attorney made the refusal under Section 2(e)(1) final.
Applicant then amended its application to seek registration
on the Principal Register under Section 2(f) of the Lanham
Act, 15 U.S.C. §1052(f), but specifically stated that it
was not waiving its right to argue the Section 2(e)(1)
refusal on appeal. The examining attorney maintained the
refusal under Section 2(e)(1) and rejected applicant's
evidence of acquired distinctiveness as insufficient, but
offered to consider any further evidence of distinctiveness
applicant might later submit.2
Applicant then submitted a declaration from Carol
Cooper, the Publisher and Senior Vice President of
Martindale-Hubbell, a division of Reed Elsevier Inc., which
is licensed to use LAWYERS.COM by applicant. This

2 Applicant had submitted the declaration of its president and
results of certain searches of the Internet by its counsel. The
examining attorney suggested applicant submit information about
the type of and expenditures for advertising, samples of
Ser No. 75530795
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declaration provides specific figures regarding advertising
and sales, among other statements, and reports that
"Nielsen has conducted an independent survey chronicling
the consumer use of the mark." The declarant asserted that
relevant portions of the survey were attached to the
declaration, but they do not appear in the record.
Without mentioning the apparently missing survey
evidence, the examining attorney issued another office
action maintaining the refusal of registration under
Section 2(e)(1). The examining attorney asserted that
LAWYERS.COM is generic for the identified services and that
applicant's evidence of acquired distinctiveness was
therefore insufficient to overcome the refusal.
Applicant then amended the application to seek
registration on the Supplemental Register. Applicant also
amended the description of services to delete the word
"lawyers," so that the resulting identification was
"providing access to an online interactive database
featuring information exchange in the fields of law, legal
news, and legal services." (In a subsequent examiner's
amendment, the words "access to" also were deleted from the
identification.) Applicant explained that its amendment of

advertising, the level of sales of applicant's services, and
consumer or other statements of recognition.
Ser No. 75530795
5
the application to seek registration on the Supplemental
Register was made "[w]ithout waiving its right to argue" on
appeal against the examining attorney's refusal that
LAWYERS.COM is descriptive.
The examining attorney refused registration on the
Supplemental Register, referencing arguments and evidence
from the previous office action. In addition, the
examining attorney asserted that applicant's deletion of
the word "lawyers" from its identification of services was
a "transparent effort" to avoid Board precedent supporting
the refusal and that it was clear from reference to
applicant's specimens of use (reprints of numerous web
pages accessible through the LAWYERS.COM web site) "that
providing information about lawyers is one of the primary
purposes of the website."
Applicant responded by arguing that while a term may
be descriptive or generic for certain services, that does
not preclude its registration for other goods or services.
Also, applicant asserted that deletion of the term
"lawyers" from its identification was not, as the examining
attorney had contended, disingenuous, and applicant
explained that it "never argued that its services didn't
extend to providing information about lawyers, only that
the services now covered by the application don't cover
Ser No. 75530795
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such activity." In this response, applicant referenced its
earlier amendment of the application "to seek registration
on the Supplemental Register," stated that the application
"seeks registration of LAWYERS.COM on the Supplemental
Register," and concluded its remarks by stating "this
application is in condition for registration on the
Supplemental Register." Nowhere in the response does
applicant reference an alternative position that
LAWYERS.COM is registrable on the Principal Register, with
or without resort to Section 2(f).
The examining attorney then issued a final refusal to
register the mark on the Supplemental Register, on the
basis that applicant's mark is generic and incapable of
identifying the source of applicant's services. Applicant
filed a notice of appeal. The examining attorney and
applicant have filed briefs, and an oral hearing was held.
In its reply brief, applicant affirmatively states
that it "does not now dispute that LAWYERS.COM is
descriptive" in connection with its services, and notes
that it had submitted evidence under Section 2(f) and an
amendment to the Supplemental Register in acknowledgment of
the descriptiveness of the designation.3 While neither the

3 Pursuit of registration under Section 2(f) is a concession that
the proposed mark is not inherently distinctive. See Yamaha
Ser No. 75530795
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applicant nor the examining attorney has specifically
discussed applicant's proffer of evidence under Section
2(f), applicant concluded both its main brief and reply
brief by requesting that its proposed mark be allowed to
register "on the Supplemental Register or under Section
2(f)." We find that the question of registrability on a
claim of acquired distinctiveness has been preserved for
appeal. Accordingly, we must determine in the first
instance, whether LAWYERS.COM is generic or otherwise
incapable of designating source. In making such
determination, we have considered the entire record,
including the two declarations offered by applicant to show
acquired distinctiveness. If we hold the designation not
to be generic and instead capable of registration, then we
may specifically discuss the arguments and the quantity of
evidence of acquired distinctiveness.

International Corp. v. Hoshino Gakki Co., 840 F.2d 1571, 6 USPQ2d
1001, 1005 (Fed. Cir. 1988). A proposed amendment to seek
registration on the Supplemental Register, however, is not an
admission that the proposed mark has not acquired
distinctiveness. See 15 U.S.C. §1095. Thus, an applicant may
argue in the alternative that a non-distinctive designation has
acquired distinctiveness and is registrable on the Principal
Register or at least is capable of acquiring distinctiveness and
is registrable on the Supplemental Register. See Trademark
Manual of Examining Procedure §816.04 and Trademark Trial and
Appeal Board Manual of Procedure §1215.

Ser No. 75530795
8

The Record

The record on which we must decide the question of
whether the proposed mark is generic includes a dictionary
definition submitted by the examining attorney of "lawyer"
as "one whose profession is to conduct lawsuits for clients
or to advise as to legal rights and obligations in other
matters."4 The examining attorney also has included a
definition of "domain name," which explains that a "domain
name" is an Internet address "in alphabetic form," "must
have at least two parts," and "the part on the right …
identifies the highest subdomain, such as the country (fr
for France, uk for United Kingdom) or the type of
organization (com for commercial, edu for educational,
etc.)."5 In addition, the examining attorney submitted a
reprint of a web page showing the result of a search for
"com" on searchWebServices.com, which reads "On the
Internet, 'com' is one of the top-level domain names that
can be used when choosing a domain name. It generally

4 The definition appears on a reprint of a web page titled
Merriam-Webster Online Dictionary. The examining attorney, in
the office action that introduced this definition into the
record, referenced it as having been retrieved from
www.yourdictionary.com. Applicant did not object to the source
of the definition and, in its brief, stated that it "does not
dispute that this is one definition of the word lawyer."

5 From www.computeruser.com/resources/dictionary/definition.
Ser No. 75530795
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describes the entity owning the domain name as a commercial
organization." Finally, we take judicial notice of the
following definition of "TLD": “(Top-Level-Domain) The
highest level domain category in the Internet domain naming
system. There are two types: the generic top-level domains,
such as .com, .org, and .net….” McGraw Hill Computer
Desktop Encyclopedia 977 (9th ed. 2001) (emphasis added).
To gauge the likely significance of LAWYERS.COM to
prospective consumers or users of applicant's services, the
examining attorney relies on the numerous pages from
applicant's web site that applicant submitted as specimens.
The examining attorney also relies on reprints of various
web pages from other entities that the examining attorney
views as "evidence demonstrating that web sites devoted to
law, legal news, and legal services also provide
information about and/or databases of lawyers." (May 18,
2004 office action, the last action prior to this appeal)
Also in the record are reprints of web pages submitted
by the examining attorney to show use, by entities other
than applicant, of the following domain names:
www.massachusetts-lawyers.com ("Massachusetts-Lawyers.com
is a Service of the Law Offices of K. William Kyros, PC in
Boston, Massachusetts. The law firm helping [sic] lawyers
and their clients use the internet to find qualified legal
Ser No. 75530795
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counsel."); www.truckerlawyers.com ("Trucker Lawyers Legal
Services for Truckers Nation Wide"); www.new-jersey-
lawyers.com ("Our database covers the entire state of New
Jersey. Search to find a lawyer in your local area and to
suit your specific legal needs."); www.connecticut-
lawyers.com ("Connecticut-Lawyers.com is a service that
locates Connecticut Attorneys specific to your needs.");
www.lep-lawyers.com ("Welcome to the Web site of Levy,
Ehrlich & Petriello. This site is designed to provide
information about our firm and the services we offer. … The
information you obtain at this site is not, nor is it
intended to be, legal advice. You should consult an
attorney for individual advice regarding your own
situation."); collectionlawyers.com ("We have been
collection attorneys for over 20 years. Find out why our
clients return again and again."); www.medialawyer.com
("International Entertainment, Multimedia & Intellectual
Property Law and Business Network Sponsored by Harris
Tulchin & Associates"); and www.wrongfuldeath-lawyers.com
("Wrongful Death Lawyers is intended to provide up to date
references and resources for Wrongful Death Lawyers. The
links and resources are provided as a public service for
attorneys and consumers.").6

6 The examining attorney also submitted a reprint of a web site
Ser No. 75530795
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In essence, the examining attorney contends that these
domain names establish the need of competitors of applicant
to use a generic term, LAWYERS.COM, in their domain names
for their respective web sites.
As for the evidence applicant has submitted, there are
various submissions intended to establish acquired
distinctiveness of LAWYERS.COM, specifically, the two
previously-referenced declarations and certain results of
an internet search by counsel. In addition, applicant has
proffered information about various registered marks
"composed of terms that can be considered generic in some
contexts, but have still been allowed to register in
connection with a narrower description of goods." Brief,
p. 15. This evidence was obtained from the USPTO TARR
database7, which includes information about pending and
registered trademarks.

Analysis

When a proposed mark is refused registration as
generic, the examining attorney has the burden of proving

from www.personalinjurylawyers.com.au but, because the site
appears to aid those searching for personal injury lawyers
located in Australia, it is of little, if any, relevance to the
question of how United States Internet users would perceive the
designation LAWYERS.COM.

7 TARR stands for Trademark Applications and Registrations
Retrieval.
Ser No. 75530795
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genericness by "clear evidence" thereof. See In re Merrill
Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1143 (Fed. Cir. 1987); see also In re Gould
Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir.
1987). The critical issue to determine is whether the
record shows that members of the relevant public primarily
use or understand the term sought to be registered to refer
to the genus of goods or services in question. H. Marvin
Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782
F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); In re Women's
Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB 1992).
Making this determination “involves a two-step inquiry:
First, what is the genus of goods or services at issue?
Second, is the term sought to be registered ... understood
by the relevant public primarily to refer to that genus of
goods or services?” Ginn, supra, 228 USPQ at 530.
Evidence of the public’s understanding of a term may be
obtained from any competent source, including testimony,
surveys, dictionaries, trade journals, newspapers and other
publications. See Merrill Lynch, supra, 4 USPQ2d at 1143
(Fed. Cir. 1987), and In re Northland Aluminum Products,
Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).

Ser No. 75530795
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1. The Genus of Services

As for the genus of services involved in this appeal,
the examining attorney focuses on applicant's
identification of services but argues that "providing
information about law, legal news and legal services
includes providing information about lawyers. Accordingly,
the genus of services at issue includes providing
information about lawyers." Brief, p. 6. Applicant, on
the other hand, focuses less on the identification and
asserts, "the genus for its services may be more accurately
described as 'interactive database services focusing on a
variety of types of law-related information.'" Brief, p.
6. Neither is quite right, for neither acknowledges the
"online" nature of the identified services8, and applicant's
focus on only "law-related information" does not adequately
account for the identified information services related to
legal services.
In the Magic Wand case, the Federal Circuit stated, “a
proper genericness inquiry focuses on the description of
services set forth in the [application or] certificate of

8 We take judicial notice of the following definition of
"online": "…(2) Said of a person who is actively communicating
over a network. 'Online' in this sense means your computer is
connected to a network host or service and you can participate in
Internet activities such as discussion groups or interactive talk
sessions." net.speak the internet dictionary p. 138 (1994).

Ser No. 75530795
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registration.” Magic Wand Inc. v. RDB Inc., 940 F.2d 638,
19 USPQ2d 1551, 1552 (Fed. Cir. 1991). Applicant also
reminds us of the Allen Electric case, in which the Court
of Customs and Patent Appeals stated that "trademark cases
must be decided on the basis of the identification of goods
as set forth in the application." In re Allen Electric and
Equipment Co., 458 F.2d 1404, 173 USPQ 689, 690 (CCPA
1972). Finally, applicant also reminds us of two Board
cases that focus on the significance of written
identifications: In re Vehicle Information Network Inc.,
32 USPQ2d 1542, 1544 (TTAB 1994) ("the question of
registrability must be determined … on the basis of the
goods or services as set forth in the application") and In
re Datatime Corporation, 203 USPQ 878, 879 (TTAB 1979) ("it
is the goods as set forth in the application papers that
are determinative of the issue").
The Magic Wand case involved a petition to cancel the
mark TOUCHLESS, on the ground that it was generic for
services identified as "automobile washing services." The
petitioner in that case attempted to focus on a "relevant
public" unwarranted by the description of services,
specifically, "operators and manufacturers of car wash
equipment," rather than purchasers of automobile washing
services. Thus, the Federal Circuit's statement that "a
Ser No. 75530795
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proper genericness inquiry focuses on the description of
services set forth in the certificate of registration" must
be read in that context, i.e., as an explanation of the
error in petitioner's attempt to have the Board and, later,
the Federal Circuit focus on a relevant public not
warranted by the description of services. Further, the
quoted reference from the Magic Wand case is preceded by
the Federal Circuit's observation that "[t]he description
in the registration certificate identifies the services in
connection with which the registrant uses the mark." Magic
Wand, 19 USPQ2d at 1552. The Federal Circuit also
observed, "According to the registration, the mark
TOUCHLESS is used in connection with automobile washing
services." Id. (emphasis added). Thus, it is clear that
the analytical focus on the description of services is
based on the premise that the description reflects actual
conditions of use of a mark. See also, In re American
Fertility Society, 188 F3d 1341, 51 USPQ2d 1832, 1836 (Fed.
Cir. 1999) ("The PTO must prove: (1) what the genus of the
services the Society provides is…."), and In re Web
Communications, 49 USPQ2d 1478, 1479 (TTAB 1998) ("We agree
with applicant that its services in the broadest sense
would be considered 'consulting services.' But there are
many varieties of consulting services and each would
Ser No. 75530795
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necessarily be further identified as to the particular
subject or focus of the services being offered. Here
applicant has described a major focus of its services in
the specimens of record as 'publication and communication
via the World Wide Web….' Applicant's services enable its
customers to achieve this communication by assisting them
in setting up their own Web sites.") (emphasis added).
We do not view any of the other three decisions on
which applicant relies as stating precepts that run counter
to the premise that an identification is rooted in the
reality of use. Again, those decisions must be read in
context.
In both Allen Electric and Datatime, each applicant
was arguing that its goods were of a more specific type
than would be apparent from the identification. As the
Board explained in Datatime, because Section 7(b) of the
Lanham Act bestows upon the owner of a registration the
presumption of use of a mark for all goods or services
identified in a registration, the question of
registrability must be determined by considering any goods
or services falling within the literal scope of an
identification, and not merely the particular goods or
services an applicant may be marketing at the time when
registrability is determined. These decisions do not run
Ser No. 75530795
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counter to the presumption that an identification of goods
or services is rooted in the reality of use but, rather,
explain that the presumption extends to all goods or
services encompassed by an identification.
In the Vehicle Information case, the applicant was
essentially arguing that the relevant public would perceive
its services as somewhat different from what they actually
were, given the likely connotation of its mark for that
public. The Board then focused on the identification in
its discussion of possible meanings consumers might find in
the mark. This is nothing more than an example of the
well-settled rule that likely perception of a mark is not
evaluated as an abstract matter but in connection with the
identified goods or services.
In accordance with this analytical framework, while we
consider applicant's identification as largely defining the
genus of services involved in this case, we do so on the
premise that the identification is a required element of an
application precisely because it is expected to identify
the goods or services in connection with which an applicant
uses its mark and for which it therefore seeks registration
of the mark. We also note that in the recent
Steelbuilding.com decision, which involved a genericness
refusal, the Federal Circuit began its analysis of the
Ser No. 75530795
18
genus by focusing on applicant’s amended recitation of
services [“computerized on-line retail services in the
field of pre-engineered metal buildings and roofing
systems”], but interpreted the meaning of "computerized on-
line retail services" in light of the actual use being made
by the applicant on its web site. See In re
Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1422
(Fed. Cir. 2005):
The applicant defined its goods and
services, in its amended application, as
“computerized on-line retail services in the
field of pre-engineered metal buildings and
roofing systems.” Although the definitions
of the applicant and of the Board appear
nearly identical, the parties understand the
phrase “computerized on-line retail
services” differently. Applicant sells
steel buildings on line, but the record
indicates it provides services beyond mere
sales.

Id. at 1422.
In the case at hand, we have interpreted the nature of
applicant's "online interactive database featuring
information exchange in the fields of law, legal news and
legal services" in light of what the record shows the
database to include and, therefore, what type of
information about "law, legal news and legal services" is
exchanged between applicant and consumers or users of its
website.
Ser No. 75530795
19
As noted earlier, the specimens of use which applicant
submitted are copies of web pages from its web site.9 The
first such page appears to be applicant's "home" page
[www.lawyers.com/site/default] and bears at the top the
exhortation "Locate a Lawyer with lawyers.com!" The
headline for the page portrays, in large print,
"lawyers.com" and adjacent thereto, in smaller print, "Your
connection to legal information & resources." Lower on the
page are links to other web pages, titled, respectively,
"About The Law," "Ask A Lawyer," "Hiring A Lawyer" and "Law
Today."
The "About The Law" page presents a list of areas of
law that the viewer can click on to view "informative
articles about the most common consumer areas of law, as
well as background on the judicial system, important laws
and cases, and the U.S. Constitution." The page also
explains to the viewer "After a quick review of the
[selected] article, you'll be better prepared to choose a
lawyer by searching our database."
The "Ask A Lawyer" page explains "This area of
lawyers.com is designed to provide you with a unique forum
in which to ask general questions of our hosting

9 We note, too, that the Cooper declaration, in paragraph 3,
attests to use of "LAWYERS.COM in commerce in connection with an
Ser No. 75530795
20
attorneys." The page also explains that the hosting
attorneys are practicing lawyers that maintain listings in
the Martindale-Hubbell Law Directory, that the information
provided through the page is for educational purposes, and
that the viewer in need of specific legal advice "should
obtain the services of a qualified attorney such as those
listed in the Law Directory."
The "Hiring A Lawyer" page contains information on
such topics as "Do I Really Need an Attorney?" "Thinking
Things Through," "Starting the Process," "Evaluating Your
Candidates," "What Will it Cost?" "Your Attorney's
Responsibilities to You, the Client," "When Things Don't Go
As You Expected," and "Legal Resources."
Finally, the "Law Today" page contains links to
specific articles defining areas of the law, to cases in
the news or famous cases, and to legal headlines.
We agree with the examining attorney's conclusion that
the specimen web pages applicant submitted demonstrate
"that applicant's information about the law includes
providing information about lawyers and, in fact, is
offered for the express purpose of assisting the individual
in selecting a lawyer." Brief, p. 4; emphasis added. The

'online interactive database featuring information exchange in
the fields of law, lawyers, legal news, and legal services.'"
Ser No. 75530795
21
examining attorney argues, too, that providing information
about legal news or legal services, particularly as
demonstrated by applicant's web site, involves providing
information about lawyers.
Applicant argues, however, that its deletion of the
word "lawyers" from its identification of services "limited
its covered services" by excising "online services relating
to information exchange in the field of 'lawyers.'" Brief,
p. 3. In addition, applicant argues that it "is not
seeking federal registration of its mark in connection with
all of the different types of content or services available
on Applicant's web site" and its mark "is capable of
distinguishing its narrower description of services."
Under the circumstances we find the genus of services
to be providing a web site10 with a database of information
covering the identified topics of law, legal news and legal
services and that a central and inextricably intertwined
element of that genus is information about lawyers and
information from lawyers.
2. What Will the Relevant Public Understand?

The next question is: who are the members of the
relevant public for such services, and what will they

10 The phrase "online interactive database" in the identification
is an apt synonym for "web site."
Ser No. 75530795
22
understand when confronted with LAWYERS.COM? We conclude
that members of the relevant public include lawyers who may
be seeking legal information or who may be seeking other
lawyers to whom they may refer clients. The relevant
public also includes laypersons that may be seeking legal
information, legal representation, or referrals.
As noted earlier, the examining attorney has made of
record a dictionary definition of "lawyer" that applicant
concedes is accurate as one definition of the word. In
addition, the examining attorney has put into the record
reprints of numerous web pages from web sites that include
information on the law, the nature of legal services and
information about obtaining a lawyer. These include many
of the previously-referenced web sites that utilize
"lawyers.com" in their web site domain names, and the web
site thelaw.com.
The relevant public, including both lawyers and non-
lawyers, when they consider LAWYERS.COM in conjunction with
the class of involved services, would readily understand
the term to identify a commercial web site providing access
to and information about lawyers. Some members of the
relevant public would think of a web site that would
provide information about lawyers, including their
specialties, contact information, and the like, which is
Ser No. 75530795
23
part of what applicant's web site does. It is also likely
that some members of the relevant public would think of a
web site that allows site visitors to actually contact
other lawyers, as exemplified by applicant's "Ask a Lawyer"
web page.
A lawyer member of the relevant public might
understand, better than a non-lawyer, that the web site
would have limitations, for example, that it would include
disclaimers and would not present information from lawyers
accessible via the site as "legal advice." This, however,
does not alter the likelihood that either type of member of
the relevant public would think of the web site in the ways
we have discussed.
In addition, the likelihood that some members of the
relevant public would think of a web site providing online
access to lawyers while others might think of a web site
providing online information about lawyers does not render
LAWYERS.COM non-generic. Either understanding of the term
would be generic and the fact that a term may have two
generic meanings when considered in connection with a
particular class of services does not mean it is not
generic. Compare Steelbuilding.com, supra, 75 USPQ2d at
1422-23 (the Federal Circuit found neither of two possible
meanings for the mark STEELBUILDING.COM to be generic) with
Ser No. 75530795
24
Abercrombie & Fitch Company v. Hunting World, Inc., 537 F.
2d 4, 189 USPQ 759, 766 (2d Cir. 1976) (stating "a word may
have more than one generic use," the Second Circuit found
"safari" to be generic in multiple contexts, although not
in all contexts). See also Northland Aluminum, supra (the
Federal Circuit found BUNDT generic for cakes and cake
mixes); and Gear Inc. v. L.A. Gear California Inc., 670
F.Supp. 508, 4 USPQ2d 1192, 1197 (S.D.N.Y. 1987) ("A word
may have more than one generic use, and it is protected in
each of its generic uses from appropriation by any one
merchant."), vacated in part, dismissed, 13 USPQ2d 1655
(S.D.N.Y. 1989) (disposition of some claims by summary
judgment vacated by a settlement agreement of the parties
and all claims dismissed).
Applicant has argued that a term that "may be
considered descriptive or generic for some goods or
services may still function as a mark in connection with
other goods or services or to other markets" and that it
"is not seeking to register its mark LAWYERS.COM for
selling lawyers or offering the services of lawyers, but
for the more limited services now covered by its
application." Brief, pp. 8 and 15, respectively.
Reference to the decision of In re Seats, Inc., 757 F.2d
274, 225 USPQ 364 (Fed. Cir. 1985), is helpful in assessing
Ser No. 75530795
25
this argument. That case involved an application to
register SEATS as a mark for "ticket reservation and
issuing services for various events by means of a
computer," and the Federal Circuit stated: "The term
'seats' may be generic in relation to chairs or couches or
bleachers. It is clearly not generic to reservation
services. Contrary to the Board's statements, Seats is not
selling seats, as would for example a furniture merchant,
but is selling a reservation service…." Id. at 367-68.
Just as Seats, Inc. was not selling seats, applicant here
is not selling lawyers,11 but it is there that the
similarity ends. Though the Federal Circuit noted the
Board's concern with "a need of others to use SEATS in
describing the present services," there is no indication in
the Seats decision that the Board actually had before it
evidence of use of the term by other purveyors of ticket
reservation and issuance services. In contrast, the record
in this case evidences use of "lawyers.com" as part of the
domain names of numerous hosts of web sites; and those web
sites provide information to lawyers and laypersons that is
the same as or very similar to that provided by applicant's

11 The record does not reveal whether applicant is actually
"selling" anything, i.e., charging visitors to its web site.
Thus, the revenue figures reported in the Cooper declaration are
without context and the declarant does tie the figures to
particular services or activities of applicant.
Ser No. 75530795
26
web site. In short, this case does not involve a perceived
need for others to use a term, but involves a demonstrated
use of the term by others. The relevant public will,
therefore, perceive use of "lawyers.com" as indicating a
web site (an "online interactive database featuring
information exchange") focused on lawyers, legal services,
and the areas of the law in which lawyers practice or
render their services.
Applicant argues that its web site is different from
the sites of others that also employ the term "lawyers.com"
in their domain names. Specifically, applicant argues that
the other names and web sites are different, because the
other names add more specific terms to "lawyers.com" and
thus more immediately reveal the nature of the sites, as
well as because the lawyer "search or directory feature" of
applicant's site is not the site's "primary function, or
even the most prominent feature." Brief, p. 7.
Insofar as the first of these two arguments implies
that LAWYERS.COM cannot be generic for applicant's site
because it is more general and vague compared to such names
as truckerlawyers.com and massachusetts-lawyers.com, we do
not find the argument persuasive. The name for applicant's
site is simply broad in scope, and the content of its web
site appears to match that breadth. As for applicant's
Ser No. 75530795
27
argument that its lawyer search or directory feature is not
a primary or prominent feature of its web site, we note the
exhortation "Locate a Lawyer with lawyers.com!" on
applicant's main web page; and even linked pages, such as
its "About the Law" page, explains "After a quick review of
the [selected] article, you'll be better prepared to choose
a lawyer by searching our database." In short, we agree
with the examining attorney that applicant's web site is
all about the law, obtaining information on the law from
lawyers, and finding lawyers that can help one with a legal
problem.
Another argument advanced by applicant is that its
LAWYERS.COM name is no less distinctive than many "arguably
generic terms" that the USPTO has approved for registration
on the Principal or Supplemental Registers. In support of
this argument, applicant relies on TARR printouts of
information on various registrations, many of which are
".com" marks. There can be no doubt, however, that "the
Board … must assess each mark on the record of public
perception submitted with the application." In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001). Accordingly, there is "little persuasive value
in the registrations" applicant has submitted. Id. See
also, In re First Draft, Inc., 76 USPQ2d 1183 (TTAB 2005)
Ser No. 75530795
28
(even when the applicant submitted copies of entire files
from other registrations, the Board did not find the
evidence persuasive).
The final argument applicant advances in its main
brief is that under the Federal Circuit's Oppedahl
decision, In re Oppedahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370 (Fed. Cir. 2004), the ".COM" portion of
LAWYERS.COM can only be considered descriptive, not
generic. By implication, then, applicant is arguing that
LAWYERS.COM cannot be generic if any portion of it is not.
As the Board noted in its decision in the Eddie Z's
case, In re Eddie Z's Blinds and Drapery Inc., 74 USPQ2d
1037 (TTAB 2005), we are cognizant of the Federal Circuit's
ruling in Oppedahl, which cautions that while the "addition
of a TLD such as '.com' or '.org' to an otherwise
unregistrable mark will typically not add any source-
identifying significance," this "is not a bright-line, per
se rule" and that "exceptional circumstances" might yield a
different result. Oppedahl, 71 USPQ2d 1374. As the Board
also noted in Eddie Z's, it does not view Oppedahl as
creating a per se rule that addition of a TLD to an
unregistrable term always results in at least a potential
mark, i.e., a non-generic compound and, instead, views the
Oppedahl decision as leaving the door open for registration
Ser No. 75530795
29
of combinations of unregistrable terms and TLDs in the
exceptional circumstances whereby the combination results
in a whole greater than the sum of its parts. Eddie Z's,
74 USPQ2d at 1042. While the Federal Circuit determined in
the Steelbuilding.com case that STEELBUILDING.COM had a
non-generic meaning and was therefore registrable, we do
not find the designation now before us to present such
exceptional circumstances.
Because we find LAWYERS.COM generic, we do not address
applicant's arguments that the designation is merely
descriptive and that there is sufficient acquired
distinctiveness to allow registration under Section 2(f).
Decision: The refusal of registration on the ground
of genericness is affirmed.