Russo & Hale LLP

Trademark Trial and Appeal Board

Feb 6, 2003

No. 76100804 (T.T.A.B. Feb. 6, 2003)

Paper No. 11
TJQ
Mailed: 2/6/03
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Russo & Hale LLP
________
Serial No. 76/100,804
_______
Susan B. Horwitz of Russo & Hale for applicant.
Tarah K. Hardy Ludlow, Trademark Examining Attorney, Law
Office 110 (Chris A.F. Pedersen, Managing Attorney).
_______
Before Quinn, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Russo & Hale LLP to
register the designation COMPUTERLAW.COM for “legal
services.”1 Applicant asserts that the mark it seeks to
register is inherently distinctive but, in the alternative,
claims, pursuant to Section 2(f) of the Trademark Act, that
the designation COMPUTERLAW.COM has acquired
1 Application Serial No. 76/100,804, filed July 21, 2000,
asserting dates of first use anywhere and first use in commerce
of November 15, 1995.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76/100,804
2
distinctiveness.
The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Act on the ground
that the designation sought to be registered is generic
and, thus, unregistrable.2 In the event that the
designation is found to be not generic but, rather, merely
descriptive, the Examining Attorney also has refused
registration on the Principal Register due to the
insufficiency of the evidence supporting the claim of
acquired distinctiveness.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs. An oral
hearing was not requested.
The Examining Attorney maintains that the designation
COMPUTERLAW.COM, when used in connection with legal
services, is generic because it comprises the generic term
“computer law” 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 excerpts from third-party
Internet websites and excerpts from articles retrieved from
2 The final refusal mistakenly cites to Section 23 of the Act.
In her appeal brief, however, the Examining Attorney corrected
this earlier misstatement.
Ser No. 76/100,804
3
the NEXIS database, all showing uses of the term “computer
law” as a specific area of practice in the legal
profession.
Applicant argues that its designation is inherently
distinctive and is, at worst, just suggestive of “the way
it offers its services as well as its connectivity and
‘wired’ relationship to emerging technologies, and as such
the mark is suggestive of a certain genre of legal
services.” According to applicant, the designation
COMPUTERLAW.COM is not the name of a type of legal
services, but that the designation sends “a clear message
to the public that Applicant’s firm is connected to the
Internet, that it offers services using modern
communication methods, that the firm is accessible, and
that it offers services that are technically advanced.”
Even in the event that the designation is found to be
merely descriptive, applicant contends, it has acquired
distinctiveness. Applicant asserts that the designation
COMPUTERLAW.COM is a coined term, and that it was first
used by applicant in 1995 before the “Internet boom.”
Prospective purchasers can access applicant’s webpage at
www.computerlaw.com to gain information about applicant’s
practice and legal news in the area of computer law. In
support of its position, applicant introduced a copy of its
Ser No. 76/100,804
4
California state trademark registration for the designation
sought to be registered herein and excerpts from its
website on the Internet. With respect to acquired
distinctiveness, applicant relies upon its use of
COMPUTERLAW.COM since November 15, 1995 on its website and
in all of its advertising and promotional materials.
Applicant states that “[a]ll e-mail communications between
applicant and existing clients and potential clients are
conducted via [its] mark.” Applicant also submitted copies
of third-party registrations which show, according to
applicant, inconsistent treatment by the Office regarding
registrability of similar designations.3
Generic terms are 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
3 Certain registrations were made of record during the
prosecution of the application. Other registrations were
submitted for the first time with the brief (some were submitted
in the form of certified copies of the registrations, and others
are printouts from the TESS database), and applicant has
requested that the Board take judicial notice of them. Third-
party registrations are not proper subject matter for judicial
notice. TBMP §712. Further, the submission is untimely.
Trademark Rule 2.142(d). We note, however, that the Examining
Attorney did not object to the untimely submission and,
therefore, we have elected to consider the evidence in reaching
our decision.
Ser No. 76/100,804
5
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 legal services, more specifically, legal services
pertaining to the area of computer law. Applicant’s
specimen, a printout of its Internet webpage, shows that
the law firm specializes in “computer software cases” and
that the firm “has a networked office system, electronic
mail facilities both internally and externally for clients,
Ser No. 76/100,804
6
as well as multiple networked IBM PC-based, NEXT, and Apple
Macintosh-based computer systems.”
We find that the record establishes that the term
“computer law” is the name or type of a particular or
specialized area of practice, and one in which applicant
clearly is involved. In this connection, we note that
applicant recognizes that “the legal industry uses the term
‘computer law’ to define a certain type of law.” (brief,
p. 5) The record is replete with generic uses of the term
“computer law” as a name for a specialized area of the law,
much in the same way that “administrative law” or “domestic
relations law” is used. Examples of such uses in the NEXIS
articles are as follows:
Computer law is going to be the big
issue of the future...
(The Florida Times-Union, April 11,
2001)
One is Mark Grossman, an attorney with
Becker & Poliakoff who specializes in
technology and computer law in Miami.
(The Record, April 9, 2001)
Victoria M. Brown, an Englewood lawyer,
will present a talk on “Computer Law:
Legal Problems and Pitfalls of Having a
Web Site Developed and Launched.”
(The New York Times, March 11, 2001)
March 1-2, 2001. 21st Annual Institute
on Computer Law
(The National Law Journal, February 26,
2001)
Ser No. 76/100,804
7
Mr. Hassett has over twelve years of
experience in technology, licensing,
computer law, trademark and commercial
law.
(The Metropolitan Corporate Counsel,
April 2001)
The Internet websites show similar uses. The front page of
the New Jersey Law Network (www.njlawnet.com) lists several
“Legal Topics” such as “Administrative Law,” “Tax Law,”
“Intellectual Property,” “Criminal Law,” and “Computer
Law.” The website of www.law.freeadvice.com includes a
topic titled “Computer Law.”
The second step of the Ginn inquiry is whether the
relevant public understands the term COMPUTERLAW.COM to
refer to the category of legal services at issue. Here, we
find that the term is so understood. As cited above, the
evidence clearly establishes that the term “computer law”
identifies a particular area of legal practice. This is
exactly the area of the law in which applicant specializes.
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
Ser No. 76/100,804
8
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].
In the present case, the recitation of services is
broadly stated as “legal services,” and the services
clearly encompass such services in the area of computer
law. And, if applicant’s designation COMPUTERLAW.COM is
generic as to part of the services applicant offers under
its designation, the designation 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].
Ser No. 76/100,804
9
In analyzing the issue, we have taken judicial notice
of various dictionary definitions of “.com.” 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)[dictionary definitions
are proper subject matter for judicial notice]. 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 issue presently before us was addressed by the
Board in two recent decisions. See: In re
CyberFinancial.Net, Inc., ___USPQ2d___ (TTAB August 28,
2002)(application Serial No. 75/482,561)[BONDS.COM is
generic for providing information regarding financial
products and services on the Internet and providing
electronic commerce services on the Internet]; and In re
Martin Container, Inc., 65 USPQ2d 1058 (TTAB
2002)[CONTAINER.COM is generic for retail services offered
on the Internet featuring metal shipping containers].
Ser No. 76/100,804
10
The same result must be reached herein. We recognize
that applicant is seeking to register COMPUTERLAW.COM
rather than COMPUTER LAW.COM. However, the genericness of
“computer law” is not negated by compressing the two words
into the single compound term COMPUTERLAW since there is no
change in commercial impression from COMPUTER LAW. See:
In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed.
Cir. 1987); and In re A La Vieille Russie Inc., supra.
Applicant seeks to register the generic term “computerlaw,”
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. See: Brookfield Communications,
Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 50
USPQ2d 1545, 1558 (9th Cir. 1999); and 555.1212.com Inc. v.
Communication House International Inc., 157 F.Supp2d 1084,
59 USPQ2d 1453, 1458 (N.D. Cal. 2001). See also: 1 J.
McCarthy, McCarthy on Trademarks and Unfair Competition,
7:17.1 at pp. 7-28.1 to 7-29 (4th ed. 2002). Simply put,
COMPUTERLAW.COM signifies to the public that the user of
the designation is a commercial entity (in this case, a law
firm) that specializes in computer law. The fact that
applicant’s services may not technically be rendered by way
Ser No. 76/100,804
11
of the Internet, but rather are only offered for sale on
the Internet, is of no consequence.
Given the commonly understood meaning of “.com,” the
involved designation is no different than if applicant were
attempting to register COMPUTERLAW FIRM, COMPUTERLAW CO. or
COMPUTERLAW LLP. Just as these three designations would be
generic for legal services relating to computer law,
competitors should be allowed to freely use such
designations as JONES COMPUTERLAW FIRM to identify and
distinguish their services. In the same manner, a
designation such as COMPUTERLAW.COM should be freely
available for others to adopt so that designations such as
JONESCOMPUTERLAW.COM or SMITHCOMPUTERLAW.COM could be used
by competitors to identify and distinguish their legal
services from others in the field. See also: Trademark
Manual of Examining Procedure, §§ 1209.03(m) and 1215.05
(3rd ed. 2002). Simply put, a designation such as
COMPUTERLAW.COM should be freely available for others to
use in connection with their legal services in this
specialized area of the law.
The existence of third-party registrations of similar
marks does not compel a different result in this appeal.
While uniform treatment under the Trademark Act is an
administrative goal, our task in this appeal is to
Ser No. 76/100,804
12
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 actions of
Examining Attorneys. 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.”].
Even if we had not found the designation
COMPUTERLAW.COM to be generic, we nevertheless would find
that the designation is merely descriptive. The
designation sought to be registered immediately conveys the
impression that applicant’s legal services involve computer
law. The evidence of record clearly shows that the term
“computer law” has a specific and commonly understood
meaning when it is used in connection with services of the
type rendered by applicant.
In finding that the designation COMPUTERLAW.COM is
generic for applicant’s legal services, we have considered,
of course, all of the evidence touching on the public
Ser No. 76/100,804
13
perception of this designation, including the evidence of
acquired distinctiveness. As to acquired distinctiveness,
applicant has the burden to establish a prima facie case of
acquired distinctiveness. Yamaha International Corp. v.
Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006
(Fed. Cir. 1988).
In support of its claim of acquired distinctiveness,
applicant submitted the declaration of its managing
partner, Jack Russo, who attests that applicant has used
the designation COMPUTERLAW.COM since November 15, 1995.
Applicant also has submitted its California state trademark
registration for COMPUTERLAW.COM, and excerpts from its
webpage on the Internet.
The Section 2(f) claim, which essentially consists of
an allegation of slightly less than five years use prior to
the filing date of the application, falls far short due to
insufficient evidence. The record is completely devoid of
any evidence that purchasers and prospective purchasers
view COMPUTERLAW.COM as a distinctive source indicator for
applicant’s services.
Accordingly, even if the designation COMPUTERLAW.COM
were found to be not generic, but merely descriptive, given
the highly descriptive nature of the designation
COMPUTERLAW.COM we would need to see a great deal more
Ser No. 76/100,804
14
evidence (especially in the form of direct evidence from
customers) than what applicant has submitted in order to
find that the designation has become distinctive of
applicant’s services. That is to say, the greater the
degree of descriptiveness, the greater the evidentiary
burden on the user to establish acquired distinctiveness.
Yamaha Int’l. Corp. v. Hoshino Gakki Co., supra; and In re
Merrill Lynch, Pierce, Fenner & Smith, Inc., supra.
The designation COMPUTERLAW.COM is generic and does
not function as a service mark to distinguish applicant’s
legal services from those of others and serve as an
indication of origin. The term sought to be registered
should not be subject to exclusive appropriation, but
rather should remain free for others in the industry to use
in connection with their similar services. In re Boston
Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir.
1999).
Decision: The refusal to register is affirmed.