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In re

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Citation Edit

In re, 415 F.3d 1293, 1297, 75 U.S.P.Q.2d (BNA) 1420 (Fed. Cir. 2005) (full-text)

Factual Background Edit

The applicant filed an intent-to-use trademark application under 15 U.S.C. §1051(b)(1) to register the mark as a service mark. In its original application, the applicant stated that it intended to use the mark in connection with the sale of pre-engineered metal buildings and roofing systems.

Trademark Trial and Appeal Board Proceedings Edit

The U.S. Patent and Trademark Office (PTO) denied registration on the ground that the proposed mark was merely descriptive. Applicant then amended its application and requested reconsideration. In the amendment, the applicant changed the identification of its services to “computerized on-line retail services in the field of pre-engineered metal buildings and roofing system.”

Applicant also filed an allegation of use under 15 U.S.C. §1051(c), submitted samples of advertising that described the interactive design and purchase capabilities of its service, and submitted evidence of acquired distinctiveness. The examiner again refused registration, this time finding that the mark was generic for the specified goods and services without any acquired distinctiveness under 15 U.S.C. §1052(f).

The Trademark Trial and Appeal Board affirmed the PTO’s rejection on the ground that is generic for a website that provides computerized on-line retail services in the field of pre-engineered metal buildings including steel buildings. The Board also found that if the terms “steel building” and “.com” were not generic, they were at least highly descriptive. The Board noted that the addition of the term “.com”, a top level domain indicator, was without source-identifying significance. Finally, the Board found applicant’s evidence inadequate to show acquired distinctiveness.

Appellate Court Proceedings Edit

The appellate court found that the Board did not correctly describe the genus of goods and services offered by the applicant. Even using the Board’s understanding of the genus, the record did not support a finding that “” was generic. On the other hand, the record sufficed to show that the proposed mark was merely descriptive. The court also agrees that the applicant did not meet its high burden of showing acquisition of secondary meaning. Thus, the court affirmed the decision of the Board, but only on grounds of absence of distinctiveness.

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