The U.S. Court of Appeals for the Federal Circuit has provided guidance for identifying the rare circumstances when the addition of a "top-level domain" (TLD) indicator, such as ".com" or ".net," can impact the distinctive nature of a trademark and has further refined the analysis of the genus of an applicant’s goods and services. In re Steelbuilding.com, Case No. 04-1447 (Fed. Cir. July 22, 2005) (Rader, J.).
Steelbuilding.com filed an application to register its STEELBUILDING.COM service mark for use in connection with the "sale of pre-engineered metal buildings and roofing systems." The examining attorney initially refused to register the mark based on descriptiveness. In response, the applicant revised the specification of services to "computerized on-line retail services in the field of pre-engineered metal buildings and roofing systems" and submitted evidence of use of the mark along with evidence the mark had acquired distinctiveness through the applicant’s use. The examining attorney again refused registration, this time claiming the mark was generic and ineligible for registration based on acquired distinctiveness. On appeal, the U.S. Trademark Trial and Appeal Board affirmed the examining attorney’s refusal to register the mark, holding that STEELBUILDING.COM was either generic or highly descriptive, that use of the ".com" term did not provide source-identifying significance and that the applicant did not provide sufficient evidence to show acquired distinctiveness.
The Federal Circuit agreed the STEELBUILDING.COM mark was not eligible for registration on the Principal Register but held the mark was merely descriptive of the services specified in the application, rather than generic. In particular, the Federal Circuit criticized the Board for narrowly construing the genus of the applicant’s services and discounting the ambiguities and multiple meanings in the mark. Finally, the Federal Circuit also held the Board erroneously dismissed the addition of the TLD indicator, despite its expansion of the meaning of "STEELBUILDING.COM."
The addition of a TLD indicator, such as ".com," to a descriptive term can create a distinctive mark "only in rare instances," according to the Federal Circuit. Here, in what the Federal Circuit considers an "unusual case," use of ".com" in the mark "expanded the meaning of the mark to include goods and services beyond the mere sale of steel buildings. Specifically, the TLD expanded the mark to include internet services that include ‘building’ or designing steel structures on the web site and then calculating an appropriate price before order the unique structure." Therefore, the Federal Circuit concluded STEELBUILDING.COM is not generic because "steelbuilding" did not define the genus of the applicant’s services, namely, "the building of steel structures," and because the ".com" in STEELBUILDING.COM "describes a significant feature of applicant’s services, namely, the internet commerce connection."
Practice Note: Do not discount the TLD indicators that appear in your trademarks. In rare cases, a TLD indicator may expand the meaning of the mark enough to overcome a refusal to register based on the arguably generic nature of the mark.
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