Addition of '.com' suffix does not overcome genericness

In In re Eddie Z's Blinds and Drapery Inc, the US Patent and Trademark Office's (USPTO) Trademark Trial and Appeal Board (TTAB) has affirmed a decision that BLINDSANDDRAPERY.COM is generic as used in connection with the distribution and retail sale of "blinds, draperies and other wall coverings" in Class 35 of the Nice Classification.

The USPTO examiner not only issued a final refusal to register Eddie Z's Blinds and Drapery Inc's proposed BLINDSANDDRAPERY.COM mark on descriptiveness grounds but also stated that "in an advisory context" the term might be generic. Eddie Z filed a notice of appeal, an amendment to allege use and amended the application to the supplemental register. The examiner also refused registration on the supplemental register on the basis that the proposed mark is generic when used with the services identified. The TTAB was eventually asked to determine whether BLINDSANDDRAPERY.COM was entitled to supplemental registration.

The TTAB observed that the examiner bears the burden of proving genericness by "clear evidence" and that this is a two step process: the examiner must determine (i) what genus of goods or services is involved, and (ii) whether the term sought to be registered is understood by the relevant public primarily to refer to that genus.

The TTAB noted that competent evidence on these issues could be obtained from testimony, surveys, dictionaries, trade journals, newspapers and other publications. Here, the record consisted of dictionary definitions of 'blinds' and 'drapery', a definition of '.com' at '' and third-party registrations that included disclaimers of these two words. Some two-and-a-half pages of excerpts from Nexis and reprints of pages from the Internet appear in the opinion. This evidence was considered probative to establish that "blinds and drapery" is the designation for a class of products and is the term used by businesspersons to indicate that they make or sell such goods.

Eddie Z argued that the case was similar to that involving issuance of a supplemental registration for 1-888-M-A-T-R-E-S-S in In re Dial A Mattress Operating Corp. It drew a parallel between its addition of the '.com' top-level domain (TLD) to the generic 'blinds and drapery', and the addition of '1-888' to the generic 'matress'. The TTAB, observing that compound words may be refused as generic where the definition of each component element of the compound word shows genericness, stated: "Generic terms coupled with a TLD are considered compound words." It distinguished the mattress case, noting that the Federal Circuit had found that (i) '1-888' is not a word, and (ii) overall 1-888-M-A-T-R-E-S-S was more of a phrase as opposed to a compound word. The TTAB also distinguished 1-888-M-A-T-R-E-S-S because that was a mnemonic representing a unique 10-digit number that can be used only by a single entity. In contrast, the TTAB opined that a blinds and drapery business should not be precluded from combining its name with the generic '', thereby creating a different domain name from Eddie Z. Finally, the TTAB noted that the mere fact that other generic terms may exist for wholesale distributors and retailers of blinds and drapery does not make a generic term any less generic.

The TTAB also referenced the ruling in In re Oppedahl & Larson LLP, which contained language to the effect that "while 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 (see PATENTS.COM not registrable as a trademark, court rules). The TTAB held that the possibility of "exceptional circumstances" did not, of course, create a per se rule that addition of a TLD to a generic term will always result in creation of a potential mark, that is, a descriptive term eligible for supplemental registration. The TTAB did not find in the record facts sufficient to support '' as constituting "exceptional circumstances".

Accordingly, it affirmed the examiner's decision.

Russell H Falconer, Baker Botts LLP, New York

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