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USPTO: Dealing with TLD Indicators on Domain Name Trademark Applications

Thu, 15 Sep 2005 16:11:00 EST

Can a TLD, "Top Level Domain" (such as .com), influence the distinctive nature of a Generic or Descriptive mark? Jennifer Mikulina explores this debate in accordance to a recent ruling by the U.S Court of Appeals.

"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."

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