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Descriptiveness

If a proposed mark is composed of a merely descriptive term(s) combined with a TLD, the examining attorney should refuse registration under Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1), on the ground that the mark is merely descriptive. This applies to trademarks, service marks, collective marks and certification marks.

Example : The mark is SOFT.COM for facial tissues. The examining attorney must
refuse registration under §2(e)(1).

Example : The mark is NATIONAL BOOK OUTLET.COM for retail book store
services. The examining attorney must refuse registration under §2(e)(1).

The TLD will be perceived as part of an Internet address, and does not add source identifying significance to the composite mark. Cf. In re Page , 51 USPQ2d 1660 (TTAB 1999) (addition of a telephone prefix such as “800″ or “888″ to a descriptive term is insufficient, by itself, to render the mark inherently distinctive); In re Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998) (PATENT & TRADEMARK SERVICES INC. is merely descriptive of legal services in the field of intellectual property; the term “Inc.” merely indicates the type of entity that performs the services and has no significance as a mark); In re The Paint Products Co. , 8 USPQ2d 1863 (TTAB 1988) (PAINT PRODUCTS CO. is no more registrable as a trademark for goods emanating from a company that sells paint products than it would be as a service mark for retail paint store services offered by such a company); In re E.I. Kane, Inc., 221 USPQ 1203 (TTAB 1984) (OFFICE MOVERS, INC. incapable of functioning as a mark for moving services; addition of the term “Inc.” does not add any trademark significance to matter sought to be registered). See also TMEP §1209.01(b)(12) regarding marks comprising in part “1-800,” “888,” or other telephone numbers.

Last Modified: March 22nd, 2010