Wednesday, March 09, 2005

TTAB Affirms Genericness Refusal of "BLINDSANDDRAPERY.COM" In Citable Decision

The TTAB's first citable decision of 2005 is not exactly earth-shaking, but it does provide the Board's view of the CAFC's recent Oppedahl decision regarding the source-identifying significance of TLDs. The Board affirmed, on the ground of genericness, a refusal to register BLINDSANDDRAPERY.COM on the Supplemental Register for various services relating to the distribution and sale of blinds and drapery, including retail sales via the Internet. In re Eddie Z's Blinds and Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005).

Dictionary definitions of "blinds," "drapery," and ".com," NEXIS excerpts, and various Internet website pages demonstrated both that "blinds and drapery" is a designation used by many businesses for a class of products, and that businesses are referred to by that designation: i.e., as "blinds and drapery" businesses.

Relying on the CAFC's wacky compound word/phrase dichotomy, Applicant Eddie Z's argued that its "mark" should be treated as a phrase, just like the mark 1-888-M-A-T-R-E-S-S, found registrable in In re Dial-A-Mattress Operating Corp., 57 USPQ2d 1807 (Fed. Cir. 2001). Eddie Z's contended that the Examining Attorney's evidence regarding the components "blinds and drapery" and ".com" (as opposed to evidence showing use of the phrase as a whole) must be deemed insufficient to prove genericness. See In re American Fertility Society, 51 USPQ2d 1832 (Fed. Cir. 1999).

The Board, however, pointed to its decisions in In re CyberFinancial.Net, Inc., 65 USPQ2d 1789 (TTAB 2002) [BONDS.COM] and In re Martin Container, Inc., 65 USPQ2d 1058 (TTAB 2002) [CONTAINER.COM], as the more pertinent precedents:

"Generic terms coupled with a TLD . . . are considered compound words. See CyberFinancial and Martin Container, supra. In this case, therefore, we have a compound formed by joining the generic term 'blinds and drapery' and the generic TLD '.com.' Thus, under Gould, the examining attorney may carry her burden of proving, by clear evidence, the genericness of BLINDSANDDRAPERY.COM by introducing, as she has, evidence of the genericness of 'blinds and drapery' and '.com.'"

Furthermore, the mattress mark is a mnemonic representing a single telephone number, which can be used only by a single entity. In contrast, "the precise generic term and TLD combination employed by applicant can be incorporated into other domain names." Another "blinds and drapery" business should not be precluded from using that term as part of a different domain name.

Finally, the Board noted Eddie Z's reliance on the CAFC's recent decision in In re Oppedahl & Larson LLP, 71 USPQ2d 1370 (Fed. Cir. 2004) [PATENTS.COM merely descriptive], in which the CAFC ruled that, although the addition of a TLD to an otherwise unregistrable mark "will typically not add any source-identifying significance," this is not a "bright-line, per se rule;" "exceptional circumstances might yield a different result." The Board observed that a TLD may have some source-identifying significance when "the coupling of an otherwise unregistrable term and a TLD create a whole greater than the sum of its parts." The case at hand, the Board opined, is not an "exceptional" one.

Obviously, the CAFC's Oppedahl decision provides little comfort to Applicants seeking to register marks incorporating ".com" or another TLD. One could say that the Eddie Z's case makes clear that Oppedahl is thus far little more than window dressing on the jurisprudence of the TTAB.

Text ©John L. Welch 2005. All Rights Reserved.


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