CAFC Vacates Genericness Refusal Of "STEELBUILDING.COM"

In a precedential opinion, the CAFC vacated the TTAB's decision that STEELBUILDING.COM is generic for "computerized on-line retail services in the field of pre-engineered metal buildings and roofing systems." In re Steelbuilding.com, 75 USPQ2d 1420 (Fed. Cir. 2005). The court, however, affirmed the TTAB as to the PTO's Section 2(e)(1) mere descriptiveness refusal, and as to the inadequacy of Applicant's proof of secondary meaning.


The court ruled that the Board had incorrectly defined the genus for Applicant's services, a ruling that hinged on the interactive nature of Applicant's website. The Board at one point defined the genus as "the sale of pre-engineered 'steel buildings' on the Internet," and at another, "computerized on-line retail services in the field of pre-engineered metal buildings including steel buildings." The court noted that, although "the definitions of the Applicant and the Board appear nearly identical, the parties understand the phrase 'computerized on-line retail services' differently." The record "indicates that [Applicant] provides services beyond mere sales." Its website permits a customer to design a building and then determine the price for its own design. The Board failed to "acknowledge this interactive feature of the applicant's goods and services." This misunderstanding was, the court opined, a sufficient ground for vacatur of the Board's decision. The court, however, went on to consider "generally" the Board's findings.

In deciding whether the public uses the term STEELBUILDING.COM as the genus of Applicant's services, the Board erred in considering "STEELBUILDING" and ".COM" separately, and in "apparently" concluding "STEELBUILDING is generic for 'steel buildings.'" But it ignored the other possible meaning of "steelbuilding."

"The Board does not seem to acknowledge an alternative genus, namely 'the building of steel structures.' In this case, the genus might be both formulations.

The court observed that the record lacked "substantial evidence that 'STEELBUILDING,' in common usage, is a compound word used to mean either 'steel building' or 'steel buildings.'"

"The record does not contain any examination of dictionary definitions or other sources that might have indicated that joining the separate words 'steel' and 'building' would create a word that, in context, would be generic. The Board merely cited evidence that when customers or competitors talked about a steel building, they used the phrase 'steel building.' That evidence shows that 'steel building' is generic, but does not address the composite term STEELBUILDING."

The court was also not happy with the Board's treatment of the ".com" TLD. The Board construed the TLD as no more than a designation of a commercial entity on the Internet, like "company." However, the CAFC shot down that approach last year in In re Oppedahl & Larson LLP, 71 USPQ2d 1370 (Fed. Cir. 2004), in which it 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 court found this to be such an exceptional situation:

"In this unusual case, the addition of the TLD indicator 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 ordering the unique structure. The record therefore does not contain evidence sufficient to support the Board's finding that 'STEELBUILDING.COM' is generic for applicant's services."

The court concluded that the Board erroneously: "(1) construed the genus of applicant's services and goods [sic] too broadly; (2) discounted the ambiguities and multiple meanings in the mark; and (3) dismissed the addition of the TLD indicator despite its expansion of the meaning of 'STEELBUILDING.COM.'"


Turning to the Section 2(e)(1) refusal, the court agreed that "steel buildings" are "at least a significant feature of Applicant's services," and that a consumer "would recognize the compound word "STEELBUILDING" as conveying the same impression, at least for trademark purposes, as the phrase 'steel buildings.'" Also, it agreed that the addition of .COM "simply means that services associated with the generic term are performed in an on-line or 'e-commerce' environment."

As to secondary meaning, the CAFC ruled that the Board was correct in finding that Applicant's evidence fell "far short" of meeting the "high level of secondary meaning" required for a "highly descriptive" mark.

In partial dissent, Judge Lynn stated that he would have vacated the ruling of no acquired distinctiveness and remanded that issue to the Board for further consideration. He opined that the Board erred in discounting evidence of "domain name recognition," gave too little weight to applicant's advertising through banner ads and other Internet channels, and failed to address evidence that Applicant's sales rose quickly as a result of its advertising.


TTABlog comment: The Board has some homework to do after this decision. What is the impact, if any, on the Board's test for genericness of compound words, which holds that (unlike phrases) dictionary definitions of the constituent words are sufficient to establish genericness? The Board's decision was based on In re Gould, 5 USPQ2d 1110 (Fed. Cir. 1987), but here the court asserted that in Gould the applicant "admitted that 'screenwipe' denoted a 'screen wipe,'" whereas this Applicant denied that "STEELBUILDING" merely describes "steel buildings." [Actually, the applicant in Gould did not make that admission, but merely described its product as "a ... wipe ...for ... screens."]

Or is the impact of this case limited because of its peculiar facts, and particularly the fact that "steelbuilding" may have two meanings: either a building made of steel or the act of building steel structures?

And what about the addition of the TLD? In Oppedahl, the CAFC already jettisoned the Board's prior position that ".com" is merely an entity designation of no trademark significance. Now when the Board considers the registrability of a ".com" mark, must it review the website in question to see whether the suffix may indicate that the applicant is offering additional services beyond mere retail sales -- like design capability or other Internet-based features?

The Board will surely have to be more careful now in defining the genus at issue in genericness cases -- of course, especially those with a ".com" suffix. Typically the Board spends little time in analyzing the "genus" issue, often merely adopting the identification of goods or the recitation of services of the subject application as the genus in question. That approach will have to change.

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