Thursday, December 27, 2007

Reversing Disclaimer Requirements, TTAB Finds "STEELBUILDING.COM" Has Acquired Distinctiveness for On-Line Building Sales

The Board reversed a refusal to register the marks STEELBUILDING.COM & Design (shown immediately below) and STEELBUILDING.COM THE FUTURE OF METAL BUILDINGS [METAL BUILDINGS disclaimed] for "computerized on-line retail services in the field of pre-engineered steel buildings and roofing systems." The PTO had required disclaimers of the term STEELBUILDING.COM, but the Board found that Applicant had established acquired distinctiveness for that term under Section 2(f). In re, Inc., Serial Nos. 76280389 and 76280390 (December 12, 2007) [not precedential].

Readers will recall that in 2005, the CAFC held that STEELBUILDING.COM was not generic but rather merely descriptive for virtually identical services, and further that Applicant had failed to establish acquired distinctiveness. (TTABlogged here).

In the instant cases, the only issue was whether STEELBUILDING.COM has acquired distinctiveness. The CAFC had found the term to be "highly descriptive" and therefore Applicant "had the burden to show a concomitantly high level of secondary meaning." Because Applicant here submitted "substantial new evidence," the Board took "a new look at this issue."

The Board was persuaded that STEELBUILDING.COM has acquired distinctiveness. Applicant has now been using the term for more than five years; it sales have grown from $11 million in 2002 to more than $21 million in 2005; advertising expenditures rose form $673,000 to nearly $1 million; visitor traffic to the website is greater than that of any competitor; Applicant has advertised or been featured in trade magazines; declarations and e-mails showed that competitors and consumers recognize STEELBUILDING.COM as a reference to Applicant; it has 50,000 to 100,000 visitors per month at its website; and it displays its mark prominently at its website and in its advertising, appending the "TM" symbol to the mark.

The PTO's evidence that the term "" is used with other words in some third-party website names [e.g., www.united and] does not refute Applicant's 2(f) claim. "The fact that the term may be used descriptively in these web addresses does not necessarily prohibit applicant's descriptive term from acquiring distinctiveness."

And so the Board reversed the disclaimer requirement in light of Applicant's 2(f) showing.

TTABlog comment: Here's a question for you: what benefit, above and beyond ownership of the domain name, does the service mark registration provide? No one else may use the domain name anyway, as long as you own it. And if ownership of the domain name ceases, what good is the service mark registration?

BTW: I still think that, if is generic, so is But that's water under the dam.

Text Copyright John L. Welch 2007.


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