Tuesday, October 14, 2008

TTABlog Guest Comment: Michael E. Hall on "The Continuing Saga of STEELBUILDING.COM"

On October 15th, the Board will hear oral argument in In re Steelbuilding.com, Inc., Serial No. 78680792, in which the Applicant challenges the PTO's genericness and mere descriptiveness refusals of STEELBUILDING.COM for "computerized online retail services in the field of pre-engineered metal buildings and roofing systems." Former PTO Examining Attorney Michael E. Hall finds the PTO's approach in this case rather surprising, and he explains why in his article entitled "The Continuing Saga of STEELBUILDING.COM" (pdf here).

As Mr. Hall points out, the current appeal involves the same applicant, the same mark, and the same services that were at issue in both the CAFC’s 2005 precedential decision in In re Steelbuilding.com, 75 U.S.P.Q.2d 1420 (Fed. Cir. 2005) (Steelbuilding I), and the Board’s 2007 non-precedential decision in In re Steelbuilding.com, Inc., consolidated Serial Nos. 76280389 and 76280390 (December 12, 2007) (Steelbuilding II). In Steelbuilding I, the Federal Circuit found that the Applicant’s mark STEELBUILDING.COM was not generic for services identical to those in the current application. Subsequently, in Steelbuilding II, the Board reversed a disclaimer requirement for STEELBUILDING.COM for virtually the same services because it found that the term had acquired distinctiveness. Mr. Hall states that:

The PTO’s brief in the present case essentially argues that (1) “additional evidence” in this application should result in a different outcome, and (2) the Federal Circuit’s holding in Steelbuilding I was disingenuous. However, the “additional evidence” upon which the PTO ostensibly relies in this appeal – third-party registrations and two third-party domain names similar to Applicant’s mark – does not really address the evidentiary problems the Federal Circuit perceived in Steelbuilding I. As to the Federal Circuit’s other reasons for reversing the genericness refusal in Steelbuilding I, the PTO’s brief is self-contradictory in places, ignores Steelbuilding I in other places, and in the end simply disagrees with the Federal Circuit. In short, the PTO is, for all intents and purposes, now asking the Board to “reverse” its primary reviewing court.

TTABlog note: The author practices trademark law in northern Virginia at the Law Office of Michael E. Hall. He may be reached at michaelemersonhall@gmail.com.

Text Copyright John L. Welch 2008.


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