Friday, December 19, 2008

Irked TTAB Reverses PTO's Stubborn Refusal to Register "STEELBUILDING.COM"

Noting that this is the fourth time that Applicant has been before the TTAB in connection with the same issues of genericness and acquired distinctiveness of the mark STEELBUILDING.COM, the Board agreed with Applicant that "[t]he examining attorney is directly at odds with the findings of both the Federal Circuit and the Trademark Trial and Appeal Board." It reversed the PTO's refusal to register the mark for "computerized on-line retail services in the field of pre-engineered metal buildings and roofing systems." In re, Inc., Serial No. 78680792 (December 11, 2008) [not precedential].

Michael Hall commented on the PTO's strange position in this case in a TTABlog posting in October (here). The TTAB also took a dim view of the PTO's approach:

It is almost as if the examining attorney and her managing attorney are so unhappy with the Federal Circuit’s decision on genericness that they hope reconsideration of it may come by way of yet another refusal on the same ground. Simply put, the issue of genericness in the present case is controlled by the Federal Circuit’s earlier decision. And given the Board’s earlier findings on acquired distinctiveness of the same term STEELBUILDING.COM on the same record, we see no reason to reach a different result herein.

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, 75 U.S.P.Q.2d 1420 (Fed. Cir. 2005) (Steelbuilding I), and the Board’s 2007 non-precedential decision in In re, Inc., consolidated Serial Nos. 76280389 and 76280390 (December 12, 2007) (Steelbuilding II).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.

The Examining Attorney maintained here that significant new evidence (two domain names and eight third-party registrations) compels a different result on genericness. The Board, however, found that the record "differs only minimally from the earlier records" and the evidence did not show generic use of the compound "steelbuilding" (one word).

As to acquired distinctiveness, the evidence here was identical to that in two prior cases. The Board again ruled that this evidence was sufficient to satisfy Section 2(f).

The Board then noted that the Managing Attorney had appended an argument to the Examining Attorney's brief, asserting that the Board was "potentially creating two divergent bodies of case law for proposed marks consisting of generic terms plus TLDs." The Board was unmoved:

... we disagree with the managing attorney’s conclusion that the Board and the Federal Circuit stand at the brink of a body of case law about to diverge into two contradictory branches. Quite simply, there are no per se rules when it comes to determining whether a term combined with a TLD is or is not generic. And the law already has developed to the point of recognizing that some terms will be registered and others will be refused. In that sense, the Federal Circuit and the Board have passed the point the managing attorney thinks is only now at hand, and we
anticipate that the Board and the Federal Circuit will continue to be able to differentiate which terms should be registered and which must be refused.

And so, the refusals were reversed.

TTABlog note: Earlier postings on the STEELBUILDING.COM marks may be found here and here.

Text Copyright John L. Welch 2008.


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