Thursday, September 17, 2020

Precedential No. 34: TTAB Rules That gTLD ".CAM" is Incapable of Functioning as a Source Indicator

The Board affirmed refusals to register the term ".CAM" in standard character and stylized form (shown below) on the Supplemental Register for an extensive list of services in International Classes 35, 38, 42 and 45, finding that ".CAM", in either form, is incapable of functioning as a source indicator under Section 23 of the Lanham Act. Applicant AC Webconnecting did not provide any evidence that .CAM is perceived as a service mark rather than a gTLD (generic top level domain name). In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048 (TTAB 2020) [precedential] (Opinion by Judge Peter W. Cataldo).

After the applications at issue were filed, AC Webconnecting entered into a registry agreement with ICANN, whereby AC Webconnecting was designated as the Registry Operator for the .CAM gTLD. The applications at issue do not explicitly and directly recite registry operator or registrar services, but AC Webconnecting acknowledged that its Class 45 services includes domain name registration, conducting domain name searches, legal services and consulting, all related to the .CAM gTLD.

In order to qualify for registration on the Supplemental Register under Section 23, a service mark must be "capable of distinguishing" the applicant's services, a determination that hinges on consumer perception. The TTAB has previously found that a proposed mark consisting solely of a gTLD "engender(s) the commercial impression merely of a top-level domain associated with the term comprising the proposed mark." AC Webconnecting argued it does not use its mark solely as a gTLD as it "is always used and will always be used by Applicant to identify Applicant as the source of its numerous, high-quality services.” However, its website consistently refers to .CAM as a gTLD and not as a mark. Moreover, excerpts from third-party websites demonstrated that .CAM is perceived only as a gTLD "intended to be used by multiple parties as part of their domain names to identify multiple websites offering a variety of goods and services."

Turning to the specific services recited in the subject application, the Board found that for at least one service in each class, the term .CAM is incapable of serving as a source indicator: domain name registration and related services in Class 45; database management services in class 35; providing access to databases, the Internet and transmission of multimedia communications via the Internet in class 38;  and web site hosting services and search engine optimization in class 42. Because the proposed marks are incapable of distinguishing source with regard to at least one service in each of the four classes, they are unregistrable as to all refused services recited in those classes.

With regard to the stylized version of .CAM, the Board observed that "for a term otherwise unregistrable to be capable of distinguishing an applicant’s goods, the presentation of the term must be sufficiently striking, unique or distinctive so as to overcome its inherent incapacity and render the mark capable of serving as a source indicator." The mark at issue here failed to meet that standard. 

"The term '.CAM' is displayed in a very slightly stylized script that is not unique or unusual and the “dot” is displayed in the color green with no additional stylization or design." The green color of dot emphasizes the nature of the designation as a gTLD and will not be perceived as creating a separate commercial impression.

In sum, the proposed stylized mark "conveys the commercial impression of a gTLD." The stylization  does not present any unique characteristics. "It does not create a commercial impression separate from the unregistrable."

The Board therefore affirmed both refusals to register.

Read comments and post your comment here.

TTABlogger comment: I think the proposed mark .CAM is capable of serving as a mark, but AC Webconnect hasn't done enough to make it one. In my view, the Board applied the wrong test. Unless no gTLD can ever be a trademark, why isn't .CAM capable of becoming one? It may "fail to function" as a trademark but is it incapable of ever doing so?

Text Copyright John L. Welch 2020.


At 12:05 PM, Anonymous Bob Cumbow said...

Agreed--especially when depicted in a stylized form. Was color claimed as a feature of the mark in the stylized application?


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