Cyber Services, Inc.

Trademark Trial and Appeal Board

Jul 30, 2003

No. 76013815 (T.T.A.B. Jul. 30, 2003)

Mailed: July 30, 2003
Paper No. 15
cl

UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Cyber Services, Inc.
________
Serial No. 76/013,815
_______
James T. Hosmer of Nixon & Vanderhye P.C. for Cyber
Services, Inc.
Charles L. Jenkins, Jr., Trademark Examining Attorney, Law
Office 105 (Thomas G. Howell, Managing Attorney).
_______
Before Simms, Quinn and Holtzman, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Cyber Services, Inc. (applicant), a Virginia
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark BALLS.COM
for preparing and disseminating electronic billboard
advertising regarding sports equipment via the Internet;
providing an electronic on-line shoppers guide for
information in the field of sports equipment; providing
computerized database management relating to sports
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76/013,815
2
equipment designs, brand names, recommended end uses and
product sources, including information regarding
manufacturers, distributors and retailers of sports
equipment.1 The Examining Attorney has refused registration
under Section 2(e)(1) of the Act, 15 USC §1052(e)(1),
arguing that applicant’s mark is merely descriptive of its
services. Applicant and the Examining Attorney have
submitted briefs, but no oral hearing was requested.
Relying on a dictionary definition of the word “ball”
(“Any of various rounded, movable objects used in various
athletic activities and games”),2 it is the Examining
Attorney’s position that “balls” describes a feature of
applicant’s services. That is, applicant’s electronic
billboard advertising, electronic on-line shoppers guide
and computerized database management relating to sports
equipment may entail the advertising and sale of such
sports equipment as balls like footballs and baseballs.
The addition of the top level domain name “.com” does not
change the descriptive significance of the mark, according
to the Examining Attorney. This top level domain name is
akin to an entity designation (like “Inc.”), and does not
add any source-identifying significance, the Examining

1 Serial No. 76/013,815, filed March 30, 2000, based upon an allegation
of a bona fide intention to use the mark in commerce.
2 The American Heritage Dictionary of the English Language (1992).
Serial No. 76/013,815
3
Attorney argues. In support of the refusal, the Examining
Attorney has made of record numerous and assertedly random
excerpts of news articles from the Nexis database showing
that balls are considered a piece of sports equipment.
Framing the issue as whether BALLS.COM merely
describes Internet-based electronic billboard services
relating to sports equipment, applicant’s attorney argues
that “balls” could refer to such products as baseballs and
footballs, or to an attitude or state of mind of sports
fans and players. In this regard, applicant’s attorney
argues that “balls” is a synonym for male courage or
masculinity (according to Webster’s Third New International
Dictionary Unabridged). Applicant’s attorney argues that
evidence which he has made of record from the Internet, the
medium of applicant’s services, shows this idiom is
repeatedly used in the sports field to mean something other
than products such as athletic or sports balls. For
example, applicant makes note of a number of expressions
which include the word “balls” in this context, such as “Do
you have the balls to play this sport?”, “If you’re on a
team and got the balls to get knocked around the field…”,
and “The webpage for golfers who don’t have the balls to
make the tour…” Applicant also makes note of the fact that
“balls” may be a part of the anatomy (as in the balls of
Serial No. 76/013,815
4
one’s foot) and that “Balls” may be a surname. Applicant
contends that if a mark has various meanings or requires
imagination, thought or perception in order to understand
the nature of one’s services, then the term may be
suggestive rather than merely descriptive. Applicant’s
counsel further states that applicant contemplates using
the mark to advertise and sell numerous different sports-
related products (as well as sporting events) other than
sports balls. Accordingly, because “balls” is not always
used to describe sports equipment and because the
combination of two or more otherwise descriptive terms does
not automatically justify a mere descriptiveness refusal,
applicant contends that its mark BALLS.COM is not merely
descriptive. Finally, applicant asks us to resolve any
doubt on this issue in its favor.
In response, the Examining Attorney maintains that the
fact that a term may have different meanings in other
contexts is not controlling on the issue of mere
descriptiveness in this case. The fact that the term
“balls” may have an off-color or vulgar connotation is not
particularly relevant, the Examining Attorney contends,
because one must consider the mark in relation to the
relevant goods or services, and applicant’s services do not
or will not feature information on male courage,
Serial No. 76/013,815
5
aggressiveness or masculinity. Finally, the Examining
Attorney argues that a mark need not describe all of the
characteristics or features of one’s services in order to
be found merely descriptive.
A term is considered to be merely descriptive of goods
or services within the meaning of Section 2(e)(1) if it
forthwith conveys information about a significant quality,
characteristic, feature, function, purpose or use of the
goods or services. See In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009, 1009-10 (Fed. Cir. 1987) and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). In this regard, it is not necessary that a term
describe all of the characteristics or functions of the
goods or services in order for it to be considered merely
descriptive thereof. Rather, it is sufficient if the term
describes a significant attribute or quality about the
goods or services. Moreover, whether a term is merely
descriptive is determined, not in the abstract, but in
relation to the goods or services for which registration is
sought, the context in which it is being used on or in
connection with the goods or services and the possible
significance that the term may have to the average
purchaser of the goods or services because of the manner of
its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
Serial No. 76/013,815
6
1979). Therefore, "[w]hether consumers could guess what
the product [or service] is from consideration of the mark
alone is not the test." In re American Greetings Corp.,
226 USPQ 365, 366 (TTAB 1985).
On the other hand, a mark is suggestive if, when the
mark is used on or in connection with the goods or
services, a multi-stage reasoning process, or imagination,
thought or perception is required in order to determine the
attributes or characteristics of the goods or services
offered under the mark. In re Abcor Development Corp.,
supra at 218, and In re Mayer-Beaton Corp., 223 USPQ 1347,
1349 (TTAB 1984). We have often stated that there is a
thin line of demarcation between a suggestive mark and a
merely descriptive one, with the determination of which
category a mark falls into frequently involving subjective
judgment. See In re Atavio, 25 USPQ2d 1361 (TTAB 1992) and
In re TMS Corp. of the Americas, 200 USPQ 57, 58 (TTAB
1978).
Upon careful consideration of this record and the
arguments of the attorneys, we agree with the Examining
Attorney that applicant’s mark will be perceived as merely
descriptive of an aspect of applicant’s services. As
noted, we must view the asserted mark in connection with
the specified goods or services in the application. In
Serial No. 76/013,815
7
this case, for electronic billboard advertising over the
Internet of, for example, sports equipment such as football
helmets, baseball bats, soccer balls and volleyballs, we
believe that the mark BALLS.COM will be viewed as a
combination of the merely descriptive or generic word
“balls” along with the top level domain name “.com”. See
In re CyberFinancial.Net, Inc., 65 USPQ2d 1789, 1792 (TTAB
2002)("Applicant seeks to register the generic term
'bonds,' which has no source-identifying significance in
connection with applicant's services, in combination with
the top level domain indicator ".com," which also has no
source-identifying significance. And combining the two
terms does not create a term capable of identifying and
distinguishing applicant's services."); and In re Martin
Container, Inc., 65 USPQ2d 1058, 1060-1061 (TTAB
2002)("[T]o the average customer seeking to buy or rent
containers, "CONTAINER.COM" would immediately indicate a
commercial web site on the Internet which provides
containers… [N]either the generic term nor the domain
indicator has the capability of functioning as an
indication of source, and combining the two does not result
in a compound term that has somehow acquired this
capability.") See also TMEP §§1209.03(m) and 1215.05.
Similarly, if this mark were used in connection with an
Serial No. 76/013,815
8
electronic online shoppers guide providing information
about sports equipment, we also believe that the mark would
be perceived as merely descriptive of a significant feature
or aspect of the shoppers guide in that balls for such
athletic or sporting games as baseball, football,
basketball, soccer and volleyball may be included in the
sports equipment being promoted. The fact that applicant
has been able to retrieve from the Internet examples of use
of the term “balls” in its vulgar connotation meaning male
aggressiveness or courage does not persuade us that this is
the connotation that consumers or users of applicant’s
electronic services relating to sports equipment will
perceive when they see applicant’s mark used in connection
with sports equipment. Accordingly, we conclude that
applicant’s mark is merely descriptive of a feature or
aspect of its services.
Decision: The refusal of registration is affirmed.