Dane, LLC

Trademark Trial and Appeal Board

May 17, 2004

No. 78125912 (T.T.A.B. May. 17, 2004)

Mailed:
17 May 2004
Paper No. 12
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Dane, LLC
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Serial No. 78125912
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Kirk D. Houser of Eckert Seamans Cherin & Mellott, LLC for
Dane, LLC.
Aretha C. Masterson, Trademark Examining Attorney, Law
Office 112 (Janice O’Lear, Managing Attorney).
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Before Hanak, Holtzman, and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On May 2, 2002, Dane, LLC (applicant) applied to
register the mark THE WEB BROWSER, in typed form, on the
Principal Register for services ultimately identified as
“computer services, namely, providing computer server
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 78125912
2
search engines, excluding a web browser, for obtaining data
on a global computer network” in International Class 42.1
The examining attorney ultimately refused to register
applicant’s mark on the ground that the mark was merely
descriptive under Section 2(e)(1) of the Trademark Act, 15
U.S.C. § 1052(e)(1). The examining attorney argues that “a
web browser is used to view text in a search engine. No
great leaps or imagination are necessary to determine the
descriptive nature of the applicant’s mark as applied to
search engine services.” Examining Attorney’s Brief at 7.
Applicant, on the other hand, argues that its services “do
not function like a web browser, do not use a web browser
to locate files, and are not added to, associated with, or
integrated into a web browser.” Applicant’s Brief at 2.
After the examining attorney made the refusal final,
applicant appealed to this board.
A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics
of the goods or services or if it conveys information
regarding a function, purpose, or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 217 (CCPA 1978). See also In re Nett
1 Serial No. 78125912 was based on a allegation of a bona fide
intention to use the mark in commerce.
Ser. No. 78125912
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Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001); In re MBNA America Bank N.A., 340 F.3d 1328, 67
USPQ2d 1778, 1780 (Fed. Cir. 2003) (A “mark is merely
descriptive if the ultimate consumers immediately
associate it with a quality or characteristic of the
product or service”).
To be merely descriptive, a term need only describe a
single significant quality or property of the goods. In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987); Meehanite Metal Corp. v. International Nickel Co.,
262 F.2d 806, 120 USPQ 293, 294 (CCPA 1959). We look at
the mark in relation to the goods or services, and not in
the abstract, when we consider whether the mark is
descriptive. Abcor, 200 USPQ at 218.
We begin our analysis with dictionary definitions of
the terms “web browser” and “search engine.” There is no
dispute that “web browser” is a term of art regarding the
Internet. The examining attorney included several
definitions of “web browser” with her Office action (See
Office action dated September 27, 2002):
(1) A program such as Mosaic, Netscape, Internet
Explorer, and others that are used to view pages
on the World Wide Web.
(2) A program used to view, download, upload, surf,
or otherwise access documents (for example, Web
pages) on the Internet. Netscape Navigator and
Ser. No. 78125912
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Internet Explorer are well-known “Web Browsers”
that enable you to view and interact with Web
sites.
Browsers read pages that are “marked up” or
coded (usually in HTML but not always). These
pages reside on servers. The browsers interpret
the code into what we see rendered as a Web
page. As well-designed software programs,
browsers contain a variety of tools, including
bookmarks and the back button, that make
“surfing the Net” more enjoyable. You will need
a browser to “get on the Web.”
The examining attorney also included definitions of
“search engine” (Id.) as:
(1) A software program that searches a database and
gathers and reports information that contains or
is related to specified terms.
A website whose primary function is providing a
search engine for gathering and reporting
information available on the Internet or a
portion of the Internet.
(2) A program on the Internet that allows users to
search for files and information.
(3) A program that searches documents for specified
keywords and returns a list of documents where
the keywords were found. Although search engine
is really a general class of programs, the term
is often used to specifically describe systems
like Alta Vista and Excite that enable users to
search for documents on the World Wide Web and
USENET newsgroups.
Applicant has amended its identification of services
to make it clear that its services are search engines,
excluding a web browser, for obtaining data on a global
computer network.
Ser. No. 78125912
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The examining attorney has included evidence that
shows that search engines and web browsers are not
unrelated Internet tools.
Add Google’s search-engine window to your Web browser
so you can run a search at any time without going to
a search page.
San Diego Union-Tribune, June 24, 2002.
I left out a helpful guide at Google’s site to making
that search engine the default in your Web browser.
Washington Post, January 27, 2002.
Another benefit of SVG is that the user can search
for text in graphics. Search engines and the Find
function in Web browsers tend to miss words or
numbers in graphics because they are broken up into
pixels in a bitmap image.
New York Times, October 4, 2001.
As Napster’s fame spread, the Satellite program
evolved into a similar peer-to-peer search engine
that uses a Web browser to look for MP3 files, then
sets up a computer-to-computer transfer.
San Francisco Chronicle, March 4, 2001.
My web browser starts up with a certain search engine
associated with my service provider, but I’d like to
have a different “home page.”
Miami Herald, October 2, 2000.
A big automaker in Detroit is looking for a new
supplier, (1) queries a UDDI search engine in the
U.S. via a Web browser.”
B to B, September 11, 2000.
Ultrsbrowser.com --- which is customizing Web
browsers with search engines links to air travel
sites, entertainment sites and other sites.
Atlanta Journal and Constitution, December 6, 2000.
She said CuteMX, which is part Web browser, part
media player, and part search engine, wasn’t forged
with piracy in mind.
San Antonio Express-News, July 29, 2000.
Ser. No. 78125912
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The examining attorney argues that “there is a
relationship between a search engine and a web browser.”
Examining Attorney’s Brief at 7. Applicant argues that a
computer server, where its search engine services would be
located, is typically at the Internet Service Provider and
the web browser is located on the client PC, which “is far
removed form Applicant’s computer services.” Applicant’s
Brief at 4. While this may be true, the examining
attorney notes that both “terms function together in the
same computer environment.” Examining Attorney’s Brief at
7. Indeed, the printouts indicate that web browsers
(Netscape Navigator and Internet Explorer) can be
customized with search engine links, can start up with a
search engine as its home page, and can have a search
engine added to the web browser’s page.
Web browsers and search engines are basic Internet
tools. The web browser permits access to the Internet.
The search engine provides a means to search for
information on the Internet and then the web browser
displays the retrieved information. Also, they both
provide a means of searching or “browsing” the web. See
OBH Inc. v. Spotlight Magazine Inc., 86 F. Supp.2d 176, 54
USPQ2d 1383, 1386 (W.D.N.Y. 2000) (“Upon entering a domain
name into the web browser, the corresponding web site will
Ser. No. 78125912
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quickly appear on the computer screen. Sometimes,
however, a user will not know the domain name of the site
he or she is looking for, whereupon he or she has two
principal options: trying to guess the domain name or
seeking the assistance of an Internet ‘search engine’");
Heroes Inc. v. Heroes Foundation, 958 F. Supp. 1, 41
USPQ2d 1513, 1516 (D.D.C. 1996) (“It characterizes home
pages as essentially passive, only appearing on a
user's screen when a user summons them by means of a
‘search engine’ or ‘web browser’”). The web browser can
retrieve information by entering the web address and the
search engine can retrieve similar information by
searching for specific words. The term THE WEB BROWSER
merely describes the fact that the search engine functions
in association with or even on the web browser page.
Applicant argues that its mark “has a double
entendre. Applicant is using the mark THE WEB BROWSER,
not in the literal sense of software for a client personal
computer, but rather in the more figurative sense of one
looking over an intricate woven structure in order to
decide what one wants to buy, borrow, or read.”
Applicant’s Brief at 7. We find it unlikely that any
significant number of prospective users would recognize
this double entendre. The terms “web browser” and “search
Ser. No. 78125912
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engine” are intimately associated with each other. They
can be found on the same web page and used to retrieve the
same information either by a domain name search or a word
search. Users of applicant’s services are unlikely
therefore to use the term figuratively.
One final point that applicant makes concerns the
addition of the word “the” with “web browser.” The
addition of the definite article to the term “web browser”
would not take away its obvious descriptive significance.
Accord In re J.D. Searle & Co., 360 F.2d 650, 149 USPQ 619
(CCPA 1966) (“‘the pill’ not registrable under section
2(f)). In addition, applicant’s web page shows that the
word “THE” is displayed in type that is merely a fraction
of the size of the words WEB BROWSER and it would be even
less likely to have any trademark significance.
When we consider applicant’s mark THE WEB BROWSER in
the context of the identified search engine services, we
conclude that the term would be merely descriptive of a
search engine used on or in association with a web browser.
Therefore, we find that applicant’s term is merely
descriptive of the services identified in the application.
Decision: The refusal to register under Section
2(e)(1) of the Trademark Act is affirmed.