Sterling Vision, Inc.

Trademark Trial and Appeal Board

Feb 14, 2002

No. 75702715 (T.T.A.B. Feb. 14, 2002)

2/14/02 Paper No. 10
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sterling Vision, Inc.
________

Serial No. 75/702,714
Serial No. 75/702,715
_______

James David Jacobs of Baker & McKenzie for Sterling Vision,
Inc.

Ronald McMorrow, Trademark Examining Attorney, Law Office
105 (Thomas Howell, Managing Attorney).
_______

Before Chapman, Bucher and Rogers, Administrative Trademark
Judges.

Opinion by Chapman, Administrative Trademark Judge:
On May 11, 1999, Sterling Vision, Inc. filed two
applications, both for the following services, identified
as amended: “on-line retail store services, mail order
services, and retail stores featuring contact lenses,
eyeglasses and accessories” in International Class 35.
Each application is based on applicant’s assertion of a
bona fide intention to use the mark in commerce.
Application Serial No. 75/702,714 is for NATIONAL
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. Nos. 75/702714 and 75/702715
2
CONTACTS.COM, and application Serial No. 75/702,715 is for
NATIONAL CONTACT LENSES.COM.
Registration of both marks was refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
basis that, when used in connection with applicant’s
services, the marks are merely descriptive of the services.
In each application, when the refusal to register was
made final, applicant appealed. Briefs have been filed in
both cases, and applicant did not request an oral hearing
in either case.
In view of the common questions of law and fact which
are involved in these two applications, and in the
interests of judicial economy, we have consolidated the
applications for purposes of final decision. Thus, we have
issued this single opinion.
The Examining Attorney contends, with regard to each
mark, that it consists of the term “national” which is
descriptive of the nationwide scope of applicant’s
services, and the word “contacts” or the words “contact
lenses,” respectively, which are highly descriptive or
generic when used in connection with the identified
services featuring contact lenses, and the generic top
level domain (TLD) indicator “.com”; that the combination
retains an entirely descriptive meaning which consumers
Ser. Nos. 75/702714 and 75/702715
3
would easily understand without need of deliberative
thought or exercise of imagination; and that each mark is
unregistrable on the Principal Register absent a showing of
acquired distinctiveness.1
Applicant contends that it is improper to dissect a
mark and separately analyze the individual words; and that
a combination of words, each of which is descriptive or
generic, may result in a mark which is not descriptive or
generic. Specifically, with regard to its applied for
marks, applicant contends that the word “national” has many
different dictionary meanings, and even if taken to mean
relating to a government or nation, the “.com” suffix is
associated with the world wide web and means the opposite
(unlimited in terms of nationality) thereby creating an
incongruity; that “national” is not descriptive in any way
of applicant’s services especially in light of the “.com”

1 In its respective briefs on appeal, applicant offered to
“disclaim the words ‘National’ and ‘Contacts’” in application
Serial No. 75/702,414, and to “disclaim the words ‘Contact
Lenses’ and ‘Contact Lenses.com’” in application Serial No.
75/702,415. In the Examining Attorney’s briefs (p. 3), he noted
applicant’s offers of disclaimers, but he did not accept the
disclaimers. Moreover, in arguing the descriptiveness issue, the
Examining Attorney interpreted them as applicant’s concessions
that the involved terms are descriptive. (We note that applicant
offered to disclaim all but the “.com” portion of NATIONAL
CONTACTS.COM, while applicant offered to disclaim all but the
“national” portion of NATIONAL CONTACT LENSES.COM.) Applicant’s
offer of the disclaimers in the briefs on appeal is untimely
because the record should be complete prior to the filing of the
appeal pursuant to Trademark Rule 2.142(d).
Ser. Nos. 75/702714 and 75/702715
4
portion of applicant’s marks which evidences the
international scope of applicant’s business; and that the
purchasing public would need to make a mental leap to
perceive any descriptive significance of the combination
NATIONAL CONTACTS.COM or NATIONAL CONTACT LENSES.COM in
relation to applicant’s services.
The test for determining whether a term or phrase is
merely descriptive under Section 2(e)(1) of the Trademark
Act is whether the term immediately conveys information
concerning a significant quality, characteristic, function,
ingredient, attribute or feature of the product or service
in connection with which it is used or is intended to be
used. See In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215 (CCPA 1978); In re Venture Associates, 226 USPQ
285 (TTAB 1985); and In re Bright-Crest, Ltd., 204 USPQ 591
(TTAB 1979). The determination of mere descriptiveness
must be made, not in the abstract, but rather in relation
to the goods or services for which registration is sought,
the context in which the term or phrase is being or will be
used on or in connection with those goods or services, and
the impact that it is likely to make on the average
purchaser of such goods or services. See In re
Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); and In
re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991). That
Ser. Nos. 75/702714 and 75/702715
5
is, the question is not whether someone presented with only
the term or phrase could guess what the goods or services
are. Rather, the question is whether someone who knows
what the goods or services are will understand the term or
phrase to convey information about them. See In re Home
Builders Association of Greenville, 18 USPQ2d 1313 (TTAB
1990); and In re American Greetings Corp., 226 USPQ 365
(TTAB 1985).
We agree with the Examining Attorney that each of
applicant’s applied-for marks, NATIONAL CONTACTS.COM and
NATIONAL CONTACT LENSES.COM, immediately and directly
conveys information about significant features of
applicant’s “on-line retail store services, mail order
services and retail stores featuring contact lenses,
eyeglasses and accessories.”
A descriptive term or phrase does not have to provide
information regarding every aspect of an applicant’s goods
or services. See In re Opryland USA Inc., 1 USPQ2d 1409
(TTAB 1986); and In re The Weather Channel, Inc., 229 USPQ
854 (TTAB 1985). Inasmuch as “contacts lenses” appears in
applicant’s identification of services, there is simply no
question that one of the central features of applicant’s
on-line, retail and mail order services is the sale of
contact lenses (and accessories). Moreover, as to NATIONAL
Ser. Nos. 75/702714 and 75/702715
6
CONTACTS.COM, the Examining Attorney made of record The
American Heritage Dictionary (Third Edition 1992)
definition of “contact” as “6. A contact lens.” Thus, as
to that term “contacts” will readily be understood to refer
to contact lenses. The fact that “contacts” may have other
meanings in other contexts is not persuasive because the
determination of descriptiveness must be made in relation
to the identified services.
The term “national” has been held by this Board to be
descriptive of the geographic extent of the offering of the
goods or services. See In re Integrated Resources, Inc.,
220 USPQ 1067 (TTAB 1983); In re National Rent A Fence,
Inc., 220 USPQ 479 (TTAB 1983); and National Fidelity Life
Insurance v. National Insurance Trust, 199 USPQ 691 (TTAB
1978). See also, National Automobile Club v. National Auto
Club, Inc., 365 F.Supp. 879, 180 USPQ 777 (SDNY 1973).
That is, “national” is a common English word which can be
used to describe goods and services. It is not likely, in
the circumstances of these cases, to be considered by the
purchasing public as a word of source identification.
We find unpersuasive applicant’s argument that
“national” and “.com” convey such a geographical
incongruity (one relating to a nationwide scope and one
referring to a worldwide scope), that the composite terms
Ser. Nos. 75/702714 and 75/702715
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sought to be registered are rendered suggestive thereby.
There is no convincing evidence of record that consumers
would perceive these elements as possessing anything other
than their common everyday meanings, i.e., the word
“national” as meaning nationwide in scope, and “.com” as
being a top level domain address.
The “.com” portion of applicant’s respective terms
lacks trademark significance. This portion of a domain
name is merely part of an address. Particularly, the top
level domain indicator (e.g., .com, .org, .edu) adds
nothing to the distinctiveness of the designation coupled
therewith, so as to create a trademark or service mark.
While we recognize that applicant’s applied-for marks
include spaces between the words, which would not generally
be used in a domain name, nonetheless, the applied-for
marks closely resemble domain names, and would be so
recognized by the purchasing public. That is, the average
consumer will readily recognize that these applied-for
marks are presented in the format for a domain name and
they would understand that the top level domain portion is
a part of every complete domain name. See 555-1212.com,
Inc. v. Communication House International, Inc., 157
F.Supp. 2d 1084, 59 USPQ2d 1453 (N.D.CA. 2001); and 1 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Ser. Nos. 75/702714 and 75/702715
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Competition, §7:17.1 (4th ed. 2000). See also, In re Page,
51 USPQ2d 1660 (TTAB 1999); and In re Patent & Trademark
Services Inc., 49 USPQ2d 1537 (TTAB 1998).
In these two applications, we find that the
juxtaposition of the words, in relation to applicant’s
identified services does not evoke a unique commercial
impression, nor does this combination of the elements give
either applied-for mark, considered as a whole, an
incongruous meaning in relation to applicant’s services
such that the elements lose their descriptive significance
in the combined expression. Rather, applicant’s applied-
for marks, NATIONAL CONTACTS.COM and NATIONAL CONTACT
LENSES.COM, if used in connection with applicant’s
identified services, would immediately describe, without
conjecture or speculation, significant features of
applicant’s services, as discussed above. See In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In
re Omaha National Corporation, 819 F.2d 1117, 2 USPQ2d 1859
(Fed. Cir. 1987); and In re Time Solutions, Inc., 33 USPQ2d
1156 (TTAB 1994).
Decision: The refusal to register the proposed mark
as merely descriptive under Section 2(e)(1) is affirmed in
each application.