1800Diapers, Inc.

Trademark Trial and Appeal Board

Dec 3, 2008

No. 77141701 (T.T.A.B. Dec. 3, 2008)

Mailed: December 3, 2008
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re 1800Diapers, Inc.
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Serial No. 77141701
_______

Marshall J. Nelson of Davis Wright Tremaine LLP for
1800Diapers, Inc.

Robert J. Struck, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Hairston, Drost and Cataldo, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

1800Diapers, Inc. has filed an application to register
the designation DIAPERS.COM (in standard character form) on
the Supplemental Register for “on-line retail store
services featuring baby-care products and accessories” in
International Class 35.1

1 Serial No. 77141701, filed March 27, 2007, alleging dates of
first use of at least as early as March 21, 2007.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77141701
2
The trademark examining attorney has refused
registration under Section 23 of the Trademark Act on the
ground that the designation sought to be registered is
generic for applicant’s on-line retail store services
featuring baby-care products and accessories and,
therefore, is incapable of distinguishing applicant’s
services from those of others.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
Before turning to the substantive issue in this case,
we must address an evidentiary matter. Applicant, for the
first time with its appeal brief, submitted a printout of
its Internet homepage downloaded July 22, 2008; a printout
from the Internet website “www.babyshoe.com;” and copies of
six third-party registrations of marks that include the
term “.COM.” (Exhibits A-C). The examining attorney has
objected to these exhibits as untimely. Trademark Rule
2.142(d) provides that the record in an application should
be complete prior to the filing of an appeal, and the Board
will ordinarily not consider additional evidence filed by
the applicant or the examining attorney after the appeal is
filed. In view thereof, we find the examining attorney’s
objection to be well-taken, and the exhibits submitted with
applicant’s appeal brief will not be considered. We note
Ser No. 77141701
3
that even if we had considered these exhibits in our
determination of the issue on appeal, the result would be
the same.
We turn then to the issue on appeal, namely, whether
the designation DIAPERS.COM is generic for applicant’s on-
line retail store services featuring baby-care products and
accessories. The examining attorney contends that the word
“diapers” is generic for applicant’s on-line retail store
services because diapers are one of the principal products
applicant sells on-line; that the top-level domain (TLD)
“.com” has no source-indicating significance; and,
therefore, the combined term DIAPERS.COM is generic for
applicant’s services. In support of the refusal, the
examining attorney submitted several dictionary definitions
of the word “diaper;” the following is representative: “a
piece of cloth or other absorbent material folded and worn
as underpants by a baby not yet toilet-trained.” Random
House Unabridged Dictionary (1997). In addition, the
examining attorney submitted a printout of applicant’s
Internet homepage downloaded December 17, 2007.
Applicant, in urging reversal of the refusal to
register, maintains that diapers are but one of many baby-
care products that it sells on-line; that the examining
attorney has not demonstrated that the public primarily
Ser No. 77141701
4
understands DIAPERS.COM as the name of an on-line retailer
of baby care products and accessories; and that the
addition of “.COM” to “DIAPERS” creates a mark that is
capable of distinguishing applicant’s services from those
of others. In addition, applicant argues that the
examining attorney has failed to present any evidence of
generic use of DIAPERS.COM and, therefore, this designation
is not generic.
Section 23 of the Trademark Act provides that a mark
is registrable on the Supplemental Register if it is
capable of distinguishing the applicant’s goods or
services. Generic terms are common names that the relevant
purchasing public understands primarily as describing the
class of goods or services being sold. In re Merrill Lynch
Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141
(Fed. Cir. 1987). They are by definition incapable of
indicating a particular source of the goods or services,
and cannot be registered as trademarks. In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807
(Fed. Cir. 2001). The Office bears the burden of proving
that a term is generic. In re The American Fertility
Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999).
Determining whether a term is generic involves a two-
step inquiry. First, what is the genus of goods or
Ser No. 77141701
5
services at issue? Second, is the term sought to be
registered understood by the relevant public primarily to
refer to that genus of goods or services? H. Marvin Ginn
Corp. v. International Association of Fire Chiefs, Inc.,
782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
With respect to the first part of the genericness
inquiry, the genus of services at issue here is that of
on-line retail store services featuring baby-care products
and accessories, including diapers.
We next turn to the second step of the genericness
inquiry, that is, whether the relevant public understands
the term DIAPERS.COM to refer to the category of services
at issue, namely, on-line retail store services featuring
baby-care products and accessories, including diapers. We
find that the term is so understood. Obviously, diapers
are a type of baby-care product, and applicant acknowledges
that it sells diapers on-line. Indeed, the printout of
applicant’s homepage submitted by the examining attorney
shows “Baby Diapers” as the first category of products
listed, along with a photograph of two diaper brand boxes
and the wording “THE BEST DEAL ON DIAPERS & MORE.” In
addition, the homepage displays applicant’s toll free
telephone number which is “1-800-Diapers.” (underlining
Ser No. 77141701
6
added). It is clear that diapers are one of applicant’s
featured products.
The Board has held in the past that a term which is
the generic name of a particular category of goods is
likewise generic for any services which are directed to or
focused on that class of goods. See In re Lens.com Inc.,
83 USPQ2d 1444 (TTAB 2007) [LENS generic for contact
eyewear and also for on-line retail store services
featuring contact eyewear products]; In re A La Vielle
Russie Inc., 60 USPQ2d 1895 (TTAB 2001) [RUSSIAN ART
generic for particular field or type of art and also for
dealership services directed to that field]; and In re Log
Cabin Homes Ltd., 52 USPQ2d 1206 (TTAB 1999) [because LOG
CABIN HOMES is generic for a particular type of building,
it is also generic for architectural design services
directed to that type of building, and for retail outlets
featuring kits for construction of that type of building].
The term DIAPERS is generic for a type of baby-care
product, namely diapers. The term is also generic for
applicant’s on-line retail store services featuring baby-
care products and accessories, including diapers. We
recognize that in the present case the recitation of
services does not specifically use the word “diapers.”
However, as indicated, applicant sells diapers on-line.
Ser No. 77141701
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More importantly, the identified “baby-care products and
accessories” in the present application encompasses the
more specific term “diapers.” And, if applicant’s mark
DIAPERS.COM is generic as to part of the services applicant
offers under its mark, the mark is unregistrable. In re
Analog Devices Inc., 6 USPQ2d 1808 (TTAB), aff’d without
pub. op., 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989);
and In re Allen Electric and Equipment Co., 458 F.2d 1404,
173 USPQ 689 (CCPA 1972) [genericness is determined on the
basis of the goods and/or services identified in the
involved application].
Insofar as the TLD “.com” is concerned, it merely
indicates an Internet address for use by commercial, for-
profit organizations2 and, typically, does not add source-
indicating significance. See In re Oppedahl & Larson LLP,
373 F.3d 1171, 17 USPQ2d 1370 (Fed. Cir. 2004). Although
the Oppedahl decision also indicates that in rare
circumstances, the addition of a TLD such as “.com” may
render an otherwise descriptive or generic term
sufficiently distinctive for trademark registration, this

2 In this regard, we judicially notice that the term “.com” is
defined as: abbr. commercial organization (in Internet
addresses). The American Heritage Dictionary of the English
Language (4th ed. 2006). The Board may take judicial notice of
dictionary definitions. University of Notre Dame du Lac v. J.C.
Gourmet Foods Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser No. 77141701
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is not such a case. Here, the addition of “.COM” to the
word “DIAPERS” does not transform a generic designation
into a mark which indicates source. No double entendres or
multiple connotations are created by the composite
DIAPERS.COM in the context of applicant services. To
consumers seeking to buy diapers, DIAPERS.COM would
immediately indicate a commercial website on the Internet
which sells diapers.
We find this case to be akin to In re
CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002)
[BONDS.COM generic for providing information regarding
financial products and services via a global computer
network] and In re Martin Container, Inc., 65 USPQ2d 1058
(TTAB 2002) [CONTAINER.COM generic for retail store
services and retail services offered via telephone
featuring metal shipping containers and rental of metal
shipping containers]. In each of those cases, the Board
held that the TLD “.com” had no source-indicating
significance, and did not turn an otherwise unregistrable
designation into a distinctive registrable mark.
In finding that the designation DIAPERS.COM is
generic, we recognize that the examining attorney has
presented no evidence of generic use of this designation.
It has been held that compound words may be refused as
Ser No. 77141701
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generic when definitions of the individual terms that are
joined to create the compound show that such terms are
generic. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d
1110 (Fed. Cir. 1987). Generic terms coupled with a TLD
are considered compound words. See CyberFinancial.Net and
Martin Container, supra. In this case, therefore, we have
a compound formed by joining the generic term “diapers” and
the generic TLD “.com.” Thus, under Gould, the evidence of
the genericness of “diapers” and “.com” is sufficient to
demonstrate that the compound term DIAPERS.COM is generic.
In other words, the absence of evidence of generic use of
DIAPERS.COM does not compel a different result herein.
For the foregoing reasons, we find that the
designation DIAPERS.COM is generic for applicant’s on-line
retail store services featuring baby-care products and
accessories. Thus, DIAPERS.COM is incapable of
distinguishing applicant’s services, and it is not
registrable on the Supplemental Register.
Decision: The refusal to register is affirmed.