Interactive Media Communications

Trademark Trial and Appeal Board

May 26, 2009

No. 76668415 (T.T.A.B. May. 26, 2009)

Oral Hearing: Mailed:
April 30, 2009 May 26, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Interactive Media Communications
________

Serial No. 76668415
_______

Steven A. Gibson of Gibson Lowry Burris LLP for Interactive
Media Communications.

Janice Kim, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______

Before Rogers, Kuhlke and Taylor, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

On November 1, 2006, Interactive Media Communications,
applicant, filed a use-based application under Trademark
Act Section 1(a), 15 U.S.C. §1051(a), to register the mark
shown below for “computer services, namely, hosting online
web facilities for members for interactive discussions;
computer services in the nature of customized web pages
featuring user-defined information, personal profiles,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 76668415
2
photographs and information; providing a search engine for
members to locate other members” in International Class 42.1

Registration has been refused pursuant to Section 6(a) of
the Trademark Act, 15 U.S.C. §1056(a), based on applicant’s
failure to comply with the requirement to disclaim the
descriptive wording STRIPPER SOCIETY.COM on the ground that
it is merely descriptive of applicant’s services within the
meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C.
1052(e)(1).
When the refusal was made final, applicant appealed.
The appeal is fully briefed and an oral hearing was held on
April 30, 2009. We affirm the refusal of registration in
the absence of a disclaimer.
An examining attorney may require an applicant to
disclaim an unregistrable component of a mark otherwise
registrable. Trademark Act Section 6(a). Merely
descriptive terms are unregistrable, under Trademark Act
Section 2(e)(1) and, therefore, are subject to disclaimer
if the mark is otherwise registrable. Failure to comply
with a disclaimer requirement is grounds for refusal of

1 The application includes a statement that color is not claimed
as a feature of the mark.
Ser No. 76668415
3
registration. See In re Omaha National Corp., 819 F.2d
1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink
Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re National
Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); and In
re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB
1968).
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. See, e.g., In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
A term need not immediately convey an idea of each and
every specific feature of the applicant’s goods or services
in order to be considered merely descriptive; it is enough
that the term describes one significant attribute, function
or property of the goods or services. See In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates,
180 USPQ 338 (TTAB 1973).
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 those goods or
Ser No. 76668415
4
services, and the possible significance that the term would
have to the average purchaser of the goods or services
because of the manner of its use. That a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Finally, “[a] mark can be descriptive if it describes the
intended users of the goods or services.” In re
Planalytics, Inc., 70 USPQ2d 1453, 1454 (TTAB 2004).
The examining attorney argues that the wording
STRIPPER SOCIETY.COM:
...merely describes the intended users and the
nature of Applicant’s computer services...the
members of applicant’s computer services who
‘engage in the interactive discussions,’ ‘who
customize their web pages with user-defined
information, personal profiles, photographs and
information,’ and ‘who use the search engines to
seek other members’ will be a social circle of
STRIPPERS with common interests, or a STRIPPER
SOCIETY. Moreover, STRIPPER SOCIETY.COM also
conveys the overall nature of applicant’s
computer services. Applicant’s ‘hosting of
online web facilities for members for interactive
discussions’ and ‘search engines for members to
locate other members’ create a forum or outlet
for STRIPPERS to gather and interact with one
another on the basis of common interests. In
other words, the computer services facilitate the
voluntary association of STRIPPERS online, and
thus create an online STRIPPER SOCIETY.

Br. pp. 4-5.
Ser No. 76668415
5
In support of the refusal, the examining attorney
referenced the following dictionary definitions for the
word STRIPPER submitted by applicant:
A person who performs a striptease.
Dictionary.com based on the Random House
Unabridged Dictionary (2006);

One who performs a striptease. The American
Heritage Dictionary of the English Language (4th
ed. 2006); and

A performer who provides erotic entertainment by
undressing to music. WordNet (2006)
www.dictionary.com retrieved September 13, 2007.

In addition, we grant the examining attorney’s request
that we take judicial notice of the following definition
for SOCIETY, and therefore consider this definition also to
be of record in support of the refusal:2
1) a voluntary association of individuals for
common ends, especially an organized group
working together or periodically meeting because
of common interests beliefs, or professions; or
2) a social circle or group of social circles
having a clear marked identity. Merriam-
Webster’s Dictionary Dictionary of the English
Language (2008).

We find that the examining attorney has made a prima
facie case that the wording STRIPPER SOCIETY.COM used in

2 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983); see also In re Red Bull GmbH, 78 USPQ2d 1375,
1378 (TTAB 2006). We have also considered the various
alternative definitions submitted by applicant in its reply brief
but find the definition above to be the most relevant.

Ser No. 76668415
6
connection with applicant’s online services is descriptive.
This wording clearly describes both a category of users or
members, namely, strippers, and a subject matter of the
computer services, namely, an online society of strippers.
Each element of the proposed mark is descriptive and when
combined these elements do not lose their descriptive
significance. In the context of applicant’s services,
contrary to applicant’s argument, the other meanings of
STRIPPER (e.g., a chemical compound to remove paint or
varnish) are not relevant. Moreover, because the
identification of services is not limited to a particular
field, while it could encompass services in the field of
paint stripping, it also encompasses the relevant field in
which applicant makes actual use of the designation, namely
a website for strippers, i.e., exotic dancers. The word
SOCIETY informs the consumer that the website is designed
for people defined by a common interest and the .COM
portion is simply a TLD or top-level-domain which is “the
highest level domain category in the Internet domain naming
system [of which t]here are two types: the generic top-
level domains, such as .com, .org, and .net....” McGraw
Hill Computer Desktop Encyclopedia 977 (9th ed. 2001).
University of Notre Dame, 213 USPQ 514.
Ser No. 76668415
7
Applicant’s argument that the examining attorney
“inappropriately based her conclusion of descriptiveness on
the Examining Attorney’s perceptions of the use of the
STRIPPER SOCIETY.COM mark in commerce and not on the
language set forth in Applicant’s mark registration,” Br.
p. 3, is not persuasive. It is appropriate for an
examining attorney to review an applicant’s website for
context “to inform [her] understanding of the term.” In re
Reed Elsevier Properties Inc., 482 F.3d 1376, 82 USPQ2d
1378, 1380 (Fed. Cir. 2007), citing, In re
Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420 (Fed. Cir.
2005). In the case before us, the examining attorney used
the specimen of use submitted by applicant to “inform” her
understanding of applicant’s services. Below are excerpts
from the specimen of use:

Ser No. 76668415
8

As can be seen from the specimen of use, applicant’s
services are, at least in part, directed to the interests
of and provide information about strippers.
The facts of this case are similar to those presented
in In re DNI Holdings Ltd., 77 USPQ2d 1435 (TTAB 2005)
(SPORTS BETTING.COM held to be generic for “provision of
casino games on and through a global computer network
wherein there are no actual monetary wagers; provision of
contests and sweepstakes on and through a global computer
network; providing a web site on and through a global
computer network featuring information in the fields of
Ser No. 76668415
9
gaming, athletic competition and entertainment”).3 In DNI
Holdings, the Board characterized applicant’s argument as
follows:
Applicant argues that even if it is true that
applicant is providing services through its
website wherein consumers are actually able to
wager money on sports, applicant is not seeking
registration for these services. In fact, it
specifically limited the claimed services so as
to exclude monetary wagering. As a result,
applicant argues that the Trademark Examining
Attorney’s refusal to register its mark, based
upon genericness for services not claimed by
applicant, cannot stand.

DNI Holdings, 77 USPQ2d at 1437.
In response to this argument the Board stated, “[I]t
is clear that the analytical focus on the recitation of
services is based on the premise that the recitation
accurately reflects actual conditions of use of the
involved term.” Id. at 1438. Finally, the Board noted
that even if it were “constrained to ignore the realities
of use actually made by applicant because applicant has
purposely drafted a description omitting that use ...
applicant’s recitation of services includes the providing
of a website ‘featuring information in the fields of
gaming, athletic competition and entertainment’...[and this

3 It appears the attorney representing the applicant in DNI
Holdings may be the same as applicant’s attorney here. We note
this application was filed nearly a year after the decision in
DNI Holdings issued.
Ser No. 76668415
10
recitation] still clearly includes that of providing
information regarding sports and betting.” Id. at 1438.
Similarly, here, as noted above, even without looking
at applicant’s actual use, the broadly defined services in
the identification encompass the uses for which the wording
STRIPPER SOCIETY.COM is descriptive. As applicant states,
the “application sets forth no restrictions regarding the
categories into which users of Applicant’s services must
fall, e.g., ‘STRIPPERS, clubs, and[/or] clientele’...” Br.
p. 6. Thus, strippers are not excluded from being a
category of users or “members” of applicant’s services.
Applicant argues that “the Claimed Services do not contain
any aspect of the Text, nor are any parts of the
definitions of the texts ‘STRIPPER’ or ‘SOCIETY’
incorporated into the Claimed Services, even as the
Examining Attorney attempted to define those terms.” Reply
Br. p. 8. However, because they are not excluded they are
encompassed by the “Claimed Services.”
Applicant is correct in its statement of the law that
our determination must be made “in relation to the goods or
services for which registration is sought, not in the
abstract.” Reply Br. p. 3, quoting, TMEP §1209.01(b). We
add that an application for registration must be made in
relation to the goods or services which applicant uses or
Ser No. 76668415
11
has a bona fide intent to use, not in the abstract.
Following applicant’s logic, applicant would be allowed to
register the mark based on non-descriptive uses of its
services that could occur, for example, a florist using the
website STRIPPER SOCIETY.COM to engage in interactive
discussions about flowers, despite the fact that its
primary use is by strippers to engage in interactive
discussions about the business of stripping. However,
applicant may not in good faith sign a document swearing to
use in connection with services it does not actually
provide.
Applicant also argues that “the examining attorney did
not provide any evidence that an average purchaser would
likely perceive that the term ‘STRIPPER’ ‘describes the
intended user or the subject of the website.’” Br. p. 7.
However, as noted above, applicant provided such evidence
in its specimen of use.
Applicant further argues that “the components of the
Mark, when juxtaposed with one another, are inventive and
require at least a mental leap in the mind of the consumer
to understand that the services to be provided under the
Mark consist of web hosting or search engines.” Br. p. 8.
We find that it does not take any mental leap to conclude
that STRIPPER SOCIETY.COM describes who the members are in
Ser No. 76668415
12
the identified services and that the services are computer
related. Moreover, the combination of these terms does not
create a unique or incongruous phrase.
Finally, both applicant and the examining attorney
submitted third-party registrations to show that the USPTO
has alternatively treated the word SOCIETY as descriptive
or not descriptive by sometimes requiring a disclaimer of
the term and sometimes not requiring a disclaimer. The
most that can be said of this evidence is that it is
inconclusive. In fact, these registrations highlight why
prior decisions in other applications are not binding on
the Board and underscore the need to evaluate each case on
its own record. In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564 (Fed. Cir. 2001).
Applicant correctly states that in cases of refusals
under Section 2(e)(1) we must resolve doubt in favor of
applicant; however, we have no such doubt in this case.
Thus, the disclaimer requirement is appropriate. In
view of the above, the requirement to provide a disclaimer
for the wording STRIPPER SOCIETY.COM is affirmed.
Decision: The refusal to register based on the
requirement for a disclaimer of STRIPPER SOCIETY.COM
is affirmed. However, if applicant submits the
required disclaimer of STRIPPER SOCIETY.COM to the
Ser No. 76668415
13
Board within thirty days, this decision will be set
aside as to the affirmance of the disclaimer
requirement.4 See Trademark Rule 2.142(g), 37 C.F.R.
§2.142.

4 The standardized printing format for the required disclaimer
text is as follows: “No exclusive right to use STRIPPER
SOCIETY.COM is claimed apart from the mark as shown.” TMEP
1213.08(a) (5th ed. 2007).