Keith Berry

Trademark Trial and Appeal Board

Mar 5, 2003

No. 75932300 (T.T.A.B. Mar. 5, 2003)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
Trademark Trial and Appeal Board
____________
In re Keith Berry
____________
Serial No. 75/932,300
____________
Anthony O. Cormier for Keith Berry.
Lourdes D. Ayala, Trademark Examining Attorney, Law Office
106 (Mary Sparrow, Managing Attorney).
____________
Before Seeherman, Hanak and Hohein, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
Keith Berry (applicant) seeks to register PetRx.com in
the form shown below for “retail services featuring pet
pharmacy products via the global computer network” (Class
35) and “providing an on-line computer database in the
field of pets” (Class 42). The application was filed on
March 1, 2000 with a claimed first use date as to both
types of services of February 7, 2000.
Ser. No. 75/932,300
2
Citing Section 2(e)(1) of the Trademark Act, the
Examining Attorney has refused registration on the basis
that applicant’s mark is merely descriptive of applicant’s
services. When the refusal to register was made final,
applicant appealed to this Board. Applicant and the
Examining Attorney filed briefs. Applicant did not request
a hearing.
As has been stated repeatedly, “a term is merely
descriptive if it forthwith conveys an immediate idea of
the ingredients, qualities or characteristics of the goods
[or services].” In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978); Abercrombie & Fitch Co.
v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759, 765 (2nd
Cir. 1976). Moreover, the descriptiveness of a term is
decided not in the abstract, but rather is decided in
relationship to the goods or services for which
registration is sought. Abcor Development, 200 USPQ at
218.
The crux of applicant’s argument that its mark
PetRx.com is not merely descriptive is best summarized at
page 6 of applicant’s brief as follows:
A prescription is not, however, the same as the drugs
or medications themselves. Applicant’s website offers
medications but it does not offer prescriptions.
Applicant might be characterized as an online
pharmacy but it is not an online prescription and it
Ser. No. 75/932,300
3
is not an online source for prescriptions.
Applicant readily concedes that Rx “is the
conventional symbol for a written prescription.”
(Applicant’s brief page 5). Applicant then argues that Rx
“is not the equivalent of or alternative term for
medications or pharmaceutical products that are the subject
of prescriptions.” (Applicant’s brief page 5).
However, the symbol Rx has more than one meaning. In
this regard, reference is made to applicant’s response
dated December 18, 2002 to which it attached a dictionary
definition of Rx from an unnamed dictionary. This
dictionary makes clear that Rx stands not only as the
“symbol for prescription,” but also as “a remedy, cure, or
the like.” In other words, applicant’s own chosen
dictionary definition for Rx indicates that this symbol
means not only a written prescription, but also the
medications themselves.
Thus, with regard to applicant’s Class 35 services
(retail services featuring pet pharmacy products via the
global computer network), applicant’s mark PetRx.com
clearly informs consumers that applicant’s services feature
the providing of prescription (Rx) medications for pets via
a global computer network. Likewise, with regard to
applicant’s Class 42 services (providing an on-line
Ser. No. 75/932,300
4
computer database in the field of pets), applicant’s mark
PetRx.com readily informs consumers that this database
deals with prescription medications for pets. Accordingly,
applicant’s mark forthwith conveys an immediate idea of the
qualities or characteristics of both applicant’s Class 35
services and of applicant’s Class 42 services.
One final comment is in order. Applicant has never
argued that the “.com” portion of its mark causes the mark
to be not merely descriptive. Indeed, we find that the
“.com” portion of applicant’s mark readily brings to mind a
global computer network (applicant’s Class 35 services) or
an on-line computer database (applicant’s Class 42
services). In addition, this Board has on various
occasions held that the designation “.com” has no trademark
or service mark significance. See In re
CyberFinancial.Net, Inc. __ USPQ2d__ (TTAB 2002) and In re
Martin Container Inc., 65 USPQ2d 1058, 1060 (TTAB 2002).
Decision: The refusal to register is affirmed as to
both classes of services.