MetalSite, L. P.

Trademark Trial and Appeal Board

Sep 12, 2001

No. 75558690 (T.T.A.B. Sep. 12, 2001)

9/12/01 Paper No. 15

GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re MetalSite, L.P.
________

Serial No. 75/558,690
_______

Michael G. Panian of Buchanan Ingersoll, P.C. for MetalSite,
L.P.

Elizabeth M. Seltzer, Trademark Examining Attorney, Law Office
112 (Janice O'Lear, Managing Attorney).
_______

Before Hohein, Walters and Chapman, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

MetalSite, L.P. has filed an application to register
the term "METALSITE" as a service mark for "providing on line
information via a web page on the global computer network
pertaining to the sale and purchasing of steel, copper, brass
and aluminum" in International Class 35; "providing on line
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/558,690
2
information via a web page on the global computer network
pertaining to the trading of steel, copper, brass and aluminum"
in International Class 36; and "providing a web page on the
global computer network for interactive user exchange of
information, news and publications relating to the steel,
copper, brass and aluminum industry" in International Class 42.1
Registration has been finally 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 term "METALSITE" is merely descriptive of them.
Applicant has appealed. Briefs have been filed,2 but
an oral hearing was not held.3 We affirm the refusal to
register.

1 Ser. No. 75/558,690, filed on September 24, 1998, which alleges a
bona fide intention to use such term in commerce.

2 Applicant, with its brief, has attached thereto printouts from "the
Merriam-Webster Collegiate Dictionary, on-line version[,] of the
definition[s] for 'metal' [and 'heavy metal']" and printouts of
"several pages from a search conducted in the AltaVista website
directed to the term 'metal' and 'Site,'" including "a copy of the
references found" by "extending the search under the term 'Learn more
about metal site a Britannia.com'." While such evidence is plainly
untimely under Trademark Rule 2.142(d), which provides that the record
in an application should be complete prior to the filing of an appeal
and that the Board will ordinarily not consider additional evidence
submitted after an appeal is filed, we have considered the dictionary
definitions inasmuch as it is settled that the Board may properly take
judicial notice thereof. See, e.g., Hancock v. American Steel & Wire
Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953);
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983); and Marcal Paper Mills, Inc. v. American Can
Co., 212 USPQ 852, 860 (TTAB 1981) at n. 7. However, as to the
remaining evidence offered for the first time with applicant's brief,
Ser. No. 75/558,690
3
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it forthwith conveys
information concerning any significant ingredient, quality,
characteristic, feature, function, purpose, subject matter 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, 217-18 (CCPA 1978). It is
not necessary that a term describe all of the properties or
functions of the goods or services in order for it to be
considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or idea
about them. Moreover, 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 or is intended to be used on or in connection
with those goods or services and the possible significance that
the term would have to the average purchaser of the goods or

we note that although the Examining Attorney has not formally objected
thereto as being untimely, neither has she discussed such evidence in
her brief or otherwise treated it as being of record. Accordingly,
such evidence will not be given further consideration. Compare In re
Nuclear Research Corp., 16 USPQ2d 1316, 1317 (TTAB 1990) at n. 2.
Nonetheless, it is pointed out that even if the additional evidence
were to be considered to be of record, consideration thereof would
make no difference in the outcome of this appeal.

3 Although applicant requested an oral hearing and a date therefor was
scheduled, applicant subsequently submitted a waiver of such hearing.
Ser. No. 75/558,690
4
services because of the manner of such use. See In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Thus, "[w]hether
consumers could guess what the product [or service] is from
consideration of the mark alone is not the test." In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant contends that the term "METALSITE" is
suggestive of its various services because "it requires
imagination, thought and perception to determine that
'METALSITE' refers to an integrated internet service for the
exchange of information, as well as the purchase and sale [and
trading] of steel, cooper [sic], brass and aluminum over the
internet." In particular, applicant asserts that while the on-
line version of Merriam-Webster's Collegiate Dictionary defines
"metal" as a noun meaning, among other things, "1 : any of
various opaque, fusible, ductile, and typically lustrous
substances that are good conductors of electricity and heat,
form cations by loss of electrons, and yield basic oxides and
hydroxides; especially : one that is a chemical element as
distinguished from an alloy," such dictionary also lists the
term as signifying "6 : HEAVY METAL," which, in turn, is defined
as connoting "energetic and highly amplified electronic rock
music having a hard beat." Thus, according to applicant, "the
term 'METALSITE' does not automatically convey to a potential
user of the site that it is for the on-line sale of and
Ser. No. 75/558,690
5
providing information for steel, cooper [sic], brass and
aluminum via electronic means" and is "not for providing
information concerning rock music." In view thereof, applicant
"respectfully submits that the mark is highly suggestive and
that any doubts as to the 'descriptive' nature of Applicant's
mark should be resolved in Applicant's behalf" in accordance
with the Board's practice.4
The Examining Attorney, on the other hand, maintains
that the term "METALSITE, consisting of the combination of two
descriptive terms METAL and SITE, when considered in its
entirety, directly conveys information about the nature of
Applicant's services, i.e., that they pertain to a website
(site) pertaining to metal." Of record in support of the
Examining Attorney's position is a definition from the
electronic version of The American Heritage Dictionary of the
English Language (3rd ed. 1992) which lists "metal" as meaning,
inter alia, "1. ... Any of a category of electropositive
elements that usually have a shiny surface, are generally good
conductors of heat and electricity, and can be melted or fused,
hammered into thin sheets, or drawn into wires. Typical metals
form salts with nonmetals, basic oxides with oxygen, and alloys
with one another. 2. An alloy of two or more metallic

4 See, e.g., In re Conductive Systems, Inc., 220 USPQ 84, 86 (TTAB
1983); In re Morton-Norwich Products, Inc., 209 USPQ 791 (TTAB 1981);
Ser. No. 75/558,690
6
elements. 3. An object made of metal." Also of record is a
printout of a page from an electronic dictionary, PC Webopaedia,
which defines "site" as "[s]hort for Web site" (underlining in
original), and a printout of a page from the web site
http://whatis.com, which, in turn, sets forth a definition of
"Web site" as "a collection of Web files on a particular subject
that includes a beginning file called a home page" (underlining
in original). In addition, the record includes a number of
third-party registrations for marks which contain the term
"SITE" and are either registered on the Supplemental Register
and/or include disclaimers of such term in relation to various
on-line services and services offered via web sites.
The above evidence, the Examining Attorney argues,
"demonstrates that the common commercial meaning of the term
METAL identifies a category of electropositive elements, such as
steel, copper, brass and aluminum and that [the term] SITE, in
the context of web-based services, means 'web site'." In view
thereof, the Examining Attorney concludes that:
The individual terms METAL and SITE are
therefore two fairly common words with
readily understood meanings. Moreover, when
such terms are combined to form the word
METALSITE, the overall combined word
produces a [merely] descriptive
significance, namely identifying a site
about metal, particularly in light of the

and In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972).

Ser. No. 75/558,690
7
Applicant's services involving web sites
pertaining to metals.

As to applicant's assertion that the term "METALSITE" may also
connote in the abstract a web site devoted to heavy metal music,
the Examining Attorney insists that such possible connotation
does "not negate the significance of the terms METAL, SITE and
METALSITE in relation to the Applicant's web sites pertaining to
metals" and correctly notes, as indicated previously, that the
question of mere descriptiveness must be considered in relation
to the applicant's particular services as recited in the
application.
In the present case, we agree with the Examining
Attorney that, when used in connection with the services of
providing on-line information via a web page on the global
computer network which pertains to the sale and purchasing of,
and the trading of, steel, copper, brass and aluminum, and a web
page on such network for interactive user exchange of
information, news and publications relating to the steel,
copper, brass and aluminum industry, the term "METALSITE"
immediately describes, without conjecture or speculation,
significant information concerning the purpose, subject matter
or nature of such services, namely, that they are web sites
pertaining to metal, which would include steel, copper, brass
and aluminum. Plainly, when viewed in the context of
Ser. No. 75/558,690
8
applicant's services, rather than in the abstract as urged by
applicant, persons desiring to find information on the Internet
which pertains to the sale and purchase of metal, the trading of
metal, and/or the interactive exchange of information, news and
publications relating to the metal industry will indeed know
directly, without the need for the exercise of imagination,
cogitation or mental processing or the gathering of further
information, that applicant's various "METALSITE" services are
web sites on the global computer network which are devoted to
aspects of information about metal, such as steel, copper, brass
and aluminum. There is simply nothing in the term "METALSITE"
which, in the context of applicant's services, is ambiguous,
incongruous or susceptible, perhaps, to any other plausible
meaning.
Accordingly, because the term "METALSITE" conveys
forthwith significant information concerning the purpose,
subject matter or nature of applicant's Internet-based services,
it is merely descriptive thereof within the meaning of the
statute. See, e.g., In re Putnam Publishing Co., 39 USPQ2d
2021, 2022 (TTAB 1996) ["FOOD & BEVERAGE ON-LINE" for "a news
and information service updated daily for the food processing
industry, contained in a database" held merely descriptive
because the term "ON-LINE" describes the mode through which the
service is rendered and the term "FOOD & BEVERAGE" describes its
Ser. No. 75/558,690
9
subject matter; thus, "the relevant class of consumers will
immediately understand, without the need for imagination,
thought or perception, that applicant's FOOD & BEVERAGE ON-LINE
news and information service provides food and beverage news and
information via interactive computer access"].
Decision: The refusal under Section 2(e)(1) is
affirmed.