Start-A-Business.Com, Inc.

Trademark Trial and Appeal Board

Jan 11, 2005

No. 76158423 (T.T.A.B. Jan. 11, 2005)

01/11/2005
THIS OPINION IF NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
Trademark Trial and Appeal Board
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In re Start-A-Business.Com, Inc.
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Serial No. 76158423
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Gerard F. Dunne, Esq. for Start-A-Business.Com, Inc.
Leslie L. Richards, Trademark Examining Attorney, Law
Office 106 (Mary I. Sparrow, Managing Attorney).
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Before Hanak, Walters and Bucher, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Start-A-Business.Com, Inc. (applicant) seeks to
register in typed drawing form START A BUSINESS.COM for
“business services, namely, preparing incorporation papers
for businesses.” The application was filed on November 2,
2002 with a claimed first use date of December 13, 1998.
Citing Section 2(e)(1) of the Trademark Act, the
Examining Attorney refused registration on the basis that
applicant’s mark is merely descriptive of applicant’s
services. When the refusal to register was made final,
Ser. No. 76158423
2
applicant appealed to this Board. Applicant and the
Examining Attorney filed briefs. Applicant did not request
an oral hearing.
A mark is merely descriptive pursuant to Section
2(e)(1) of the Trademark Act if it immediately conveys
information about a significant quality or characteristic
of the relevant goods or services. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast
Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed. Cir. 1986).
Of course, it need hardly be said that the mere
descriptiveness of a mark is judged not in the abstract,
but rather is judged in relationship to the goods or
services for which the mark is sought to be registered. In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 216
(CCPA 1978). Finally, a mark need describe only one
significant quality or characteristic of the relevant goods
or services in order to be held merely descriptive. In re
Gyulay, 3 USPQ2d at 1010.
At the outset, we note that there is no dispute that
applicant’s service of preparing incorporation papers for
businesses is rendered via the Internet. Applicant’s
specimen of use is a printout of its web page. The first
sentence on this web page reads as follows: “Welcome to
START A BUSINESS.COM – your one source on the Internet for
Ser. No. 76158423
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nationwide and offshore incorporation services, domain name
registration and much more!”
It is the Examining Attorney’s position that when used
in connection with preparing incorporation papers for
businesses, the “mark” START A BUSINESS.COM will
immediately inform prospective customers that they can
start a business by the process of incorporation. The
Examining Attorney notes that the phrase “start a business”
is very frequently used in connection with the process of
incorporation. In this regard, the Examining Attorney has
made of record dozens of articles from various newspapers
and magazines where the common phrase “start a business” is
used in connection with the process of incorporation. For
example, an article appearing in the July 23, 2001 edition
of the Albuquerque Tribune reads, in part, as follows: “So
you want to start a business? Then start thinking about
incorporation issues, such as share values, voting
corporate members, structure … where to incorporate and
preferred stock.” An article appearing in the May 7, 1993
edition of the Journal of Commerce reads, in part, as
follows: “Unlike ocean freight forwarders, which are
regulated by the Federal Maritime Commission, overland
freight forwarders need only incorporate themselves to
Ser. No. 76158423
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start a business. They face little federal regulation and
no ownership restrictions.”
There are numerous articles which discuss how it has
become easier and thus more common to start a business by
incorporating. For example, the October 30, 2002 edition
of The Cincinnati Enquirer contains the following passage:
“Since becoming secretary of state in 1998, J. Kenneth
Blackwell says he has modernized the office and made it
easier for Ohioans to start a business. ‘When I took over,
it was taking 15 to 18 weeks to incorporate a business in
Ohio. With the introduction of new technology we’ve gotten
that down to one to three days,’ he said. ‘We are now
recognized as a technology leader.’” An article appearing
in the June 23, 1996 edition of the News and Observer
(Raleigh, North Carolina) contains a paragraph conveying a
similar message: “The impulse to start a business
definitely has caught on in North Carolina. The number of
new businesses incorporated statewide in 1994 jumped a
robust 10.5 percent to 14,830 according to the U.S. Small
Business Administration.” Finally, an article appearing in
the February 8, 1993 edition of Business First – Buffalo
likewise conveys a similar message, as reflected in the
following passage: “Western New York entrepreneurs
appeared to gain confidence as the year progressed, but
Ser. No. 76158423
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they never seemed to be totally convinced that 1992 was a
good time to start a business. The first half of the year
mirrored the low number of incorporations in Erie and
Niagara counties in 1991.”
The foregoing are but a small number of the numerous
articles made of record by the Examining Attorney where the
common phrase “start a business” is used in connection with
the act of incorporating. It is our view that applicant’s
“mark” START A BUSINESS.COM – as applied to the services of
preparing incorporation papers for businesses – clearly
informs prospective customers that applicant will assist
them in starting a business by preparing the necessary
incorporation papers. Accordingly, we find that as applied
to “business services, namely, preparing incorporation
papers for businesses,” the term START A BUSINESS.COM is
most decidedly merely descriptive pursuant to Section
2(e)(1) of the Trademark Act. Hence, we affirm the refusal
to register.
In an effort to demonstrate that its “mark” is not
merely descriptive as applied to its services, applicant
raises essentially three arguments. First, at page 1 of
its brief applicant states that in order to fully “start a
business,” an individual(s) would not only need to have
prepared the appropriate incorporation papers, but in
Ser. No. 76158423
6
addition that individual(s) “would likely need to
accomplish many things such as secure financing, devise a
business plan, rent space, hire employees, open a checking
account, choose a name, and the like.” We do not disagree
with applicant. However, applicant never disputes the fact
that the initial step (the starting step) in establishing a
corporation is to have properly prepared the appropriate
incorporation papers. Thus, applicant’s “mark” START A
BUSINESS.COM is clearly descriptive of the initial act (the
starting act) in establishing a corporation, namely, the
preparation of the appropriate incorporation papers.
Second, at page 2 of its brief, applicant argues that
while some of its customers are individuals who have no
existing business and come to applicant in order to have
prepared the appropriate incorporation papers, other
customers of applicant are established businesses who come
to applicant for the purpose of “changing a partnership or
joint venture to a corporation.” Continuing, applicant
then argues at page 2 of its brief that applicant’s
“services, in such cases, would not be provided to those
‘starting’ a business.” Even assuming purely for the sake
of argument that applicant’s “mark” START A BUSINESS.COM is
not merely descriptive of applicant’s services of preparing
incorporation papers when the businesses have already been
Ser. No. 76158423
7
“started” in some other form, nevertheless, applicant’s
mark is clearly descriptive in the context of those
customers of applicant who have no existing business and
are literally starting a business by having applicant
prepare the incorporation papers. At a minimum,
applicant’s “mark” START A BUSINESS.COM is merely
descriptive of at least one quality or characteristic of
applicant’s services, namely, when applicant’s services are
utilized by individuals who have no pre-existing business
such as a sole proprietorship or partnership. As noted
much earlier in this opinion, a mark need describe only one
significant quality or characteristic of applicant’s
services in order to be held merely descriptive. Gyulay, 3
USPQ2d at 1010. Moreover, we note that even when
applicant’s services are furnished to existing businesses
such as sole proprietorships or partnerships, said services
are still described by applicant’s “mark” START A
BUSINESS.COM. In such situations, applicant’s services of
preparing incorporation papers result in the “starting” of
a new form of business, namely, a corporation.
Third, at pages 2 and 3 of its brief applicant
correctly notes that in order to be held merely
descriptive, a mark must describe the relevant services
with a “degree of particularity.” In this regard,
Ser. No. 76158423
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applicant cites In re TMS Corporation of the Americas, 200
USPQ 57 (TTAB 1978) and In re Entenmann’s Inc., 15 USPQ2d
1750 (TTAB 1990) aff’d unpublished Fed. Cir. February 13,
1991. However, applicant then proceeds to raise to the
following rhetorical question: “How does the term ‘start a
business’ immediately and forthwith convey with a degree of
particularity the preparation of incorporation papers?” In
raising this rhetorical question, applicant totally ignores
a fundamental principle (set forth earlier in this opinion)
in determining whether a word or term is merely
descriptive. That fundamental principle is that the mere
descriptiveness of a mark is not judged in the abstract,
but rather is judged in relationship to the goods or
services for which the mark is sought to be registered.
Abcor, 200 USPQ at 216. We agree that the term “start a
business” does not name the services of preparing
incorporation papers for businesses. If it did, the said
term would not be merely descriptive, but rather would be
generic. However, when used in connection with the
services of preparing incorporation papers for businesses,
the “mark” START A BUSINESS.COM clearly describes at least
one significant characteristic of said services.
One final comment is in order. At no time during this
proceeding has applicant ever argued that if it were proven
Ser. No. 76158423
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that the phrase START A BUSINESS was merely descriptive of
applicant’s services, that the addition of .COM would cause
the “mark” in its entirety (START A BUSINESS.COM) to be not
merely descriptive. However, on the remote chance that
applicant should raise this argument on appeal, we wish to
note that it has long been held that the addition of a “top
level domain indicator like ‘.com’ does not turn an
otherwise unregisterable designation into a distinctive,
registerable trademark [or service mark].” 1 J. McCarthy,
McCarthy on Trademarks and Unfair Competition, Section
7:17.1 at pages 7-28.1 to 7.29 (4th ed. 2002). See also
Brookfield Communications v. West Coast Entertainment
Corp., 174 F.3d 1036, 50 USPQ2d 1545, 1558 (9th Cir. 1999)
(“The ‘.com’ top-level domain [merely] signifies the site’s
commercial nature.”).
Decision: The refusal to register is affirmed.