URL Holdings Group LLC

Trademark Trial and Appeal Board

Apr 19, 2021

88396846 (T.T.A.B. Apr. 19, 2021)

Mailed: April 19, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re URL Holdings Group LLC
_____
Serial No. 88396846
_____
James David Johnson of Johnson & Martin, P.A.
for URL Holdings Group LLC.

Tina Brown, Trademark Examining Attorney, Law Office 118,
Michael W. Baird, Managing Attorney.
_____
Before Zervas, Adlin and Lynch, Administrative Trademark Judges.
Opinion by Adlin, Administrative Trademark Judge:
Applicant URL Holdings Group LLC seeks a Principal Register registration for
the proposed mark DEBT.COM, in standard characters, for:
Providing financial information to others concerning
saving; providing financial information to others
concerning budgeting for different stages of life and for
various life events; providing financial information to
others concerning saving money on groceries and
prescription drugs using coupons and discount cards and
programs; providing financial information to others
concerning budgeting for and saving money on food,
clothing, utility bills, weddings, and other goods and
services; providing information to others concerning taxes;
providing financial information to others concerning
building personal savings; providing financial information
to others concerning saving and planning for retirement;
providing financial information to others concerning how
This Opinion is Not a
Precedent of the TTAB
Serial No. 88396846
2
to create and follow a household budget; providing
financial information to others concerning how to teach
children how to manage money, in International Class 36.1

The Examining Attorney refused registration on the ground that the proposed mark
is merely descriptive of the identified services under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. § 1052(e)(1). After the refusal became final, Applicant appealed and
filed a request for reconsideration which was denied. The appeal is now fully briefed.
I. Evidence and Arguments
The Examining Attorney relies on the following dictionary definitions of the
proposed mark’s constituent terms:
DEBT—“an amount of money that you owe” and “a
situation in which you owe money to other people”2

dot-com [or dotcom]—“a company that uses the Internet
to sell its products and services”3
June 30, 2019 Office Action TSDR 7-9.
In addition, the Examining Attorney relies on Applicant’s use of the proposed
mark. For example, the “Who We Are” page of Applicant’s website, accessible at the
domain name/proposed mark “debt.com,” states:
Debt.com is comprised of journalists, financial experts,
certified credit counselors and industry veterans. We
offer consumer education, self-help guides, and
professional solutions. Debt.com offers daily expert advice
about money – how to make it, how to save it, and how to
spend it. We even tell you how to go into debt the right
way. (What do you think a mortgage and a car loan are?).

1 Application Serial No. 88396846, filed April 22, 2019 under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), based on first use dates of November 2, 2004.
2 https://www.macmillandictionary.com/dictionary/american/debt
3 https://www.macmillandictionary.com/dictionary/american/dot-com
Serial No. 88396846
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When you tell us your circumstances we introduce you
to the perfect debt-solution company for you ….

Id. at 11 (emphasis added). Similarly, as shown below, Applicant’s site provides
“financial education” and “guidance” about debt, with an explicit admission that
“some [of Applicant’s] education aims to sell products”:

Id. at 12 (emphasis added).
Portions of Applicant’s website address credit card debt relief, with the first “tip”
for “negotiating credit card debt” being “Have your bills and budget in front of you.”
January 21, 2020 Office Action TSDR 43 (emphasis added). In other words, the site
establishes a connection between debt and budgeting. Similarly, Applicant’s website
provides “How-To-Guides” designed “to overcome challenges with debt, credit and
your finances,” including guides on not only bankruptcy and debt, but also
“budgeting.” September 30, 2020 Office Action TSDR 43. Applicant’s website explains
the connection between budgeting and debt as follows: “Budgeting often gets a bad
rap for being a tremendous hassle. But maintaining a household budget is the
best way to avoid debt problems ….” Id. at 40 (emphasis added).
Serial No. 88396846
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The site also reveals a connection between taxes and debt. Under the heading
“Find Debt Relief” Applicant includes not only “credit card debt” but also “back taxes”:

January 21, 2020 Office Action TSDR 25 (emphasis added). Elsewhere, Applicant’s
site lists “back taxes” under the heading “IRS and State Tax Debt,” and offers
“professional help to negotiate with the IRS”:

Id. at 20 (emphasis added). Thus, back taxes are a form of debt.
Applicant also associates debt with retirement and saving. For example, its
website includes articles entitled “7 Ways to Reduce Debt to Have More Money for
Retirement” and “Should You Stop Saving for Retirement to Get Out of Debt?”
Serial No. 88396846
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September 30, 2020 Office Action TSDR 33, 35. It also includes a section headed
“Save Money to Avoid Debt.” Id. at 27 (emphasis added).
Finally, Applicant’s specimen of use, a portion of which is reproduced below,
connects debt with coupons, explaining that “Debt.com is not a daily deals or a coupon
site, but we’re big fans of using them. Anything that helps you save money and cut
costs to avoid adding more credit card debt is a good thing ….”:

The specimen also includes “credit card debt help” in the category of “debt relief”:

(emphasis added)
Based on this evidence, as well as a number of Applicant’s related registrations
and third-party registrations which she alleges are relevant, the Examining Attorney
Serial No. 88396846
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argues that “Applicant’s financial information services are provided online via a
website and all focus on ways to overcome or avoid a (sic) debt as a tool to improve
one’s financial situation.” 9 TTABVUE 5. According to the Examining Attorney, the
combination of “debt” and “.com” into the proposed mark DEBT.COM does not result
in a composite that is anything more than the sum of its parts, because “.com” merely
“indicates an Internet address for use by commercial, for-profit organizations” such
as Applicant. Id. at 6. In other words, “the proposed mark immediately and directly
informs a consumer that Applicant’s financial information services feature
information related to debt provided by a company online via a website.” Id.
For its part, Applicant relies on a large number of third-party registrations which
it alleges are relevant. Applicant argues, based on this evidence and its identification
of services, that its proposed mark is suggestive rather than merely descriptive.
Specifically, although Applicant’s proposed mark “is used in connection with the
provision of financial information, it is not related to online debt informational
services. Rather, Applicant provides financial strategies and information regarding
saving, managing, and budgeting money.” 7 TTABVUE 8. Applicant points out that
not only does its identification of services not include “online debt informational
services,” id., but it does not include the word “debt” at all. Applicant argues that “the
services in the instant application only incidentally would help consumers avoid debt
since saving is in certain respects the opposite of incurring debt, and thus, require
imagination, thought, and perception by consumers to arrive at the characteristics of
Applicant’s services because those services are not directly related to debt
Serial No. 88396846
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information (e.g., applying for a loan) or debt management (e.g., paying off a loan).”
10 TTABVUE 4-5.
II. Analysis
Applicant’s challenge to the descriptiveness refusal is based on two important and
valid points, one legal and one factual: (1) under controlling law, we do not consider
descriptiveness in the abstract, but rather in relation to the services for which
registration is sought, and we must consider whether someone who knows what the
services are will understand the mark to convey information about them4; and (2) as
a factual matter Applicant’s identification of services does not include the word
“debt.” We take no issue with either point.
Nevertheless, the record leaves no doubt that DEBT.COM is merely descriptive of
Applicant’s services because the term “immediately conveys knowledge of a quality,
feature, function, or characteristic” of them. In re Chamber of Commerce of the U.S.,
675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 82
USPQ2d at 1831); In re Abcor Dev., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). Specifically, as Applicant’s own website and specimen make clear, Applicant’s
identified “saving,” “budgeting,” “taxes” and “retirement” information services relate
directly to the acquisition or management of debt. See In re Reed Elsevier Props., Inc.,
482 F.3d 1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007) (“In determining the meaning
of ‘information exchange about legal services’ as defined by Reed’s application, the

4 See DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., 695 F.3d 1247, 103 USPQ2d
1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech Inc., 64 USPQ 2d 1314, 1316-17 (TTAB
2002)) and In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Serial No. 88396846
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board appropriately reviewed the www.lawyers.com website for context, to inform its
understanding of the term.”); In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d
1420 (Fed. Cir. 2005) (examining the applicant’s website in order to understand the
meaning of terms).
That is, money is fungible. As a result, every dollar earned or saved is a dollar
which can be applied to outstanding debt, thus reducing the amount owed. This is
also the case for dollars saved by negotiating with the government to reduce the
amount of back taxes owed, or with banks to reduce credit card debt. Thus, as
Applicant points out on its website in the context of coupons, “[a]nything that helps
you save money and cut costs” either reduces the need for additional debt, or enables
the repayment of debt, in an amount equal to the money saved.
Applicant’s website is based on just this, as reflected in Applicant’s identification
of services. Applicant’s identified services involve “providing financial information to
others concerning” ways to reduce or avoid debt, including “saving,” “budgeting,”
reducing back “taxes,” and “planning for retirement.”
For example, through its website, Applicant is, as set forth in its identification of
services, “providing financial information to others concerning how to create and
follow a household budget” when it points out that “maintaining a household budget
is the best way to avoid debt problems.” September 30, 2020 Office Action TSDR 40.
Similarly, Applicant is “providing financial information to others concerning taxes”
when it refers to back taxes as “debt” and offers “professional help to negotiate with
the IRS” to reduce that debt. January 21, 2020 Office Action TSDR 20, 25. Likewise,
Serial No. 88396846
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Applicant is “providing financial information to others concerning saving and
planning for retirement” when it offers “7 Ways to Reduce Debt to Have More Money
for Retirement,” answers the question “Should You Stop Saving for Retirement to Get
Out of Debt?” and advises “Save Money to Avoid Debt.” September 30, 2020 Office
Action TSDR 33, 35.
Applicant’s identified services are broad enough to encompass financial
information related to debt, because managing debt typically involves “saving” and
“budgeting,” and may very well involve reducing back “taxes” (a form of debt) or
“planning for retirement.” The record shows that the financial information Applicant
provides about saving, budgeting, reducing back taxes and retirement planning
relates to debt, in a number of ways. Applicant candidly admits on its website that
by “providing financial information to others” about these topics it “aims to sell
products.” June 30, 2019 Office Action TSDR 12. The “products” Applicant sells
include those offered by “the perfect debt-solution companies” Applicant introduces
to its customers seeking to reduce or avoid debt. In other words, debt is a
characteristic of Applicant’s identified “financial information” services, and
descriptive of them. See Reed Elsevier, 82 USPQ2d at 1380 (rejecting applicant’s
argument that the Board erred in considering all of the services offered on a website
rather than only the application’s identification of services which did not explicitly
refer to “lawyers,” because the services provided on the website are “inextricably
intertwined” with providing information about lawyers).
Serial No. 88396846
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While Applicant previously disclaimed DEBT.COM in Registration Nos. 4795942
and 4795943, asserted that the term has acquired distinctiveness in Registration No.
5481804 and registered the term on the Supplemental Register in Registration No.
3424863, as Applicant points out these registrations all identify “debt”-related
services explicitly in certain classes, using that term in the identification in contrast
to this case. Nonetheless, the Class 36 services in Applicant’s Supplemental Register
Registration No. 3231761 (“providing online information in the field of personal credit
and finance”) do not mention “debt” explicitly and are similar to some of the services
identified in the involved application. Because this registration is on the
Supplemental Register, it is additional evidence that the term DEBT.COM is
descriptive of at least providing online information in the field of personal credit and
finance. Otter Products LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1255-56 (TTAB
2012); Perma Ceram Enterprises Inc. v. Preco Indus., Ltd., 23 USPQ2d 1134, 1137
n.11 (TTAB 1992) (registration of a term on the Supplemental Register may be
evidence of descriptiveness). Similarly, Applicant’s Class 45 services in Registration
Nos. 4795942 and 4795943 (“providing online monitoring of credit reports to facilitate
the detection and prevention of identity theft and fraud”) do not mention “debt”
explicitly and are similar or related to some of the services identified in the involved
application. Applicant’s disclaimer of DEBT.COM in these registrations is also
probative of the term’s descriptiveness for its involved services in this case. Alcatraz
Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1762 (TTAB 2013),
aff’d, 565 Fed. Appx. 900 (Fed. Cir. 2014) and Bass Pro Trademarks LLC v.
Serial No. 88396846
11
Sportsman’s Warehouse Inc. 89 USPQ2d 1844, 1851 (TTAB 2008) (disclaimer is
evidence of a term’s descriptiveness). And Applicant’s reliance on Section 2(f) in
connection with Registration No. 5481804 (DEBT.COM for these same services) also
supports a finding that the term is descriptive of the term for the related services
identified in the involved application. Cold War Museum, Inc. v. Cold War Air
Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (where “an
applicant seeks registration on the basis of Section 2(f), the mark’s descriptiveness is
a nonissue; an applicant’s reliance on Section 2(f) during prosecution presumes that
the mark is descriptive”).
Applicant’s combination of “debt” with “.com” to form the proposed composite mark
DEBT.COM does not change the meaning of either constituent term. Just last year,
the United States Supreme Court recognized that BOOKING.COM is merely
descriptive of travel reservation services, as appellee Booking.com conceded. U.S.
Patent & Trademark Office v. Booking.com B.V., 140 S.Ct. 2298, 2020 USPQ2d 10729
* 7-8 (2020). This is consistent with many Board and Federal Circuit decisions
consistently holding that the top-level domain “.com” merely designates a commercial
organization in internet addresses, and is generally not inherently distinctive when
combined with descriptive terms to identify an online provider. See e.g. In re
1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1684 (Fed. Cir. 2009); In
re Hotels.com LP, 87 USPQ2d 1100, 1105 (TTAB 2008), aff’d, 573 F.3d 1300, 91
USPQ2d 1532 (Fed. Cir. 2009); Reed Elsevier, 82 USPQ2d at 1381. In other words, as
the Examining Attorney points out, because “.com” merely “indicates an Internet
Serial No. 88396846
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address for use by commercial, for-profit organizations … the proposed mark’s
component terms ‘DEBT’ and ‘.COM’ retain their individual meanings and result in
a merely descriptive composite mark.” 9 TTABVUE 6. Specifically, the proposed mark
DEBT.COM is nothing more than the sum of its parts, as it describes a commercial
entity providing debt-related information.5
III. Conclusion
The record leaves no doubt that DEBT.COM is merely descriptive of Applicant’s
services, which as identified encompass ways to reduce or avoid debt, including
“saving,” “budgeting” and reducing back taxes.

Decision: The refusal to register Applicant’s proposed mark on the Principal
Register because it is merely descriptive under Section 2(e)(1) of the Trademark Act
is affirmed.

5 We find the third-party registrations upon which Applicant relies, and many of those upon
which the Examining Attorney relies, are not probative. The marks in these registrations do
not include the term “debt” or the goods and services for which the marks are registered are
not related to those at issue in this case. Cf. Sweats Fashions, Inc. v. Pannill Knitting Co.,
833 F.2d 1560, 4 USPQ2d 1793, 1797 (Fed. Cir. 1987) (relying on registrations in which
SWEATS, the term in question, was disclaimed); In re Box Solutions Corp., 79 USPQ2d 1953,
1955 (TTAB 2006) (relying on registrations including SOLUTIONS, the term in question);
United Foods Inc. v. J.R. Simplot Co., 4 USPQ2d 1172, 1174 (TTAB 1987) (relying on third-
party registrations “in the food field” at issue). In any event, “[t]he Board must decide each
case on its own merits … Even if some prior registrations had some characteristics similar to
[an involved] application, the PTO’s allowance of such prior registrations does not bind the
Board or this court.” In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001); see also In re theDot Commc’ns. Network LLC, 101 USPQ2d 1062, 1067 (TTAB
2011) (citations omitted).