West Corp.

Trademark Trial and Appeal Board

Jul 31, 2008

No. 78739755 (T.T.A.B. Jul. 31, 2008)

Mailed: July 31, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re West Corp.
________

Serial No. 78739755
_______

Paul K. Braswell of Pearce Ferguson, PC for West Corp.

Michael G. Lewis, Trademark Examining Attorney, Law Office
111 (Craig D. Tayor, Managing Attorney).
_______

Before Hohein, Cataldo and Bergsman,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

West Corp. has applied to register the mark
CONFERENCECALL.COM in standard character form on the
Principal Register for the following services, as amended:
“telecommunications services, namely audio and video
teleconferencing.”1

1 Application Serial No. 78739755 was filed on October 25, 2005
based upon applicant’s assertion of July 7, 2000 as the date of
first use of the mark anywhere and in commerce in connection with
the services. Applicant subsequently amended the application to
seek registration under Trademark Act Section 2(f).

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78739755
2
The trademark examining attorney has refused
registration under Section 2(e)(1) of the Trademark Act on
the ground that applicant’s mark is generic, and thus
incapable of functioning as a source identifier. In
response, applicant argued that its mark is merely
descriptive of its services and amended its application to
seek registration under Trademark Act Section 2(f). The
examining attorney rejected applicant’s claim of acquired
distinctiveness and continued the refusal to register under
Trademark Act Section 2(e)(1) on the ground that the mark
is generic.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs on the
issue under appeal.
Applicant acknowledges that its CONFERENCECALL.COM
mark is merely descriptive of the services recited in its
subject application, but argues that such mark has acquired
distinctiveness as used in connection therewith. In
addition, applicant argues that the examining attorney has
failed to provide sufficient support for his argument that
CONFERENCECALL.COM is generic for applicant’s services.
The examining attorney argues that CONFERENCECALL.COM
is generic as applied to applicant’s recited services and
that, as a result, the designation is incapable of
Ser No. 78739755
3
acquiring distinctiveness under Trademark Act Section 2(f)
and is unregistrable. The examining attorney further
argues that applicant’s evidence is insufficient to support
its claim of acquired distinctiveness.
Evidentiary Matters
Before turning to the substantive ground for refusal,
we note that applicant has submitted several exhibits with
its brief. These exhibits consist of a printed “screen
shot” from applicant’s Internet web page; a printed copy of
a portion of the results of a search of “conference call”
on the Google Internet search engine; and a copy of
applicant’s previously submitted declaration in support of
its Section 2(f) claim. Inasmuch as the declaration is
already of record, its submission as an exhibit to
applicant’s brief is cumulative and, therefore,
unnecessary. With regard to the “screen shot” and Google
search results, we agree with the examining attorney that
these exhibits are untimely, and they have not been
considered. See Trademark Rule 2.142(d) (the record in the
application should be complete prior to the filing of an
appeal). We note, however, that had we considered these
exhibits in our determination of the issue on appeal, the
result would be the same.
Ser No. 78739755
4
In addition, the examining attorney submitted a
dictionary definition of “genus” in his brief on appeal.
It is settled that the Board may take judicial notice of
dictionary definitions, including online dictionaries,
which exist in printed format. See In re
CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB
2002); and 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). However,
inasmuch as we have not relied upon the examining
attorney’s proffered definition of “genus” in our
determination herein, we decline to take judicial notice
thereof.
Issues on Appeal
The issues on appeal are (1) whether the term
CONFERENCECALL.COM is generic for applicant’s services
under Trademark Act Section 2(e)(1); and, alternatively,
(2) if such term is not generic, but rather merely
descriptive of applicant’s services, whether it has
acquired distinctiveness under Trademark Act Section 2(f).
Genericness
A term is generic and not a mark if it refers to the
class, genus or category of goods and/or services on or in
connection with which it is used. See In re Dial-A-
Ser No. 78739755
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Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807
(Fed. Cir. 2001), citing H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986). The test for
determining whether a mark is generic is its primary
significance to the relevant public. See Section 14(3) of
the Act. See also In re American Fertility Society, 188
F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc.
v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991);
and H. Marvin Ginn Corp., supra. The examining attorney
has the burden of establishing by clear evidence that a
mark is generic and thus unregistrable. See In re Merrill
Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141 (Fed. Cir. 1987). Evidence of the relevant
public’s understanding of a term may be obtained from any
competent source, including testimony, surveys,
dictionaries, trade journals, newspapers, and other
publications. See In re Northland Aluminum Products, Inc.,
777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985).
In this case, the examining attorney has submitted the
following definitions of “conference call”:
n. a telephone call by which a caller can speak
with several people at the same time;2 and

2 Merriam-Webster OnLine, www.m-w.com.
Ser No. 78739755
6
n. a conference by telephone in which three or
more persons in different locations participate
by means of a central switching unit.3

The examining attorney also has submitted the following
encyclopedia entries (emphasis added) for “conference
call”:
A conference call is a telephone call in which
the calling party wishes to have more than one
called party listen in to the audio portion of
the call. The conference calls may be designed
to allow the called party to participate during
the call, or the call may be set up so that the
called party merely listens into the call and
cannot speak. It is often referred to as an ATC
(Audio Tele-Conference);4

and “video conferencing”:
video conferencing uses telecommunications of
audio and video signals to bring people at
different sites together for a meeting. This can
be as simple as a conversation between two people
in private offices (point-to-point) or involve
several sites (multi-point) with more than one
person in large rooms at different sites.
Besides the audio and visual transmission of
people, video conferencing can be used to share
documents, computer-displayed information, and
whiteboards.5

3 The American Heritage Dictionary of the English Language:
Fourth Edition, 2000.
4 www.en-wikipedia.org. We have considered this Wikipedia
evidence because it essentially is cumulative of and is
corroborated by the other evidence of record, and because it was
made of record early enough to give applicant the opportunity to
challenge or rebut it. See In re IP Carrier Consulting Group,
___ USPQ2d ___, 2007 Westlaw 1751192 (TTAB) (Serial Nos. 78542726
and 78542734, June 18, 2007). We note that, in this case,
applicant has not challenged such evidence beyond its general
contention that the totality of the examining attorney’s evidence
is insufficient to support his position.
5 Id.
Ser No. 78739755
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In addition, we take judicial notice of the following
definition of “teleconference”:
n. a conference held among people in different
locations by means of telecommunications
equipment, such as closed-circuit television.
(teleconferencing n.)6

The examining attorney further has submitted evidence
from commercial Internet websites indicating that the term
“conference call” is used to refer to audio or video
teleconferencing. See, for example (emphasis added):
StartConferencing.com uses the latest audio
conferencing technology and clear digital
connections to provide the most reliable and
highest quality conference call experience. Our
audio conferencing service is very simple to use,
but has all the features you need to host a
successful conference call such as free digital
replay, recording your conference call to CD,
roll call, conference assistance and expanded
host controls. … With the ability to host up to
125 participants in your conference call and
access to toll free numbers, our service can
handle your company’s growing audio conferencing
needs.
(www.starconferencing.com)

AccuConference offers quality conference call
services with industry-leading customer support.
Choose from any conference call packages and
receive the tools you need to keep your
participants engaged. … Video conferencing is
also available which will let you meet “face-to-
face” regardless of location. Now everyone can
see and hear the exact same thing.
(www.accuconference.com)

6 The American Heritage Dictionary of the English Language:
Fourth Edition, 2000.

Ser No. 78739755
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Conduct meetings faster and more efficiently with
PGi ReadyConference Plus. Our conferencing
service is ideal for whatever your conference
call needs are. We are dedicated to improving
your business communications and ensuring your
conference calls run smoothly each time.
In addition, Premiere Global Services offers many
other conference call solutions to help you
reduce business costs and improve productivity:
Audio Conferencing – Many more options available
including International access.
(www.premiereglobal.com)

From 800 voice mail to flat rate conference
calling, don’t settle for less. . .get the best!
We specialize in promotional discounted
teleconferencing and flat rate conference calling
at its best.
Our teleconferencing services include everything
from 800 conference calls and the flat rate
conference call to web conferencing and video
conferencing. But there’s more. . .we also
feature flat rate 800 voicemail services (that’s
right, toll free voicemail).
(www.bowsconferencecalling.com).

The determination of whether a term is generic
involves a two-part inquiry: First, what is the category
or class of the goods or services at issue? Second, is the
term sought to be registered understood by the relevant
public primarily to refer to that category of goods or
services? See H. Marvin Ginn Corp., supra. With respect
to the first part of the genericness inquiry, we find based
upon the above evidence that the class or category of
services at issue here is “telecommunications services,
namely audio and video teleconferencing.” Indeed, we note
that “screenshots” from applicant’s own Internet website,
Ser No. 78739755
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timely submitted as evidence by the examining attorney,
indicate that applicant is engaged in providing
teleconferencing services.
Organizing a Conference Call
To help you plan & organize your teleconferences,
try these tools:
Conference Call Checklist
Use this list to make sure you haven’t forgotten
anything important, and to improve the way you
manage your conference calls!
Meeting Agenda Form
Fill out this form, and keep it in front of you
during your conference call to keep you on track!
Or send it to your participants ahead of time so
that they will be better prepared for your
meeting!
Meeting Minutes Form
Keep track of the progress of your conference
call agenda and new topics for future meetings
with this form.
Feedback Form
Have your participants fill out this form after
the conference call is completed, so that you can
review their impressions of the meeting. This is
also a handy way to field any question that your
participants might have been reluctant to ask
while on the phone!
(www.conferencecall.com).

We next turn to the second step of the Ginn inquiry,
that is, whether the relevant public understands the term
CONFERENCECALL.COM to refer to that category of services.
We find that the term is so understood.
There appears to be no dispute that the relevant
public for applicant’s services consists of all typical
customers of the services, including those who would need
to arrange and conduct audio and video teleconferences for
Ser No. 78739755
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business or personal needs. We have considered all the
evidence of record bearing on purchaser perception of
CONFERENCECALL.COM, including the evidence submitted by
applicant in opposition to the refusal to register. See In
re Northland Aluminum Products, supra.; and In re The Paint
Products Co., 8 USPQ2d 1863 (TTAB 1988).
The evidence of record, including evidence from
applicant’s own Internet website, clearly establishes that
conducting a “conference call” is the focus, or a key
focus, of applicant’s audio and video teleconferencing
services. Because the term “conference call” names a key
aspect of applicant’s services, i.e., a central purpose of
applicant’s teleconferencing services, the term is generic
for such services.
The term CONFERENCECALL.COM is no more registrable
than the generic word “conference call” alone. We take
judicial notice of the following definition of “.com” as
“ABBREVIATION: commercial organization (in Internet
addresses).”7 We further take judicial notice of the
following definition of “TLD” as “(Top-Level-Domain) The
Highest level domain category in the Internet domain naming
system. There are two types, the generic top-level

7 The American Heritage Dictionary of the English Language, (4th
Ed. 2000)
Ser No. 78739755
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domains, such as .com, .org, and .net….”8 The term “.com,”
in itself, has no source-identifying significance. See In
re Hotels.com, L.P., 87 USPQ2d 1100 (TTAB 2008). Rather,
it serves only to signify that the user of the domain name
is a commercial entity, and that the goods or services
offered by the entity involve use of the Internet. See Id.
See also In re Oppendahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370 (Fed. Cir. 2004).
We are not persuaded by applicant’s argument that the
combination of “conference call” and “.com” “adds
distinction to the mark.”9 “While there is no bright-line
rule that appending a top-level domain name such as ‘.com’
to an otherwise generic term will never affect
registrability (see Oppendahl, supra), in this case it does
not.” See In re Hotels.com, supra, at 1114. The terms
“conference call” and “.com” both have clear and readily
understood meanings, and the combined term communicates
just as clearly and directly that applicant operates a
commercial Internet website that enables users to conduct
conference calls. Our primary reviewing court has held
that “the PTO has satisfied its evidentiary burden [on
genericness] if … it produces evidence including dictionary

8 McGraw Hill Computer Desktop Encyclopedia (9th ed. 2001).
9 Applicant’s brief, p. 5.
Ser No. 78739755
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definitions that the separate words joined to form a
compound have a meaning identical to the meaning common
usage would ascribe to those words as a compound.” See In
re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111
(Fed. Cir. 1987).
It is clear from the website of applicant as well as
the websites of third-parties that consumers who are
interested in arranging or conducting conference calls
would immediately understand that CONFERENCECALL.COM
identifies a website that provides such services. In
addition, this evidence demonstrates a competitive need for
others to use as part of their own domain names, trademarks
and service marks, the term that applicant is attempting to
register. Thus, the designation sought to be registered
should not be subject to exclusive appropriation, but
rather should remain free for others in the industry to use
in connection with their teleconferencing services. See In
re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056
(Fed. Cir. 1999).
Therefore, we conclude that the examining attorney has
met the substantial burden of establishing that
CONFERENCECALL.COM is generic and hence incapable of
identifying and distinguishing the source of the identified
services.
Ser No. 78739755
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Acquired Distinctiveness
Implicit in our holding that the evidence before us
establishes that CONFERENCECALL.COM is generic for
applicant’s services is a holding that CONFERENCECALL.COM
is at least merely descriptive of applicant’s services
under Section 2(e)(1). “The generic name of a thing is in
fact the ultimate in descriptiveness.” H. Marvin Ginn
Corp., supra, at 530.
In finding that the designation CONFERENCECALL.COM is
incapable of being a source identifier for applicant’s
services, we have considered, of course, all of the
evidence touching on the public perception of this
designation, including the evidence of acquired
distinctiveness. As to acquired distinctiveness, applicant
has the burden to establish a prima facie case of acquired
distinctiveness. See Yamaha International Corp. v. Hoshino
Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed.
Cir. 1988).
Applicant submitted the declaration under Trademark
Rule 2.20 of Robert Wise, its vice-president of marketing,
stating that applicant has made substantially exclusive and
continuous use of CONFERENCECALL.COM in commerce in
connection with the services provided by applicant for over
five years prior to the date upon which the claim of
Ser No. 78739755
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distinctiveness is made. Applicant asserts in addition
that its sales in 2006 exceeded $20 million; that also in
2006, applicant’s Internet website received over 100,000
visitors; and that further in 2006, applicant spent nearly
$1 million on advertising on various Internet search
engines, including Google, Yahoo, and MSN.
Applicant’s long use and revenues suggest that
applicant has enjoyed a degree of business success.
Nonetheless, this evidence demonstrates only the relative
popularity of applicant’s services, not that the relevant
customers of such services have come to view the
designation CONFERENCECALL.COM as applicant’s source-
identifying service mark. See In re Bongrain International
Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990); and
In re Recorded Books Inc., 42 USPQ2d 1275 (TTAB 1997). The
issue here is the achievement of distinctiveness, and the
evidence falls far short of establishing this. Notably,
the record is completely devoid of evidence that the
relevant classes of purchasers of applicant’s services
recognize CONFERENCECALL.COM as a distinctive source
indicator for such services.10

10 We are not implying that an applicant must submit affidavits or
declarations asserting recognition of the subject matter sought
to be registered as a mark, or that applicant must submit survey
evidence, or that any other specific type of evidence is required
to prove that a term has acquired distinctiveness. Nonetheless,
Ser No. 78739755
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Accordingly, even if the designation
CONFERENCECALL.COM were found to be not generic, but merely
descriptive, given the highly descriptive nature of the
designation CONFERENCECALL.COM, we would need to see a
great deal more evidence (especially in the form of direct
evidence from customers) than what applicant has submitted
in order to find that the designation has become
distinctive of applicant’s services. That is to say, the
greater the degree of descriptiveness, the greater the
evidentiary burden on the user to establish acquired
distinctiveness. See Yamaha Int'l. Corp. v. Hoshino Gakki
Co., supra; and In re Merrill Lynch, Pierce, Fenner &
Smith, Inc., supra. The sufficiency of the evidence
offered to prove secondary meaning should be evaluated in
light of the nature of the designation. Highly descriptive
terms, for example, are less likely to be perceived as
trademarks and more likely to be useful to competing
sellers than are less descriptive terms. More substantial
evidence of secondary meaning thus will ordinarily be
required to establish their distinctiveness.

we require evidence clearly demonstrating the effectiveness of
applicant’s use of its designation to cause the purchasing public
to identify the subject matter sought to be registered with the
source of the product. Such evidence is not present in this
case.

Ser No. 78739755
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Decision: The refusal under Section 2(e)(1) of the
Act on the ground that the proposed mark is generic is
affirmed; the refusal under Section 2(e)(1) of the Act on
the ground that the mark is at least merely descriptive and
the Section 2(f) showing is insufficient is likewise
affirmed.