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Keywords

appealtrialpatenttrademarkjudicial review

appealtrialpatenttrademarkappellant

Related Cases

In re Steelbuilding.com, 415 F.3d 1293, 75 U.S.P.Q.2d 1420

Facts

The applicant, Steelbuilding.com, sought to register the mark 'STEELBUILDING.COM' for its online services related to the sale of pre-engineered metal buildings. The United States Patent and Trademark Office (PTO) initially denied the application, claiming the mark was either generic or merely descriptive without secondary meaning. The Trademark Trial and Appeal Board affirmed this decision, leading the applicant to seek judicial review. The court found that the Board failed to adequately define the genus of the applicant's goods and services and did not recognize the interactive features of the applicant's website.

The Trademark Trial and Appeal Board (Board) affirmed the refusal of the United States Patent and Trademark Office (PTO) to register the mark STEELBUILDING.COM to appellant Steelbuilding.com.

Issue

Whether the mark 'STEELBUILDING.COM' is generic or merely descriptive and whether it has acquired distinctiveness for trademark registration.

Rule

To deny registration of a mark as generic, the PTO must show substantial evidence that the term is generic based on clear evidence of generic use. A generic term identifies a type of product, not its source, and cannot function as a trademark. The test for genericness involves determining the genus of goods or services and whether the term is understood by the public to refer primarily to that genus. A merely descriptive mark describes qualities or characteristics of the goods or services and can qualify for registration if it acquires secondary meaning.

To deny the registration of a mark as generic, the PTO has the burden of 'substantial[ly] showing … that the matter is in fact generic … based on clear evidence of generic use.'

Analysis

The court analyzed the Board's findings and determined that the Board's definition of the genus was too narrow, failing to consider the broader context of the applicant's services. The addition of the '.COM' TLD expanded the meaning of the mark beyond mere sales of steel buildings to include interactive design services. The court concluded that while the mark was descriptive, it did not meet the high burden of showing acquired distinctiveness due to insufficient evidence.

Conclusion

The court affirmed the Board's decision regarding the descriptiveness of the mark and the absence of distinctiveness, but vacated the finding that the mark was generic.

This court vacates the Board's determination that the mark is generic, but affirms its findings on descriptiveness and the absence of secondary meaning, and therefore affirms the denial of the application.

Who won?

The prevailing party in this case is the United States Patent and Trademark Office, as the court upheld the Board's findings on descriptiveness and lack of distinctiveness, affirming the denial of the trademark application. The court found that the applicant did not provide sufficient evidence to demonstrate that the mark had acquired distinctiveness, which is necessary for registration of a merely descriptive mark.

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