How parts.com got registered as a US trademark

How PARTS.COM, LLC registered parts.com as a US trademark on the principle register in the USA.

US trademark

US Serial Number: 77219341
Application Filing Date: Jun. 29, 2007
US Registration Number: 3500783
Registration Date:Sep. 16, 2008
Note: Yahoo! Inc. commenced a trademark cancellation proceeding (Number: 92057802) after PARTS.COM, LLC sued Yahoo for trademark infringement in 2013.
parts.com audi-on-home-page-2014-June-14
parts.com home page
The examining attorney at the USPTO initially refused the application for parts.com on the basis that the proposed mark is merely descriptive and appeared to be generic of the business of selling parts.

Refusal to Register – Domain Name

Applicant’s website provides hypertext links to the websites of others to provide information and to promote the sale of parts and other goods.   The proposed mark is merely descriptive and appears to be generic because it consists of the generic wording “PARTS”, combined with the top-level domain (TLD) “.com.”   Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111-1112 (Fed. Cir. 1987).

The TLD in the proposed mark indicates an Internet address and adds no source-identifying significance. In re Reed Elsevier Properties Inc., 77 USPQ2d 1649, 1658-59 (TTAB 2005); In re DNI Holdings Ltd., 77 USPQ2d 1435, 1441 (TTAB 2005); In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1792-94 (TTAB 2002); see TMEP §§1209.03(m), 1215.01, 1215.05.

Therefore, the proposed mark is unregistrable on the Supplemental Register or on the Principal Register, under Section 2(f).   15 U.S.C. §§1052(f), 1091(c).

In In re Oppedahl & Larsen LLP, 373 F.3d 1171, 1175-1177, 71 USPQ2d 1370, 1372-1374 (Fed. Cir. 2004), the court stated that, as a general rule, the addition of a TLD to otherwise unregistrable wording (i.e., merely descriptive or generic) does not add source-indicating significance except in “unique” or “exceptional” circumstances. Referring to an illustrative hypothetical mark discussed by the court during oral argument, the court gave the following explanation for possible “unique” or “exceptional” circumstances:

This hypothetical applicant’s mark consists of a descriptive term – “tennis” – and a TLD – “.net.” The “net” portion alone has no source-identifying significance. The hypothetical mark as a whole, as is immediately apparent, produces a witty double entendre relating to tennis nets, the hypothetical applicant’s product. Arguably, the attachment of the TLD to the other descriptive portion of the mark could enhance the prospects of registrability for the mark as a whole.   This hypothetical example illustrates that, although TLDs will most often not add any significant source-identifying function to a mark, a bright-line rule might foreclose registration of a mark with a TLD component that can demonstrate distinctiveness. Id. at 1373 (emphasis added).

In the present case, no such exceptional circumstances exist. The non-TLD portion of the mark is unregistrable, and the addition of the TLD does not create a witty double entendre or add any other significance capable of identifying source or acquiring distinctiveness. When combined, the wording and the TLD retain their common meaning.

In response, the applicant responded by citing the Federal Circut’s two-part test to determine whether a trademark is generic:

1. The court determines the genus of the goods or services at issue; and

2. The court determines whether the term sought to be registered is understood by the relevant public to “primarily to refer to that genus of goods or services.”

In re Steelbuilding.com, 415 F.3d 1293, 1297 (Fed. Cir. 2005).

The applicant went on to say that the terms must be considered in relation to the relevant goods or services, and not considered in a vacuum. The applicant cited examples of other trademarks that faced the same issue, namely, OVERSTOCK.COM, SURPLUS, EXCESS, EXTRA, ABUNDANCE, and STEELBUILDING.COM. And finally, the applicant argued that the PARTS element of the trademark is suggestive and adding .COM does not make the trademark generic.

The applicant also amended its listing of services to:

Marketing services, namely, providing informational web pages designed to generate sales traffic via hyperlinks to other web sites; promoting the goods and services of others by providing hypertext links to the websites of others; providing a website which features advertisements for the goods and services of others on a global computer network; providing on-line directory information services also featuring hyperlinks to other websites; online auction services
International Class(es):
035 – Primary Class

Basis: 1(a)

First Use: Mar. 30, 1999
Use in Commerce: Mar. 30, 1999
and:
Computer services, namely, acting as an application service provider in the field of knowledge management to host computer application software for searching and retrieving information from databases and computer networks; data mining via global computer networks; computer services, namely, creating indexes of information, sites and other information resources via global computer networks
International Class(es): 042 – Primary Class

Basis: 1(a)

First Use: Mar. 30, 1999
Use in Commerce: Mar. 30, 1999

In examining the website, it appears to be set up as an eCommerce site that sells car parts, however it may be that it actually generates more money from its Google Adsense display ads and selling customer VIN number information.

Now when someone searches for “parts.com” in a yahoo search bar, Yahoo! serves up ads from their parties who bid on the term parts.com. Google.com does the same.

The suggested bid price for “parts.com” in a Google AdWords account is $0.45 per click and there is high competition for the average of 6,600 monthly searches for the term “parts.com” in the United States. The high competition indicator usually suggests that there are many more websites that are search engine optimized for the term “parts.com.”

The alexa.com ranking for parts.com is very good at 314,791 in the world and 145,151 in the United States. Such a ranking usually indicates that more than 2 million visitors go to parts.com per year and most of the traffic arrives from within the United States.

The 6,600 monthly searches for “parts.com” indicates that people either know about the parts.com website or expect there to be a parts.com website selling parts. According to alexa.com, only 16.1% of the visitors who come to parts.com via a search engine query. That means that 83.9% of visitors come via direct type-in, which means that parts.com is a very valuable type-in domain name, if indeed millions of people visit the website each year.

Alexa.com further estimates that parts.com has a bounce rate of 35.5%, which is comparable to the bounce rate of many prominent eCommerce websites. The bounce rate indicates what percentage of visitors who leave within 30 seconds of arriving to the website. Bounce rate may vary greatly based on site design, colors, fonts, logo images, and other above the fold trust factors. Alexa indicates that people spend and average of 3:16 seconds on parts.com before leaving.

It appears that PARTS.COM, LLC sued both Google and Yahoo! in Federal Court regarding the practice of serving up competitive ads on each of the defendant’s respective search engine results.

In the Federal Court lawsuit, Yahoo! argued to U.S. District Court Judge Janis Sammartino, in the Southern District of California, that “parts.com” shouldn’t be protected by trademark law. Yahoo also asked Sammartino to sanction Parts.com “for wasting this court’s time.”

After being served with the federal court claims, Google and Yahoo! tag teamed and each petitioned the TTAB to cancel the parts.com trademark.

Google commenced a cancellation proceeding with respect to the PARTS.COM US trademark, in Google Inc. v. Parts.com, LLC, Cancellation No 92057660.

http://ttabvue.uspto.gov/ttabvue/v?pno=92057660&pty=CAN&eno=1

Later, Yahoo! Inc. commenced a second cancellation proceeding with respect to the same PARTS.COM US trademark, in Yahoo! Inc. v. Parts.com, LLC, Cancellation No 92057802:
In the Matter of Registration No. 3,500,783 Registered September 16, 2008 Mark: PARTS.COM
http://ttabvue.uspto.gov/ttabvue/v?pno=92057802&pty=CAN&eno=9

David Michaels

David Michaels, J.D., B.Eng., CHRM is a legal blogger (and a trained attorney) who holds certificates in Canadian Trademark Law (2012) and Canadian Patent Law (1996) from McGill University. He has worked in the area of trademark law in Canada since 1995 and in the USA since 1993.

David is a brand consultant, a writer, an eCommerce entrepreneur, and an aeronautical engineer.
http://ca.linkedin.com/in/davidtmichaels/

Warning & Disclaimer: The pages, articles and comments on trademarkpro.ca do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the author’s notes of the current state of trademark law and should not be attributed as opinions of the author, his employer, clients or the sponsors of trademarkpro.ca. The author does not warrant that these notes are up-to-date. Trademark law is constantly changing and it varies between jurisdictions and even within jurisdictions. This website should not be relied upon.

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