endorsing the district court’s use of Professor McCarthy’s test for determining whether a mark is descriptive
How later courts described this case
- endorsing the district court’s use of Professor McCarthy’s test for determining whether a mark is descriptive
- upholding finding that “la-woffices.net” lacked secondary meaning without evidence of consumer survey or market share and with evidence of $2,500 in advertising costs and $200 in revenue
- “[T]he same federal trademark principles apply to analogous federal and state common law claims.” (citing Daddy’s Junky Music v. Big Daddy’s Family Music, 109 F.3d 275, 288 (6th Cir. 1997))
- “Ordinarily, we review the district court’s classification of a term as ‘descriptive’ or ‘suggestive’ under the clear error standard.”
Written by the judges who cited it.
The opinion
MOORE, Circuit Judge,
concurring in part and concurring in the judgment.
While I agree with the majority that DeGidio has failed to demonstrate that his mark has inherent or acquired distinctiveness warranting protection under the Lan-ham Act, I write separately to explain my conclusion that DeGidio’s mark is merely descriptive rather than suggestive. I agree with the majority that the district court did not, as is appropriate on summary judgment, necessarily view all of the evidence in the light most favorable to DeGidio. I also agree that the district court’s holding was nonetheless correct, but I reach that conclusion by a slightly different route.
We deal in this case with two sets of services: the domain name sales, web site hosting, and email hosting services (“internet services”); and the online attorney database and legal information database services (“database services”). I believe that “LawOffices.net” is clearly descriptive as to the provision of legal information and attorney references. With respect to the internet services, however, I read the factual record differently from the majority, for I believe that West is in fact “accused of’ providing web site hosting and vanity email services on its web site. See Appel-lee’s Br. at 7 (“West has also offered ... email and Web site creation and hosting services.”). I think it is therefore necessary to inquire whether “LawOffices.net” is descriptive or suggestive as to those two *515 internet services; although the internet services present a more difficult question, one the district court did not fully address, I nonetheless believe that “LawOff-ices.net” is descriptive as to these services as well.
While it seems settled that if we were to find that DeGidio had a protectable mark in “LawOffices.net,” the difference between the “.net” top-level domain (“TLD”) 1 and the “.com” TLD on West’s mark of “Law office.com” would not matter, see Patent and Trademark Office, “Examination Guide No. 2-99: Marks Composed, in Whole or in Part, of Domain Names” (Sept. 29, 1999), I believe that we can consider the entire mark as used by DeGi-dio when inquiring as to its distinctiveness. See In re Anylens Acquisition, LLC, Nos. 02-1493, 02-1494, 2003 WL 1194293 , at *3, 61 Fed.Appx. 698 (Fed. Cir. Mar. 10, 2003) (noting a TLD can distinguish a particular type of organization from organizations associated with other TLDs); Virtual Works, Inc. v. Volkswagen of America, Inc., 238 F.3d 264, 271 (4th Cir.2001) (“vw.net” only “confusingly similar” to “VW”). The TLD “.net” is short for “network,” and originally was exclusively for use by network providers. 2 When DeGidio began LawOff-ices.net, he specifically chose a “.net” TLD because he planned to offer web site hosting services on his web site. See Joint Appendix at 98-100. I would therefore hold that the mark “LawOffices.net” is descriptive as to the network services that DeGidio offered on his site, namely the web site hosting and vanity email services. See, e.g., Eglen v. America Online, Inc., No. TH 00-135-C-M/H, 2003 WL 21508343 , at *9-*10 (S.D.Ind. June 12, 2003) (“hometown.net” is descriptive as to local network service provider’s services).
I therefore concur in Part 2 of the majority’s opinion and in the judgment.
. Each website has a corresponding domain name, which is an identifier somewhat analogous to a telephone number or street address. Domain names consist of a second-level domain — simply a term or series of terms (e.g., a2zsolutions) — followed by a top-level domain, many of which describe the nature of the enterprise. Top-level domains include “.com” (commercial), ".edu” (educational), ".org” (non-profit and miscellaneous organizations), ".gov” (government), “.net” (networking provider), and ".mil” (military). Interactive Prods. Corp. v. a2z Mobile Office Solutions, Inc., 326 F.3d 687, 691 (6th Cir. 2003) (citations omitted).
. Originally, the TLD ".net” was only available to network service providers, but according to one circuit, it was in September 1995 that the organization in charge of assigning TLDs stopped enforcing these distinctions. See Virtual Works, Inc. v. Volkswagen of America, Inc., 238 F.3d 264, 266 (4th Cir.2001). DeGidio claimed in his deposition testimony that ".net” was still restricted when he registered "LawOffices.net.” If DeGidio is better informed than our sister circuit as to the precise date when ".net” ceased to be a restrictive TLD, it can only hurt his case that his mark is not descriptive.