Katch, LLC

THIS OPINION IS A
PRECEDENT OF THE TTAB

Mailed: June 20, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Katch, LLC
_____

Serial No. 86301765
_____

Katch, LLC, pro se.1

Susan A. Richards, Trademark Examining Attorney, Law Office 103,
Stacy Wahlberg, Managing Attorney.
_____

Before Cataldo, Adlin and Hightower, Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Katch, LLC (Applicant) seeks registration on the Supplemental Register of the term

HEALTHPLANS.COM, in standard characters, for the following services, as

amended:

Advertising services, namely, cost-per-action on-line
advertising; Advertising services, namely, promoting and
marketing the goods and services of others in the field of
health, life, and Medicare insurance via print and
electronic media; Insurance lead collection and matching
services, namely, matching consumer requests for
insurance policy quotes collected over the Internet to pre-

1Applicant’s counsel filed a request to withdraw in the Trademark Application Examination
System (TEAS) on February 21, 2018, after the time for briefing of the appeal had closed.
The request to withdraw was granted the same day.
Serial No. 86301765

qualified insurance brokers, agents and agencies
interested in those requests; Providing demand creation
and lead generation activities and services to insurance
carriers, and health, life, and Medicare insurance
advertisers in International Class 35; and

Providing temporary use of on-line non-downloadable
software and applications for facilitating the tracking,
administration, billing, and reporting of advertising via an
on-line communications network in International Class
42.2

The Trademark Examining Attorney finally refused registration of the proposed

mark: (1) on the Principal Register under Trademark Act Sections 1, 2, 3 and 45, 15

U.S.C. §§ 1051, 1052, 1053 and 1127, on the ground that Applicant’s proposed mark

is highly descriptive and that the claim of acquired distinctiveness under Trademark

Act Section 2(f), 15 U.S.C. § 1052(f), is insufficient to establish that

HEALTHPLANS.COM has acquired distinctiveness; and, in the alternative, (2) on

the Supplemental Register under Section 23(c) of the Trademark Act, 15 U.S.C. §

1091(c), on the ground that Applicant’s proposed mark is a generic term for the

identified services in International Classes 35 and 42, and thus incapable of

distinguishing them. After the refusals became final, Applicant appealed and filed a

request for reconsideration which was denied. After the appeal resumed, Applicant

and the Examining Attorney filed briefs.

2 Vantage Media LLC filed application Serial No. 86301765 on June 5, 2014, seeking
registration on the Principal Register based on its allegation of use of the proposed mark
anywhere and in commerce as of October 8, 2012 as to both classes of services under Section
1(a) of the Trademark Act, 15 U.S.C. § 1051(a). Applicant recorded a change of name to Katch,
LLC on February 16, 2015 with the Assignment Recordation Branch of the USPTO at Reel
5495, Frame 0365, and recorded a further corrective assignment on December 8, 2015 at Reel
5684, Frame 0336. Applicant amended the application on September 12, 2016 to seek
registration, in the alternative, on the Supplemental Register.

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Serial No. 86301765

I. Refusal of registration under Trademark Act Sections 1, 2, 3 and 45

Applicant presents no arguments that HEALTHPLANS.COM is registrable as

inherently distinctive on the Principal Register or that its proposed mark is not

inherently distinctive but has acquired distinctiveness under Section 2(f). Applicant

restricts its argument to traversing the refusal under Section 23(c), asserting that its

applied-for mark is not generic but rather “capable of distinguishing the applicant’s

services, and is thus registrable on the Supplemental Register.” 9 TTABVUE 9. In

her appeal brief, the Examining Attorney argues that Applicant has not appealed the

refusal of registration under Trademark Act Sections 1, 2, 3 and 45. Applicant did not

file a reply brief.

We find that Applicant has waived its appeal of the Examining Attorney’s refusal

of registration on the Principal Register under Trademark Act Sections 1, 2, 3 and

45, 15 U.S.C. §§ 1051, 1052, 1053 and 1127. In re Harley, 119 USPQ2d 1755, 1758

(TTAB 2016) (Applicants’ failure to address any of the grounds for refusal is a basis

for affirming the examining attorney’s refusal on all grounds); TBMP § 1203.02(g)

(2018) (“If an applicant, in its appeal brief, does not assert an argument made during

prosecution, it may be deemed waived by the Board.”).

Accordingly, the Examining Attorney’s refusal of registration of the proposed mark

on the Principal Register under Trademark Act Sections 1, 2, 3 and 45 as being not

inherently distinctive and for failure to show acquired distinctiveness, is affirmed.

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Serial No. 86301765

In view of Applicant’s arguments against the substantive issue of genericness,

Applicant’s waiver of the appeal under Sections 1, 2, 3 and 45 does not encompass the

substantive issue of whether Applicant’s applied-for mark is generic.

II. Refusal of registration on the Supplemental Register under
Trademark Act Section 23(c)

“In order to qualify for registration on the Supplemental Register, a proposed

mark ‘must be capable of distinguishing the applicant’s goods or services.”’ In re

Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1089 (TTAB 2017) (quoting 15

U.S.C. § 1091(c)). Generic terms do not qualify for registration because “by definition

[they] are incapable of indicating a unique source.” In re La. Fish Fry Prods., Ltd.,

797 F.3d 1332, 116 USPQ2d 1262, 1267 (Fed. Cir. 2015) (citing In re Merrill Lynch,

Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987)

(“Generic terms, by definition incapable of indicating source, are the antitheses of

trademarks, and can never attain trademark status.”)); see also Clairol, Inc. v. Roux

Distrib. Co., 280 F.2d 863, 126 USPQ 397, 398 (CCPA 1960) (“The generic name by

which a product is known is not a mark which can be registered on the Supplemental

Register under [S]ection 23 because such a name is incapable of distinguishing

applicant’s goods from goods of the same name manufactured or sold by others.”).

A. Genericness legal standards

A generic term “is the common descriptive name of a class of goods or services.”

Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1045 (Fed.

Cir. 2018) (quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d

987, 228 USPQ 528, 530 (Fed. Cir. 1986)). When a proposed mark is refused

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Serial No. 86301765

registration as generic, the examining attorney has the burden of proving genericness

by clear evidence. In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635

(Fed. Cir. 2016); see also In re Hotels.com LP, 573 F.3d 1300, 91 USPQ2d 1532, 1533

(Fed. Cir. 2009) (USPTO “must demonstrate generic status by clear evidence”). “The

critical issue in genericness cases is whether members of the relevant public

primarily use or understand the term … to refer to the genus of goods or services in

question.” Royal Crown, 127 USPQ2d at 1046 (quoting Marvin Ginn, 228 USPQ at

530).

The Federal Circuit has set forth a two-step inquiry to determine whether a

mark is generic: First, what is the genus (category or class) of goods or services at

issue? Second, is the term sought to be registered understood by the relevant

public primarily to refer to that genus of goods or services? Marvin Ginn, 228 USPQ

at 530. The relevant public’s perception is the chief consideration in determining

whether a term is generic. See Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786

F.3d 960, 114 USPQ2d 1827, 1833 (Fed. Cir. 2015). Evidence of the public’s

understanding of a term may be obtained from “any competent source, such as

consumer surveys, dictionaries, newspapers and other publications.” Id. at 1830

(quoting In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 227 USPQ 961, 963

(Fed. Cir. 1985)). “[A] term can be generic for a genus of goods or services if the

relevant public … understands the term to refer to a key aspect of that genus.” Royal

Crown, 127 USPQ2d at 1046 (quoting Cordua, 118 USPQ2d at 1637); see also In re

1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009)

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Serial No. 86301765

(affirming Board’s reasoning that MATTRESS.COM is generic because “‘[c]onsumers

would see MATTRESS.COM and would immediately recognize it as a term that

denotes a commercial website rendering retail services featuring mattresses’”); In re

Hotels.com, L.P., 573 F.3d 1300, 1304, 91 USPQ2d 1532, 1535 (Fed. Cir. 2009)

(affirming that HOTELS.COM is generic, reasoning that “the generic term ‘hotels’

did not lose its generic character by placement in the domain name HOTELS.COM,”

where hotels were the focus of and named a key aspect of the information and

reservation services provided on the website); In re Reed Elsevier Properties Inc., 482

F.3d 1376, 1379, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007) (affirming that

LAWYERS.COM is generic where lawyers were an “integral, if not the paramount,

aspect” of the information services provided on the website).

With respect to the first part of the Marvin Ginn inquiry, the genus may be defined by

the services identified in the application. See Reed Elsevier, 82 USPQ2d at 1380;

Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991)

(a proper genericness inquiry focuses on the identification set forth in the application

or certificate of registration). Thus, we define the genus based on the identification of

services for each class. The identified services in both classes encompass services provided

in the field of health insurance. Cordua, 118 USPQ2d at 1636. Additionally, for Class

35, the identification of services, and thus the genus, includes “Insurance lead

collection and matching services, namely, matching consumer requests for insurance

policy quotes collected over the Internet to pre-qualified insurance brokers, agents

and agencies interested in those requests.” The record confirms that Applicant’s

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Serial No. 86301765

services are in the field of health insurance. For example, screenshots from

Applicant’s website, discussed infra, indicate that health plans are an integral aspect

of Applicant’s services3 In DNI Holdings, 77 USPQ2d 1435 (TTAB 2005), involving

the designation SPORTSBETTING.COM, this tribunal found that despite the

applicant’s omission from its recitation of services terms related to sports wagering

apparently to avoid a finding of genericness, “the relevant genus of services herein

includes wagering on sporting events.” Id. at 1439. The Board further observed:

Even if we are constrained to ignore the realities of use actually made
by applicant because applicant has purposely drafted a description
omitting that use, this does not end the first part of the Marvin Ginn
inquiry into possible genericness. Applicant’s recitation of services
includes the providing of a website “featuring information in the fields
of gaming, athletic competition and entertainment.” That is, even if for
purposes of this inquiry, we were to ignore applicant’s clear offering on
its website of “sports betting services,” we nonetheless find that the class
or category of services described in the application still clearly includes
that of providing information regarding sports and betting.

Id. See also See Reed Elsevier, 82 USPQ2d at 1380 (affirming this tribunal’s finding

that applicant’s provision of information regarding the law, legal news and legal

services necessarily includes providing information about lawyers notwithstanding

applicant’s deletion of those services from its recitation.).

The second part of the Marvin Ginn inquiry requires us to consider whether

the term sought to be registered is understood by the relevant public primarily

to refer to that genus of services. The relevant public is the purchasing public for

3 September 26, 2014 First Office Action at .pdf 10-17. Citations to the examination record
are to the downloadable .pdf files from the Trademark Search and Document Retrieval
(TSDR) database.

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Serial No. 86301765

the identified services. Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341,

1351 (TTAB 2013).

B. Applicant’s services and relevant consumers

Applicant’s services are identified in the application as follows:

Advertising services, namely, cost-per-action on-line advertising; Advertising
services, namely, promoting and marketing the goods and services of others
in the field of health, life, and Medicare insurance via print and electronic
media; Insurance lead collection and matching services, namely, matching
consumer requests for insurance policy quotes collected over the Internet to
pre-qualified insurance brokers, agents and agencies interested in those
requests; Providing demand creation and lead generation activities and
services to insurance carriers, and health, life, and Medicare insurance
advertisers in International Class 35; and

Providing temporary use of on-line non-downloadable software and
applications for facilitating the tracking, administration, billing, and
reporting of advertising via an on-line communications network in
International Class 42.

With respect to the Class 35 services, screenshots from Applicant’s website clearly

indicate that Applicant’s “insurance lead collection and matching services, namely,

matching consumer requests for insurance policy quotes collected over the internet

to pre-qualified insurance brokers, agents and agencies,” requires the input of

information from the general public as well as insurers for purposes of matching

consumer health insurance needs with available health insurance options.

Representative screen shots are reproduced as Figure 1 below:4

Figure 1.

4 September 26, 2014 First Office Action at .pdf 10-17.

8
Serial No. 86301765

9
Serial No. 86301765

Applicant’s website indicates that its services solicit input from individuals seeking

health insurance to enable them to compare and shop for health insurance plans

based upon their needs. In Class 35, Applicant provides advertisements, insurance

lead collection and matching, demand creation and lead generation to health insurers

based upon the information input onto its website by members of the public who seek

health insurance. Applicant’s “insurance lead collection and matching services,

namely, matching consumer requests for insurance policy quotes collected over the

internet to pre-qualified insurance brokers, agents and agencies interested in those

requests” are provided both to insurers and to members of the general public seeking

health insurance. The purpose of Applicant’s Class 35 services appears to be to create

business for health insurers and thus Applicant’s services are directed toward health

insurance providers trying to reach potential consumers. Nonetheless, Applicant also

makes its matching services available to ordinary consumers interested in reviewing

their health insurance options and ultimately obtaining health insurance. We find

based upon the evidence cited above that the relevant c onsumers of Applicant’s Class

35 services are health insurance providers as well as members of the general public

who are seeking health insurance from health insurance providers.

However, with respect to the Class 42 services, there is no evidence in the record

that Applicant’s “providing temporary use of on-line non-downloadable software and

applications for facilitating the tracking, administration, billing, and reporting of

advertising via an on-line communications network” are directed toward the general

public. The record does not indicate that members of the general public seeking

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Serial No. 86301765

health insurance typically advertise. The Class 42 services on their face are directed

toward insurers monitoring the advertising of their health insurance on Applicant’s

website, and possibly other websites, and there is nothing to suggest they are utilized

by consumers seeking health insurance. We therefore find that the relevant

consumers of Applicant’s Class 42 services are health insurance providers, but not

members of the general public seeking health insurance.

C. Consumer understanding of HEALTHPLANS.COM

In support of the genericness refusal, the Examining Attorney relies on the

following dictionary definitions of the proposed mark’s constituent and related terms

as evidence of how consumers will understand the term “HEALTHPLANS”:

HEALTH PLAN – “Health benefits package, managed care,
any plan or organized format for delivering health care
services – e.g., HMO, indemnity, medigap, preferred
provider organization, point-of-service plans;”5

HEALTH PLAN – “Health plan can be used to mean a
health maintenance organization (HMO), a health
coverage plan provided by an employer to its employees, or
a health coverage plan offered to employers by an insurer
or third party administrator;”6 and

HEALTH CARE – “Services provided to individuals or
communities by a health care system or by professionals to
promote, maintain, monitor, or restore health. Health care
contains a broad spectrum of services and activities
delivered by a team of health personnel. This contrasts
with medical care, which concentrates on diagnostic and
therapeutic actions performed by or under the supervision
of an individual physician.”7

5September 26, 2014 first Office Action at .pdf 5-7. Medical-dictionary.thefreedictionary.com/
health+plan.
6 September 26, 2014 first Office Action at .pdf 8-9. cigna.com/glossary.
7 August 6, 2015 final Office Action at 94-122. iime.org/glossary/htm#HMO.

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Serial No. 86301765

She also relies on the screen shot of Applicant’s website reproduced above as Figure

1, and on Applicant’s original specimen of use, reproduced as Figure 2 below:

Figure 2.

Applicant and the Examining Attorney introduced into the record evidence of

additional use of “health plan(s)” or “healthplans.com” by or concerning Applicant.

The following examples are illustrative.8

LOS ANGELES–(BUSINESS WIRE)–HealthPlans.com, one of the
most visited independent consumer Health Insurance sites, according to
comScore, today unveiled a redesigned website with new tools and

8Applicant’s July 14, 2015 Response to Office Action at .pdf 14-72; March 11, 2016 Office
Action at .pdf 33-79, 159-172; October 28, 2016 Office Action at .pdf 53-63 (emphasis added).

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Serial No. 86301765

information to help consumers make well-informed decisions about
purchasing health insurance plans.

Searching for a health plan has become more overwhelming with the
introduction of the Affordable Care Act – also known as Obamacare.
With consumers gearing up for the second open enrollment period on
November 15th, HealthPlans.com relaunches with the promise to
help individuals demystify the health insurance process and choose
between plans offered on the public exchanges (e.g. Healthcare.gov),
and private plans accessed directly from providers. (businesswire.com).

With the HealthPlans.com network reaching more than 7 million health
insurance shoppers from October 2013 to October 2014, we decided to poll
buyers to identify key issues pertinent to consumers’ health insurance
choices. The survey provides unique insight on consumers’ priorities
when searching for a health plan, their health insurance knowledge, and
general attitudes around the Affordable Care Act. (healthplans.com).

9,195 Health plans on Healthplans.com
24,469,934 Health plan shoppers we’ve seen this year
5.2 Minutes on average to find a health plan
377,898,162 Health plan matches we’ve made so far (healthplans.com).

With regard to discussion of the term HEALTHPLAN or HEALTH PLAN by third

parties, the Examining Attorney introduced into the record results from LexisNexis

database searches for articles using the term “health plans” in connection with health

insurance.9 The following are representative:

Milwaukee Journal Sentinel (Wisconsin)
February 23, 2016 Tuesday
HEADLINE: Health systems’ profits up
More people insured through Obamacare behind sharp increase
BYLINE: GUY BOULTON [email protected] Milwaukee
Journal Sentinel, Staff, Milwaukee Journal Sentinel
BODY:
…fiscal year ended June 30, increasing to $149 million compared with
$83.4 million in its 2014 fiscal year.

9March 11, 2016 Office Action at .pdf 18-24; August 6, 2015 Office Action at .pdf 11-21; March
11, 2016 Office Action at .pdf 19-24.

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Serial No. 86301765

Columbia St. Mary’s operating income was up 26% in its fiscal year
ended June 30, increasing to $26.1 million compared with $20.7 million
in its 2013 fiscal year.
At least some of those gains have come from the increase in people with
health insurance, either through the subsidized health plans sold on the
federal marketplaces or the state’s partial expansion of its Medicaid
program.

Washington Business Journal (District of Columbia)
February 5, 2016 Friday
HEADLINE: A big change in the enrollment process for D.C. Health
Link
BYLINE: Tina Reed
BODY:
Officials from the D.C. health exchange are taking a bit of a victory lap
this week.
After a couple of glitchy years of enrollment on the website set up to sell
insurance plans under Obamacare in the District, D.C. Health Link
officials said this enrollment season was finally a smooth process.
There are 22,912 customers signed up for individual health insurance
this season, including 6,012 new customers, preliminary figures from
the exchange show. That’s up about 25 percent from last year when
there were 18,400 individuals who selected health plans on D.C. Health
Link, including 2,640 existing customers who selected new plans.

Los Angeles Times
July 31, 2015 Friday
Home Edition
HEADLINE: BUSINESS BEAT;
HEALTHCARE WATCH;
Emergency care overseas;
Experts offer tips on how to deal with urgent medical issues when traveling.
BYLINE: Lisa Zamosky, Zamosky is the author of “Healthcare, Insurance, and
You: The Savvy Consumer’s Guide.”
BODY:
Experts offer a range of tips and resources for dealing with an overseas medical
emergency.
Insurance coverage. Most health plans cover urgent and emergency care
worldwide. The coverage is generally the same as when you go outside your
plan’s network of doctors and hospitals at home.

Daily Record (Wooster, Ohio)
July 26, 2015 Sunday
SECTION: A; Pg. A.6

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Serial No. 86301765

LENGTH: 280 words
HEADLINE: Apple Creek considers health insurance changes
BYLINE: JONATHAN SCHOLLES, By JONATHAN SCHOLLES
BODY:
Council heard the second reading of an ordinance Monday that defines
employee and dependent eligibility for health insurance coverage through a
Wayne County health plan.
In a nutshell, the ordinance states employees whose spouses have insurance
available to them must pick it up.

The Examining Attorney also introduced screenshots of third-party health

insurance provider websites using the term “health plans” in connection with health

insurance.10 The following are representative:

America’s Health Insurance Plans (AHIP) is the national trade
association representing the health insurance industry. …
AHIP raises awareness around critical issues facing health plans and
advocates for policies that align with the strategic priorities set by the
Board of directors. (ahip.org).

Health Plans
Group Health Plans
We offer health and dental plans for businesses with 2 or more
employees.
Prefered Blue Accounts (FSA, DCA, HAS, HRA, LFSA)
Find health plans for businesses of two or more people.
BlueCross BlueShield of Alabama (bcbsal.org).

Unity Health Insurance
Affiliated with UW Health
Service Excellence
Unity has been continually rated among the top health plans in the
country (unityhealth.com).

Anthem
BlueCross BlueShield
Shop, compare, and sign up right here – for individual or family health
plans and Medicare solutions (anthem.com).

10March 11, 2016 Office Action at .pdf 28-32, 80-107; August 6, 2015 Office Action at .pdf 67-
92, 125-26.

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Serial No. 86301765

See 2015 Marketplace health insurance plans and prices right now.
If you qualify for a Special Enrollment Period and want to enroll or
change plans, you can preview 2015 health plans and premium quotes
before you fill out or update your application. (healthcare.gov).

Welcome to Health Net!
Health Net of California, Inc. and Health Net Life Insurance Company
(Health Net) want to help you find the health care coverage that fits
your health care needs and budget. Let’s get started!
See our plans
Local, affordable health coverage is here! Get more information on
health plans that work for you. (healthnet.com).

eHealth
Health Plans – Choosing the Right Plan
Which health plan is best for you and your family?
Choosing the right health plan can be a difficult task. Learn more about
your various health plan options to determine what the best health plan
is for you and your family.
eHealthInsurance is the nation’s leading online source of health
insurance. eHealthInsurance offers thousands of health plans
underwritten by more than 180 of the nation’s health insurance
companies, including Aetna and Blue Cross Blue Shield. Compare plans
side by side, get health insurance quotes, apply online and find
affordable health insurance today. (ehealthinsurance.com).

As noted above, HEALTHPLANS.COM is generic if health insurance providers (for

both classes) as well as members of the general public who seek health insurance

from health insurance providers (for the Class 35 services) understand the term

HEALTHPLANS.COM as the genus of services or a “key aspect” thereof. We consider

the component “healthplans” separate from the “.com” suffix and then consider if the

combination has the same meaning or creates a new meaning. See Hotels.com, 91

USPQ2d 1532 at 1304, 1306.

The record in this case clearly shows that “health plan(s)” is a common term that

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Serial No. 86301765

means an organized format for delivering health care insurance.11 It has been used

generically on Applicant’s website, as reproduced above (e.g., “Find the Right Health

Plan For You”), to indicate organized methods or formats for delivering health

insurance.

The suffix “.com” is defined as follows:

Part of the Internet address of many companies and organizations. It
indicates that the site is commercial, as opposed to educational or
governmental.

The phrase “dot-com” is used to refer generically to almost anything
connected to business on the Internet.12

Absent exceptional circumstances, the addition of the “.com” top-level domain (“TLD”)

to a generic or descriptive term does not add source-identifying significance and will

not transform the otherwise non-distinctive combination into a registrable mark.

Hotels.com, 91 USPQ2d at 1304 (noting that “registrability does not depend on the

.com combination”); In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1422

(Fed. Cir. 2005) (“Only in rare instances will the addition of a TLD indicator to a

descriptive term operate to create a distinctive mark.”) (citing In re Oppedahl &

Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1374 (Fed. Cir. 2004) (“When

11 Because “health plan(s)” or “healthplan(s)” has been used as a term of art in the relevant
field, we need not consider the generic significance of the words “health” and “plan(s)” alone.
See In re Shiva Corp., 48 USPQ2d 1957 (TTAB 1998).
12 Dictionary.com, http://www.dictionary.com/browse/-com. The Board may take judicial
notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co.,
213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including
online dictionaries that exist in printed format or have regular fixed editions. E.g., In re
SnoWizard, Inc., 129 USPQ2d 1001, 1004 n.6 (TTAB 2018); Threshold.TV Inc. v. Metronome
Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d
1375, 1378 (TTAB 2006).

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Serial No. 86301765

examining domain name marks, the PTO must evaluate the commercial impression

of the mark as a whole, including the TLD indicator. The addition of a TLD such as

‘.com’ or ‘.org’ to an otherwise unregistrable mark will typically not add any source-

identifying significance, similar to the analysis of ‘Corp.’ and ‘Inc.’”)). We are mindful

that “granting trademark rights over a domain name composed of a generic term and

a [top-level domain] grants the trademark holder rights over far more intellectual

property than the domain name itself.” Advertise.com, Inc. v. AOL Advert., Inc., 616

F.3d 970, 980 (9th Cir. 2010).

The Oppedahl court provided the following hypothetical to illustrate

circumstances under which a TLD might affect the distinctiveness or registrability

of a proposed mark:

Under the hypothetical, a company seeks to register the mark
tennis.net for a store that sells tennis nets. The applicant openly
states that it does no business on the Internet and has no intention to
ever use the Internet. 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 to a mark with a TLD
component that can demonstrate distinctiveness.

71 USPQ2d at 1373.

Here, the addition of “.com” to “health plan” or “health plans” is no more than a

designation of a commercial entity, like the word “Company,” because it does not

expand the meaning of “health plan(s)” beyond an organized format for delivering

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Serial No. 86301765

health insurance. A corporate identifier is without source-identifying capability. See,

e.g., Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598,

602 (1888) (“The addition of the word ‘Company’ only indicates that parties have

formed an association or partnership to deal in such goods, either to produce or to sell

them.”); In re Wm. B. Coleman Co., 93 USPQ2d 2019, 2025 (TTAB 2010) (with

respect to ELECTRIC CANDLE COMPANY, “electric candle” is a unitary generic

term and “‘company’ is simply a designation for a type of entity without source-

identifying capability”); In re Cell Therapeutics Inc., 67 USPQ2d 1795 (TTAB 2003)

(applicant “never argued that the addition of INC. would cause its mark in its

entirety (CELL THERAPEUTICS, INC.) to be not generic assuming it were

proven that CELL THERAPEUTICS was generic”).

Considering the combination HEALTHPLANS.COM as a whole, we find that the

combination imparts no new meaning and would be understood by consumers as

referring to the genus of services in Class 35. In this case, Applicant provides, inter

alia, matching services for health insurance plans. Pages from Applicant’s website,

displayed above, demonstrate that ordinary consumers input information in order to

match their health care needs with available health plans provided by health

insurers. “HealthPlans.com provides all the information you need to make an

informed decision about your health insurance plan. And we put it all in simple, easy-

to-understand terms.”13 “Once you’re ready to shop plans, we can match you with top

13 September 26, 2014 first Office Action at .pdf 11.

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Serial No. 86301765

carriers. Just answer some questions about yourself to get started.”14 Thus,

Applicant’s services match consumer health insurance needs with available health

plans. Additional evidence of record, including the representative examples

highlighted above, further demonstrates that consumers utilize Applicant’s services,

as well as the services of third parties, to search, shop for, and obtain health plans

available in their locations from public and private health insurers.

Based upon this evidence, we find that relevant consumers would understand

HEALTHPLANS.COM as denoting a commercial website for finding and being

matched with available health plans, and thus as referring to the genus of Applicant’s

Class 35 services. HEALTHPLANS.COM thus is generic for the Class 35 services or

at least a key aspect of them, namely, providing access to health insurance plans – or

health plans – over the Internet. See Cordua, 118 USPQ2d at 1638 (explaining that

“the term ‘pizzeria’ would be generic for restaurant services, even though the public

understands the term to refer to a particular sub-group or type of restaurant rather

than to all restaurants”).

In addition, this evidence demonstrates a competitive need for others to use the

term “health plan(s)” as part of their own domain names, trademarks and service

marks for services similar to those for which Applicant seeks registration. 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 health insurance services. See In re Boston Beer Co. L.P., 198 F.3d 1370, 53

14 Id.

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Serial No. 86301765

USPQ2d 1056 (Fed. Cir. 1999).

Because HEALTHPLANS.COM is generic at least as to certain of the services

Applicant offers under its proposed mark in Class 35, the mark is unregistrable as to

this entire class of services. See In re Analog Devices Inc., 6 USPQ2d 1808, 1810

(TTAB 1988), aff’d, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (unpublished).

Turning to the services in Class 42, they involve “providing temporary use of on-

line non-downloadable software and applications for facilitating the tracking,

administration, billing, and reporting of advertising via an on-line communications

network.” The relevant purchasers for these services are insurers. These services

appear to be ancillary to, rather than an integral part of, providing health insurance.

Based on the identification of services, advertising is the central focus of these

services, and while the subject matter of the advertising is health plans, the services

do not involve provision of, or providing access to, health plans. Viewed in its entirety,

the evidence of record indicates that HEALTHPLANS.COM in the context of these

services merely describes a feature or characteristic of the services, but falls short of

clearly demonstrating that insurers seeking to track, administer, bill and report

advertising over the Internet in the field of health insurance will understand

HEALTHPLANS.COM to refer to the genus of Applicant’s Class 42 services.

A. Summary

The Examining Attorney’s refusal of registration on the Principal Register under

Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§ 1051, 1052, 1053 and 1127 is

affirmed as to both classes.

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Serial No. 86301765

The Examining Attorney’s refusal of registration on the Supplemental Register

under Section 23(c) of the Trademark Act, 15 U.S.C. § 1091(c), on the ground that

Applicant’s proposed mark is a generic term is affirmed as to the identified services

in International Classes 35, and reversed as to the services in International Class 42.

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