RECOMMENDED FOR FULL-TEXT PUBLICATION Pursuant to Sixth Circuit Rule 206 2 DeGidio v. West Group Corp., et al. No. 02-3739 ELECTRONIC CITATION: 2004 FED App. 0019P (6th Cir.) File Name: 04a0019p.06 New York, for Appellee. ON BRIEF: Anthony J. DeGidio, Jr., Toledo, Ohio, for Appellant. Robert L. Raskopf, Jennifer Johnson Millones, WHITE & CASE, New York, New York, UNITED STATES COURT OF APPEALS for Appellee. Richard M. Kerger, KERGER & KERGER, Toledo, Ohio, for Appellee. FOR THE SIXTH CIRCUIT _________________ KENNEDY, J., delivered the opinion of the court, in which MARTIN, J., joined. MOORE, J. (pp. 15-17), delivered a ANTHONY J. DE GIDIO , X separate opinion concurring in part and concurring in the Plaintiff-Appellant, - judgment. - - No. 02-3739 _________________ v. - > OPINION , _________________ WEST GROUP CORPORATION ; - THE THOMSON - KENNEDY, Circuit Judge. Plaintiff appeals the district CORPORATION ; WEST - court’s order granting summary judgment to Defendants. LICENSING CORPORATION , - Plaintiff DeGidio argues that the district court erred when it Defendants-Appellees. - determined that his mark, LAWOFFICES, was descriptive - and that it had not acquired secondary meaning. We affirm. N Appeal from the United States District Court BACKGROUND for the Northern District of Ohio at Toledo. No. 99-07510—David A. Katz, District Judge. This case represents an attempt by Plaintiff, Anthony DeGidio, to obtain trademark protection for the mark Argued: December 5, 2003 LAWOFFICES.1 Plaintiff is the registrant of the domain
Decided and Filed: January 14, 2004 1 Although the specific facts of this case invo lve the designation Before: KENNEDY, MARTIN, and MOORE, Circuit LawOffices.net, as Plaintiff points out, the “.net” has no trademark Judges. significance. Appellant Br. at 11 (quoting The Patent and Trad emark Office Examination Guide No. 2-99 (Sept. 29, 1999) (noting that when a _________________ trademark “is composed , in whole or in part, of a domain name, neither the beginning of the [Uniform Resource Locator] (http://www.) nor the TLD [top-level domain] have any source indicating significance. Instead, COUNSEL those designations are merely devices that every Internet site provider must use as part of its addre ss.”) So Plaintiff is really seeking to ARGUED: Anthony J. DeGidio, Jr., Toledo, Ohio, for trademark LAWOFFICES. This would affect those practitioners who Appellant. Robert L. Raskopf, WHITE & CASE, New York, have and who will seek to set up their practice as “Law Office[s] of [Individual’s Name.]”
1 No. 02-3739 DeGidio v. West Group Corp., et al. 3 4 DeGidio v. West Group Corp., et al. No. 02-3739
name “lawoffices.net” and alleged founder and owner of the “lawoffice.com”7 to market the West Legal Directory, which corresponding website,2 which provides a directory of forty serves as an online resource for various legal information.8 attorneys, legal information relating to cyberlaw issues, a vanity e-mail service,3 listing of domain names for sale,4 and Plaintiff filed this trademark action on August 24, 1999 a hosting service for legal related websites. Plaintiff, alleging violations of the Ohio Deceptive Trade Practices Act, however, does not own either a federal or state registration for OHIO REV . CODE ANN . § 4165.01 et seq. (Count I); the LawOffices.net designation.5 unauthorized use of trademark pursuant to OHIO REV . CODE ANN . §1329 et seq. (Count II);9 common law unfair Defendants, West Group Corporation, The Thompson competition (Count III); false designation of origin under Corporation, and West Licensing Corporation, utilize the 15 U.S.C. § 1125(a) (Count IV); federal trademark dilution designation Lawoffice.com6 and the domain name (Count V); common law dilution (Count VI); and the tort of misappropriation (Count VII). Both parties moved for summary judgment. The district court found that LAWOFFICES was not a protectible mark because it was descriptive and it had not acquired a secondary meaning. Accordingly, the district court granted Defendants’ motion for summary judgment as to counts I-VI, but not VII. Plaintiff dismissed count VII and thereafter timely appealed. STANDARD OF REVIEW 2 Plaintiff registered the domain name on Janua ry 25, 1996 and began the creation of the website in February of 1996. We review a district court’s grant of summary judgment de novo. Terry Barr Sales Agency, Inc. v. All-Lock Co., 96 F.3d 3 Vanity e-mail is a se rvice whereb y an individual could obtain an e- 174, 178 (6th Cir. 1996). In deciding a summary judgment mail address with “@lawoffices.net” after the individual’s name (e.g. smith@lawoffices.net). 7 4 Visitors to lawoffice.com are redirected to a Findlaw directory page Do main names is a service where by a person can set up a website at http://directory.findlaw.com. with “.lawoffices.net” at the end (e.g. smith.lawoffices.net). 8 5 The website offers information on over four hundred legal topics, The essential features of Plaintiff’s putative trademark are: (1) a a directory of approximately 1 million attorneys and other legal capitalization of “l” and “o;” (2) pluralization of “lawoffice;” and professionals, an online searchable legal dictionary, and a frequently (3) placement of the term “LawOffice.net” in black font in a horizontal asked questions section. West also offers fee-based services, such as e- rectangular b ox that is shaded in marbled white and light gray. mail, website creation and hosting, and sponsorship packages. None of the fee-based services, however, are advertised at the Lawoffice.com 6 website. The essential features o f Defendant’s designation are: (1) captialization of the letter “l” only; (2) singular, as opp osed to plural, 9 “lawoffice;” (3) italicization of “law;” (4) place ment of Lawoffice.co m in As the district court noted, Plaintiff has withdrawn Count II because white font in a dark blue rectangular box; (5) a multi-colored open door in order to sustain a cause of action in Count II, a plaintiff must own a emblem situated over the “dot;” and (6) the text “from W est Legal registered trademark, O H IO R EV . C ODE A N N . § 13 29.6 6, and Plaintiff in Directory” place in smaller white font beneath Lawoffice. the pre sent case do es not. No. 02-3739 DeGidio v. West Group Corp., et al. 5 6 DeGidio v. West Group Corp., et al. No. 02-3739
motion, this court cannot weigh the evidence, judge the we do under the federal law. Allard Enters., Inc. v. Advanced credibility of witnesses, or determine the truth of the matter Programming Res., Inc., 146 F.3d 350, 354-55 (6th Cir. asserted. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 1998); Abercrombie & Fitch Stores, Inc. v. Am. Eagle (1986). We view the evidence and draw all “justifiable Outfitters, Inc., 280 F.3d 619, 626 n. 2 (6th Cir. 2002); inferences” in the light most favorable to the non-movant. Id. Laventhal & Assoc., Inc. v. Thomson Cent. Ohio, 714 N.E.2d Summary judgment is appropriate where “there is no genuine 418, 423 (Ohio Ct. App. 1998). Finally, the same federal issue as to any material fact and . . . the moving party is trademark principles apply to analogous federal and state entitled to a judgment as a matter of law.” Fed. R. Civ. P. common law claims. Daddy’s Junky Music v. Big Daddy’s 56(c). “[T]he mere existence of some alleged factual dispute Family Music, 109 F.3d 275, 288 (6th Cir. 1997). between the parties will not defeat an otherwise properly supported motion for summary judgment. . ..” Anderson, 477 As the district court observed, “whether Plaintiff’s mark U.S. at 247-48 (emphasis in original). Mixed questions of qualifies for trademark protection is determined by where the law and fact are reviewed de novo. Williams v. Mehra, 186 mark falls along the established spectrum of distinctiveness.” F.3d 685, 689 (6th Cir. 1999) (en banc). DeGidio, No. 3:99 CV 7510, slip op. at 9-10 (citing Boston Beer Co. v. Slesar Bros. Brewing Co., 9 F.3d 175, 180 (1st ANALYSIS Cir. 1993)). Putative trademarks may either: (1) be inherently distinctive or (2) acquire distinctiveness through secondary As the district court correctly noted, in order to prevail on meaning. See Two Pesos, 505 U.S. at 769. Professor any of the first six counts, Plaintiff must establish that the McCarthy, in his treatise, further explains that: designation “LawOffices.net” is indeed a valid and legally protectable trademark. See DeGidio v. West Group Corp., Within the two basic categories are sub-categories that No. 3:99 CV 7510, slip op. at 6-7 (N.D. Ohio Mar. 18, 2002) form the complete spectrum of distinctiveness of marks. (citing Herman Miller, Inc. v. Palazzetti Imports & Exports, Arrayed in an ascending order roughly reflecting their Inc., 270 F.3d 298, 308 (6th Cir. 2001), Am. Online, Inc. v. eligibility to trademark status and the degree of AT&T Corp., 243 F.3d 812, 819 (4th Cir. 2001); Sunbeam protection afforded, the categories are: (1) generic terms; Products Inc. v. The West Bend Co., 123 F.3d 246, 251 (5th (2) descriptive; (3) suggestive; (4) arbitrary or fanciful. Cir. 1997), overruled in part on other grounds sub nom., Generic terms can never be trademarks, descriptive terms Traffix Devices, Inc. v. Mktg. Displays Inc., 532 U.S. 23 are not inherently distinctive and suggestive, arbitrary (2001)) The district court also correctly noted that the and fanciful terms are regarded as being inherently Lanham Act offers protection against infringement of both distinctive. registered and unregistered marks. See, e.g., Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). To 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION determine whether an unregistered mark is entitled to § 11:2 (4th ed. 2003). See also Induct-O-Matic Corp. v. protection under § 43(a), the courts look to the general Indoctotherm Corp., 747 F.2d 358, 362 (6th Cir. 1984). principles qualifying a mark for registration under § 2 of the Lanham Act. ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, In the present case, neither party is arguing that Plaintiff’s 921 (6th Cir. 2003) (citing Two Pesos, 505 U.S. at 768). As mark is either generic or arbitrary or fanciful. Because this Court has previously indicated, we employ the same suggestive marks are inherently distinctive, whereas analysis to alleged trademark violations under Ohio law, as descriptive marks can only acquire distinctiveness through No. 02-3739 DeGidio v. West Group Corp., et al. 7 8 DeGidio v. West Group Corp., et al. No. 02-3739
secondary meaning, we first consider into which sub- about the quality, ingredients or characteristics of the category, Plaintiff’s mark falls. product or service? In doing this, it must be kept in mind that the ordinary consumer does not spend much time in 1. Plaintiff’s mark is descriptive the marketplace lingering over such problems. On the other hand, if the potential buying class at issue are “A suggestive term suggests rather than describes an experts or professionals, a more critical examination is ingredient or characteristic of the goods and requires the reasonable. observer or listener to use imagination and perception to (2) Does the mark directly convey a real and unequivocal determine the nature of the goods.” Induct-O-Matic, 747 F.2d idea of some characteristic, function, quality or at 362. As this Circuit explained earlier, examples of a ingredient of the product or service to a reasonably suggestive term include “CITIBANK, which connotes an informed potential buyer? That typical buyer will urban or modern bank, or GOLIATH, for wood pencils, already have some knowledge about the product or connoting a large size.” Champions Golf Club, Inc. v. The service and is neither an expert nor a totally uninformed Champions Golf Club, Inc., 78 F.3d 1111, 1117 (6th Cir. about the product. Is some reflection or multi-stage 1996). On the other hand, a trademark is merely descriptive reasoning process necessary to cull some direct if it describes one, or more, of the following: “the intended information about the product from the term used as a purpose, function or use of the goods. . .the class of users of mark? the goods; a desirable characteristic of the goods; or the end (3) Does the mark so closely tell something about the effect upon the user.” Wynn Oil Co. v. Thomas, 839 F.2d product or service that other sellers of like products 1183, 1190 (6th Cir. 1988). As the Champions Golf Club would be likely to want to use the term in connection court explained, “examples of descriptive marks are BEST, with their goods? Perhaps a more realistic way to pose SUPERIOR, and PREFERRED.” Champions Golf Club, 78 this question is to ask whether, without any prior F.3d at 1117. knowledge of this mark, others would be likely to want to use it to describe their products? The district court found that Plaintiff’s mark was, at best, (4) Are, in fact, other sellers now using this term to descriptive. DeGidio, No. 3:99 CV 7510, slip op. at 16. To describe their products? Even if the mark is descriptive aid in its determination, the court relied on a following six- and has attained secondary meaning, if many others in factor test that was articulated by Professor McCarthy10 and other product markets are using this term, the mark may accepted by the parties: be labelled [sic] “weak” and entitled only to narrow protection. (1) How much imagination on the buyer’s part is (5) Even though the mark may tell something about the required in trying to cull a direct message from the mark goods or services, is it just as likely to conjure up some other, purely arbitrary connotation? E.g., SUGAR & SPICE baked goods, or POLY PITCHER plastic 10 Professor McC arthy developed the test to assist lawyers and judges pitchers. in distinguishing between descriptive and suggestive marks because “the (6) How does the mark fit into the basic concept that descriptive-suggestive dichotomy [is not] some kind of concrete and descriptive marks cannot pinpoint one source by identifying objective classification system. It is no more objective and free of personal predilections that a test which asks persons to divide all color and distinguishing only one seller? That is, are buyers shades into ‘light’ and ‘dark.’” 2 M C C A R TH Y § 11:71. No. 02-3739 DeGidio v. West Group Corp., et al. 9 10 DeGidio v. West Group Corp., et al. No. 02-3739
likely to regard the mark really as a symbol of origin, or service without a client actually going to a physical office merely as another form of self-laudatory advertising? does not change the meaning of the term “law office.”11
2 MCCARTHY § 11:71. Second, Plaintiff argues that the district court should have concluded that “LAWOFFICES was suggestive and therefore Plaintiff raises a number of arguments challenging the a trademark for domain name sales (an online searchable district court’s holding. We find them to lack any merit. database of domain names for sale), website hosting (and Ordinarily, we review the district court’s classification of a third level domain name creation and sales), and the provision term as “descriptive” or “suggestive” under the clear error of vanity email services.” Appellant Br. at 18. Although we standard. See, e.g., Sands, Taylor & Wood Co. v. The Quaker find that the district court did not necessarily view evidence Oats Co., 978 F.2d 947, 952 (7th Cir. 1992); 2 MCCARTHY § in light most favorable to Plaintiff when it applied the six- 11:3 (citing 1st, 2nd, 3rd, 4th, 5th, 7th, 8th, and Federal factor McCarthy test,12 we nevertheless uphold the district Circuits). However, as the Seventh Circuit noted, a grant of court’s opinion. The district court found that the second a summary judgment motion on the question of whether the factor weighed in favor of Plaintiff. It also found that factors mark is descriptive or suggestive, even resolving all factual three through six weighed heavily in favor of Defendant. disputes in favor of a non-moving party, amounts to a legal Since the descriptive-suggestive distinction is a continuum, conclusion. The Quaker Oats Co., 978 F.2d at 952. This we find that, even if we view the evidence in the light most legal conclusion is reviewed de novo. Id. See also favorable to Plaintiff, the mark LAWOFFICES lies very close Eisenmann Corp. v. Sheet Metal Workers Int’l Ass’n Local to the descriptive end of a continuum. No. 24, 323 F.3d 375, 380 (6th Cir. 2003). First, Plaintiff argues that the district court erred when it concluded that “LAWOFFICES was merely descriptive of an online database of attorneys and the electronic publication via 11 a global network of computers” because, according to Plaintiff in his reply brief takes “issue with the finding that one Plaintiff, there is no “law office that provides a software typically would find a law office which provides to the public the service of searching for other attorneys or a service that publishes law articles and based service by which the attorney can enter their name, decisions to the public.” This statement is baffling because, to the best of contact information, and specialty, into a database made this Court’s knowledge, attorneys routinely provide references to other available to individuals around the world and which is attorneys, as well as pro vide th eir clients with copies of relevant law searchable by those users by the attorney’s name, state, or articles and court decisions. The fact that P laintiff chooses not to charge specialty.” Appellant Br. at 17-18. Plaintiff misses the mark the public for the provision of these services may make him a good person, but it does not entitle him to trademark protection. on this argument. When potential clients think of the services that one would obtain from a lawyer in a law office, they 12 W ith regard to the first factor, the district co urt noted that “the re is certainly envision referrals to specialists, advice on lawyers not a high degree of imagination that a typical buyer must employ to in other jurisdictions, and other legally-related advice. The imagine the nature of Plaintiff’s services, particularly in light of the fact that Plaintiff (and Defendant) can now provide the same sophistication level of the attorneys and other consumers likely to utilize such a website.” DeGidio, No. 3:99 CV 7510, slip op. at 14. Had the district court found that after conducting a trial, we would not disturb that finding. We are troubled, however, by this conclusion at a summary judgment stage. No. 02-3739 DeGidio v. West Group Corp., et al. 11 12 DeGidio v. West Group Corp., et al. No. 02-3739
Finally, as Defendant points out, the main problem with “must show that, in the minds of the public, the primary Plaintiff’s position is that Defendant in this case is not even significance of a product feature or term is to identify the accused of providing those services (i.e. domain name sales, source of the product rather than the product itself.” Inwood website hosting, and vanity e-mail) on the website that Labs., Inc. v. Ives Labs., 456 U.S. 844, 851 n. 11 (1982). As allegedly infringed on Plaintiff’s mark.13 One can imagine a the district court noted: hypothetical case in which a defendant would provide services identical to Plaintiff’s on a LAWOFFICE.COM Courts in this Circuit evaluate seven factors to determine website. That case would present an interesting question of whether a mark has acquired secondary meaning: whether “LAWOFFICES” is a suggestive or a descriptive (1) direct consumer testimony; (2) consumer surveys; mark with regard to those services. Since the present (3) exclusivity, length and manner of use; (4) amount and controversy does not involve such a fact pattern, we do not manner of advertising; (5) amount of sales and number address the question of whether “LAWOFFICES” could ever of customers; (6) established place in the market; and be a suggestive mark.14 (7) proof of intentional copying. Mktg. Displays, Inc. v. TrafFix Devices, Inc., 200 F.3d 929, 937 (6th Cir. 1999), 2. Plaintiff’s mark has not acquired secondary meaning. rev’d on other grounds, 532 U.S. 23 (2001). “[I]t is the party seeking protection of a mark who bears the burden Since Plaintiff has failed to establish that his mark is of proving that secondary meaning has attached.” Boston suggestive, he must establish that the mark has acquired Beer Co., 9 F.3d at 182 (citing Bristol-Meyers Squibb secondary meaning in the marketplace. “Secondary meaning Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1041 (2nd is used generally to indicate that a mark or dress has come Cir. 1992); Blinded Veterans Assoc. v. Blinded Am. through use to be uniquely associated with a specific source.” Veterans Found., 872 F.2d 1035, 1041 (D.C. Cir. 1989)). Two Pesos, 505 U.S. at 766 n.4 (citations omitted). Plaintiff “The evidentiary burden necessary to establish secondary meaning is substantial.” Burke-Parsons-Bowlby Corp. v. Appalachian Log Homes, Inc., 871 F.2d 590, 596 (6th 13 Cir. 1989) Secondary meaning is established when a As Defendant points out in its brief, “a retailer may not claim the preponderance of the evidence demonstrates “that the word “Bicycle Shop” as a trade mark for his bicycle store bec ause he also sells soft drinks and can dy under the “B icycle Shop” brand . Because attitude of the consuming public toward the mark denotes W est does not list domain names for sale un der its Lawoffice.com mark, ‘a single thing coming from a single source.’” Id. at 596 it does not infringe an y supp osed protectable element of D eGidio’s (quoting Aloe Cream Labs. v. Milsan, Inc., 423 F.2d 845, designation.” Appellee Br. at 17 n. 10. 849 (5th Cir. 1970)). The best evidence of secondary 14 meaning is direct evidence; however, such evidence is Plaintiff in his reply brief argues that “W est’s claims that there is rarely available. See id.; Libbey Glass, Inc. v. Oneida no infringem ent were not addressed by the T rial Co urt bec ause it found Ltd., 61 F. Supp.2d 700, 707 (N.D. Ohio 1999). no mark rights. Any arguments as to infringement are not yet ripe for review and cannot be analyzed until one knows what services have been Therefore, courts often draw inferences form the above trademarked.” App ellant Reply Brief at 3. W e disagree. As stated above, factors. See id. our problem with Plaintiff’s case is not the question of whether services have been trademarked, but a more limited problem that there is nothing DeGidio, No. 3:99 CV 7510, slip op. at 17. The district court in the record to support the claim that Defendant did any of the things applied the seven-factor test and found that Plaintiff failed to that, assuming Plain tiff has a trademark, would amount to an infringem ent. No. 02-3739 DeGidio v. West Group Corp., et al. 13 14 DeGidio v. West Group Corp., et al. No. 02-3739
meet his burden with respect to establishing a secondary years generated mere $200 in revenue from banner meaning for his mark. We agree. advertisements and click-through revenues. Burke-Parsons- Bowlby, 871 F.2d at 596 ($2,000,000 in gross sales is First, with regard to consumer testimony, Plaintiff provided insufficient to establish secondary meaning). Sixth, neither affidavits of three people who visited lawoffices.net website. side presented evidence regarding Plaintiff’s market share. The affidavits provide no testimony that affiants identify the Seventh, Plaintiff failed to establish that Defendant website with a particular source of services. Mere use of a intentionally copied Plaintiff’s mark. At most, Plaintiff website does not equal identification with a particular established that Defendant knew of Plaintiff’s website. provider. The district court also rejected as irrelevant the However, mere knowledge of the competitor’s mark is rankings by WebsMostLinked.com, a site that ranks websites insufficient as a matter of law to prove intentional copying. based upon the number of other sites that link to them. We As the district court noted, “intentional copying...is not agree. Second, neither side has provided consumer surveys. actionable under the Lanham Act absent evidence that the Third, the district court found that, even assuming that length copying was done with the intent to derive a benefit from the and continuity of use is favorable to Plaintiff, the wide use of reputation of another.” DeGidio, No. 3:99 CV 7510, slip op. the phrase “law office(s)” weighed against a finding of at 23 (citations omitted). Plaintiff’s suggestion that secondary meaning. See, e.g., K’Arsan Corp. v. Christian Defendant wanted to derive a benefit from his minimal $50 Dior Perfumes, Inc., No. 97-1867, 1998 WL 777987, at *5 annual business is meritless. (6th Cir. 1998) (“Third-party use of ‘sun powder’ (by at least two, and as many as five, other companies...) weakens the CONCLUSION mark.”) (citing Data Concepts Inc. v. Digital Consulting, Inc., 150 F.3d 620, 625 (6th Cir. 1998)); Amstar Corp. v. In sum, we conclude that Plaintiff’s mark is descriptive and Domino’s Pizza, Inc., 615 F.2d 252, 260 (5th Cir. 1980) that it has not acquired secondary meaning. Accordingly, we (finding it significant that there was widespread third-party affirm the district court’s decision. registration of “Domino”); Sun Banks of Fla., Inc. v. Sun Fed. Sav. & Loan Ass’n, 651 F.2d 311, 316 (5th Cir. 1981) (finding 4400 businesses using “Sun” in their names to be “impressive evidence that there would be no likelihood of confusion between Sun Banks and Sun Federal.”) Fourth, the district court found that Plaintiff’s advertising expenditures of $2,500 over four years is woefully insufficient to establish secondary meaning. See, e.g., Burke-Parsons-Bowlby Corp. v. Appalachian Log Homes, Inc., 871 F.2d 590, 596 (6th Cir. 1989) (observing that “extensive advertising which results in consumer association with a single source” is needed to establish secondary meaning and finding that $100,000 in advertising expenses was not enough to establish secondary meaning without further evidence that such advertising was extensive or beyond necessary to survive in the market.) Fifth, the district court credited evidence that Plaintiff in four No. 02-3739 DeGidio v. West Group Corp., et al. 15 16 DeGidio v. West Group Corp., et al. No. 02-3739
____________________ between the “.net” top-level domain (“TLD”)1 and the “.com” TLD on West’s mark of “Lawoffice.com” would not matter, CONCURRENCE 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 KAREN NELSON MOORE, Circuit Judge, concurring in entire mark as used by DeGidio when inquiring as to its part and concurring in the judgment. While I agree with the distinctiveness. See In re Anylens Acquisition, LLC, Nos. 02- majority that DeGidio has failed to demonstrate that his mark 1493, 02-1494, 2003 WL 1194293, at *3 (Fed. Cir. Mar. 10, has inherent or acquired distinctiveness warranting protection 2003) (noting a TLD can distinguish a particular type of under the Lanham Act, I write separately to explain my organization from organizations associated with other TLDs); conclusion that DeGidio’s mark is merely descriptive rather Virtual Works, Inc. v. Volkswagen of America, Inc., 238 F.3d than suggestive. I agree with the majority that the district 264, 271 (4th Cir. 2001) (“vw.net” only “confusingly similar” court did not, as is appropriate on summary judgment, to “VW”). The TLD “.net” is short for “network,” and necessarily view all of the evidence in the light most originally was exclusively for use by network providers.2 favorable to DeGidio. I also agree that the district court’s When DeGidio began LawOffices.net, he specifically chose holding was nonetheless correct, but I reach that conclusion a “.net” TLD because he planned to offer web site hosting by a slightly different route. services on his web site. See Joint Appendix at 98-100. I We deal in this case with two sets of services: the domain name sales, web site hosting, and email hosting services 1 (“internet services”); and the online attorney database and Each website has a corresponding domain name, which is an identifier somewhat analogous to a telephone legal information database services (“database services”). I number or street address. Domain names consist of a believe that “LawOffices.net” is clearly descriptive as to the second-level domain — simply a term or series of provision of legal information and attorney references. With terms (e.g., a2zsolutions) — followed by a top-level respect to the internet services, however, I read the factual domain, many of which describe the nature of the record differently from the majority, for I believe that West is enterprise. Top-level domains include “.com” (commercial), “.edu” (educational), “.org” (no n-pro fit in fact “accused of” providing web site hosting and vanity a n d m i s c e ll a n e o u s o r g a n i z at i o n s ) , “ . g o v ” email services on its web site. See Appellee’s Br. at 7 (“West (government), “.net” (networking provider), and “.mil” has also offered . . . e-mail and Web site creation and hosting (military). services.”). I think it is therefore necessary to inquire whether Interactive Prods. Corp. v. a2z Mobile Office Solutions, Inc., 326 F.3d “LawOffices.net” is descriptive or suggestive as to those two 687, 691 (6th Cir. 2003) (citations omitted). internet services; although the internet services present a more 2 difficult question, one the district court did not fully address, Originally, the TLD “.net” was only available to network service providers, but according to one circuit, it was in September 19 95 that the I nonetheless believe that “LawOffices.net” is descriptive as organization in charge of assigning T LDs stop ped en forcing these to these services as well. distinctions. See Virtual W orks, Inc. v. Volkswagen of America, Inc., 238 F.3d 264, 266 (4th Cir. 2001). DeGidio claimed in his deposition While it seems settled that if we were to find that DeGidio testimony that “.net” was still restricted when he registered had a protectable mark in “LawOffices.net,” the difference “LawOffices.net.” If DeGidio is better informed than our sister circuit as to the pre cise da te when “.net” ceased to be a restrictive TLD, it can only hurt his case that his mark is not descriptive. No. 02-3739 DeGidio v. West Group Corp., et al. 17
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.