NetEnter-prises, Inc.

Trademark Trial and Appeal Board

Apr 20, 2005

No. 76219917 (T.T.A.B. Apr. 20, 2005)

Mailed: April 20, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re NetEnterprise, Inc.
________

Serial No. 76219917
_______

Leighton K. Chong of Ostrager Chong & Flaherty for
NetEnterprise, Inc.

Dominick Salemi, Trademark Examining Attorney, Law Office
106 (Mary Sparrow, Managing Attorney).
_______

Before Chapman, Bucher and Drost, Administrative Trademark
Judges.

Opinion by Chapman, Administrative Trademark Judge:
On March 1, 2001, NetEnterprise, Inc. (a corporation
of Hawaii) filed an application to register on the
Principal Register the mark NETENTERPRISE for services
ultimately identified as follows:
“computer services, namely connecting
customer web sites and web applications
for online access by users through the
Internet, hosting and managing customer
web sites and web applications at data
centers, providing network management
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76219917
2
and support services to customers” in
International Class 42.1

The Examining Attorney made final his refusal to
register the mark as merely descriptive of applicant’s
services under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1). In response thereto, applicant filed
an amendment requesting that its application be amended to
seek registration on the Supplemental Register.
Thereafter, the Examining Attorney refused registration
under Section 23, 15 U.S.C. §1091, on the ground that the
proposed mark is generic and incapable of serving as a
source identifier for applicant’s services. When the
Examining Attorney had twice refused registration on the
Supplemental Register, applicant appealed.
Both applicant and the Examining Attorney have filed
briefs. Applicant did not request an oral hearing.
The issue before the Board is whether the term
NETENTERPRISE is generic for applicant’s services, and
thus, is incapable of serving as a source identifier
therefor and hence is unregistrable on the Supplemental
Register.

1 Application Serial No. 76219917, filed March 1, 2001, is based
on applicant’s claimed date of first use and first use in
commerce of October 1996.
Ser. No. 76219917
3
The Examining Attorney contends that the Merriam-
Webster OnLine Dictionary defines the terms “net” as “5:
Internet,” and “enterprise” as “1: a project or undertaking
that is especially difficult, complicated, or risky … 3a: a
unit of economic organization or activity; especially: a
business organization b: a systematic purposeful
activity”; that “Applicant’s term [NETENTERPRISE], used in
connection with the type of services applicant provides,
merely serves to inform the public of the type of business
[applicant] runs, to wit: an internet business or
enterprise” (Office action dated May 20, 2003, p. 1); that
the words used together result in a proposed “mark that
literally describes the provider of the services: a
business providing services electronically or over the
internet” (brief, unnumbered page 3); and that allowing
applicant to register the term NETENTERPRISE on the
Supplemental Register would prevent applicant’s competitors
from adequately describing their own such services.
The Examining Attorney also submitted (i) printouts of
some excerpted stories retrieved from the Nexis database
relating to “net enterprise”; and (ii) printouts from
several websites on the Internet, generally showing
references to “net enterprise” or “Internet enterprise.”
Ser. No. 76219917
4
Some representative examples of the Nexis and Internet
evidence are reproduced below (emphasis added):
Headline: A Simple Plan for Success on
the Net
…competition is being crowded. Building
value in a brand will no doubt breed
success for a Net enterprise. The
Internet will continue to evolve and so
will marketing strategies…. “Video Age
International,” February 1, 2001;

Headline: NBC Interactive Now A Business
Unit
…Indeed, Yudkowitz readily admits that
NBC Interactive, like the majority of
‘Net enterprises,’ is not yet a money
maker. That will come when penetration,
convenience, reliability and transaction
security improve, he predicts. “Phillips
Business Information,” March 5, 1997;

INTERNET ENTERPRISE STRATEGY & DESIGN
A Real-World Introduction to Electronic
Commerce
An Online Guide for Net Entrepreneurs &
Managerial End Users
STARTING AN INTERNET ENTERPRISE
Why? What? How? When?
…
www.brint.com;

Enterprise Cold Reporting Software
…
Internet Enterprise Cold Reporting – for
Internet/Intranet Environments
…
www.winocular.com;

Internet Security Systems
CONNECT
International Security Summit
The Premiere Conference for Internet,
Enterprise and Network Security
www.issconnect.net;

Ser. No. 76219917
5
The Internet Enterprise System, By Sunil
Ciszewski
www.saleslobby.com; and

Wireless Internet Enterprise
Applications, by Chetan Sharma
www.shopbarnesandnoble.com.

Applicant’s position is set forth below:
While Applicant may concede that the
two-word phrase ‘net enterprise’ is
generic, Applicant has submitted proof
in the record that ‘NETENTERPRISE’ is
not generic. Using Google searching,
Applicant has shown that over 80% of
the primary 200 references it found and
90% of those found by the Examiner
using the term ‘netenterprise’ referred
to Applicant’s own company. The
Examining Attorney arguments are
directed to generic references to ‘net
enterprise’, but does not respond in
any persuasive manner to Applicant’s
arguments as to the source-identifying
nature of ‘NETENTERPRISE’.

Furthermore, the Applicant is not
applying to register ‘NETENTERPRISE’
for a generic ‘business providing
services electronically over the
Internet’. Instead, the Applicant’s
services as described in the
application are ‘Computer Services,
such as services in hosting,
maintaining, and supporting Web sites
at data centers’. These services are
known in the industry as those of a
‘hosting data center’, which is
understood as a specific kind of
service that has nothing to do with a
‘business providing services
electronically or over the Internet’.

(Reply brief, unnumbered page 2.)

Ser. No. 76219917
6
Applicant concludes that the Examining Attorney was in
error in refusing registration of NETENTERPRISE on the
Supplemental Register.
The Office bears the burden of proving that the
proposed trademark is generic, and genericness must be
demonstrated through “clear evidence.” See In re Merrill
Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141 (Fed. Cir. 1987); and In re Analog Devices
Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d, unpubl’d, but
appearing at 10 USPQ2d 1879 (Fed. Cir. 1989). The evidence
of the relevant public’s perception of a term may be
acquired from any competent source, including newspapers,
magazines, dictionaries, catalogs and other publications.
See Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d
1551 (Fed. Cir. 1991); and In re Leatherman Tool Group,
Inc., 32 USPQ2d 1443 (TTAB 1994), citing In re Northland
Aluminum Products, Inc., 777 F.2d 1566, 227 USPQ 961 (Fed.
Cir. 1985).
The test for determining whether a designation is
generic, as applied to the goods or as used in connection
with the services in an application, turns upon how the
term is perceived by the relevant public. See Loglan
Institute Inc. v. Logical Language Group, Inc., 962 F.2d
1038, 22 USPQ2d 1531 (Fed. Cir. 1992). Determining whether
Ser. No. 76219917
7
an alleged mark is generic involves a two-step analysis:
(1) what is the genus of the goods or services in question?
and (2) is the term sought to be registered understood by
the relevant public primarily to refer to that genus of
goods or services? See In re The American Fertility
Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999);
and H. Marvin Ginn Corporation v. International Association
of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir.
1986).
Based on the recitation of services herein, and the
screen prints from applicant’s website, we find that the
answer to the first Marvin Ginn question, namely, the genus
of the involved services herein, is “providing Internet
access for businesses.”
We turn then to the second Marvin Ginn question,
namely, whether the term “NetEnterprise” is understood by
the relevant public primarily to refer to the service of
providing Internet access for businesses.
The Examining Attorney’s dictionary evidence shows
that “Net” is understood to be a shorthand for “Internet.”
Similarly, the word “Enterprise” is readily understood as
meaning “a business organization.” Accordingly, a “net
enterprise” is an “Internet business.” Applicant seems not
to argue this point.
Ser. No. 76219917
8
In addition to applicant’s argument quoted above from
its reply brief, we also have the following statement from
the declaration of applicant’s vice president, Jason A.
Toth, dated August 29, 2002:
5. Further searches were performed on
the generic terms ‘net enterprise’ and
‘network enterprise’. … These results
show that there is a marked difference
in public perception of our trademark
‘NETENTERPRISE’ and the generic term
‘net enterprise’.

This recognition, coupled with the Nexis and Internet
evidence and dictionary entries placed into the record by
the Examining Attorney regarding use of the words “net
enterprise,” establishes that under either test, American
Fertility, supra, or the compound word test of In re Gould
Paper Corp., 835 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987),
the phrase “net enterprise” is generic of a business
operation conducted over the Internet. Whether one focuses
on applicant’s services “known in the industry as those of
a ‘hosting data center,’” or on the reason why prospective
customers seek out applicant’s services, the relevant
public will readily understand the term “net enterprise”
primarily to refer to an Internet business of which the
service of providing Internet access for businesses is an
example. See In re Central Sprinkler Co., 49 USPQ2d 1194
Ser. No. 76219917
9
(TTAB 1998); and In re Conus Communications Co., 23 USPQ2d
1717 (TTAB 1992).
We are not persuaded by applicant’s evidence which it
asserts shows “overwhelming recognition of Applicant’s own
company as the source of the services” (brief, unnumbered
page 3). While applicant’s methodology is not clear, it is
perhaps not surprising that when one searches
“netenterprise” as a single run-together term on Google,
many of the hits will be to applicant’s trade name.2
Moreover, applicant’s attempts to obtain a
registration by emphasizing the fact that it uses the two
words without a space between them is unpersuasive. A
misspelling of a generic term or terms does not change the
generic significance to the purchaser. See Nupla Corp. v.

2 Despite its superficial appeal, counting up Google hits can be
quite misleading. For example, in reviewing the entire record,
we note that Lexis/Nexis entries and the results of Internet
searches (e.g., for the term “net enterprise” – having a space
between the words “net” and “enterprise” – on the Google search
engine) show frequent occurrences of the combination “.NET
Enterprise” immediately before words like “server,”
“architecture,” “application,” “software,” “services,” etc. All
these excerpts include some references to “.NET Enterprise” for
goods and services sold by Microsoft corporation.
While the record does not make clear whether Microsoft’s
involved development software is related to applicant’s services,
to the extent this truly represents the majority of Google hits
for this combination of terms (i.e., with a space between the
words “net” and “enterprise”), it raises the entirely plausible
possibility that, contrary to the conclusions applicant would
have us draw from its “look at the first 200 Google hits”
calculations, that the perceptions of prospective consumers, upon
first encountering applicant’s alleged mark, may be affected by
Microsoft’s usage.
Ser. No. 76219917
10
IXL Manufacturing Co., 114 F.3d 191, 42 USPQ2d 1711 (Fed.
Cir. 1997); Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d
1628 (TTAB 1998); and In re Stanbel Inc., 16 USPQ2d 1469
(TTAB 1990), aff’d unpub’d, but appearing at 20 USPQ2d 1319
(Fed. Cir. 1991). See also, 2 J. Thomas McCarthy, McCarthy
on Trademarks and Unfair Competition, §§12:38 and 12:39
(4th ed. 2001). Here the “misspelling” is applicant’s
deletion of the space between the two separate words “net”
and “enterprise.” However, the term “netenterprise”
remains generic.
We find that the evidence of record establishes that
the relevant purchasing public recognizes the words “net
enterprise” (or “netenterprise”) as indicating a generic
Internet business or enterprise, including the specific
identified services offered by applicant. Thus,
applicant’s proposed mark is generic and incapable of
distinguishing applicant’s services from those of others.
Decision: The refusal to register on the Supplemental
Register is affirmed.