WWWeb Impressions, LLC

Trademark Trial and Appeal Board

May 29, 2002

No. 75595241 (T.T.A.B. May. 29, 2002)

5/29/02 Paper No. 17
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UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re WWWeb Impressions, LLC
________

Serial No. 75/595,241
_______

Kirk M. Hartung of Zarley, McKee, Thomte, Voorhees & Sease
for WWWEb Impressions, LLC.

Anthony J. Tambourino,1 Trademark Examining Attorney, Law
Office 107 (Thomas Lamone, Managing Attorney).
_______

Before Cissel, Seeherman and Rogers, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

WWWeb Impressions, LLC has appealed from the final
refusal of the Trademark Examining Attorney to register
WWWEB IMPRESSIONS as a mark for “computer services, namely
design and implementation for others of global computer
network websites.”2 Registration has been refused pursuant
to Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), on

1 Mr. Tambourino prepared the brief in this case; a different
Examining Attorney handled the examination of the application.
2 Application Serial No. 75/595,241, filed November 25, 1998,
and asserting a bona fide intention to use the mark in commerce.

THIS DECISION IS
NOT CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/595,241
2
the ground that applicant’s mark so resembles the mark
NETIMPRESSIONS, previously registered for “computer
services provided through a global computer network, namely
designing, implementing, and maintaining web sites for
others”3 as to be likely, if used in connection with
applicant’s identified services, to cause confusion or
mistake or to deceive. The Examining Attorney has also
made final a requirement, pursuant to Section 6(a) of the
Trademark Act, 15 U.S.C. 1056(a), that applicant disclaim
exclusive rights to WWWEB.
The appeal has been fully briefed, but an oral
argument was not held.4
Turning first to the requirement for a disclaimer,
Section 6(a) of the Trademark Act provides, in part, that
“the Director may require the applicant to disclaim an
unregistrable component of a mark otherwise registrable.”

3 Registration No. 2,182,951, issued August 18, 1998.
4 It is noted that in the middle of page 13 of applicant’s 14-
page main brief there is a request for oral argument. Trademark
Rule 2.142(e)(1) specifically provides that “if the appellant
desires an oral hearing, a request therefore should be made by a
separate notice....” (emphasis added.) Throughout the course of
this appeal applicant has failed to comply with the Trademark
Rules governing appeals, e.g., failing to file its main brief
within 60 days of the filing of the notice of appeal and failing
to file its reply brief within 20 days from the mailing of the
Examining Attorney’s brief. Trademark Rule 2.142(b). Although
the Patent and Trademark Office has excused the latter lapses,
the Board will not excuse applicant’s failure to follow the
procedure set forth in the rule to request an oral hearing, and
will therefore not schedule one in this appeal.
Ser No. 75/595,241
3
A term which is merely descriptive of the goods or services
is unregistrable under Section 2(e)(1) of the Act.
It is the Examining Attorney’s position that WWWEB is
merely descriptive of applicant’s design and implementation
of global computer network websites because it is the
acronym WWW, with the final word represented by the
acronym, i.e., WEB, spelled out. Applicant, on the other
hand, asserts that WWWEB is not a word that can be found in
a dictionary, nor is it commonly associated with goods or
services in applicant’s field.
We affirm the Examining Attorney’s requirement that
WWWEB be disclaimed. The Examining Attorney has submitted
dictionary evidence5 that “WWW” is defined as “World Wide
Web; a hypertext-based system for finding and accessing
resources on the Internet network,” and that “World Wide
Web” is further defined as:
Also called WEB or W3. The World Wide
Web is the universe of accessible
information available on many computers
spread through the world and attached
to that gigantic computer network
called the Internet. The Web has a
body of software, a set of protocols
and a set of defined conventions for
getting at the information on the Web.
The Web uses hypertext and multimedia
techniques to make the web easy for
anyone to roam, browse and contribute
to. The Web makes publishing

5 Newton’s Telecom Dictionary, 15th ed. © 1999.
Ser No. 75/595,241
4
information (i.e., making that
information public) as easy as creating
a “home page” and posting it on a
server somewhere in the Internet. Pick
up any Web access software (e.g.
Netscape), connect yourself to the
Internet (through one of many dial-up,
for-money, Internet access providers or
one of the many free terminals in
Universities) and you can discover an
amazing diversity of information on the
Web. From weather to stock reports to
information on how to build nuclear
bombs to the best tennis tips, it can
be posted on the Web for all to read.
Invented by Tim Berners-Lee at CERN,
the Web is the first true “killer app”
of the Internet.

It is clear that “World Wide Web” is merely
descriptive of a characteristic of applicant’s services,
which is to design and implement websites which are
accessed through the World Wide Web. Although the term
WWWEB is not found in the computer dictionary, the terms
“WWW” and “World Wide Web” are widely recognized, and
applicant itself acknowledges that these terms are commonly
used. Reply brief, p. 1. Because of this widespread
recognition, and because WWWEB begins with the commonly
known term “WWW,” with the word represented by the last “W”
spelled out as “WEB,” so as to reinforce the meaning of
WWW, anyone who would be interested in applicant’s services
would immediately understand WWWEB to mean the World Wide
Ser No. 75/595,241
5
Web, and to understand the descriptive significance of
WWWEB.
Turning next to the question of likelihood of
confusion, our determination is based on an analysis of all
of the probative facts in evidence that are relevant to the
factors set forth in In re E.I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood
of confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Applicant’s services, design and implementation of
global computer network websites and the registrant’s
services, designing, implementing and maintaining web sites
for others, are legally identical, a fact which applicant
does not dispute. Accordingly, not only are the respective
services the same, but they also must be deemed to be
offered through the same channels of trade to the same
classes of customers.
This brings us to a consideration of the marks,
keeping in mind that when marks would appear on virtually
identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
declines. Century 21 Real Estate Corp. v. Century Life of
Ser No. 75/595,241
6
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992).
Applicant’s mark is WWWEB IMPRESSIONS, while the cited
mark is NETIMPRESSIONS. Both end with the identical term
IMPRESSIONS, and begin with a term which describes the
services. As noted previously, WWWEB would be perceived by
consumers as referring to the fact that the websites
applicant designs and implements are on the web. NET, too,
would be recognized as referring to the Internet, and
consumers would understand that the websites the registrant
designs and implements are on the Internet. Thus, although
the marks start with terms that are different in appearance
and pronunciation, because of the descriptive significance
of the initial terms, and the similarity of their
connotations, these differences are not sufficient to
distinguish the marks as a whole. Rather, the marks both
convey similar commercial impressions
It is well-established that there is nothing improper
in stating that, for rational reasons, more or less weight
has been given to a particular feature of a mark, provided
the ultimate conclusion rests on a consideration of the
marks in their entireties. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). For the
aforesaid reasons, the IMPRESSIONS part of both marks has
Ser No. 75/595,241
7
greater source-identifying significance, and the marks in
their entireties are similar because of their overall
connotations, namely of the word IMPRESSIONS preceded by
terms referring to the location of the websites on the
World Wide Web or the Internet, and in their composition,
with the descriptive term for the websites being followed
by the word IMPRESSIONS. Accordingly, when WWWEB
IMPRESSIONS is used for the same website design and
implementation services as NETIMPRESSIONS, purchasers are
likely to believe that these marks are mere variations on a
theme, and that the services identified thereby emanate
from the same source.
Although applicant notes that in many cases the courts
and the Board have found that the first element of a
trademark is more likely to be impressed on the mind of a
purchaser and remembered, we do not find that to be the
case here because of the descriptiveness of the initial
portions of both applicant’s and the registrant’s marks.
The cases cited by applicant are not persuasive.
Applicant also argues that the cited mark is entitled
to a limited scope of protection because there are third-
party marks in the same field. In support of this
argument, applicant has made of record five third-party
Ser No. 75/595,241
8
registrations which include the word IMPRESSIONS.6 Of these
five registrations, four are for goods that are very
different from the services identified in the application
and cited registration, being for computer software
programs for business graphics charting software
applications; for computer software programs for image and
text storage; for computer monitors; and for catalogs for
computer printers. We do not consider these registrations
to be for goods similar enough to the cited registrant’s
services to conclude the scope of protection for the cited
registration should be limited. Even if we were to find
that the scope of protection to be afforded the cited
registration would not extend to different kinds of
computer products, the scope of protection certainly would
extend to the identical services covered by the cited
registration.
There is one third-party registration for services
that are essentially the same as those in the cited
registration and in applicant’s application, namely, GLOBAL
IMPRESSIONS for “web site design and development services.”7
There has been speculation by the Examining Attorney and

6 Applicant refers to six registrations in its brief, but one of
these registrations is the cited registration.
7 Registration No. 2,193,915.

Ser No. 75/595,241
9
the applicant as to why this registration issued despite
the presence of the cited registration on the Register.
However, the file of that registration is not of record,
and we cannot determine why the registrations were found
acceptable for coexistence on the Register. What we can
say is that the commercial impression of GLOBAL IMPRESSIONS
is not as similar to the cited mark NETIMPRESSIONS as WWWEB
IMPRESSIONS is. Further, even if we were to assume that
the scope of protection to be accorded the NETIMPRESSIONS
mark is not broad enough to extend to the mark GLOBAL
IMPRESSIONS, we still find it to extend to prevent the
registration of the more similar mark WWWEB IMPRESSIONS.
Decision: The refusal on the ground of likelihood of
confusion and the requirement for a disclaimer of WWWEB are
affirmed. Applicant may, pursuant to Trademark Rule
2.142(g), submit the required disclaimer within 30 days of
the mailing date of this decision, and that portion of the
decision affirming the requirement for a disclaimer will be
set aside.