Anthony J. Degidio v. West Group Corporation; the Thomson Corporation; West Licensing Corporation

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RECOMMENDED FOR FULL-TEXT PUBLICATION
Pursuant to Sixth Circuit Rule 206
ELECTRONIC CITATION: 2004 FED App. 0019P (6th Cir.)
File Name: 04a0019p.06
UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT
_________________
ANTHONY J. DEGIDIO,
Plaintiff-Appellant,
v.
WEST GROUP CORPORATION;
THE THOMSON
CORPORATION; WEST
LICENSING CORPORATION,
Defendants-Appellees.
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No. 02-3739
Appeal from the United States District Court
for the Northern District of Ohio at Toledo.
No. 99-07510—David A. Katz, District Judge.
Argued: December 5, 2003
Decided and Filed: January 14, 2004
Before: KENNEDY, MARTIN, and MOORE, Circuit
Judges.
_________________
COUNSEL
ARGUED: Anthony J. DeGidio, Jr., Toledo, Ohio, for
Appellant. Robert L. Raskopf, WHITE & CASE, New York,
2 DeGidio v. West Group Corp., et al. No. 02-3739
1Although the specific facts of this case invo lve the designation
LawOffices.net, as Plaintiff points out, the “.net” has no trademark
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,
those designations are merely devices that every Internet site provider
must use as part of its address.”) So Plaintiff is really seeking to
trademark LAWOFFICES. This would affect those practitioners who
have and who will seek to set up their practice as “Law Office[s] of
[Individual’s Name.]”
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,
for Appellee. Richard M. Kerger, KERGER & KERGER,
Toledo, Ohio, for Appellee.
KENNEDY, J., delivered the opinion of the court, in which
MARTIN, J., joined. MOORE, J. (pp. 15-17), delivered a
separate opinion concurring in part and concurring in the
judgment.
_________________
OPINION
_________________
KENNEDY, Circuit Judge. Plaintiff appeals the district
court’s order granting summary judgment to Defendants.
Plaintiff DeGidio argues that the district court erred when it
determined that his mark, LAWOFFICES, was descriptive
and that it had not acquired secondary meaning. We affirm.
BACKGROUND
This case represents an attempt by Plaintiff, Anthony
DeGidio, to obtain trademark protection for the mark
LAWOFFICES.1 Plaintiff is the registrant of the domain

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No. 02-3739 DeGidio v. West Group Corp., et al. 3
2Plaintiff registered the domain name on Janua ry 25, 1996 and began
the creation of the website in February of 1996.
3Vanity e-mail is a service whereb y an individual could obtain an e-
mail address with “@lawoffices.net” after the individual’s name (e.g.
smith@lawoffices.net).
4Do main names is a service whereby a person can set up a website
with “.lawoffices.net” at the end (e.g. smith.lawoffices.net).
5The essential features of Plaintiff’s putative trademark are: (1) a
capitalization of “l” and “o;” (2) pluralization of “lawoffice;” and
(3) placement of the term “LawOffice.net” in black font in a horizontal
rectangular box that is shaded in marbled white and light gray.
6The essential features o f Defendant’s designation are:
(1) captialization of the letter “l” only; (2) singular, as opp osed to plural,
“lawoffice;” (3) italicization of “law;” (4) placement of Lawoffice.co m in
white font in a dark blue rectangular box; (5) a multi-colored open door
emblem situated over the “dot;” and (6) the text “from W est Legal
Directory” place in smaller white font beneath Lawoffice.
name “lawoffices.net” and alleged founder and owner of the
corresponding website,2 which provides a directory of forty
attorneys, legal information relating to cyberlaw issues, a
vanity e-mail service,3 listing of domain names for sale,4 and
a hosting service for legal related websites. Plaintiff,
however, does not own either a federal or state registration for
the LawOffices.net designation.5
Defendants, West Group Corporation, The Thompson
Corporation, and West Licensing Corporation, utilize the
designation Lawoffice.com6 and the domain name
4 DeGidio v. West Group Corp., et al. No. 02-3739
7Visitors to lawoffice.com are redirected to a Findlaw directory page
at http://directory.findlaw.com.
8The website offers information on over four hundred legal topics,
a directory of approximately 1 million attorneys and other legal
professionals, an online searchable legal dictionary, and a frequently
asked questions section. West also offers fee-based services, such as e-
mail, website creation and hosting, and sponsorship packages. None of
the fee-based services, however, are advertised at the Lawoffice.com
website.
9As the district court noted, Plaintiff has withdrawn Count II because
in order to sustain a cause of action in Count II, a plaintiff must own a
registered trademark, OH IO REV. CODE AN N. § 13 29.6 6, and Plaintiff in
the pre sent case do es not.
“lawoffice.com”7 to market the West Legal Directory, which
serves as an online resource for various legal information.8
Plaintiff filed this trademark action on August 24, 1999
alleging violations of the Ohio Deceptive Trade Practices Act,
OHIO REV. CODE ANN. § 4165.01 et seq. (Count I);
unauthorized use of trademark pursuant to OHIO REV. CODE
ANN. §1329 et seq. (Count II);9 common law unfair
competition (Count III); false designation of origin under
15 U.S.C. § 1125(a) (Count IV); federal trademark dilution
(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
We review a district court’s grant of summary judgment de
novo. Terry Barr Sales Agency, Inc. v. All-Lock Co., 96 F.3d
174, 178 (6th Cir. 1996). In deciding a summary judgment

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No. 02-3739 DeGidio v. West Group Corp., et al. 5
motion, this court cannot weigh the evidence, judge the
credibility of witnesses, or determine the truth of the matter
asserted. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255
(1986). We view the evidence and draw all “justifiable
inferences” in the light most favorable to the non-movant. Id.
Summary judgment is appropriate where “there is no genuine
issue as to any material fact and . . . the moving party is
entitled to a judgment as a matter of law.” Fed. R. Civ. P.
56(c). “[T]he mere existence of some alleged factual dispute
between the parties will not defeat an otherwise properly
supported motion for summary judgment. . ..” Anderson, 477
U.S. at 247-48 (emphasis in original). Mixed questions of
law and fact are reviewed de novo. Williams v. Mehra, 186
F.3d 685, 689 (6th Cir. 1999) (en banc).
ANALYSIS
As the district court correctly noted, in order to prevail on
any of the first six counts, Plaintiff must establish that the
designation “LawOffices.net” is indeed a valid and legally
protectable trademark. See DeGidio v. West Group Corp.,
No. 3:99 CV 7510, slip op. at 6-7 (N.D. Ohio Mar. 18, 2002)
(citing Herman Miller, Inc. v. Palazzetti Imports & Exports,
Inc., 270 F.3d 298, 308 (6th Cir. 2001), Am. Online, Inc. v.
AT&T Corp., 243 F.3d 812, 819 (4th Cir. 2001); Sunbeam
Products Inc. v. The West Bend Co., 123 F.3d 246, 251 (5th
Cir. 1997), overruled in part on other grounds sub nom.,
Traffix Devices, Inc. v. Mktg. Displays Inc., 532 U.S. 23
(2001)) The district court also correctly noted that the
Lanham Act offers protection against infringement of both
registered and unregistered marks. See, e.g., Two Pesos, Inc.
v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). To
determine whether an unregistered mark is entitled to
protection under § 43(a), the courts look to the general
principles qualifying a mark for registration under § 2 of the
Lanham Act. ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915,
921 (6th Cir. 2003) (citing Two Pesos, 505 U.S. at 768). As
this Court has previously indicated, we employ the same
analysis to alleged trademark violations under Ohio law, as
6 DeGidio v. West Group Corp., et al. No. 02-3739
we do under the federal law. Allard Enters., Inc. v. Advanced
Programming Res., Inc., 146 F.3d 350, 354-55 (6th Cir.
1998); Abercrombie & Fitch Stores, Inc. v. Am. Eagle
Outfitters, Inc., 280 F.3d 619, 626 n. 2 (6th Cir. 2002);
Laventhal & Assoc., Inc. v. Thomson Cent. Ohio, 714 N.E.2d
418, 423 (Ohio Ct. App. 1998). Finally, the same federal
trademark principles apply to analogous federal and state
common law claims. Daddy’s Junky Music v. Big Daddy’s
Family Music, 109 F.3d 275, 288 (6th Cir. 1997).
As the district court observed, “whether Plaintiff’s mark
qualifies for trademark protection is determined by where the
mark falls along the established spectrum of distinctiveness.”
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
Cir. 1993)). Putative trademarks may either: (1) be inherently
distinctive or (2) acquire distinctiveness through secondary
meaning. See Two Pesos, 505 U.S. at 769. Professor
McCarthy, in his treatise, further explains that:
Within the two basic categories are sub-categories that
form the complete spectrum of distinctiveness of marks.
Arrayed in an ascending order roughly reflecting their
eligibility to trademark status and the degree of
protection afforded, the categories are: (1) generic terms;
(2) descriptive; (3) suggestive; (4) arbitrary or fanciful.
Generic terms can never be trademarks, descriptive terms
are not inherently distinctive and suggestive, arbitrary
and fanciful terms are regarded as being inherently
distinctive.
2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
§ 11:2 (4th ed. 2003). See also Induct-O-Matic Corp. v.
Indoctotherm Corp., 747 F.2d 358, 362 (6th Cir. 1984).
In the present case, neither party is arguing that Plaintiff’s
mark is either generic or arbitrary or fanciful. Because
suggestive marks are inherently distinctive, whereas
descriptive marks can only acquire distinctiveness through

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No. 02-3739 DeGidio v. West Group Corp., et al. 7
10Professor McC arthy developed the test to assist lawyers and judges
in distinguishing between descriptive and suggestive marks because “the
descriptive-suggestive dichotomy [is not] some kind of concrete and
objective classification system. It is no more objective and free of
personal predilections that a test which asks persons to divide all color
shades into ‘light’ and ‘dark.’” 2 MCCA R TH Y § 11:71.
secondary meaning, we first consider into which sub-
category, Plaintiff’s mark falls.
1. Plaintiff’s mark is descriptive
“A suggestive term suggests rather than describes an
ingredient or characteristic of the goods and requires the
observer or listener to use imagination and perception to
determine the nature of the goods.” Induct-O-Matic, 747 F.2d
at 362. As this Circuit explained earlier, examples of a
suggestive term include “CITIBANK, which connotes an
urban or modern bank, or GOLIATH, for wood pencils,
connoting a large size.” Champions Golf Club, Inc. v. The
Champions Golf Club, Inc., 78 F.3d 1111, 1117 (6th Cir.
1996). On the other hand, a trademark is merely descriptive
if it describes one, or more, of the following: “the intended
purpose, function or use of the goods. . .the class of users of
the goods; a desirable characteristic of the goods; or the end
effect upon the user.” Wynn Oil Co. v. Thomas, 839 F.2d
1183, 1190 (6th Cir. 1988). As the Champions Golf Club
court explained, “examples of descriptive marks are BEST,
SUPERIOR, and PREFERRED.” Champions Golf Club, 78
F.3d at 1117.
The district court found that Plaintiff’s mark was, at best,
descriptive. DeGidio, No. 3:99 CV 7510, slip op. at 16. To
aid in its determination, the court relied on a following six-
factor test that was articulated by Professor McCarthy10 and
accepted by the parties:
(1) How much imagination on the buyer’s part is
required in trying to cull a direct message from the mark
8 DeGidio v. West Group Corp., et al. No. 02-3739
about the quality, ingredients or characteristics of the
product or service? In doing this, it must be kept in mind
that the ordinary consumer does not spend much time in
the marketplace lingering over such problems. On the
other hand, if the potential buying class at issue are
experts or professionals, a more critical examination is
reasonable.
(2) Does the mark directly convey a real and unequivocal
idea of some characteristic, function, quality or
ingredient of the product or service to a reasonably
informed potential buyer? That typical buyer will
already have some knowledge about the product or
service and is neither an expert nor a totally uninformed
about the product. Is some reflection or multi-stage
reasoning process necessary to cull some direct
information about the product from the term used as a
mark?
(3) Does the mark so closely tell something about the
product or service that other sellers of like products
would be likely to want to use the term in connection
with their goods? Perhaps a more realistic way to pose
this question is to ask whether, without any prior
knowledge of this mark, others would be likely to want
to use it to describe their products?
(4) Are, in fact, other sellers now using this term to
describe their products? Even if the mark is descriptive
and has attained secondary meaning, if many others in
other product markets are using this term, the mark may
be labelled [sic] “weak” and entitled only to narrow
protection.
(5) Even though the mark may tell something about the
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
pitchers.
(6) How does the mark fit into the basic concept that
descriptive marks cannot pinpoint one source by identifying
and distinguishing only one seller? That is, are buyers

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No. 02-3739 DeGidio v. West Group Corp., et al. 9
likely to regard the mark really as a symbol of origin, or
merely as another form of self-laudatory advertising?
2 MCCARTHY § 11:71.
Plaintiff raises a number of arguments challenging the
district court’s holding. We find them to lack any merit.
Ordinarily, we review the district court’s classification of a
term as “descriptive” or “suggestive” under the clear error
standard. See, e.g., Sands, Taylor & Wood Co. v. The Quaker
Oats Co., 978 F.2d 947, 952 (7th Cir. 1992); 2 MCCARTHY §
11:3 (citing 1st, 2nd, 3rd, 4th, 5th, 7th, 8th, and Federal
Circuits). However, as the Seventh Circuit noted, a grant of
a summary judgment motion on the question of whether the
mark is descriptive or suggestive, even resolving all factual
disputes in favor of a non-moving party, amounts to a legal
conclusion. The Quaker Oats Co., 978 F.2d at 952. This
legal conclusion is reviewed de novo. Id. See also
Eisenmann Corp. v. Sheet Metal Workers Int’l Ass’n Local
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
a global network of computers” because, according to
Plaintiff, there is no “law office that provides a software
based service by which the attorney can enter their name,
contact information, and specialty, into a database made
available to individuals around the world and which is
searchable by those users by the attorney’s name, state, or
specialty.” Appellant Br. at 17-18. Plaintiff misses the mark
on this argument. When potential clients think of the services
that one would obtain from a lawyer in a law office, they
certainly envision referrals to specialists, advice on lawyers
in other jurisdictions, and other legally-related advice. The
fact that Plaintiff (and Defendant) can now provide the same
10 DeGidio v. West Group Corp., et al. No. 02-3739
11Plaintiff in his reply brief takes “issue with the finding that one
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
decisions to the public.” This statement is baffling because, to the best of
this Court’s knowledge, attorneys routinely provide references to other
attorneys, as well as pro vide th eir clients with copies of relevant law
articles and court decisions. The fact that P laintiff chooses not to charge
the public for the provision of these services may make him a good
person, but it does not entitle him to trademark protection.
12W ith regard to the first factor, the district co urt noted that “there is
not a high degree of imagination that a typical buyer must employ to
imagine the nature of Plaintiff’s services, particularly in light of the
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.
service without a client actually going to a physical office
does not change the meaning of the term “law office.”11
Second, Plaintiff argues that the district court should have
concluded that “LAWOFFICES was suggestive and therefore
a trademark for domain name sales (an online searchable
database of domain names for sale), website hosting (and
third level domain name creation and sales), and the provision
of vanity email services.” Appellant Br. at 18. Although we
find that the district court did not necessarily view evidence
in light most favorable to Plaintiff when it applied the six-
factor McCarthy test,12 we nevertheless uphold the district
court’s opinion. The district court found that the second
factor weighed in favor of Plaintiff. It also found that factors
three through six weighed heavily in favor of Defendant.
Since the descriptive-suggestive distinction is a continuum,
we find that, even if we view the evidence in the light most
favorable to Plaintiff, the mark LAWOFFICES lies very close
to the descriptive end of a continuum.

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No. 02-3739 DeGidio v. West Group Corp., et al. 11
13As Defendant points out in its brief, “a retailer may not claim the
word “Bicycle Shop” as a trade mark for his bicycle store bec ause he also
sells soft drinks and candy under the “B icycle Shop” brand . Because
W est does not list domain names for sale under its Lawoffice.com mark,
it does not infringe any supposed protectable element of D eGidio’s
designation.” Appellee Br. at 17 n. 10.
14Plaintiff in his reply brief argues that “W est’s claims that there is
no infringem ent were not addressed by the T rial Co urt bec ause it found
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
trademarked.” App ellant Reply Brief at 3. W e disagree. As stated above,
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
in the record to support the claim that Defendant did any of the things
that, assuming Plain tiff has a trademark, would amount to an
infringem ent.
Finally, as Defendant points out, the main problem with
Plaintiff’s position is that Defendant in this case is not even
accused of providing those services (i.e. domain name sales,
website hosting, and vanity e-mail) on the website that
allegedly infringed on Plaintiff’s mark.13 One can imagine a
hypothetical case in which a defendant would provide
services identical to Plaintiff’s on a LAWOFFICE.COM
website. That case would present an interesting question of
whether “LAWOFFICES” is a suggestive or a descriptive
mark with regard to those services. Since the present
controversy does not involve such a fact pattern, we do not
address the question of whether “LAWOFFICES” could ever
be a suggestive mark.14
2. Plaintiff’s mark has not acquired secondary meaning.
Since Plaintiff has failed to establish that his mark is
suggestive, he must establish that the mark has acquired
secondary meaning in the marketplace. “Secondary meaning
is used generally to indicate that a mark or dress has come
through use to be uniquely associated with a specific source.”
Two Pesos, 505 U.S. at 766 n.4 (citations omitted). Plaintiff
12 DeGidio v. West Group Corp., et al. No. 02-3739
“must show that, in the minds of the public, the primary
significance of a product feature or term is to identify the
source of the product rather than the product itself.” Inwood
Labs., Inc. v. Ives Labs., 456 U.S. 844, 851 n. 11 (1982). As
the district court noted:
Courts in this Circuit evaluate seven factors to determine
whether a mark has acquired secondary meaning:
(1) direct consumer testimony; (2) consumer surveys;
(3) exclusivity, length and manner of use; (4) amount and
manner of advertising; (5) amount of sales and number
of customers; (6) established place in the market; and
(7) proof of intentional copying. Mktg. Displays, Inc. v.
TrafFix Devices, Inc., 200 F.3d 929, 937 (6th Cir. 1999),
rev’d on other grounds, 532 U.S. 23 (2001). “[I]t is the
party seeking protection of a mark who bears the burden
of proving that secondary meaning has attached.” Boston
Beer Co., 9 F.3d at 182 (citing Bristol-Meyers Squibb
Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1041 (2nd
Cir. 1992); Blinded Veterans Assoc. v. Blinded Am.
Veterans Found., 872 F.2d 1035, 1041 (D.C. Cir. 1989)).
“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
Cir. 1989) Secondary meaning is established when a
preponderance of the evidence demonstrates “that the
attitude of the consuming public toward the mark denotes
‘a single thing coming from a single source.’” Id. at 596
(quoting Aloe Cream Labs. v. Milsan, Inc., 423 F.2d 845,
849 (5th Cir. 1970)). The best evidence of secondary
meaning is direct evidence; however, such evidence is
rarely available. See id.; Libbey Glass, Inc. v. Oneida
Ltd., 61 F. Supp.2d 700, 707 (N.D. Ohio 1999).
Therefore, courts often draw inferences form the above
factors. See id.
DeGidio, No. 3:99 CV 7510, slip op. at 17. The district court
applied the seven-factor test and found that Plaintiff failed to

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No. 02-3739 DeGidio v. West Group Corp., et al. 13
meet his burden with respect to establishing a secondary
meaning for his mark. We agree.
First, with regard to consumer testimony, Plaintiff provided
affidavits of three people who visited lawoffices.net website.
The affidavits provide no testimony that affiants identify the
website with a particular source of services. Mere use of a
website does not equal identification with a particular
provider. The district court also rejected as irrelevant the
rankings by WebsMostLinked.com, a site that ranks websites
based upon the number of other sites that link to them. We
agree. Second, neither side has provided consumer surveys.
Third, the district court found that, even assuming that length
and continuity of use is favorable to Plaintiff, the wide use of
the phrase “law office(s)” weighed against a finding of
secondary meaning. See, e.g., K’Arsan Corp. v. Christian
Dior Perfumes, Inc., No. 97-1867, 1998 WL 777987, at *5
(6th Cir. 1998) (“Third-party use of ‘sun powder’ (by at least
two, and as many as five, other companies...) weakens the
mark.”) (citing Data Concepts Inc. v. Digital Consulting, Inc.,
150 F.3d 620, 625 (6th Cir. 1998)); Amstar Corp. v.
Domino’s Pizza, Inc., 615 F.2d 252, 260 (5th Cir. 1980)
(finding it significant that there was widespread third-party
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
14 DeGidio v. West Group Corp., et al. No. 02-3739
years generated mere $200 in revenue from banner
advertisements and click-through revenues. Burke-Parsons-
Bowlby, 871 F.2d at 596 ($2,000,000 in gross sales is
insufficient to establish secondary meaning). Sixth, neither
side presented evidence regarding Plaintiff’s market share.
Seventh, Plaintiff failed to establish that Defendant
intentionally copied Plaintiff’s mark. At most, Plaintiff
established that Defendant knew of Plaintiff’s website.
However, mere knowledge of the competitor’s mark is
insufficient as a matter of law to prove intentional copying.
As the district court noted, “intentional copying...is not
actionable under the Lanham Act absent evidence that the
copying was done with the intent to derive a benefit from the
reputation of another.” DeGidio, No. 3:99 CV 7510, slip op.
at 23 (citations omitted). Plaintiff’s suggestion that
Defendant wanted to derive a benefit from his minimal $50
annual business is meritless.
CONCLUSION
In sum, we conclude that Plaintiff’s mark is descriptive and
that it has not acquired secondary meaning. Accordingly, we
affirm the district court’s decision.

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No. 02-3739 DeGidio v. West Group Corp., et al. 15
____________________
CONCURRENCE
____________________
KAREN NELSON MOORE, Circuit Judge, concurring in
part and concurring in the judgment. While I agree with the
majority that DeGidio has failed to demonstrate that his mark
has inherent or acquired distinctiveness warranting protection
under the Lanham Act, I write separately to explain my
conclusion that DeGidio’s mark is merely descriptive rather
than suggestive. I agree with the majority that the district
court did not, as is appropriate on summary judgment,
necessarily view all of the evidence in the light most
favorable to DeGidio. I also agree that the district court’s
holding was nonetheless correct, but I reach that conclusion
by a slightly different route.
We deal in this case with two sets of services: the domain
name sales, web site hosting, and email hosting services
(“internet services”); and the online attorney database and
legal information database services (“database services”). I
believe that “LawOffices.net” is clearly descriptive as to the
provision of legal information and attorney references. With
respect to the internet services, however, I read the factual
record differently from the majority, for I believe that West is
in fact “accused of” providing web site hosting and vanity
email services on its web site. See Appellee’s Br. at 7 (“West
has also offered . . . e-mail and Web site creation and hosting
services.”). I think it is therefore necessary to inquire whether
“LawOffices.net” is descriptive or suggestive as to those two
internet services; although the internet services present a more
difficult question, one the district court did not fully address,
I nonetheless believe that “LawOffices.net” is descriptive as
to these services as well.
While it seems settled that if we were to find that DeGidio
had a protectable mark in “LawOffices.net,” the difference
16 DeGidio v. West Group Corp., et al. No. 02-3739
1 Each website has a corresponding domain name, which
is an identifier somewhat analogous to a telephone
number or street address. Domain names consist of a
second-level domain — simply a term or series of
terms (e.g., a2zsolutions) — followed by a top-level
domain, many of which describe the nature of the
enterprise. Top-level domains include “.com”
(commercial), “.edu” (educational), “.org” (no n-profit
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 ”
(government), “.net” (networking provider), and “.mil”
(military).
Interactive Prods. Corp. v. a2z Mobile Office Solutions, Inc., 326 F.3d
687, 691 (6th Cir. 2003) (citations omitted).
2Originally, the TLD “.net” was only available to network service
providers, but according to one circuit, it was in September 19 95 that the
organization in charge of assigning T LDs stop ped en forcing these
distinctions. See Virtual W orks, Inc. v. Volkswagen of America, Inc., 238
F.3d 264, 266 (4th Cir. 2001). DeGidio claimed in his deposition
testimony that “.net” was still restricted when he registered
“LawOffices.net.” If DeGidio is better informed than our sister circuit as
to the precise da te when “.net” ceased to be a restrictive TLD, it can only
hurt his case that his mark is not descriptive.
between the “.net” top-level domain (“TLD”)1 and the “.com”
TLD on West’s mark of “Lawoffice.com” would not matter,
see Patent and Trademark Office, “Examination Guide No. 2-
99: Marks Composed, in Whole or in Part, of Domain
Names” (Sept. 29, 1999), I believe that we can consider the
entire mark as used by DeGidio when inquiring as to its
distinctiveness. See In re Anylens Acquisition, LLC, Nos. 02-
1493, 02-1494, 2003 WL 1194293, at *3 (Fed. Cir. Mar. 10,
2003) (noting a TLD can distinguish a particular type of
organization from organizations associated with other TLDs);
Virtual Works, Inc. v. Volkswagen of America, Inc., 238 F.3d
264, 271 (4th Cir. 2001) (“vw.net” only “confusingly similar”
to “VW”). The TLD “.net” is short for “network,” and
originally was exclusively for use by network providers.2
When DeGidio began LawOffices.net, he specifically chose
a “.net” TLD because he planned to offer web site hosting
services on his web site. See Joint Appendix at 98-100. I

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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.

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