Trademarks

The Sliding Scale of Secondary Meaning: In re Steelbuilding.com and the Burden of Section 2(f)

The Federal Circuit reverses a genericness refusal but affirms that a highly descriptive domain-name mark failed to prove the heightened acquired distinctiveness it needed under Section 2(f).

August 11, 2025
Pre-engineered steel building frame under a clear sky
A domain name describing exactly what it sells became a lesson in how much proof descriptive marks demand. Shutterstock
Educational content, not legal advice. This article explains general legal concepts. It does not create an attorney–client relationship. For your specific situation, consult a licensed attorney.

In In re Steelbuilding.com, 415 F.3d 1293 (Fed. Cir. 2005), No. 04-1447 (decided July 11, 2005), the U.S. Court of Appeals for the Federal Circuit delivered a split-the-difference ruling that remains a workhorse citation in §2(f) practice. The court reversed the Trademark Trial and Appeal Board’s conclusion that STEELBUILDING.COM was generic for online retail services in metal buildings — but it affirmed the refusal to register on a different ground, holding the mark merely descriptive and the applicant’s evidence of acquired distinctiveness inadequate. Writing for the panel, Judge Rader articulated the principle the case is now known for: the more descriptive a mark, the heavier the burden to prove that it has acquired secondary meaning. Judge Linn, joined in part of his separate opinion, concurred in part and dissented in part.

At a glance

  • Case: In re Steelbuilding.com, 415 F.3d 1293 (Fed. Cir. 2005), No. 04-1447.
  • Decided: July 11, 2005; panel of Chief Judge Michel, Judge Rader (author), and Judge Linn (concurring in part and dissenting in part).
  • Mark at issue: STEELBUILDING.COM for computerized online retail services in the field of pre-engineered metal buildings and roofing systems.
  • The Board’s decision: Affirmed the refusal on genericness, with an alternative holding that the term was at least highly descriptive and lacked acquired distinctiveness under §2(f).
  • The holding: The Board mischaracterized the genus and the record did not support genericness, so that ground was reversed; but the mark is merely descriptive and the applicant failed to carry its heightened §2(f) burden, so the refusal was affirmed on descriptiveness grounds.

Reversing genericness: getting the genus right

Genericness begins with correctly defining the genus of goods or services. The Board had described the genus expansively and reasoned that “steelbuilding” plus “.com” simply named a website offering online retail in steel buildings. The Federal Circuit found that framing flawed. The applicant’s services were not merely the sale of steel buildings but interactive online design services that let customers configure and price pre-engineered structures — a more particular offering than the Board’s description captured.

Because the genus was mischaracterized, the genericness analysis could not stand. And even accepting the Board’s own articulation, the court found the record insufficient to prove that the relevant public primarily understood STEELBUILDING.COM to name that category of services. The composite — a descriptive term joined to a top-level domain — was not shown to be the common name for the genus. The court therefore vacated the genericness refusal. That portion of the opinion is a useful reminder that genericness is evidence-intensive and that a sloppy genus definition can sink the Office’s strongest objection.

Affirming descriptiveness: the sliding-scale burden

Reversing genericness did not save the application, because the Board had an alternative ground and the Federal Circuit embraced it. The court agreed that STEELBUILDING.COM is merely descriptive of the services: it immediately conveys that the applicant sells steel buildings in an online environment, and appending ”.COM” to a descriptive term ordinarily adds nothing of source-identifying significance — it signals only that the services are offered in an e-commerce setting.

A merely descriptive mark can still be registered on a showing of acquired distinctiveness under §2(f). Here the court articulated the proposition for which the case is best known: the burden of proving secondary meaning rises with the degree of descriptiveness. A term that is only slightly descriptive may need modest proof; a highly descriptive term demands a “concomitantly high” volume of evidence that consumers have come to treat it as a source identifier rather than a description. Because STEELBUILDING.COM sat near the descriptive extreme, the applicant faced an elevated evidentiary bar.

The applicant’s showing did not clear it. The court found the §2(f) evidence — sales and use of the kind a young online business typically offers — insufficient to demonstrate that the relevant public had come to associate this highly descriptive composite with a single source. The refusal was accordingly affirmed on descriptiveness and the absence of acquired distinctiveness. The doctrinal payoff is a calibrated rule: descriptiveness is not binary, and the quantum of §2(f) proof must scale to where on the descriptiveness spectrum a mark falls.

The Linn opinion: a different read of the evidence

Judge Linn agreed with much of the majority’s framework but parted ways on application. His concurrence-in-part and dissent-in-part reflected a more favorable view of the applicant’s §2(f) evidence and of how the descriptiveness and acquired-distinctiveness inquiries should interact on this record. The split underscores that the sliding-scale rule, however tidy in statement, leaves real room for disagreement at the margins — particularly over how to weigh a developing online business’s evidence of consumer recognition. The disagreement was not about the legal standard but about whether the applicant had, in fact, met it.

Open questions

  • How descriptive is “too descriptive” for ordinary §2(f) proof? The sliding scale is a principle, not a formula; where a given mark falls — and therefore how much evidence it needs — remains a case-by-case judgment.
  • What is the registrability significance of a top-level domain? The court treated ”.COM” as adding little to a descriptive term, but later authority on domain-name and generic-plus-gTLD marks has continued to refine when, if ever, a TLD contributes source significance.
  • Can interactive or design-oriented online services change the analysis? The court’s narrower view of the genus suggests that the precise nature of online services matters; how much that distinction can move the descriptiveness needle is unsettled.
  • What evidence best proves acquired distinctiveness for online marks? The opinion faults the applicant’s showing without prescribing a template, leaving practitioners to assemble survey, advertising, and recognition evidence sufficient for a highly descriptive term.

Implications

  • Descriptiveness is a spectrum, and proof must match it. The more descriptive the mark, the more §2(f) evidence is required; applicants for highly descriptive marks should plan for a demanding showing of secondary meaning from the outset.
  • Adding ”.COM” rarely creates distinctiveness. Appending a top-level domain to a descriptive term ordinarily signals only an online setting and does not, by itself, render the composite registrable.
  • Genus definition is decisive in genericness fights. A mischaracterized genus can defeat a genericness refusal; both examiners and applicants should define the genus precisely and tie it to the actual services.
  • Winning on genericness is not winning the application. An alternative descriptiveness ground can sustain a refusal even after genericness falls, so applicants must contest every basis the Office asserts.
  • Document secondary meaning early. For descriptive marks, contemporaneous evidence of advertising reach, sales, media recognition, and consumer association is the currency of §2(f), and a thin record will not carry a highly descriptive term.

Frequently asked questions

Did Steelbuilding.com win or lose? Both, in a sense. It won reversal of the genericness refusal — the court held the term was not shown to be generic and that the Board had defined the genus incorrectly. But it lost overall, because the court affirmed the refusal on the alternative ground that the mark is merely descriptive and the applicant failed to prove acquired distinctiveness under §2(f).

What is the “sliding scale” the case is famous for? The principle that the amount of evidence needed to prove acquired distinctiveness increases with the degree of descriptiveness. A mark that is only mildly descriptive needs relatively little proof of secondary meaning; a highly descriptive mark needs a correspondingly large body of evidence.

Does adding ”.COM” help a descriptive mark get registered? Generally no. The Federal Circuit treated ”.COM” as indicating only that the services are offered online, adding nothing of source-identifying value to an otherwise descriptive term. Whether any top-level domain can contribute distinctiveness depends on consumer perception and remains a fact-specific question.

Authorities and sources