In June, the U.S Supreme Court ruled in United States Patent and Trademark Office (USPTO) v. Booking.com B.V that a combination of a generic term and a generic top-level domain name (such as “.com”, “.biz”, “.org”), commonly referred to as a “generic.com” term, is not per se generic. Joseph critically analyses this decision here. As a response, last week, the USPTO issued Examination Guide 3-20: Generic.com Terms after USPTO v. Booking.com (“Guide“) to address the procedures for examining trademark applications for such “generic.com” terms. This Guide supersedes any conflicting prior USPTO guidance in this regard.
At the onset, the Guide states that “generic.com” terms are neither automatically generic nor automatically non-generic, as held in the Booking.com case. Therefore, following the Guide for a generic-ness analysis, an examining attorney is to evaluate all available evidence to ascertain whether the term is perceived as generic for the identified class of goods or services by the relevant consumer base. The Guide further states that the evidence to gauge consumer perception is also the same as that in traditional generic-ness analysis such as dictionaries, usage by consumers and competitors, use in the trade, and consumer surveys.
“To establish that a generic.com term is generic and incapable of serving as a source indicator, the examining attorney must show that the relevant consumers would understand the primary significance of the term, as a whole, to be the name of the class or category of the goods and/or services identified in the application. Generally, evidence showing generic use of the generic.com term in its entirety, including evidence of domain names containing the term for third-party websites offering the same types of goods or services, is a competent source of the consumers’ understanding that will support a finding of genericness. However, even in the absence of such evidence, a genericness refusal may be appropriate if the evidence of record otherwise establishes that the combination of the generic elements of the proposed mark “yields no additional meaning to consumers capable of distinguishing the goods or services.
Evidence of consumer perception may include “dictionaries, usage by consumers and competitors, use in the trade, and any other source of evidence bearing on how consumers perceive a term’s meaning,” including relevant and probative consumer surveys. These are the same types of evidence examining attorneys traditionally consider when assessing genericness”
– Guide, Page 2
The Guide also lays down detailed procedure for refusal of registration, highlighting the appropriate course of action by examining attorneys when acquired distinctiveness is claimed or registration on Supplemental Registrar is sought. In cases where generic.com terms are combined with other matter and the generic.com term is incapable of serving as a source indicator, albeit separable from the rest of the proposed mark, a disclaimer of the term is appropriate. Additionally, registration can also be refused based on the term being used merely as a website address and not in the function of a trademark or service mark. Lastly, the guidance states that the examining attorney must also take into account any differentiating matter while considering the relevant likelihood-of-confusion between the proposed mark and any prior registration for a generic.com term that contains the same generic or highly descriptive terms.
“Consistent with existing examination procedures, the examining attorney must not initially refuse registration of a generic.com term on the Principal Register as generic, even if there is strong evidence of genericness. Instead, the examining attorney must refuse the proposed mark as merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), and provide relevant supporting evidence. If the evidence strongly suggests that the generic.com term is not capable of serving as a source indicator, the refusal must include an advisory that a claim of acquired distinctiveness or an amendment to the Supplemental Register is not recommended. If, on the other hand, the examining attorney determines that the generic.com term is at least capable of serving as a source indicator based on the available evidence, then the examining attorney may advise that the applicant may amend the application to the Supplemental Register. If the record creates doubt as to whether the applied-for generic.com term is capable of functioning as a mark, the examining attorney must refrain from giving any advisory statement.“
– Guide, Page 3
Reported by Priyanshi Rastogi, Student Ambassador