Last month, the U.S. Patent and Trademark Office (PTO) issued a guidance document describing how they plan on following the Supreme Court’s recent decision in U.S. Patent and Trademark Office v. Booking.com. You can read our previous blog post about this decision here. This document serves as a roadmap for how the PTO will address “generic.com” trademarks in the future. In Booking.com, the Court rejected a per se rule allowing such trademarks as automatically non-generic. Thus, the agency notes that if examining attorneys want to establish that a generic.com term is generic, they 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.” The PTO goes on to note that even in the absence of evidence showing generic use of a generic.com term, a mark may still be refused if evidence of the record establishes that the proposed mark “yields no additional meaning to consumers capable of distinguishing the goods or services.”
Consumer perception can be shown in a number of ways, one being consumer surveys. When rejecting a “generic.com” mark, the examining attorney will need to explain how the evidence supports the genericness of the term and that the mark does not create new or “additional significance among consumers capable of indicating source.”
Taking into consideration the holding of Booking.com, the PTO acknowledges that generic.com term applicants will have to overcome a significant evidentiary burden if they want to establish that the proposed mark has acquired distinctiveness under Trademark Act Section 2(f). Once again, consumer surveys can be submitted as evidence in support of a Section 2(f) claim. Surveys can be great evidence to support a Section 2(f) claim, however the Supreme Court cautioned that these surveys need to be designed in a way that ensures they’re an accurate and reliable representation of consumer perception of the proposed mark. In addition to the survey submission, applicants will also need to include specifics about the survey including a report detailed information about how it was conducted.
If you are planning to submit an application for a generic.com mark, be sure to check out to the PTO’s guidance to ensure that you’ve provided enough evidence to overcome the evidentiary burden.
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