[co-author: Yeshesvini Chandar]

On June 30, 2020, the Supreme Court of the United States decided USPTO v. Booking.com B.V., rejecting a rule that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is automatically generic.[1] Booking.com arose from the U.S. Patent and Trademark Office’s (USPTO) refusal to register the mark BOOKING.COM on the grounds that it is generic for hotel reservation services or, in the alternative, that it is merely descriptive and has not acquired distinctiveness. The Supreme Court rejected the agency’s application of a per se rule that the combination of a generic term and a top-level domain is always ineligible for registration. In October 2020, the USPTO issued new guidance for trademark examiners on this issue in view of Booking.com. Under the new examination guide, a [generic.com] term may still be refused as generic, but only when warranted by the evidence in the application record.[2] The terms of the new guidance are summarized below.

I. Analyze term, as a whole, for source-identifying capability.

The guidelines provide that to establish that a [generic.com] term is generic, 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. The examining attorney is required to explain how the evidence of record supports the issuance of a genericness refusal, showing not only that the individual elements of the [generic.com] term are generic but also that when combined, the combination creates no new or additional significance capable of indicating source to consumers.

Further, 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)[3] and provide relevant supporting evidence. The decision can be accompanied by an advisory statement that the mark may be refused as generic. But 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 such advisory statement. Additionally, if the examining attorney determines that the available evidence establishes that the proposed [generic.com] term is at least capable of indicating source but is insufficient to show that the term has acquired distinctiveness, the examining attorney may allow registration on the Supplemental Register if appropriate.

Notably, the guidance provides that if the evidence of record 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,” a genericness refusal may be appropriate.[4] The guidelines refer to the decision in In re 1800Mattress.com, where the court affirmed the Trademark Trial and Appeal Board (TTAB) conclusion that MATTRESS.COM is generic for “online retail store services in the field of mattresses, beds, and bedding.” In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1363 (Fed. Cir. 2001). In that case, the TTAB had considered the mark as a whole and determined that the combination added no new meaning, relying on the prevalence of the term “mattress.com” in the website addresses of several online mattress retailers that provide the same services as the applicant.[5]

Moreover, if the initial application seeks registration under a claim of acquired distinctiveness and there is strong evidence of genericness, then a refusal on the basis that the [generic.com] term is generic is deemed appropriate.

The following are cited as examples of the types of evidence that may support a conclusion that a mark is incapable of serving as a source indicator:

• • A combination of dictionary excerpts defining the component elements of the [com] term.
  • Significant evidence of generic usage of those elements or the combined term by consumers or competitors in the relevant
  • Evidence of the [com] term used by third parties as part of their domain names (e.g., “[adjective]generic.com”) in connection with the same or similar goods and/or services.
  • Evidence of the applicant’s own use of the [com] term.

II. High evidentiary burden for a claim of acquired distinctiveness.

If an applicant makes a claim of acquired distinctiveness under Trademark Act Section 2(f) in a [generic.com] term, applicants will generally have a stringent evidentiary burden to establish that the proposed mark has acquired distinctiveness. The examining attorney must carefully review the applicant’s evidence in support of the claim, along with all other available evidence, in deciding. If the evidence of record establishes that the [generic.com] term is, in fact, a generic name for the identified goods and/or services, the examining attorney has statutory basis for a refusal.

However, the guidelines also require that in addition to this refusal the examining attorney must issue or, in the alternative, maintain a refusal under Trademark Act Section 2(e)(1) on the grounds that the proposed mark is merely descriptive. This refusal must separately explain why the showing of acquired distinctiveness is insufficient to overcome the descriptiveness refusal even if the proposed mark is ultimately deemed not to be generic.

Claiming acquired distinctiveness

Evidence submitted in support of the Section 2(f) claim may include consumer surveys; consumer declarations; declarations or other relevant and probative evidence showing the duration, extent and nature of the applicant’s use of the proposed mark, including the degree of exclusivity of use; related advertising expenditures; letters or statements from the trade or public; and any other appropriate evidence tending to show that the proposed mark distinguishes the goods or services to consumers.

III. Substantive review – failure to function and 2(d) refusals.

Examining attorneys must also consider whether the specimen of use shows the [generic.com] term being used solely as a website address and not in a trademark or service mark manner. If it is, a refusal on the grounds that the proposed mark fails to function as a trademark or service mark is appropriate.

Further, in Booking.com, the Supreme Court recognized that registered [generic.com] terms may be subject to a narrower scope of trademark protection, noting that “[w]hen a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the mark’s owner.” Booking.com, 140 S. Ct. at 2307. Accordingly, as per the guidelines, examining attorneys may take this into account when considering whether a prior registration for a [generic.com] term that contains the same generic or highly descriptive term of a proposed mark should be cited under Trademark Act Section 2(d). Generally in these circumstances, if there is other matter in either of the marks that would allow consumers to differentiate them, the examining attorney may reasonably determine that confusion as to the source is not likely.[6] However, each case must be considered on its own merits, with consideration given to all relevant likelihood-of-confusion factors for which there is evidence of record.

IV. Consumer surveys need to be accompanied by reports.

While consumer surveys are a key evidentiary tool for an applicant trying to show that an applied-for mark is not generic, the Booking.com Court cautioned that surveys must be properly designed and interpreted to ensure that they are an accurate and reliable representation of consumer perception of a proposed mark. Therefore, an applicant submitting a survey must carefully frame its questions and provide a report, typically from a survey expert, documenting the procedural aspects of the survey and the statistical accuracy of the results. Information regarding how the survey was conducted, the questionnaire itself, the universe of consumers surveyed, the number of participants surveyed and the geographic scope of the survey should be submitted within or along with such a report. If this information is not provided, the new guidance states that an examining attorney may request it under 37 C.F.R. §2.61(b).

V. Potential application to certain marks that are analogous in structure to [generic.com] marks.

Under the USPTO’s Trademark Manual of Examining Procedure,[7] the symbol “#” and the term “hashtag” “merely facilitate categorization and searching within online social media,” and they do not provide any source-indicating function. Thus, the TMEP instructs examiners to apply to certain hashtag marks the same rule that was applied in the Booking.com case. Particularly, if a mark consisted of the symbol # or the term “hashtag” combined with wording that was merely descriptive or generic for the goods or services, the entire mark was generally refused as merely descriptive or generic.

It is not clear whether a similar refusal issued today would be deemed erroneous under the new guidelines. The Booking.com decision elucidated that an examiner’s disregard of any evidence related to consumer perception is wrong. While it could be postulated that the Court’s ruling has likely opened the floodgates for applicants seeking federal registration for such marks at the USPTO, it is not clear that the new guidance itself extends scope beyond [generic.com] terms. Applicants may argue that the reasoning of Booking.com applies by analogy, however, extrapolating the existing guidance to these types of marks.

This guidance pertains specifically to the USPTO’s examination procedures regarding any applied-for mark consisting of a [generic.com] term, that is, any combination of a generic term and generic top-level domain, such as “.com,” “.net,” “.org,” “.biz” or “.info,” designating an entity or information.

[1] USPTO v. Booking.com B.V., 140 S. Ct. 2298 (2020) (Booking.com).

[2] Examination Guide 3-20, Generic.com Terms after USPTO v. Booking.com, October 2020.

[3] 15 U.S.C. §1052(e)(1).

[4] Id.

[5] See also In re Hotels.com, L.P., 573 F.3d 1300, 1306 (Fed. Cir. 2009); Trademark Manual of Examining Procedure (TMEP) §1209.01(c)(i).

[6] Cf. TMEP §1207.01(d)(iii) (“[A]ctive third-party registrations may be relevant to show that a mark or a portion of a mark is descriptive, suggestive[] or so commonly used that the public will look to other elements to distinguish the source of the goods or services.”).

[7] TMEP § 1202.18.