Our blog entry earlier this year discussed the “Booking.com” decision, in which the US Supreme Court struck down the per se rule that a generic mark followed by .com was not registrable under any circumstances. That blog entry cautioned that the news may not be as good as may first appear. Recent interpretation of the Booking.com decision by the US Patent and Trademark Office (USPTO) lends credence to that caution, and indeed amplifies the need to seek guidance of the factual issues in filing a generic.com trademark application with the expectation that it be found acceptable.
A new examination guide issued by the USPTO in October, 2020 provides guidance to the Trademark Office and to applicants in examination of trademark applications having the generic.com format: https://www.uspto.gov/sites/default/files/documents/TM-ExamGuide-3-20.pdf. In the overview of how the USPTO will treat such applications, the following has been forwarded to Examiners:
“[U]nder Booking.com, a proposed mark composed of a generic term combined with a generic top-level domain, such as “.com,” is not automatically generic, nor is it automatically non-generic. Instead, as in any other genericness analysis, examining attorneys must evaluate all of the available evidence, including the applicant’s evidence of consumer perception, to determine whether the relevant consumers perceive the term as generic for the identified class of goods and/or services or, instead, as capable of serving as a mark.”
According to the Trademark Office interpretation, the US Supreme Court in the Booking.com decision only rejected the previously applied per se rule that generic.com terms are automatically generic, but did not otherwise significantly alter the genericness analysis to be prospectively applied to generic.com terms or the USPTO’s examination procedures regarding these terms. The Trademark Office guidance pertains to any applied-for mark consisting of a generic.com term such as “.com,” “.net,” “.org,” “.biz,” or “.info,” and presumably “.sucks”
This requires that any mark for which registration is sought must meet the examination criteria for marks generally, and must be perceived by a prospective consumer as the source for a particular good or service. Examining attorneys are cautioned to continue to assess on a case-by-case basis whether, based on the evidence of record, consumers would perceive a generic.com term as the name of a class of goods and/or services or, instead, as at least capable of serving as a source indicator. For example, “cola.com” would be deemed unregistrable because “cola” would be found to be generic or “merely descriptive.” On the other hand, “coca-cola,com” could be registrable because a consumer would already be familiar with the Coca-Cola mark and would associate the mark “coca-cola.com” with the well-known beverage.
One way to obtain a registration to protect a generic.com mark is to show that the mark has become distinctive to consumers as the source of the goods or services. Distinctiveness may be proven by way of evidence such as 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. 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 otherwise appropriate.
Another way to show distinctiveness of a gneeric.com mark is to rely on another feature of the mark that renders it distinctive. A double entendre may be used, for example, tele.com, which had been granted a registration that has since expired.
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