Last week, the USPTO issued its long overdue exam guide from SCOTUS’ June 30, 2020 decision in the Booking.com case (read our blog post on the case here). The Booking.com case rejected the USPTO’s bright line rule that “generic.com” trademarks should be automatically refused on grounds of genericness. As is customary when a USPTO rule is struck down by SCOTUS, the USPTO issues an exam guide, or amendment to the TMEP, to guide both Examiners and trademark counsel as to how the decision will be implemented going forward.
The Exam Guide Applies Broadly
It is important to note that the USPTO’s exam guide applies not only to “.com” trademarks, but as I and many others speculated, also to any generic top level domains, including “.com,” “.net,” “.org,” “.biz,” or “.info.”
A Generic Refusal is Still Possible
The Exam Guide makes clear that the Booking.com decision did not create a per se rule that “generic.com” trademarks are not generic, but rather whether the mark is capable of serving as a source identifier. The Exam Guide gives detail for how Examiners should make their determination. See the full Exam Guide here. The procedure is clear: Examiners should not issue a genericness refusal initially, even if the evidence is overwhelming as to genericness. The first refusal will be for descriptiveness. The Exam Guide warns that amendment to the Supplemental Register based solely on five years on continuous use in commerce will likely not work for “generic.com” trademarks, but rather, the trademark owner will need to demonstrate acquired distinctiveness based on evidence. The Exam Guide says the evidence provided will need to be “significant” to prove that the term functions as a source identifier in the minds of consumers. It is possible under the new guidance to amend a “generic.com” trademark to the Supplemental Register. If a “generic.com” term is combined with other matter, a disclaimer may be required, just like for any other descriptive term.
Using Surveys as Evidence
If a trademark owner chooses to use surveys to prove acquired distinctiveness, the Exam Guide reminds us that surveys must be properly designed. In the Booking.com case, the Teflon survey evidence was utilized, which is a recognized survey methodology. The Exam Guide and SCOTUS cautioned that the survey must be properly designed and reported, preferably by a survey expert and these can be very expensive tools, but well worth it if your client has a brand that is well-known in the eyes of consumers.
A Generic.com Term May Fail to Function as a Mark
We read footnote 5 of SCOTUS’ decision as leaving the door open for the USPTO to refuse “generic.com” marks on the grounds of failure to function, and this policy is now spelled out in the USPTO’s Exam Guide. The guidance says the Examiner “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 so, a refusal on the ground that the proposed mark fails to function as a trademark or service mark is appropriate.”
Likelihood of Confusion Refusals
Lastly, before your clients start rushing off to register “generic.com” trademarks, read the last section of the Exam Guide carefully. Since Booking.com said in open Court that it recognized its mark would be subject to a narrow scope of protection, the USPTO leverages this comment and says in the Exam Guide that Examiners will take the narrow scope into account when issuing likelihood of confusion refusals. I predict an uphill battle for anyone trying to register these names, so make sure you are familiar with these guidelines so you can counsel your clients accordingly.
Want to Learn More
If you would like to learn more about the trademark application process, including strategies for how to counsel clients in the face of generic or other substantive refusals, consider joining our Trademarkabilities® Masterclass. You learn more about our courses here to enroll or reach out to us for more information. Or, you can join our mailing list, and download our free e-guide “5 Tips for Trademark Attorney Success.”
Stacey C. Kalamaras is the founder and lead instructor of Trademarkabilities®, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be confident and effective practitioners before the USPTO. Stacey started Trademarkabilities to share her passion teaching the law with the next generation of lawyers and help them become practice ready lawyers. Contact us at: email@example.com.
Stacey is also a seasoned trademark attorney and currently works in-house as Senior Counsel for a multi-national candy company. She previously owned her own solo trademark practice, which she scaled and sold. She has been recognized by her peers for her outstanding knowledge and service in intellectual property law.