This past June, the United States Supreme Court ruled that a proposed mark that consists of a generic term and a generic top-level domain (e.g., “.com”) is not per se generic, i.e., the proposed mark cannot be automatically rejected on the basis of it is a generic term (see USPTO v. Booking.com). In response to the ruling the United States Patent and Trademark Office (USPTO) has recently issued guidance on the examination of generic.com terms for its examining attorneys.
This new guidance stemmed from USPTO’s initial rejection of Booking.com’s trademark registration under the general rule that “a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is automatically generic,” and not allowed registration. This issue was appealed until it reached the Supreme Court, which focused its review on whether or not the USPTO may employ a per se rule for such generic.com terms. The court ultimately sided with Booking.com and stated that a generic.com mark should not be automatically rejected due to a per se generic rule. The ruling, however, did not alter the “genericness” analysis or examination procedures to be applied to generic terms. For additional information regarding this case, please see Secondary Meaning News Summary.
The USPTO’s guidance manual highlights the following for examining attorneys reviewing a generic.com mark:
The per se generic rule is no longer applicable to generic.com terms.
Examining attorneys must 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.
When issuing a “genericness” refusal, the examining attorney must explain how the evidence of record supports the conclusion 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 among consumers capable of indicating source.
When disclaiming a generic.com term, the term must be disclaimed in its entirety, rather than disclaiming the generic term and the generic top-level domain separately.
If an applicant submits a generic.com application with claims of acquired distinctiveness, the attorney must review all evidence to verify that a mark acts as a source identifier. Given that the very nature of a “generic.com” mark normally makes it difficult for consumers to differentiate the mark from normal goods and services and a source identifier, applicants will generally have a greater evidentiary burden to establish that the proposed mark has acquired distinctiveness.
Although the Booking.com ruling removed the genericness per se rule for applicants, the new guidelines still places the burden of proving a mark as not being generic on the applicant. For complete details on the new guidance, please see Examination Guide 3-20.
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