USPTO’s Updated Genericness Guide
In the highly followed 2020 case USPTO v. Booking.com the Supreme Court rejected the USPTO’s per se rule that a proposed mark that consisted of a generic term and a generic top-level domain, such as .com, .net, .org, .biz or .info, is automatically generic. The Court stated that “[w]hether any given ‘generic.com’ term is generic … depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.” Ultimately, the Court ruled that the mark BOOKING.COM was non-generic for travel services and eligible for registration. So, in light of the Supreme Court’s ruling, the Examining Attorney in such a case must evaluate the mark using the standard generic analysis. Further, these terms, known as “generic.com” terms, may be registrable on the Principal or Supplemental Register if the Applicant can show sufficient acquired distinctiveness. However, it must be noted that these marks may still be refused as generic marks when appropriate.
In the wake of Supreme Court’s decision, the USPTO released an updated version of Examination Guide 3-20 for Generic.com Terms after USPTO v. Booking.com. In this new guide, the USPTO stated:
- Though the ruling in com stated that generic.com marks are neither per se generic or per se non-generic, they are likely to be, at minimum, highly descriptive, under §2(e). This then increases the applicant’s burden of proving that the mark has previously acquired distinctiveness under §2(f).
- In supporting a claim under §2(f), an applicant maybe submit the following as evidence: (1) consumer surveys, (2) consumer declarations, (3) relevant and probative evidence displaying the duration, extent and nature of the usage of the proposed mark and (4) any other appropriate evidence that shows the proposed mark distinguishes the goods or services to consumers.
- In terms of consumer surveys, any consumer surveys submitted by the applicant to support a §2(f) claim must be accurately designed and interpreted in order to ensure they are reliable representations of the consumers’ perception of the proposed mark.
- In terms of a §2(f) claim, if the mark is found to be generic for the proposed goods or services, the Examining Attorney must refuse registration of the mark due to genericness and indicate that a claim of acquired distinctiveness cannot override the refusal.
- In regard to the protection of a proposed generic.com mark, the updated guidelines warn that this type of mark may be limited to a narrow scope of protection and the Examining Attorney must be wary of this when considering whether or not to cite an existing generic.com mark against a later-filed proposed mark with the same terms.
- Finally, the updated guide reviews the existing procedure for reviewing generic marks and states that the previous generic analysis test is still appropriate when analyzing generic marks.
In conclusion, though the Booking.com decision affords generic.com marks the possibility of registration, an Applicant must be able to prove acquired distinctiveness, and there is no guarantee that a mark will not be barred from registration under the existing genericness guidelines. In the updated guide, the USPTO reminds Applicants and Examining Attorneys alike that all cases must be considered of their own merit with consideration given to all likelihood-of-confusion factors for which there is evidence of record. Go to USPTO.gov for the complete updated Examination Guide 3-20.