In a 2021 nonprecedential case, the Trademark Trial and Appeal Board reversed the refusal to register the mark BIG BARK for “tree care services,” unless the term BARK was disclaimed.

Under §1056(a), an examining attorney may require an applicant to disclaim a component of an otherwise registrable mark. In the case at hand, the Applicant was required to disclaim the term BARK, as it is a merely descriptive term, and therefore unregistrable under §2(e)(1). The Applicant agreed that BARK was a merely descriptive term but argued that it did not require a disclaimer as it was part of the unitary mark, BIG BARK. “If the matter that comprises the mark or relevant portion of the mark is unitary, no disclaimer of an element, whether descriptive, generic or otherwise, is required.” Trademark Manual of Examining Procedures §1213.05 (2018).

So, the Board conducted the following analysis to determine whether or not the applied-for mark, BIG BARK, was a unitary mark. In Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991), the Federal Circuit stated that a unitary mark is made up of inseparable elements, and it must create a “single and distinct commercial impression.” Further, the Fed. Circuit explained that the test to determine a mark’s “unitariness” required the Board to determine “how the average purchaser would encounter the mark under normal marketing of such goods and also…what the reaction of the average purchaser would be to this display of the mark.” Using the Applicant’s specimen of use, the Board began its examination of the mark.  Starting with each separate term, it found that BIG was the modifying adjective for BARK, and that used together, the applied-for mark BIG BARK had no well-known meaning in connection with trees, or tree care services. Therefore, the Board found that the mark BIG BARK had a distinct meaning, independent of its individual components, and gave a commercial impression separate from the term BARK, alone. Turning to the commercial impression of the applied-for mark, the Board found it likely that clients, and potential clients, would refer to the Applicant’s services as BIG BARK tree services, opposed to either “Big” tree services or “Bark” tree services. As such, the Board found that the applied-for mark BIG BARK had a “suggestive significance wholly distinct from the merely descriptive significance of the term ‘BARK.’” It found that consumers would not go through the mental process of breaking apart the two terms but would see the applied-for mark as a unitary term. Further, the Board found that the alliteration of the two first letters would reinforce the likelihood that consumers were likely to see the term as a composite and not rely on one term or the other as the dominant portion of the mark.

In conclusion, the Board found that the applied-for mark BIG BARK was a unitary mark, and an incongruous term “because the combination of ‘BIG’ and ‘BARK’ is illogical, out of place, or unexpected.” So, the Board reversed the §1056(a) registration refusal and found that the Applicant was indeed able to register the mark without disclaiming the term “bark,” as it was a component of a unitary mark.

When an Examining Attorney is examining a mark for registration, he must determine whether likelihood of confusion may exist between it, and an already-registered mark. Under §2(d), when analyzing marks for determining likelihood of confusion, that marks must be compared in their entireties as to appearance, sound, connotation and commercial impression. Further, during the analysis, the marks must be considered in their entirety and not examined piecemeal. “The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1340 (Fed. Cir. 2015). However, if one feature of the mark is more prominent, it will be given greater significance for the purpose of finding likelihood of confusion between the marks at issue. See, e.g., In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012).

Often, when a mark consists of both words and a design, more significance is given to the words because that is the aspect of the mark that purchasers are likely to remember, refer to or use when requesting goods or services. See In re Viterra, 671 F3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012). Though the wording is commonly the dominant portion of a mark, there are certain instances where the design aspect of a mark is the more prominent portion, and it should be given greater significance. See Jack Wolfskin Ausrustung, 797 F.3d at 1372, 116 USPQ2d at 1135. This may be the case if the if the mark contains “unusual or uncommon design features,” or if the design element is the “most visually prominent” aspect. See In Re Primeway Intl. LLC, 87059786, 2019 WL 646088 (2019). In Primeway, the Trademark Trial and Appeal Board examined whether the Applicant’s mark, INCOGNITO, and Registrant’s STS “INCOGNITO” and design mark were confusingly similar. The Applicant’s mark was comprised of a wolf in sheep’s clothing with an arm extended out against the large letters “STS.” The word “incognito” appeared under the design in small letters, and so, the Board held that the most prominent feature of the mark was the design and the letters “STS,” not the shared term “incognito.” It then reversed the refusal to register under 2(d).

 In other words, the word portion of a mark is typically given greater significance because it is the portion that stands out for consumers, yet the design portion may be more dominant if it is the portion that is more likely to stand out to consumers.

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:

1. 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).
2. 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.
3. 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.
4. 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.
5. 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.
6. 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.