T.M.E.P. § 1215.05
Generic Refusals

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

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1215.05 Generic Refusals

If a mark is composed of a generic term(s) for the applicant's goods or services and a TLD, in general the examining attorney should refuse registration on the ground that the mark is generic and the TLD has no trademark significance. Marks comprised of generic terms combined with TLDs are not eligible for registration on the Supplemental Register, or on the Principal Register under Trademark Act §2(f), 15 U.S.C. 1052(f). This applies to trademarks, service marks, collective marks and certification marks. In re CyberFinancial.Net, Inc., 65 USPQ2d 1789 (TTAB 2002) (BONDS.COM held generic for providing information regarding financial products and services and electronic commerce services rendered via the Internet, where bonds was the name of one of the financial products offered under the mark); In re Martin Container, Inc., 65 USPQ2d 1058 (TTAB 2002) (CONTAINER.COM held generic for "retail store services and retail services offered via telephone featuring metal shipping containers" and "rental of metal shipping containers").

Example: TURKEY.COM for frozen turkeys is unregistrable on either the Principal or Supplemental Register.

Example: BANK.COM for banking services is unregistrable on either the Principal or Supplemental Register.

See TMEP §1209.01(c)(i) regarding the test for establishing that a term is generic.

When examining domain name marks, it is important to evaluate the commercial impression of the mark as a whole, including the TLD indicator. The Court of Appeals for the Federal Circuit has cautioned that, while "[t]he addition of a TLD such as '.com' or '.org' to an otherwise unregistrable mark will typically not add any source-identifying significance," this "is not a bright-line, per se rule. In exceptional circumstances, a TLD may render an otherwise descriptive term sufficiently distinctive for trademark registration." In re Oppedahl & Larson LLP, 373 F.3d 1171, 1177, 71 USPQ2d1370, 1374 (Fed. Cir. 2004).

See also In re Eddie Z's Blinds and Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005) (BLINDSANDDRAPERY.COM generic for retail store services featuring blinds, draperies and other wall coverings, sold via the Internet).

The examining attorney generally should not issue a refusal in an application for registration on the Principal Register on the ground that a mark is a generic name for the goods or services unless the applicant asserts that the mark has acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. 1052(f). Absent a claim of acquired distinctiveness, the examining attorney should issue a refusal on the ground that the mark is merely descriptive of the goods or services under §2(e)(1), 15 U.S.C. 1052(e)(1), and provide an advisory statement that the matter sought to be registered appears to be a generic name for the goods or services. See TMEP §1209.02.

See also TMEP §§1209.03(m).