TMEP 1209.01(c)(i): Test

October 2017 Edition of the TMEP

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1209.01(c)(i)    Test

A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used. See H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986) (citing Dep’t of Justice, FBI v. Calspan Corp., 578 F.2d 295, 299, 198 USPQ 147, 149 (C.C.P.A.1978); Maremont Corp. v. Air Lift Co., 463 F.2d 1114, 1118, 174 USPQ 395, 398 (C.C.P.A. 1972); In re Automatic Radio Mfg. Co., 404 F.2d 1391, 1394-95, 160 USPQ 233, 235-36 (C.C.P.A. 1969)); In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1600 (TTAB 2014)) (citing 15 U.S.C §1064(3); Bellsouth Corp. v. DataNational Corp., 60 F.3d 1565, 1570, 35 USPQ2d 1554, 1557-58 (Fed. Cir. 1995)) (construing the language in 15 U.S.C §1064(3) regarding when a term is generic in cancellation proceedings to apply prior to registration). A two-part inquiry is used to determine whether a designation is generic:

  • (1) What is the genus of goods or services at issue?
  • (2) Does the relevant public understand the designation primarily to refer to that genus of goods or services?

H. Marvin Ginn Corp. v. Int'l Ass’n of Fire Chiefs, Inc., 782 F.2d at 990, 228 USPQ at 530.

It is not necessary to show that the relevant public uses the term to refer to the genus. The correct inquiry is whether the relevant public would understand the term to be generic. In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009).

The genus of the goods and/or services may be defined by an applicant’s identification of goods and/or services. See In re Cordua Rests., Inc., 823 F.3d 594, 602, 118 USPQ2d 1632, 1636 (Fed. Cir. 2016) (characterizing as the "correct approach" the Board’s conclusion that the genus of the services at issue was adequately defined by the wording "restaurant services" in applicant’s identification of services). The relevant public for a genericness determination refers to the purchasing or consuming public for the identified goods and/or services. Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1351 (TTAB 2013) (citing Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 641, 19 USPQ2d 1551, 1553 Fed. Cir. 1991)).

The examining attorney has the burden of proving that a term is generic by clear evidence. In re Nordic Naturals, Inc., 755 F.3d 1340, 1344, 111 USPQ2d 1495, 1498 (Fed. Cir. 2014) (finding the evidence reflected use of CHILDREN’S DHA in a generic manner rather than as third-party references recognizing applicant as the source of the goods); In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 1571, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987) (finding that the NEXIS evidence relied upon to show CASH MANAGEMENT ACCOUNT was generic for brokerage services did not satisy the USPTO’s burden to prove genericness by clear evidence because the evidence reflected a "mixture of usages," with some publications showing third-party recognition of the applicant as the source of the services and some showing generic use). Evidence of the public’s understanding of a term can be obtained from any competent source, including dictionary definitions, research databases, newspapers, and other publications. See In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016) (finding the evidence of record, which included dictionary excerpts, online magazine articles, and newspaper articles, supported the conclusion that CHURRASCOS is generic for restaurant services); In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985) (BUNDT, a term that designates a type of cake, held generic for ring cake mix, where the examining attorney cited cookbooks and food-related news articles); In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (ANALOG DEVICES held generic for devices having analog capabilities, where the examining attorney cited dictionaries and Nexis® articles). Applicant’s website and the websites of others are also proper sources of evidence as to the meaning of the proposed mark and the manner in which it is used in relation to the goods/services. In re Reed Elsevier Props. Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007) (finding that, in holding LAWYERS.COM generic for "providing an online interactive database featuring information exchange in the fields of law, legal news and legal services," the Board properly considered applicant’s website and eight other websites containing "lawyer.com" or "lawyers.com" to determine the meaning of applicant’s "information exchange about legal services.").

There can be more than one generic term for a particular genus of goods or services. Any term that the relevant public understands to refer to the genus is generic. In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009); see also In re Meridian Rack & Pinion, 114 USPQ2d 1462 (TTAB 2015) (holding BUYAUTOPARTS.COM generic for on-line retail store services featuring auto parts after finding that the relevant members of the public use and understand the words "buy auto parts" as referring to the purchase and sale transactions that are the central focus of retail sales of auto parts and that third-party retailers advertise to their customers to "Buy Auto Parts Online").

The test for genericness is the same whether the mark is a compound term or a phrase, and the examining attorney should include, if available, evidence showing use of the mark as a whole in the record. See Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 968, 114 USPQ2d 1827, 1832 (Fed. Cir. 2015) (citing In re Am. Fertility Soc’y, 188 F.3d 1341, 1348-49, 51 USPQ2d 1832, 1837 (Fed. Cir. 1999)). When a term consists of a compound word or a telescoped word, the examining attorney may establish that the term is generic by producing evidence that each of the constituent words is itself generic, and that the separate words retain their generic significance when joined to form the compound or telescoped word that has "a meaning identical to the meaning common usage would ascribe to those words as a compound." In re Gould Paper Corp., 834 F.2d 1017, 1018, 5 USPQ2d 1110, 1111–12 (Fed. Cir. 1987) (SCREENWIPE held generic as applied to premoistened antistatic cloths for cleaning computer and television screens); In re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1081 (TTAB 2010) (finding that consumers were likely to perceive the telescoped term NANDRIVE merely as a stylized version of the generic term "nand drive"); In re Wm. B. Coleman Co., Inc., 93 USPQ2d 2019 (TTAB 2010) (finding that ELECTRIC CANDLE COMPANY is the combination of two generic terms joined to create a compound); see also In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1340, 116 USPQ2d 1262, 1268 (Fed. Cir. 2015) (Newman, J., concurring) ("It was not reasonably argued that ‘fish fry products’ as a phrase would be understood by the consuming public to have a meaning different from the meaning imparted by the separate words").

However, the Court of Appeals for the Federal Circuit has expressly limited the holding in Gould to "compound terms formed by the union of words" where the public understands the individual terms to be generic for a genus of goods or services, and the joining of the individual terms into one compound word lends "no additional meaning to the term." In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1345, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001) (citing In re Am. Fertility Soc'y, 188 F.3d at 1348-49, 51 USPQ2d at 1837). Thus, in Am. Fertility Soc’y, the court held that evidence that the components "Society" and "Reproductive Medicine" were generic was not enough to establish that the composite phrase SOCIETY FOR REPRODUCTIVE MEDICINE was generic for association services in the field of reproductive medicine because, unlike in Gould, the evidence did not establish that the public would perceive "the mark as a whole" to be no less generic than its constituents. In re Am. Fertility Soc’y, 188 F.3d at 1348, 51 USPQ2d at 1837; see also Princeton Vanguard, 786 F.3d at 968, 114 USPQ2d at 1832. In Coleman, however, the Board stated that Am. Fertility Soc'y cannot be read to suggest that an applicant can create a trademark merely by adding a clearly generic term to a non-source-identifying word, even without proof that others have used the composite. In re Wm. B. Coleman Co., 93 USPQ2d at 2025; accord Princeton Vanguard, 786 F.3d at 968, 114 USPQ2d at 1833 ("[T]he Board must then consider available record evidence of the public’s understanding of whether joining those individual words into one lends additional meaning to the mark as a whole." (emphasis added)).

In Dial-A-Mattress, the court found that 1-888-M-A-T-R-E-S-S was not generic as applied to "telephone shop-at-home retail services in the field of mattresses," because there was no evidence of record that the public understood the term to refer to shop-at-home telephone mattress retailers. Therefore, to establish that a mnemonic telephone number is generic, the examining attorney must show that the relevant public would understand the mark as a whole to have generic significance.

With respect to Internet domain names, as with other marks, even if the evidence shows that the individual components that make up the proposed mark are generic, one must determine whether joining the individual terms creates a composite that is itself generic. In very rare instances, the addition of a top-level domain indicator ("TLD") to an otherwise generic term may operate to create a distinctive mark. In In re Steelbuilding.com, 415 F.3d 1293, 1299, 75 USPQ2d 1420, 1423 (Fed. Cir. 2005), the Federal Circuit reversed the Board’s determination that STEELBUILDING.COM is generic for "computerized on-line retail services in the field of pre-engineered metal buildings and roofing systems." The Court criticized the Board for only considering STEELBUILDING and.COM separately, stating that "[i]n this unusual case, the addition of the TLD indicator expanded the meaning of the mark to include goods and services beyond the mere sale of steel buildings. 415 F.3d at 1299, 75 USPQ2d at 1423. Specifically, the TLD expanded the mark to include internet services that include ‘building’ or designing steel structures on the website and then calculating an appropriate price before ordering the unique structure." 415 F.3d at 1299, 75 USPQ2d at 1423.

The Court also criticized the Board for relying only on evidence that the separate terms "steel building" or "steel buildings" are generic, where the terms were joined together in the subject mark:

The record does not contain any examination of dictionary definitions or other sources that might have indicated that joining the separate words "steel" and "building" would create a word that, in context, would be generic. The Board merely cited evidence that showed that when customers or competitors talked about a steel building, they used the phrase "steel building." That evidence shows that "steel building" is generic, but does not address directly the composite term STEELBUILDING.

415 F.3d at 1298–99, 75 USPQ2d at 1423.

Thus, to establish that a proposed mark is generic, the examining attorney must show that the relevant public would understand the mark as a whole to have generic significance. See 1800Mattress.com, 586 F.3d at 1363, 92 USPQ2d at 1684 (affirming Board’s conclusion that MATTRESS.COM was generic for "online retail store services in the field of mattresses, beds, and bedding," where the Board considered each of the constituent words, "mattress" and ".com" and determined that they were both generic, then considered the mark as a whole and determined that the combination added no new meaning, relying on the prevalence of the term "mattress.com" in the website addresses of several online mattress retailers who provide the same services as the applicant); In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (HOTELS.COM is generic for "providing information for others about temporary lodging; [and] travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network," based on various definitions of "hotel," printouts from hotel reservation search websites showing "hotels" as the equivalent of or included within "temporary lodging," as well as evidence from applicant’s website); In re DNI Holdings Ltd., 77 USPQ2d 1435 (TTAB 2005) (SPORTSBETTING.COM held generic for "provision of casino games on and through a global computer network wherein there are no actual monetary wagers; provision of contests and sweepstakes on and through a global computer network; providing a website on and through a global computer network featuring information in the fields of gaming, athletic competition and entertainment...," where the record included multiple examples of use of the terms "sports betting" as well as the joined terms "sportsbetting" by both applicant and its competitors to refer to both sports wagering and providing information about sports wagering, and there was no indication of a realistic alternative connotation of the compound term. See also TMEP §§1209.03(m) and 1215.05 regarding domain names comprising generic matter.)