TMEP 1215.05: Generic Refusals

This is the October 2015 Edition of the TMEP

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1215.05    Generic Refusals

Generally, a mark comprised of a generic term(s) combined with a non-source-identifying gTLD is generic and without trademark or service mark significance. In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682 (Fed. Cir. 2009) (MATTRESS.COM generic for “online retail store services in the field of mattresses, beds, and bedding”); In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (HOTELS.COM generic for "providing information for others about temporary lodging; travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network”).

The Federal Circuit has noted that “[o]nly in rare instances will the addition of a [top level domain] indicator to a descriptive term operate to create a distinctive mark." 1800Mattress.com, 586 F.3d at 1364, 92 USPQ2d at 1685. However, there is no per se rule that the addition of a non-source-identifying gTLD to an otherwise generic term can never under any circumstances operate to create a registrable mark. The Court has held that in rare, exceptional circumstances, a term that is not distinctive by itself may acquire some additional meaning from the addition of a gTLD such as “.com” or “.net” that will render it “sufficiently distinctive for trademark registration.” In re Steelbuilding.com, 415 F.3d 1293, 1299, 75 USPQ2d 1420, 1423 (Fed. Cir. 2005) (citing In re Oppedahl & Larson LLP, 373 F.3d 1171, 1177, 71 USPQ2d 1370, 1373 (Fed. Cir. 2004)). In Steelbuilding, vacating the Board’s determination that STEELBUILDING.COM was generic for “computerized on-line retail services in the field of pre-engineered metal buildings and roofing systems,” the Court criticized the Board for considering STEELBUILDING and.COM separately, holding 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. Specifically, the TLD expanded the mark to include internet services that include ‘building’ or designing steel structures on the web site 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 on evidence that “steel building” or “steel buildings” is generic, where there was an alternative meaning of the composite term STEELBUILDING as denoting the act of building steel structures. Id. at 1298, 75 USPQ2d at 1422. However, the Court held that the term STEELBULDING.COM was highly descriptive and unregistrable on the Principal Register under §2(e)(1), absent “a concomitantly high level of secondary meaning.” Id. at 1301, 75 USPQ2d at 1424.

Thus, to establish that a mark comprising a generic term with a non-source-identifying gTLD 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 (Board properly concluded MATTRESS.COM is 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); Hotels.com, 573 F.3d at 1303, 91 USPQ2d at 1535 (HOTELS.COM generic for “providing information for others about temporary lodging; 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 Reed Elsevier Props. Inc., 482 F.3d 1376, 1379-80, 82 USPQ2d 1378, 1380-81 (Fed. Cir. 2007) (LAWYERS.COM generic for “providing access to an online interactive database featuring information exchange in the fields of law, lawyers, legal news, and legal services,” where the record included pages from applicant’s website showing that applicant’s services include providing information about lawyers and assistance in selecting a lawyer, and pages from eight other websites containing “lawyer.com” or “lawyers.com”); In re DNI Holdings Ltd., 77 USPQ2d 1435, 1439-41 (TTAB 2005) (SPORTSBETTING.COM 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,” based on evidence of multiple examples of use of the terms “sports betting” and “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 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); In re CyberFinancial.Net, Inc., 65 USPQ2d 1789 (TTAB 2002) (BONDS.COM 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 generic for “retail store services and retail services offered via telephone featuring metal shipping containers” and “rental of metal shipping containers”).

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. 1800Mattress.com, 586 F.3d at 1364, 92 USPQ2d at 1685.

Marks comprised of generic terms combined with non-source-identifying gTLDs are not eligible for registration on the Supplemental Register under Trademark Act §23, 15 U.S.C. §1091, 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. However, 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 must 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 §§1209.02–1209.02(b).

See TMEP §1209.01(c)(i) regarding the test for establishing that a term is generic. See also TMEP §§1209.03(m), 1215.02(d)─1215.02(d)(iv), and 1215.04.