Agency Guidance Following the Supreme Court’s Opinion in USPTO v. Booking.Com B.V.

Last month the USPTO issued Examination Guide 3-20 entitled “Generic.com Terms after USPTO v. Booking.com” (“Guide”), setting forth guidance for evaluating applications seeking to register marks containing generic.com terms. The guidance follows the Supreme Court’s recent ruling in USPTO v. Booking.Com B.V., 140 S. Ct. 2298, 2020 U.S.P.Q.2d 10729 (2020) (“Booking.Com B.V.”), in which the Court rejected the agency’s per se rule that generic.com terms are, in all cases, incapable of serving as source identifiers and, as a consequence, are unregistrable under the Trademark Act. Id., 140 S. Ct. at 2307, 2020 U.S.P.Q.2d 10729 at *7.

The Guide’s Purposes

The Guide serves two principal purposes.

First, it sets forth the agency’s interpretation of, and extrapolation on, Booking.Com B.V. In place of the agency’s per se rule, the Court held and the PTO here acknowledges, that “[w]hether any given ‘generic.com’ term is generic [for registration purposes] . . . depends on whether consumers in fact perceive the term as the name of a class or, instead, as a term capable of distinguishing among members of the class. Id., at 2307, 2020 U.S.P.Q.2d 10729 at *7. Thus, such a proposed mark

is not automatically generic, nor is it automatically non-generic. Instead, as in any other genericness analysis, examining attorneys must evaluate all of the available evidence, including the applicant’s evidence of consumer perception, to determine whether the relevant consumers perceive the term as generic for the identified class of goods and/or services or, instead, as capable of serving as a mark.

Guide, at 2 (footnotes omitted).

Second, the Guide provides what it explicitly promises: direction for the agency’s examiners in their review of generic.com terms. In that regard, the Guide sets forth a series of rules intended to ensure that agency action is both compliant with the Court’s ruling and consistent from examiner to examiner.

Our distillation of the Guide’s rules is as follows:

Procedural and Substantive Guidance

(a) General Approach

1. Generic.com applications must be evaluated on a case-by-case basis, not under a per se rule. Guide 3-20, p. 2.
2. The central question presented by these applications is “whether consumers would perceive a generic.com term as the name of a class of goods and/or services or, instead, as at least capable of serving as a source indicator.” Guide 3-20, p. 2.
3. “To establish that a generic.com term is generic and incapable of serving as a source indicator, the examining attorney must show that the relevant consumers would understand the primary significance of the term, as a whole, to be the name of the class or category of the goods and/or services identified in the application.” Guide 3-20, p. 2 (footnote omitted).

   (b) Evidence

4. “Evidence of consumer perception may include ‘dictionaries, usage by consumers and competitors, use in the trade, and any other source of evidence bearing on how consumers perceive a term’s meaning,’ including relevant and probative consumer surveys.” Guide 3-20, p. 2 (footnote omitted).
5. “When issuing a genericness refusal, the examining attorney must explain how the evidence of record supports the conclusion not only that the individual elements of the generic.com term are generic, but also that, when combined, the combination creates no new or additional significance among consumers capable of indicating source.” Guide 3-20, p. 3 (footnote omitted).

   (c) Procedure

6. The Guide gives procedural direction to examiners in five common scenarios.
7. First, the Guide advises that an examiner should not initially decline on genericness grounds to register a generic.com term on the Principal Register, even if there is strong evidence of genericness. Guide 3-20, p. 3. Rather, consistent with current practice (see TMEP § 1209.02(a)), denial should be grounded in Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), prohibiting the registration of marks that are “merely descriptive.” Guide 3-20, p. 3 (footnote omitted).
8. Second, “[i]f the evidence strongly suggests that the generic.com term is not capable of serving as a source indicator, the refusal must include an advisory that a claim of acquired distinctiveness or an amendment to the Supplemental Register is not recommended.” Guide 3-20, p. 3 (footnote omitted, emphasis added).
9. Third, if the examiner determines based on the available evidence that the generic.com term is “at least capable” of acting as a source indicator, then he/she “may advise that the applicant may amend the application to the Supplemental Register. Guide 3-20, p. 3 (footnote omitted). 
10. Fourth, if the examiner determines that the record “creates doubt” as to whether the proposed, generic.com mark is capable of serving as a source identifier, then the examiner “must refrain from giving any advisory statement.” Guide 3-20, p. 3 (footnote omitted).
11. Finally, where an initial, generic.com application seeks registration on the Supplemental Register or on the Principal Register based on a claim of acquired distinctiveness, but the examiner finds “strong evidence of genericness, “then a refusal on the basis that the generic.com term is generic will be appropriate.” Guide 3-20, p. 3.

    (d) Claims of Acquired Distinctiveness

12. As for claims of acquired distinctiveness under Section 2(f) of the Act, examiners are urged to “carefully review the applicant’s evidence in support of the claim, along with all other available evidence, to determine whether the relevant consumers have, in fact, come to view the proposed generic.com term as an indicator of source for the identified goods and/or services.” Guide 3-20, p. 3 (footnote omitted).
13. Generic.com terms, by their nature, “will likely support a conclusion that they are, at least, highly descriptive, and thus consumers would be less likely to believe that they indicate source in any party.” Guide 3-20, p. 3. As a consequence, applicants proposing generic.com terms for registration “will generally have a greater evidentiary burden to establish that the proposed mark has acquired distinctiveness.” Id. (footnote omitted).
14. Mere use for five years or prior registration of a generic.com term will generally not be enough to support registration under Section 2(f). Rather, “the applicant will need to provide a significant amount of actual evidenced that the generic.com term has acquired distinctiveness in the minds of consumers.” Guide 3-20, pp. 3-4 (footnotes omitted).
15. Such evidence “may include consumer surveys; consumer declarations, declarations or other relevant and probative evidence showing the duration, extent, and nature of the applicant’s use of the proposed mark, including the degree of exclusivity of use; related advertising expenditures; letters or statements from the trade or public; and any other appropriate evidence tending to show that the proposed mark distinguishes the goods or services to consumers.” Guide 3-20, p. 4 (footnote omitted).
16. Examiners can be expected to carefully scrutinize consumer surveys, Guide 3-20, pp. 4, “to ensure that they are an accurate and reliable representation of consumer perception of a proposed mark . . . [A]n applicant submitting a survey must carefully frame its questions and provide a report, typically from a survey expert, documenting the procedural aspects of the survey and statistical accuracy of the results. Information regarding how the survey was conducted, the questionnaire itself, the universe of consumers surveyed, the number of participants surveyed, and the geographic scope of the survey should be submitted within or along with such a report. If this information is not provided, the examining attorney may request it under 37 C.F.R. § 2.61(b).” Guide 3-20, p. 4 (footnotes omitted).

    (e) Supplemental Register

17. If a generic.com application or subsequent submission seeks registration on the Supplemental Register, “but the evidence supports a determination that the proposed generic.com term is generic, registration must be refused under Trademark Act §§ 23(c) and 45, 15 U.S.C. §§ 1091(c), 1127.” Guide 3-20, p. 4 (footnote omitted).
18. If an examiner determines that the evidence establishes that a generic.com term is capable of indicating source but does not show that the term has acquired distinctiveness, the examiner may allow registration on the Supplemental Registration, if otherwise appropriate. Guide 3-20, p. 4 (footnote omitted).

    (f) Generic.Com Terms Combined with Other Matter

19. Existing disclaimer policies and procedures are to be applied to the examination of generic.com terms combined with other matter. If the examiner finds that “the generic.com term is incapable of serving as a source indicator and is separable from other matter in the proposed mark, a disclaimer of the term is appropriate, whether registration is sought on the Principal Register or the Supplemental Register.” Guide 3-20, p. 4 (footnotes omitted).
20. As a general rule, a generic.com term must be disclaimed in its entirety. Guide 3-20, p. 4-5.
21. If acquired distinctiveness is claimed “in part as to a generic.com term that is combined with other matter, the evidence of acquired distinctiveness should be evaluated in accordance with section II.B.1 [sic]” of this guidance.

    (g) Failure to Function as a Trademark

22. Where the generic.com term is used solely as a website address “and not in a trademark or service mark manner,” registration should be refused because the term fails to function as a trademark or service mark. Guide 3-20, p. 5.

    (h) Existing Generic.Com Terms and Section 2(d) Considerations

23. As the Supreme Court noted in Booking.com B.V., registered generic.com terms may be subject to narrower trademark protection because, “consumers are less likely to think that other uses of the common element emanate from the mark’s owner.”  Booking.com B.V. at 2307, 2020 U.S.P.Q.2d 10729 at *7; Guide 3-20, p. 5 (footnote omitted).
24. “Accordingly, examining attorneys may take this into account when considering whether a prior registration for a generic.com term that contains the same generic or highly descriptive terms that appear in a proposed mark should be cited under Trademark Act Section 2(d).” Guide 3-20, p. 5.
25. “[I]f there is other matter in either of the marks that would allow consumers to differentiate them, the examining attorney may reasonably determine that confusion as to source is not likely.” Guide 3-20, p. 5.
26. But “each such case must be considered on its own merits, with consideration given to all relevant likelihood-of-confusion factors for which there is evidence of record.” Guide 3-20, p. 5.

-Anthony F. Muri, November 5, 2020