USPTO Issues Guidance on Trademark Registration of “” Terms

By Jeannette Maurer Carmadella and Meagan Glynn

On October 28, 2020, the United States Patent and Trademark Office (“USPTO”) issued a new Examination Guide detailing procedures for reviewing trademark applications for “” terms. The USPTO offered this guidance in response to the Supreme Court’s decision in United States Patent and Trademark Office v. B.V. We discussed this case in two previous blog posts—the first detailing the oral arguments, which were held remotely for the first time in Supreme Court history this past May, and the second explaining the Court’s ultimate decision issued in June. Here, we provide a brief overview of the USPTO’s newly issued guidelines. While the Examination Guide offers valuable insight into how examining attorneys will assess a proposed mark’s registrability and the types of evidence that may support registration, owners of generic domain names should be aware that the process of obtaining trademark registration will still be difficult. 

The Guide begins by summarizing the decision, whereby the Court recognized that “” terms, like BOOKING.COM (the proposed mark at issue in the case), may receive trademark protection under certain circumstances. Specifically, the Court held that whether such a term is eligible for registration depends on consumer perception—whether consumers in fact perceive that term as generic for a class of goods or services or, alternatively, as identifying a specific source of those goods or services. In interpreting this decision, the USPTO emphasizes that while a “” mark is not automatically generic, it is also not necessarily non-generic.

According to the USPTO, did not substantially alter the genericness analysis or examination procedures for “” terms. Examining attorneys are instructed to continue reviewing these proposed marks on a case-by-case basis, ultimately focusing on whether the mark has source-identifying significance in the eyes of consumers. The Examination Guide also makes clear that examiners must consider both the individual elements of the proposed “” mark as well as the mark as a whole. This instruction is important because an analysis of only the components of a generic domain name, such as “booking” or “.com,” would be fatal for most applications, leading to a finding of genericness.

Next, the Examination Guide explains that the types of evidence relevant to the assessment of consumer perception are also essentially unchanged by the Court’s ruling. Such evidence includes dictionary excerpts, usage by consumers and competitors, and proof showing the duration, extent and nature of the applicant’s use of the proposed mark, including the degree of exclusivity of use and advertising expenditures. Consumer surveys are another important source of evidence identified by the Guide. But, to serve as reliable proof of consumer perception, applicants must ensure that their surveys are properly designed and submit a report detailing how the survey was conducted as well as the statistical accuracy of the results. The Guide notes that this report will typically be prepared by a survey expert. Importantly, the USPTO states that because of the nature of “” terms, applicants will typically have a greater evidentiary burden to establish that the proposed mark is eligible for registration. Applicants should strive to gather a significant amount of evidence to satisfy this burden, which unfortunately will not be an inexpensive task.

The USPTO makes two additional, noteworthy points in the Guide. First, it instructs examining attorneys to continue the practice of refusing registration of applied-for marks that fail to function as a trademark. This point is especially relevant to “” terms as many may be used simply to indicate a website address rather than a brand name, thereby triggering refusal of registration on failure-to-function grounds. Second, the Examination Guide indicates that registered generic domain names may be subject to narrower trademark protection. Because consumers are less likely to view other uses of a generic word that is incorporated in a registered mark as emanating from that mark’s owner, registration may not bar future applications featuring the common, generic term. Consequently, the competitive advantages of a “” registration are somewhat diminished.

While applications for “” terms will no longer be automatically rejected, the USPTO has set a high evidentiary bar for registration of these terms. The attorneys at Lutzker & Lutzker are available to help owners of generic domain names navigate the examination process and obtain federal trademark registration.