Terms considered to be generic cannot function as trademarks. A generic term is one that the relevant public understands to be the common name of the goods or services. The rationale for refusing to provide trademark protection for generic terms is that granting a party an exclusive right to utilize a generic term would be unfair and would interfere with competition. The Trademark Trial and Appeal Board (the "Board") of the United States Patent & Trademark Office ("USPTO"), recently affirmed the refusal of a standard character mark, "SERIAL" for “entertainment in the nature of an ongoing audio program featuring investigative reporting, interviews, and documentary storytelling”. See our blog post entitled, A Precedential Decision - Is "SERIAL" Generic For Applicant's Entertainment Services, for more on the Board's analysis of generic marks.
Marks comprised of generic terms combined with top-level domains are not eligible for registration on the Principal Register, absent a claim by the applicant that the mark has acquired distinctiveness. If secondary meaning is not proved, an Examining Attorney should refuse the application on the ground that the mark is merely descriptive of the goods or services under §2(e)(1) of the Trademark Act, and if applicable, provide an advisory statement that the matter sought to be registered appears to be a generic name for the goods or services. See our webpage entitled, Merely Descriptive or Generic, to review the test for establishing a generic term. Generic findings are rebuttable. See In re America Online, Inc. 77 U.S.P.Q.2d 1618, 2006 WL 236389 (TTAB 2006), where the Board reversed a refusal to register INSTANT MESSENGER for an online messaging service based on genericness. The applicant overcame the refusal by submitting evidence of substantial marketing, large numbers of users, and proper trademark use.
In the past, other marks such as HOTELS.COM for hotel information services and MATTRESS.COM for online retail store services featuring mattresses, beds and bedding, were held to be generic for the indicated services. In both those cases, the addition of a top-level domain indicator (.com) did not allow the marks to register. Keep in mind that those cases were decided almost ten years ago, when the norms regarding domain names were still developing. The Federal Circuit has noted that only in rare cases will the addition of a top-level domain indicator operate to create a distinctive mark. See In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 U.S.P.Q.2d 1682 (Fed. Cir. 2009). In addition, the Court has held that in exceptional circumstances a term that is not distinctive by itself may acquire some additional meaning from the addition of a top-level domain, such as .com or .net, and that this addition may render it sufficiently distinctive.
An interesting case was recently decided in the U.S. District Court for the Eastern District of Virginia, see Booking.com B.V. v. Matal, Civil Action No. 1:16-cv-425-LMB-IDD (August 6, 2017). The Court treated the issue of whether a second-level domain ("SLD", for example "booking" in booking.com) when combined with a top-level domain ("TLD", for example ".com") could have source identifying significance, as a matter of first impression. There was no Fourth Circuit precedent on the issue, and it declined to follow the precedent of the Federal Circuit. The Court held that a TLD generally does have source identifying value when combined with a SLD, even if it is a generic SLD. Here, the Court reversed the Board's decision to refuse the mark BOOKING.COM for hotel and travel reservation services. The evidence showed that the consuming public understood BOOKING.COM to be a specific brand. The District Court held that BOOKING.COM was descriptive for the services of hotel and travel reservation services (not generic), but went on to determine if the mark acquired distinctiveness or secondary meaning through use in commerce.
Secondary meaning exists once the consuming public finds that the mark identifies the source of the product and does not identify the product or service itself. After considering the typical six factors, (1) advertising expenditures; (2) consumer studies linking the mark to source; (3) sales success; (4) unsolicited media coverage of the product or service; (5) attempts to plagiarize the mark; and (6) the length and exclusivity of the mark's use, the Court found the evidence to be more than sufficient to establish secondary meaning for the services identified in class 43 for hotel reservation services. This case is significant because it demonstrates a change in view from ten years ago with regard to the perception of TLDs and their ability to indicate source. If you have trademark inquiries, please contact our office for a courtesy telephone consultation.