USPTO Issues Guidance on Examination of Terms

Sheppard Mullin Richter & Hampton LLP

Sheppard Mullin Richter & Hampton LLP

In June of this year, the US Supreme Court ruled that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is not per se generic. (USPTO v. In response, the United States Patent and Trademark Office (USPTO) recently issued Examination Guidelines for examining such “” terms.

This all began when the USPTO originally refused to register the proposed mark BOOKING.COM, asserting it was generic with respect to hotel reservation services or, alternatively that it was merely descriptive and had not acquired distinctiveness. The Trademark Trial and Appeal Board affirmed the refusal, but the district and circuit courts ultimately ruled in favor of the applicant. In the SCOTUS focused its review on the question of whether the USPTO may employ a nearly per se rule against trademark protection for a generic term combined with a top-level domain (i.e., “.com”).

The Guidelines issued by the USPTO begin with the premise that while held that a term is not per se generic, it did not automatically deem these terms to be non-generic. According to the Guidelines, did not alter the “genericness” analysis or examination procedures to be applied to terms, and examining attorneys must continue to assess these terms on a case-by-case basis. In other words, the examining attorney is required to follow examination processes consistent with examination procedures already in place at the USPTO.

If you are applying for registration of a mark on the Principal Register, keep in mind that in order for the Office to reject such a term as generic, the examining attorney is required 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.”  The examining attorney should not initially refuse registration on the Principal Register as generic, even if strong evidence of genericness exists. Instead, the examining attorney should refuse the application as merely descriptive and determine whether the term is capable of serving as a source indicator. Note, however, that if you are applying for registration under a claim of acquired distinctiveness and there is strong evidence of genericness, the examining attorney may issue a refusal on that basis.

The good news for applicants is that the decision removed the per se roadblock of genericness that the USPTO erected to refuse registration of terms.  However, applicants still have to navigate the examination process to avoid/overcome descriptiveness or genericness refusals. And, the USPTO notes that the “applicant [must] provide a significant amount of actual evidence” to show that the term has acquired distinctiveness in the minds of consumers.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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