1215.05(b) Procedures for Refusals
Consistent with existing examination procedures, the examining attorney must not initially refuse registration of a generic.com term on the Principal Register as generic, even if there is strong evidence of genericness. See TMEP §1209.02(a). Instead, the examining attorney must refuse the proposed mark as merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), and provide relevant supporting evidence. See id. If 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. See id. If, on the other hand, the examining attorney determines that the generic.com term is at least capable of serving as a source indicator based on the available evidence, then the examining attorney may advise that the applicant may amend the application to the Supplemental Register. See TMEP §816.04. If the record creates doubt as to whether the applied-for generic.com term is capable of functioning as a mark, the examining attorney must refrain from giving any advisory statement. See TMEP §1209.02(a).
If the initial application seeks registration on the Supplemental Register or on the Principal Register under a claim of acquired distinctiveness, and there is strong evidence of genericness, then a refusal on the basis that the generic.com term is generic will be appropriate.
1215.05(b)(i) Claim of Acquired Distinctiveness
If the application itself or a subsequent submission includes a claim of acquired distinctiveness under Trademark Act Section 2(f), 15 U.S.C. §1052(f), the examining attorney must 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. See generally TMEP §§1212.01-1212.02.
Under Booking.com, generic.com terms are neither per se generic, nor per se non-generic. See USPTO v. Booking.com B.V., 140 S. Ct. 2298, 2307, 2020 USPQ2d 10729, at *7 (2020). However, given the nature of these terms, the available evidence 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. See In re Steelbuilding.com, 415 F.3d 1293, 1301, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005) (holding that STEELBULDING.COM was highly descriptive and unregistrable on the Principal Register under §2(e)(1), absent "a concomitantly high level of secondary meaning."). Thus, for generic.com terms, applicants will generally have a greater evidentiary burden to establish that the proposed mark has acquired distinctiveness. See Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1368, 127 USPQ2d 1041, 1047 (Fed. Cir. 2018); In re Nat’l Ass’n of Veterinary Technicians in Am., 2019 USPQ2d 269108, at *6 (TTAB 2019); In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, at *9 (TTAB 2019); see also TMEP §1212.01.
Accordingly, evidence of five years’ use or reliance solely on a prior registration for the same term will usually be insufficient to support a Section 2(f) claim for a generic.com term. See TMEP §§1212.04-1212.04(a), 1212.05(a). Typically, the applicant will need to provide a significant amount of actual evidence that the generic.com term has acquired distinctiveness in the minds of consumers. See TMEP §§1212.06-1212.06(e)(vi).
Evidence submitted in support of the Section 2(f) claim 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. See 37 C.F.R. §2.41; TMEP §§1212.06-1212.06(e)(vi).
Regarding consumer surveys, in particular, the Supreme Court cautioned that they must be properly designed and interpreted to ensure that they are an accurate and reliable representation of consumer perception of a proposed mark. See Booking.com, 140 S. Ct. at 2307 n.6, 2020 USPQ2d 10729, at *7 n.6.; accord id. at 2309, 2020 USPQ2d 10729, at *9 (Sotomayor, J., concurring) ("Flaws in a specific survey design, or weaknesses inherent in consumer surveys generally, may limit the probative value of surveys in determining whether a particular mark is descriptive or generic in this context."). Therefore, an 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. See TMEP §1212.06(d). 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. See id. If this information is not provided, the examining attorney may request it under 37 C.F.R. §2.61(b).
If the examining attorney determines that the evidence of record establishes that the generic.com term is, in fact, a generic name for the identified goods and/or services, the examining attorney must refuse registration on the ground that the term is generic and indicate that the claim of acquired distinctiveness does not overcome the refusal. See TMEP §§1209.02(a)(ii), 1209.02(b). The statutory basis for this refusal is Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051, 1052, and 1127, for goods, or Sections 1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127, for services. In addition to this refusal, the examining attorney must issue or maintain, in the alternative, a refusal under Trademark Act Section 2(e)(1) on the ground that the proposed mark is merely descriptive. See Id. This refusal must separately explain why the showing of acquired distinctiveness is insufficient to overcome the descriptiveness refusal even if the proposed mark is ultimately deemed not to be generic. See Id.
1215.05(b)(ii) Supplemental Register
If the application itself or a subsequent submission requests registration on the Supplemental Register, and the evidence supports a determination that the proposed generic.com term is generic, registration must be refused under Trademark Act Sections 23(c) and 45, 15 U.S.C. §§1091(c), 1127. See TMEP §1209.02(a)(i).
If the examining attorney determines that the available evidence establishes that the proposed generic.com term is at least capable of indicating source but is insufficient to show that the term has acquired distinctiveness, the examining attorney may allow registration on the Supplemental Register, if otherwise appropriate. See TMEP §§815-815.02.