1215.05(a)    Genericness Analysis and Relevant Evidence

Although the Court in Booking.com rejected a per se rule that generic.com terms are automatically generic, it specifically declined to adopt a rule that these terms are automatically non-generic. See USPTO v. Booking.com B.V., 140 S. Ct. 2298, 2307, 2020 USPQ2d 10729, at *7 (2020). Thus, the decision did not otherwise significantly alter the genericness analysis to be applied to generic.com terms or the USPTO’s examination procedures regarding marks consisting of a generic.com term, that is, any combination of a generic term and generic top-level domain designating an entity or information, such as ".com," ".net," ".org," ".biz," or ".info." Thus, examining attorneys must continue to assess on a case-by-case basis whether, based on the evidence of record, 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.

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. See id. at 2304, 2020 USPQ2d 10729, at *5; In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1364, 92 USPQ2d 1682, 1685 (Fed.Cir. 2009) ("[I]t is irrelevant whether the relevant public refers to online mattress retailers as ‘mattress.com.’. . . the correct inquiry is whether the relevant public would understand, when hearing the term ‘mattress.com,’ that it refers to online mattress stores"); H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986); TMEP §1209.01(c)(i). Generally, evidence showing generic use of the generic.com term in its entirety, including evidence of domain names containing the term for third-party websites offering the same types of goods or services, is a competent source of the consumers’ understanding that will support a finding of genericness. See Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 968, 114 USPQ2d 1827, 1832 (Fed. Cir. 2015); TMEP §1209.01(c)(i); see also In re Hotels.com, L.P., 573 F.3d 1300, 1304, 91 USPQ2d 1532, 1535-36 (Fed. Cir. 2009) (evidence of similar usages of "hotels.com" in domain names of others providing hotel information and reservation services supported a prima facie case of genericness); In re Reed Elsevier Props., 482 F.3d 1376, 1379-80, 82 USPQ2d 1378, 1380-81 (Fed. Cir. 2007) (evidence of eight websites containing "lawyer.com" or "lawyers.com" in the domain name constituted substantial evidence to support the Trademark Trial and Appeal Board’s (TTAB) finding that "LAWYERS.COM" is generic for the service of providing an online interactive database featuring information exchange in the field of law, legal news, and legal services). However, even in the absence of such evidence, a genericness refusal may be appropriate if the evidence of record otherwise establishes that the combination of the generic elements of the proposed mark "yields no additional meaning to consumers capable of distinguishing the goods or services." See Booking.com, 140 S. Ct. at 2306, 2020 USPQ2d 10729, at *7; see also TMEP §1209.01(c)(i).

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. Booking.com, 140 S. Ct. at 2307 n.6, 2020 USPQ2d 10729, at *7 n.6. These are the same types of evidence examining attorneys traditionally consider when assessing genericness. See, e.g., In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1570, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987) ("Evidence of the public’s understanding of the term may be obtained from any competent source, such as purchaser testimony, consumer surveys, listings in dictionaries, trade journals, newspapers, and other publications.").

The following are examples of the types of evidence that may support the conclusion that consumers would perceive the generic.com term, as a whole, as the name of the class of goods and/or services:

  • a combination of dictionary excerpts defining the component elements of the generic.com term;
  • significant evidence of generic usage of those elements or the combined term by consumers or competitors in the relevant marketplace;
  • evidence of the "generic.com" term used by third parties as part of their domain names (e.g., "[adjective]generic.com") in connection with the same or similar goods and/or services; or
  • evidence of the applicant’s own use of the generic.com term.

See In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (affirming the TTAB’s finding that HOTELS.COM is generic for "providing information for others about temporary lodging; [and] travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network," based on various definitions of "hotel," printouts from hotel reservation search websites showing "hotels" as the equivalent of or included within "temporary lodging," and evidence from the applicant’s website); TMEP §1209.01(c)(i).

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. See In re 1800Mattress.com IP, 586 F.3d 1359, 1363, 92 USPQ2d 1682, 1684 (Fed. Cir. 2001) (affirming the TTAB’s conclusion that MATTRESS.COM is generic for "online retail store services in the field of mattresses, beds, and bedding," where the TTAB considered each of the constituent words, "mattress" and ".com," and determined that they were both generic, and then considered the mark as a whole and determined that the combination added no new meaning, relying on the prevalence of the term "mattress.com" in the website addresses of several online mattress retailers who provide the same services as the applicant); In re Hotels.com, L.P., 573 F.3d at 1306, 91 USPQ2d at 1537; TMEP §1209.01(c)(i).