1215.05(e) Section 2(d) Considerations
In Booking.com, the Supreme Court recognized that registered generic.com terms may be subject to a narrower scope of trademark protection, noting that "[w]hen a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the mark’s owner." USPTO v. Booking.com B.V., 140 S. Ct. 2298, 2307, 2020 USPQ2d 10729, at *7 (2020).
Accordingly, examining attorneys may take this into account when considering whether a prior registration for a generic.com term that contains the same generic or highly descriptive terms that appear in a proposed mark should be cited under Trademark Act Section 2(d). Generally, in these circumstances, if there is other matter in either of the marks that would allow consumers to differentiate them, the examining attorney may reasonably determine that confusion as to source is not likely. Cf. TMEP §1207.01(d)(iii) ("[A]ctive third-party registrations may be relevant to show that a mark or a portion of a mark is descriptive, suggestive, or so commonly used that the public will look to other elements to distinguish the source of the goods or services."). However, each case must be considered on its own merits, with consideration given to all relevant likelihood-of-confusion factors for which there is evidence of record. See TMEP §1207.01. For more information regarding Section 2(d) and domain names, see TMEP §1215.09.