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On June 30, 2020, the U.S. Supreme Court rejected the rule that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is automatically generic. USPTO v. Booking.com B.V., 140 S. Ct. 2298, 2020 USPQ2d 10729 (2020). In light of the Court’s decision, the USPTO recently issued Examination Guide 3-20 to address its examination procedures for “Generic.com terms.” It is worth noting that the Exam Guide pertains to a generic term and any generic top-level domain designating an entity or information (“.com,” “.net,” “.org,” “.biz,” “.info”).
While Booking.com rejected the per se rule that Generic.com terms are automatically generic, it did not otherwise significantly alter the analysis nor USPTO examination procedures regarding these generic terms. A mark must be capable of serving as a source indicator, rather than indicating that the term, as a whole, is merely the name of the class or category of the goods and/or services identified in the application. Ultimately, examining attorneys must not initially refuse registration of a Generic.com term on the Principal Register as “generic,” even if there is strong evidence of genericness. Instead, the examining attorney must refuse the mark as “merely descriptive” under Trademark Act Section 2(e)(1), requiring a showing of Acquired Distinctiveness or amendment to the Supplemental Register. The Exam Guide indicates that the suggestion to amend to the Supplemental Register will depend on whether the Generic.com term is at least capable of serving as a source indicator based on the available evidence.
The Exam Guide maintains that examining attorneys must follow the existing disclaimer policy and procedure when examining proposed marks containing Generic.com terms and other matter. If the Generic.com term is incapable of serving as a source indicator and is separable from the other matter in the proposed mark, a disclaimer of the term is appropriate, whether registration is sought on the Principal Register or Supplemental Register. However, when disclaiming a Generic.com term, the term must be disclaimed in its entirety, rather than disclaiming the generic term and the generic top-level domain separately.
While an examining attorney may not outright refuse marks on the basis of genericness, the refusal may be based on the grounds of failure to function. In doing so, “examining attorneys must also consider whether the specimen of use shows the Generic.com term being used solely as a website address and not in the trademark or service mark manner. If so, a refusal on the ground that the proposed mark fails to function as a trademark or service mark is appropriate.”
Finally, the Court in Booking.com recognized that registered Generic.com terms may be subject to a narrower scope of trademark protection. The Court noted 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.” As such, examining attorneys may take this into consideration determining 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). As always, a case must be considered on its own merits, with consideration given to all relevant likelihood of confusion factors.
Read Examination Guide 3-20 here.
The United States Patent and Trademark Office (USPTO) protects consumers and provides benefits to businesses by effectively and efficiently carrying out the trademark laws of the United States. After considering the state of the U.S. economy, the operational needs of the agency, and the comments and advice received from the public during the 45-day comment period, the USPTO is setting or adjusting certain trademark fees. The changes are detailed in the USPTO’s Final Rule, effective January 2, 2021.
The changes will allow the USPTO to continue to recover the prospective aggregate costs of strategic and operational trademark and Trademark Trial and Appeal Board (TTAB) goals. These changes will further USPTO strategic objectives by better aligning fees with costs, protecting the integrity of the trademark register, improving the efficiency of agency processes, and ensuring financial sustainability to facilitate effective trademark operations. The changes include increases in trademark application filing fees, post-registration fees, petition fees, a NEW letter of protest fee, and TTAB fees. The main changes are shown below, see the Final Rule for more information and details.
Application and Application-Related Fees
- TEAS Standard: $350 per class (up from $275 per class)
- TEAS PLUS: $250 per class (up from $225 per class)
- Processing fee for failing to meet TEAS Plus requirements: $100 per class (down from $125 per class)
- Section 8 or 71 declaration filed through TEAS: $225 per class (up from $125 per class)
- NEW FEE for deleting goods, services, and/or classes from a registration after submitting a section 8 or 71 declaration, but before the declaration is accepted: $250 per class if filed through TEAS
- No fee if you electronically file a section 7 request to amend your registration before submitting a section 8 or 71 declaration and only delete goods, services, and/or classes in the request
Petition to the Director and Letter of Protest Fees
- Petition to the Director filed through TEAS: $250 (up from $100)
- Petition to revive an abandoned application filed through TEAS: $150 (up from $100)
- NEW FEE for letter of protest: $50 per application
- Petition to cancel filed through ESTTA: $600 per class (up from $400 per class)
- Notice of opposition filed through ESTTA: $600 per class (up from $400 per class)
- Initial 90-day extension requests for filing a notice of opposition, or second 60-day extension requests for filing a notice of opposition, filed through ESTTA: $200 per application (up from $100 per application)
- Final 60-day extension request for filing a notice of opposition, filed through ESTTA: $400 per application (up from $200)
- Ex parte appeal filed through ESTTA: $225 per class (up from $200 per class)
- NEW FEE for second, and subsequent, requests for an extension of time to file an appeal brief in an ex parte appeal filed through ESTTA: $100 per application
- NEW FEE for appeal briefs in an ex parte appeal filed through ESTTA: $200 per class
- NEW FEE for requests for oral hearings: $500 per proceeding
- *The USPTO is implementing partial refunds for petitions to cancel in default judgments if the cancellation involves only a nonuse or abandonment claim, the defendant didn’t appear, and there were no filings other than the petition to cancel.