Friday, 13 November 2020 15:14

USPTO Issues New Examination Guide to Address Terms after USPTO v.

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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. 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 “ 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 rejected the per se rule that 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 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 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 terms and other matter. If the 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 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 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 recognized that registered 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 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.

Read 556 times Last modified on Friday, 13 November 2020 16:19
Emily Mola

Ms. Mola earned her Bachelor’s degree in History, magna cum laude, from the Florida International University, and a Juris Doctor degree and Certificate in Intellectual Property Law from the Florida International University, College of Law. While at FIU Law, she served as the President of the Intellectual Property Student Association. As a result of her dedication to intellectual property law, she earned three CALI Excellence for the Future Awards in focused academic coursework. Ms. Mola is the recipient of the International Trademark Association’s 2020 Ladas Memorial Award for her article, Trademark Law’s Capability to Protect Traditional Cultural Expressions from Unauthorized Borrowing and Theft. Ms. Mola is a 2018 Microsoft/Hispanic National Bar Association’s Intellectual Property Legal Institute scholar.