As we reported in our July 7, 2020 blog post on the USPTO v. Booking.com B.V decision, the U.S. Supreme Court ruled that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is not automatically generic and can be protected as a trademark under certain circumstances. Now, the U.S. Trademark Office has issued an Examination Guide providing guidance on how it intends to apply that ruling to the examination of applications for these types of proposed trademarks.

In the Guide, the USPTO accurately observes that the Court held that “[w]hether any given ‘generic.com’ term is generic ... depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.” Thus, it makes clear that “as in any other genericness analysis, examining attorneys must evaluate all of the available evidence, including the applicant’s evidence of consumer perception, to determine whether the relevant consumers perceive the term as generic for the identified class of goods and/or services or, instead, as capable of serving as a mark.”

The Guide gives as examples of the types of evidence that may support the conclusion by a trademark examiner that consumers would perceive the generic.com term, as a whole, as the generic name of the class of goods and/or services, and not as a brand identifier, the following:

• 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.

An applicant will be required to demonstrate through evidentiary submissions that the applied-for mark has “acquired distinctiveness” under Section 2(f) of the Trademark Act. Five years of substantially continuous and exclusive use will not be deemed sufficient to meet this burden. Rather, persuasive evidence of consumer perception must be submitted. The Guide states that such evidence 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

The content of the Guide is very similar to the arguments made by the USPTO to the Supreme Court.