PTO Exam Guide: Post, Terms Still Face Uphill Battle for Registration

By on November 12, 2020
Posted In Trademarks

Addressing the Supreme Court of the United States’ ruling in USPTO v. B.V., the US Patent and Trademark Office (PTO) recently issued guidance on the examining procedures for “ terms.” (Examination Guide No. 3-20, Terms after USPTO v., October 2020.) had been engaged in a prolonged battle to secure registration for its BOOKING.COM trademark in connection with hotel reservation services. Earlier this year, the Supreme Court addressed the issue in, rejecting the PTO’s proposed per se rule that a generic term combined with a generic top-level domain (a “ term”) is necessarily generic and therefore ineligible for trademark protection. As the Supreme Court concluded, “[W]hether any given ‘’ 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.”

In light of this holding, the PTO issued Exam Guide 3-20, which outlines new guidance for examining terms. The PTO emphasized that the registrability of terms should be assessed on a case-by-case basis, but that these terms would often face an uphill battle for registration: “[G]iven the nature of these terms, the available evidence will likely support a conclusion that they are, at least, highly descriptive, and thus consumers would be less likely to believe that they indicate source in any party. Thus, for terms, applicants will generally have a greater evidentiary burden to establish that the proposed mark has acquired distinctiveness.”

The procedure for refusing registration of a term remains largely unchanged. Typically, an examining attorney cannot issue an initial refusal for genericness; the office action should instead refuse registration for mere descriptiveness under Trademark Act Section 2(e)(1). Depending on the examining attorney’s assessment of whether the relevant term is even capable of serving as a source identifier, the office action may include language suggesting (or advising against) a claim of acquired distinctiveness under Section 2(f) or amendment to the supplemental register.

Applicants seeking registration for a term on the principal register under Section 2(f) should be prepared to present substantial evidence that consumers recognize the mark as a source identifier, including, for example:

  • Consumer surveys
  • Consumer declarations
  • Evidence as to the duration, extent and nature of the mark’s use
  • Advertising expenditures.

The PTO warned that evidence of five years’ use or reliance on a prior registration alone is likely insufficient. Additionally, surveys should be accompanied by a report outlining “the procedural aspects of the survey and statistical accuracy of the results, . . . [i]nformation regarding how the survey was conducted, the questionnaire itself, the universe of consumers surveyed, the number of participants surveyed, and the geographic scope of the survey.” If the examining attorney believes the term is capable of functioning as a trademark but the proffered evidence is insufficient to establish acquired distinctiveness, the examining attorney may allow the applicant to amend the registration to the supplemental register.

A failure-to-function refusal is another potential pitfall for an application to register a term. If the specimen of use only demonstrates that the term is used as a website address (and not as a trademark or service mark), then the application may be refused registration because the applied-for mark fails to function as a trademark.

Finally, the PTO advised that examining attorneys may afford terms a narrowed scope of protection when considering them as potential bars to registration for other marks: “[I]f 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.”

Eleanor B. Atkins
Eleanor (Ellie) B. Atkins focuses her practice on trademark, copyright, sweepstakes and promotions, and false advertising matters. Ellie is experienced in client counsel, strategy and legal research, including portfolio management and the selection, clearance, prosecution, registration and enforcement of trademarks. Additionally, she has assisted with district court litigation as well as actions before the Trademark Trial and Appeal Board, including drafting complaints, discovery requests and briefs in support of various motions. Read Ellie Atkins' full bio.