TTAB Rules Consumer Perception Remains the Critical Inquiry for Generic.gTLD Marks

In June 2020, the U.S. Supreme Court rejected a rule that the combination of a generic term and a generic top-level domain (“gTLD”) is per se generic. See USPTO v. Booking.com B.V., 140 S. Ct. 2298 (2020) (“Booking.com”). In so finding, 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.” Id. at 2307.

After Booking.com, the United States Patent and Trademark Office found that, while the Court rejected a bright line rule for generic.gTLD marks, Booking.com “did not otherwise significantly alter the genericness analysis to be applied to generic.com terms or the USPTO’s examination procedures regarding these terms.” USPTO, Examination Guide 3-20, USPTO.GOV (last visited September 20, 2023). Thus, the relevant inquiry remained a case-by-case analysis of the evidence of record to determine whether consumers perceive a generic.gTLD as a class of, or as capable of indicating source for, the applied-for goods and/or services. Id.

The test for genericness of any mark, including generic.gTLD marks, is two-fold. “First, what is the genus of goods or services at issue? Second, is the term sought to be registered ... understood by the relevant public primarily to refer to that genus of goods or services?” In re Reed Elsevier Props. Inc., 482 F.3d 1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007) (quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986).

In its non-precedential ruling on August 11, 2023, In re SP Plus Corporation, Ser. No. 87/906,630 (TTAB 2023) (“Parking.com”), the Trademark Trial and Appeal Board applied this test to PARKING.COM and affirmed the refusal of registration on the Supplemental Register on the ground that the mark is generic as applied to, and incapable of distinguishing, the parking availability information services. 

The Board initially found the recitation of services, a “website providing information regarding parking availability,” to adequately define the genus of services at issue. Id. at 4. Next, the Board observed “that the relevant consumers consist of consumers who seek parking availability information online”. Id. at 6. Having defined the genus of services at issue and the relevant consumer, the Board turned to the evidence of record to assess whether the relevant consumer perceived PARKING.COM as a class of, or as capable of indicating source for, a “website providing information regarding parking availability.”

Initially, because PARKING.COM is a compound mark, the Board considered the terms “PARKING” and “.COM” separately and found, despite the applicant’s concession, that these individual terms retained their generic meaning when considered as a combined whole in the compound mark. Id. at 8, 30-31. In arguing against genericness, the applicant presented over 100 third-party .COM-formative registrations, 20 consumer reviews as evidence of source-indicating use¹, and a declaration by a corporate official. However, these attempts were insufficient against the copious third-party use of websites both providing parking information and utilizing “parking.com” in the URL to provide such information made of record by the USPTO.

Considering such evidence, the Board noted “the use of the parking.com domain names are integral to use of the parking websites and demonstrate that ‘parking.com’ names the genus of parking availability information website to the relevant consumer of the services. Id. at 52. Accordingly, the Board found the third-party evidence of use to be highly persuasive in establishing that the relevant consumer perceives “parking.com” as a genus of parking availability information websites. Id. at 54, 78. Lastly, the Board rejected the applicant’s arguments that PARKING.COM had acquired distinctiveness given the elevated evidentiary burden to establish acquired distinctiveness for a highly descriptive mark. Id. at 78-81.

While the Board, in weighing the evidence of record, did not opine on what types of evidence would have been helpful in establishing consumer perception, it did note that “[while] a survey is not required to prove that a mark is not generic … the Booking.com case involved additional evidence of consumer perception not present here.” Id. at 50 n.69. This suggests that consumer surveys could be quite valuable in establishing consumer perception but does not go so far as establishing that they are dispositive in overcoming the probative weight of any marketplace use made of record to the contrary.

After Booking.com, there is no doubt that a domain name may function as a source indicator where consumers perceive it as such; however, Parking.com confirms that consumer impression remains the driving force for the source-indication capability of generic.gTLD marks and that, where there is widespread use in the marketplace by third parties, the evidentiary hurdle to establish source-indication against the weight of marketplace evidence is very high.