In re Sausser Summers, PC, USPTO Application Serial No. 88626569, U.S. Patent and Trademark Office Trademark Trial and Appeal Board, Feb. 16, 2021
In its first decision on the registrability of “highlydescriptive.com” or “generic.com” marks since the U.S. Supreme Court’s decision last summer in U.S. Patent & Trademark Office v. Booking.com B.V. (read our alert on Booking.com here), the Trademark Trial and Appeal Board tipped its hand, showing that it is likely to be hostile to the registration of these domains as marks, at least until a higher court instructs it differently. Specifically, the Board affirmed in a non-precedential decision the Examining Attorney’s refusal to register ONLINETRADEMARKATTORNEYS.COM for “legal services,” finding insufficient the inherent trait of any “highlydescriptive.com” or “generic.com” domain name to identify only one entity at a time and finding the purported mark “highly descriptive” of “legal services” (the applied-for services) and that the applicant law firm had not met the commensurately high threshold of evidence needed to show acquired distinctiveness.
- Absent supporting empirical evidence, public recognition of the fact that a domain name is owned by a single person or entity will not yet function as a proxy for secondary meaning.
- Significant questions will remain regarding the registrability of “highlydescriptive.com” or “generic.com” marks because both “Booking.com” and “Onlinetrademarkattorneys.com” were poor test cases.
- Acquired distinctiveness claims based on five years of substantially exclusive and continuous use are likely to fall short.
- The fact the Board identified the decision as non-precedential may signal that it is not confident the decision will stand.
- A post-decision statement by the applicant law firm strongly suggests that it will not appeal the Board’s decision.
Law firm applicant Sausser Summers, PC, provides trademark-related legal services online. It began to use ONLINETRADEMARKATTORNEYS.COM in 2013 and applied to register it on the Principal Register in 2019 on the basis of acquired distinctiveness. The Examining Attorney rejected the application, finding the mark highly descriptive and the applicant’s evidence of acquired (or secondary) meaning inadequate. The applicant appealed to the Board.
In affirming the Examining Attorney’s refusal, the Board primarily focused on whether the applicant had demonstrated secondary meaning. The most notable portion of the decision, however, is the Board’s treatment of the potential of “.com” (or any generic top-level domain) to generate secondary meaning by the mere fact that a domain name identifies only one entity at a time. The Board noted the Supreme Court’s observations in Booking.com that “only one entity can occupy a particular Internet domain at a time” and, given that, “consumers could understand a given ‘generic.com’ term to describe the corresponding website or to identify the website’s proprietor.” But it then dismissed the issue by conspicuously leaving the gTLD out of its discussion.
Specifically, the Board stated: