New USPTO Guidance on Digital Specimens and Generic.com Marks

The USPTO recently issued additional guidance regarding submission of digital specimens of use as well as rejections of generic.com marks.

Examination of Specimens for Use in Commerce: Digitally Created/Altered or Mockup Specimens

Examination Guide 3-19, originally released in July 2019, aimed to address the issue of fake specimens – that is, specimens that are actually digitally created/altered or mockups and do not evidence actual use of the mark on goods sold or transported in commerce or in connection with services actually rendered in commerce.  To identify fake specimens, the USPTO looks for over a dozen of characteristics that may indicate the specimen was created for the sole purpose of registering the mark, such as pixilation around the mark, a screenshot of a website without a URL or browser tab, a superimposed mark, or a digital rendering of products.

The October 2020 supplement to Examination Guide 3-19 provides additional information to trademark owners whose digital specimens depicting actual use in commerce may be called into question during examination via a request for information (RFI) or a refusal under Sections 1 and 45 of the Trademark Act. 

The Examination Guide indicates that where the image in the specimen appears to be retouched, and the examining attorney confirms that the product actually exists but it appears unlikely that the products were ever sold in commerce, the examining attorney may issue a RFI concerning the applicant’s use of the mark. 

If the specimen appears to be digitally created, altered, or mocked up, the examining attorney must issue a refusal, including an explanation of the reasons the specimen appears to be fake and evidence he or she considered (if applicable).  The examining attorney may also issue a RFI requiring the applicant to provide detailed information and documentation about the specimen.  The revised Examination Guide gives examining attorneys more discretion regarding what type of information they may require in a RFI, such as proof of sales in commerce with or within the U.S. for the goods in the specimen, the source of the image depicting the goods, and when the goods were first available for purchase, and whether they are still for sale.  In response to the refusal, an applicant may submit a verified substitute specimen, amend the filing basis to intent-to-use under Section 1(b) of the Trademark Act, or argue that the original specimen shows use in commerce.

Generic.com Terms after USPTO v. Booking.com B.V.

Examination Guide 3-20 addresses examination of generic.com terms in the wake of the Supreme Court’s decision in Booking.com which rejected a per se rule that a generic term combined with a general top-level domain (such as .com, .net, .org, .biz, or .info) results in a combination that is necessarily generic.  Finnegan’s summary of the June 2020 decision can be found here. 

In the new Examination Guide, the USPTO recognizes that “generic.com terms are potentially capable of serving as a mark and may be eligible for registration on the Supplemental Register, or on the Principal Register upon a sufficient showing of acquired distinctiveness.”  However, examining attorneys must continue to assess whether consumers would perceive a generic.com term as the name of a class of goods or services or as a source indicator on a case-by-case basis.  Evidence that a generic.com term is incapable of serving as a source indicator includes:

• 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 in connection with he same or similar goods or services; or
• Evidence of the applicant’s own use of the generic.com term.

The examining attorney must not refuse registration of a generic.com term on the Principal Register as generic at first, but may instead refuse the proposed mark as merely descriptive under Section 2(e)(1) of the Trademark Act.  The examining attorney may include an advisory that a claim of acquired distinctiveness or amendment to the Supplemental Register is not recommended.  If, however, applicant seeks registration on the Supplemental Register or on the Principal Register under a claim of acquired distinctiveness and there is strong evidence of genericness, the examining attorney may issue a refusal on the basis that the generic.com term is generic.

The USPTO advises that applicants will generally have a greater burden to establish that generic.com terms have acquired distinctiveness.  Evidence of five years’ use or reliance on a prior registration may be insufficient to support an acquired distinctiveness claim for a generic.com term.  Applicants may submit additional evidence in support of a claim of acquired distinctiveness, such as consumer surveys, consumer declarations, declarations or documentation showing the direction, extent, and nature of the applicant’s use of the proposed generic.com term, related advertising expenditures, and letters or statements from the trade or public.  The USPTO cautioned that “an applicant submitting a survey must carefully frame its questions and provide a report, typically from a survey expert, documenting the procedural aspects of the survey and statistical accuracy of the results,” as well as the methodology, the questionnaire itself, the universe of consumers surveyed, the number of participants, and the geographic scope of the survey.

An examining attorney may also require a disclaimer where the applied-for mark consists of a generic.com term combined with other matter, and the USPTO’s initial investigation reveals that the generic.com term is incapable of serving as a source indicator.  When disclaiming a generic.com term, the disclaimer must be as to the entire term, rather than disclaiming the generic term and the generic top-level domain separately.

Also, if the generic.com term is being used solely as a website address and not in a trademark manner, the examining attorney may refuse registration due to failure to function as a mark.

Finally, the Examination Guide cautions that registered generic.com terms may be subject to a narrower scope of trademark protection.  If an examining attorney encounters a prior registration for a generic.com term that contains the same generic or highly descriptive term that appears in the proposed mark, the examining attorney may determine that confusion as to source is not likely.  Of course, examining attorneys must consider each case on its own merits, in view of all relevant likelihood-of-confusion factors.

The Examination Guides can be found on the USPTO website.