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The Fine Line Between Descriptive Trademarks And Generic Terms

In a recent precedential decision of the Trademark Trial and Appeal Board (the Board) issued on April 21, 2015 the Board affirmed the Examiner’s refusal to register the mark BUYAUTOPARTS.COM with a disclaimer for “.com”. Meridian Rack & Pinion (the “Applicant”) sought registration on the Supplemental Register for the mark BUYAUTOPARTS.COM for online retail store services featuring auto parts. The Examining Attorney refused registration on the basis that the mark was generic for the services indicated and incapable of distinguishing the Applicant’s services. See In re Meridian Rack & Pinion DBA BUYAUTOPARTS.COM.

Generic terms are common names understood by the relevant consuming public to be the principal category of the goods or services. The Court of Appeals for the Federal Circuit has held that the most significant issue in a generic trademark case is whether the relevant public primarily understands that the proposed mark refers to the genus of the goods or services. See H. Marvin Ginn v. International Association of Fire Chiefs, 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1985). There is a two-part analysis when determining if a mark is generic. The first inquiry is what is the genus of the goods or services (what is the class of goods or services or the principal category) and the second inquiry is does the relevant group of consumers understand that by use of the subject mark it refers to a principal category of goods or services.

To determine the principal class of goods or services one can typically look to the Applicant’s identification of goods or services. See Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991). Here, the Applicant’s identification of goods is “on-line retail store services featuring auto parts”. To better understand the identification utilized by the Applicant one should look to the dictionary definition (which was submitted into the record by the Examining Attorney). The dictionary defines “retailing” as selling of merchandise directly to the consumer.

The next task is to identify who the relevant consumers are for the subject services. Here, the relevant consumers would be general consumers of auto parts. The mark as a whole must be analyzed. The reason for this is that even if each element of the mark is generic, if the combination of terms as a whole is not generic than the trademark would not be refused as generic. In this case, the Applicant argues that the mark is not generic because the term “buy” does not identify a category of services associated with selling. Instead, Applicant further argues that the mark describes the desired result of the services and does not describe its selling services. The Applicant argues that therefore, the mark should be consider merely descriptive, but not generic.

The Board did not find the Applicant’s arguments persuasive. The Board stated that the focus of any retail service is for the seller to sell and the buyer to purchase goods or services. The Board has held in the past that if a trademark contains the key aspect of a service, then it is generic for the service itself. The Federal Circuit has also affirmed this principle. See In re Hotels.com LP, 573 F.3d 1300, 91 USPQ2d 1532, 1535 (Fed. Cir. 2009). Buying auto parts is a central focus of the Applicant’s service of offering auto parts for sale online. In addition, relevant members of the public use and understand the words “buy auto parts” to refer to the buying and selling of auto parts. Moreover, third party competitors of the Applicant use the term “Buy Auto Parts Online” in the advertisement and promotion of the same services to their consumer base. Multiple advertisements of third-party competitors were introduced into the record to demonstrate this point.

The addition of the “.com” element of the mark does not aid to distinguish the services. Evidence in the record proved that the term .com is widely understood to mean electronic commerce that facilitates the purchase of goods and services online. Also, Applicant disclaimed the .com suffix. The Board concluded that BUYAUTOPARTS.COM is a generic phrase for a online retail store selling auto parts. It can be difficult to determine if your proposed mark is merely descriptive or generic in relationship to the goods or services. If you would like a courtesy consultation before filing a trademark application with the United States Patent & Trademark Office, kindly contact our office.