New York Trademark Attorney Blog
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.