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Protecting a Generic Name - 10/23/2012 -

Some domain names are just too generic to be protected under trademark law. Here's how to help determine if yours will stand the test.

By Brett Garner and Deborah Feinblum

The heart of trademark law is brand recognition and source identification. A successful trademark is a mark that immediately conveys to the relevant public the source of the goods and services, the brand. Since trademark law is intended to protect the consumer, it is only fitting that generic marks are not protectable.

A generic mark is generally thought of as being devoid of any source indicating significance and is simply the common name for a good or service. Unlike descriptive marks, nothing can make a generic mark registrable, and as the Federal Circuit and the U.S. Patent & Trademark Office (USPTO) continue to argue, not even turning a generic word into a domain name by adding ".com” will make a generic term registrable.

In 2001, the Federal Circuit held that 1-888-M-A-T-R-E-S-S was not generic and unregistrable as a trademark, even though the components 1-888 and M-A-T-R-E-S-S alone would not be protectable. The addition of the area code was enough to create registrable trademark rights, although the court noted that M-A-T-R-E-S-S standing by itself would be considered generic for retail services in the field of mattresses. Since this Federal Circuit decision, however, the USPTO and Federal Circuit have consistently denied trademark protection to applicants whose marks are comprised of ".com” in connection with an otherwise generic term.

In August 2000, Eddie Z's Blinds and Drapery, Inc. filed an application with the USPTO for BlindsandDrapery.com. The application was refused registration on both the Principal and Supplemental Register on the grounds that it was generic. The Trademark Trial and Appeal Board (TTAB) upheld the examining attorney’s refusal. The TTAB held that adding ".com” to BlindsandDrapery, a string of multiple words already, created a compound word and not a phrase.

In November 2004, 1800Mattress.com IP LLC applied to register Mattress.com in connection with online retail store services in the field of mattresses, beds, and bedding on the grounds that the mark had acquired distinctiveness due to continued use for over five years. The USPTO and ultimately the TTAB again held that a trademark is generic where the mark is the generic name of the primary product offered by applicant. In this case, even where a company had shown a significant number of years of continued use, the USPTO and TTAB found the mark generic.

In February 2005, SWI Digital Inc. filed an application for RealEstateLawyers.com. The mark was denied registration on the Supplemental Register on the grounds that it is generic when viewed in connection with advertising and marketing for legal service providers, and promotes the services of others by providing a website at which users can link to legal providers. In this case, the applicant had evidence of other similar marks that had proceeded to registration, yet the USPTO still denied registration on the grounds of genericism.

The cases referenced here are only a minute sample from the USPTO records. A survey of the generic domain cases reveals that in the 10 years since the Federal Circuit’s decision in 1-888-M-A-T-R-E=S-S, the USPTO has not extended the reach of that decision to domain names. Associations are encouraged to keep these facts in mind when creating their own domain names. If it’s too generic, your organization will not be able to use and protect it as a registered name.

Deborah Feinblum is an attorney and Brett Garner is of counsel in the online space at Venable LLP.


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