Page 11 - Delaware Lawyer - Summer 2020

The Lanham Act of 1946 dictates that the PTO must examine a mark as a whole, not in its component parts, to determine whether it is entitled to registration.
language of the Lanham Act?”
The Lanham Act, which was en- acted by Congress almost 60 years af- ter Goodyear, dictates that the PTO must examine a mark as a whole, not in its component parts, to determine whether the mark as a whole is entitled to registration. For example, under the PTO’s proposed bright-line rule, the owner of a generic.com mark that pro- vides ratings about a particular generic product or service, such as wine or weather, could encounter an automatic rejection at the PTO on the grounds that the mark is deemed generic, even though the mark may be descriptive of the services listed in the application. Such descriptive marks should be en- titled to registration if the owner can provide evidence of acquired distinc-
tiveness or secondary meaning.
In addition, the PTO needs a test for determining whether a generic. com mark, when taken as a whole, is “generic” and not entitled to registra- tion, or whether it is descriptive, when applied to the particular goods or ser- vices listed in the application, and may be entitled to registration. As Chief Justice Roberts pointed out, the an- swer to the question before the Court can be found in the trademark stat- ute itself, at least for registered marks that are challenged as being generic in
trademark cancellation proceedings at the PTO. The Lanham Act provides: “The primary significance of the regis- tered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the reg- istered mark has become the generic name of goods or services on or in con- nection with which it has been used.” 15 U.S.C. 1064(3). It would seem to make little sense that Congress intend- ed the PTO to apply one test for deter- mining whether or not a generic.com mark is generic (i.e., the “primary sig- nificance test” of 15 U.S.C. 1064(3)), during cancellation proceedings and a different bright-line rule for the same mark, which dictates that these marks are never registrable, during the appli- cation process.
In fact, the “primary significance” test had been applied successfully by U.S. courts for decades and by the PTO itself in determining whether or not a particular mark is generic, even during the application process.3 Even the Trademark Manual of Examining Procedure (TMEP) states that “there is no per se rule that the addition of a non-source-identifying TLD to an otherwise generic term can never un- der any circumstances operate to create a registrable mark.” 4
The PTO’s bright-line rule that an
arguably generic.com mark is never en- titled to registration, which completely ignores the mark’s significance to the relevant public, and does not provide a test for making such a determina- tion, would not seem to provide a just or workable solution for the courts, domain name/brand owners or con- sumers. If the PTO’s bright-line rule were adopted, certain domain names would be denied registration by virtue of being deemed a generic.com mark by the PTO, without a fair test for de- termining whether or not the mark as a whole is a generic term for the prod- ucts or services, or whether its primary significance to the relevant public is as a source for the products or services. Also, under the “primary significance” test, which would allow at least some generic.com marks to be registered, consumers would benefit by not being confronted with the same or confus- ingly similar marks in the marketplace, in order to distinguish one merchant’s goods or services from another’s.
The PTO and some amici expressed anti-competitive concerns regarding registration of generic.com marks at the PTO. They pointed out that once the owner of a generic.com mark has acquired its domain name for an online business selling generic products or services, naturally competitors are pre-
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