Precedential No. 13: TTAB Finds BUYAUTOPARTS.COM Generic for .... Guess What?
The Board affirmed a refusal to register BUYAUTOPARTS.COM on the Supplemental Register, finding the term to be generic for "on-line retail store services featuring auto parts." Applicant argued that the word "buy" does not identify a genus of services associated with "selling," but the Board didn't buy it. In re Meridian Rack & Pinion DBA buyautoparts.com, 114 USPQ2d 1462 (TTAB 2015) [precedential].
The Board found the genus of services to be adequately defined by applicant's recitation of services. The relevant public consists of general consumers of auto parts. The question, then, was the public's understanding of the term, considered as a whole. When the proposed mark is a phrase, the Board cannot rely simply on definitions of the constituent words, but must analyze the meaning of the phrase as a whole. [See. e.g., American Fertility Society].
Applicant contended that BUYAUTOPARTS.COM does not name the genus of its services because "buy" does not identify a genus associated with "selling." At most, applicant argued, the applied-for mark describes the result or purpose of the services. The term would be generic "only if applicant purchased auto parts from others." According to applicant, "BUYAUTOPARTS.COM merely conveys the message that consumers may purchase auto parts from Applicant online, if consumers desire to do so, but does not describe Applicant's 'selling.'" [Huh? Say again? - ed.].
The Board found applicant's arguments unpersuasive. First, more than one term may be generic with regard to a particular product or services. Second, the central focus of any retail sales service is to facilitate "buying." In short, "buying" is directly related to "selling." [And vice versa - ed.]. The Board has often held that a term that names the "central focus" or "key aspect" of a service is generic for that service. [E.g., HOTELS.COM for lodging information and reservation services; TIRES TIRES TIRES for retail tire stores; RUSSIANART or selling such art].
The evidence showed that applicant offers its auto parts for sale online by advertising "Buy Auto Parts." Thus "buying" is a central focus of applicant's services. The record also showed that relevant consumers understand "buy auto parts" to refer to the transactions that are the central focus of applicant's services, and that third parties who sell auto parts tell their customers to "Buy Auto Parts Online."
Applicant feebly conceded that the term "BuyAutoParts" can be seen as generic, but it maintained that the addition of ".com" changes the commercial impression of the phrase and creates a distinctive mark (even though applicant disclaimed the term ".com"). In any case, the Board observed that ".com" is widely understood to refer to online commerce, and therefore the entire term BUYAUTOPARTS.COM as a whole is generic for applicant's services.
Moreover, the addition of a top level domain indicator to the generic name of the central focus or subject matter of a services does not transform the composite phrase into a registrable mark. [E.g., "mattress.com," "hotels.com," "lawyers.com," "advertising.com"].
Consequently, the Board found the applied-for mark to be incapable of distinguishing applicant's services, and thus ineligible for registration on the Supplemental Register under Section 23 of the Lanham Act.
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Text Copyright John L. Welch 2015.