Thursday, April 23, 2015

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, 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., "," "," "," ""].

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.

Read comments and post your comment here

TTABlog note: WYHA?

Text Copyright John L. Welch 2015.


At 9:35 AM, Anonymous Anonymous said...

Only question I have is why the Board chose this opinion to be precedential. What's new?

At 10:41 AM, Anonymous Anonymous said...

Should have filed for BUYAUTOPARTSESSENTIALS.COM instead...

At 10:46 AM, Anonymous Anonymous said...

I have always wondered why the TM Office considers the inclusion of dotcom to offer no distinctiveness or function as a source indicator for descriptive or generic marks. For some marks, the inclusion of .COM in the mark completely sets it apart from other marks and it definitely serves as a unique source indicator. You could require disclaimer of the descriptive or generic subdomain. It may be a moot point, however, because in practice no one else is going to use the same generic mark with the same top level domain. I guess it would also depend on the scope of protection it provides and other uses of the same or a similar subdomain with the same top level or with other top level domains. That would be a mess to sort out perhaps. But in reality it is going on and it creates a lot of confusion in the marketplace. AUTOPARTS.COM, AUTOPARTS.CO, AUTOPARTS.BIZ, etc. Who is who?

At 11:52 AM, Anonymous Roberto Ledesma said...

The Federal Circuit initially recognized [generic].com marks as merely descriptive (see, then with the decision began finding them generic (see, I don't see the logic in holding that a [generic].com mark cannot function as a source identifier when it uniquely points to a single online source. The problem, really, as shown with the AOL case is registrants will overreach on what should be weak/narrow trademark rights.

At 5:00 PM, Anonymous Anonymous said...

Sad that the Board and others had to spend time and money on this loser of a case.


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