Precedential No. 15: HEALTHPLANS.COM Generic for Health Insurance Advertising Services, Not for Online Software for Tracking Advertising

In an enervating 22-page opinion, the Board rendered a split decision in this appeal from a genericness refusal of the service mark HEALTHPLANS.COM (in standard character form), for advertising services in the field of medical and life insurance (class 35) and online software services for tracking, administration, billing, and reporting of advertising (class 42). The Board affirmed the class 35 refusal under Section 23(c) but reversed the class 42 refusal. In re Katch, LLC, Serial No. 86301765 (June 20, 2019) [precedential] (Opinion by Judge Peter W. Cataldo).

Applicant Katch sought registration on the Supplemental Register. The Board observed that “[i]n order to qualify for registration on the Supplemental Register, a proposed mark ‘must be capable of distinguishing the applicant’s goods or services.”’ In re Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1089 (TTAB 2017) (quoting 15 U.S.C. § 1091(c)). Generic terms do not qualify for such registration because “by definition [they] are incapable of indicating a unique source.” In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1267 (Fed. Cir. 2015).

In Marvin Ginn, the CAFC formulated a two-step inquiry to determine whether a term is generic: First, what is the genus (category or class) of goods or services at issue? Second, is the term sought to be registered understood by the relevant public primarily to refer to that genus of goods or services? ,  The relevant public’s perception is the chief consideration in determining whether a term is generic. See Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1833 (Fed. Cir. 2015). “[A] term can be generic for a genus of goods or services if the relevant public … understands the term to refer to a key aspect of that genus.” Royal Crown, 127 USPQ2d at 1046 (quoting Cordua, 118 USPQ2d at 1637).

As to the first step of the Marvin Ginn test, the genus may be defined by the services identified in the application. See Reed Elsevier, 82 USPQ2d at 1380; Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (a proper genericness inquiry focuses on the identification set forth in the application or certificate of registration).

Class 35: For the class 35 services, the application, and thus the genus, includes “Insurance lead collection and matching services, namely, matching consumer requests for insurance policy quotes collected over the Internet to pre-qualified insurance brokers, agents and agencies interested in those requests.” The record evidence confirmed that Applicant Katch's services are in the health insurance field, and its website indicated that "health plans are an integral aspect of Applicant’s services." Even though "health plans" are not expressly included in the recitation of services, they are still included in the relevant genus. See DNI Holdings, 77 USPQ2d 1435 (TTAB 2005) (despite applicant’s omission of sports wagering from its recitation of services for the term SPORTSBETTING.COM, apparently to avoid a finding of genericness, “the relevant genus of services herein includes wagering on sporting events.” Id. at 1439); see also Reed Elsevier, 82 USPQ2d at 1380 (affirming the Board's finding that applicant’s provision of information regarding the law, legal news, and legal services included the provision of information about lawyers despite the deletion of those services from applicant's recitation.).

As to the second prong of the Marvin Ginn test, the Board found that the relevant consumers are health insurance providers as well as members of the general public who are seeking health insurance from providers. Examining Attorney Susan A. Richards submitted dictionary definitions of "health plan" and "health care," excerpts from Applicant Katch's own website, media references concerning applicant, and LexisNexis articles and screenshots of third-party health insurance providers using the term "health plans."

The record in this case clearly shows that “health plan(s)” is a common term that means an organized format for delivering health care insurance. It has been used generically on Applicant’s website ... (e.g., “Find the Right Health Plan For You”), to indicate organized methods or formats for delivering health insurance.

As to the suffix ".com," only in exceptional circumstances will the addition of this TLD to a generic or descriptive term add source-identifying significance and transform an otherwise non-distinctive combination into a registrable mark. Hotels.com, 91 USPQ2d at 1304 (noting that “registrability does not depend on the .com combination”); In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005) (“Only in rare instances will the addition of a TLD indicator to a descriptive term operate to create a distinctive mark.”) (citing In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1374 (Fed. Cir. 2004) (“When examining domain name marks, the PTO must evaluate the commercial impression of the mark as a whole, including the TLD indicator. The addition of a TLD such as ‘.com’ or ‘.org’ to an otherwise unregistrable mark will typically not add any source identifying significance, similar to the analysis of ‘Corp.’ and ‘Inc.’”)).

The Board found that here, the TLD ".com" is "no more than a designation of commercial entity, like the word 'Company,' because it does not expand the meaning of 'health plan(s)' beyond an organized format for delivering health insurance. A corporate identifier is without source-identifying capability."  See, e.g., Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602 (1888); In re Wm. B. Coleman Co., 93 USPQ2d 2019, 2025 (TTAB 2010); In re Cell Therapeutics Inc., 67 USPQ2d 1795 (TTAB 2003).

Based upon the record evidence, the Board found that "relevant consumers would understand HEALTHPLANS.COM as denoting a commercial website for finding and being matched with available health plans, and thus as referring to the genus of Applicant’s Class 35 services." Therefore it concluded that the applied-for mark is generic for the Class 35 services "or at least a key aspect of them, namely, providing access to health insurance plans – or health plans – over the Internet." See Cordua, 118 USPQ2d at 1638 (explaining that “the term ‘pizzeria’ would be generic for restaurant services, even though the public understands the term to refer to a particular sub-group or type of restaurant rather than to all restaurants”).

Because the term is generic for at least some of the services under the proposed mark in Class 35, it is unregistrable as to the entire class. See In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff’d, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (unpublished).

Class 42: Turning to the Class 42 services, the relevant purchasers are insurers. Advertising is the focus of these services, and they "appear to be ancillary to, rather than an integral part of, providing health insurance."

Viewed in its entirety, the evidence of record indicates that HEALTHPLANS.COM in the context of these services merely describes a feature or characteristic of the services, but falls short of clearly demonstrating that insurers seeking to track, administer, bill and report advertising over the Internet in the field of health insurance will understand HEALTHPLANS.COM to refer to the genus of Applicant’s Class 42 services.

Therefore the Board reversed the genericness refusal as to the class 42 services.

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Text Copyright John L. Welch 2019.