TTAB Affirms Genericness Refusal of COOKIEBOT for ..... Guess What?
Wrong. This case has nothing to do with baked goods. The Board upheld the USPTO's refusal to register COOKIEBOT for "Software as a service (SAAS) services featuring software for monitoring and managing data collection and Internet usage tracking, for complying with privacy regulations regarding data collection and Internet usage tracking, and for user consent and permissions management regarding website access, data collection and Internet usage tracking," on the ground of genericness. The Board also upheld an alternative refusal based on mere descriptiveness and lack of secondary meaning. In re Cybot A/S, Serial No. 90044987 (May 1, 2023) [not precedential] (Opinion by Judge Peter W. Cataldo).
The Board, as usual, found the genus at issue to be adequately defined by the recitation of services in th subject application. [Quite a mouthful! -ed.]. The Board next found the relevant consumers to be "website owners and those who visit websites." [That covers nearly everyone, doesn't it? - ed.]. The question, then, was whether the term COOKIEBOT is "understood by the relevant public primarily to refer to" the recited services.
The Board then found that COOKIE "may be defined as a file stored on the local computer of an Internet user containing information used by the website to, inter alia, record, track and collect data regarding the user’s browsing habits." A BOT is "a computer program that automates mundane tasks, even when the user is not logged in, acting as an agent for a user or program and may simulate human activity."
The term COOKIE BOT "may be defined as a computer program that automates various activities related to the collection, monitoring and management of data concerning Internet usage by an individual. There was no dispute that relevant consumers recognize that meaning." The absence of a space in applicant's proposed mark does not alter that meaning.
Based on the media evidence submitted by Examining Attorney Kim Teresa Moninghoff, the Board found that "consumers of Applicant’s services as well as media outlets and commentators in the field of online access and data collection recognize this meaning of Applicant’s proposed mark."
Applicant maintained that "consent management platform" or "CMP" is the generic term for its services, but the Board observed that there can be more than one generic term for a genus of goods or services.
The Board concluded that the relevant public understands the term COOKIEBOT as a common descriptive name for the genus, and therefore it affirmed the genericness refusal.
Turning to the alternative refusal, the Board found, in light of the genericness evidence, that COOKIEBOT is highly descriptive of the subject services. Consequently, applicant’s burden of establishing a prima facie case of acquired distinctiveness under Section 2(f) "is commensurately high."
Applying the CAFC's Converse factors, the Board noted the lack of survey evidence or other direct evidence regarding the association of COOKIEBOT with a particular source. Applicant averred that it has exclusively used COOKIEBOT as a mark since 2015, but the Board brushed that aside in light of the highly descriptive nature of the term. There was no evidence regarding applicant's marketing expenditures, the extent of exposure of its advertising, its sales figures, number of customers, market share, unsolicited media coverage, or intentional copying.
The Board concluded that applicant had failed to prove acquired distinctiveness, and so it affirmed the alternative refusal under Section 2(e)(1).
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TTABlogger comment: Is this a WYHA?
Text Copyright John L. Welch 2023.
posted by John L. Welch @ 5/11/2023
3 comments
3 Comments:
As usual, the Board starts off its definition of what is a generic name with an erroneous statement of law: “A generic term “is the common descriptive name of a class of goods or services.” This quotes equally erroneous statements by the Federal Circuit. “Common descriptive name” has not been the legal test for over thirty years since the 1989 statutory change in the Lanham Act. Effective in 1989, the Trademark Law Revision Act deleted the statutory phrase “common descriptive name” and replaced it with “generic name,” thereby codifying prior judicial interpretation. After this change, the Lanham Act in three places uses the term “generic name.” If you ask the wrong question, you’re sure to get a wrong answer.
This is nonsense, like much of the Board's precedent on genericness.
The adaptation of The Lanham Act to information technology has been a tragedy. Never a realisation that trademarks are themselves informational. Bad enough they let Google extract trillions with what Shackell calls a supergeneric mark. Now AI is upon us and registrations will be granted for services that not only help you find other trademarked goods but sit up and tell you all about them. Not the same as a mark for a bar of soap. Reform trademark law now.
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