TTAB Rules That PARKING.COM Is Generic and Ineligible for Both the Principal and the Supplemental Register

In a whopping 82-page opinion, the Board affirmed the USPTO's refusal to register PARKING.COM, on either the Principal Register or the Supplemental Register, as a service mark for “website providing information regarding parking availability." The Board first found the term to be generic for the services, and then, in the alternative, found it to be merely descriptive and lacking in secondary meaning. In re SP Plus Corporation, Serial No. 87906630 (August 11, 2023) [not precedential] (Opinion by Judge Elizabeth A. Dunn).

Genericness:The first 79 pages of the opinion deal with the issue of genericness. Applicant SP Plus acknowledged that the term "parking" is generic for its services, and the evidence of record corroborated that conclusion: namely, "examples of websites or webpages that are devoted to providing information about available spaces in which to park vehicles (sometimes also to reserve a parking space), and that use the term 'parking' as the generic name for the information."

The evidence also established, not surprisingly, that.COM identifies a top level domain used in designating an Internet web address, and also a short hand reference to a company doing business online.

SP Plus submitted more than 100 third-party registration certificates for .COM marks, including DIAPER.COM, HOMES.COM, TENNIS.COM, and HOTELS.COM. The Board was not impressed.

Applicant’s argument ignores the vital fact that the registrability determination in a generic case depends entirely on the evidence of consumer perception of the mark as a whole available to the USPTO at the time the registrability determination is made, a matter which cannot be determined from the face of the registration.

The Board rejected the argument that the third-party registrations outweigh the evidence of dictionary definitions, Wikipedia, the domain registrar Verisign, and relevant industry use showing that .COM is generic as applied to Applicant’s website services.

The Board observed that use of a term as a domain name does not preclude it serving as registrable source indicator. It depends on consumer perception. The Board found that the use of the term "parking.com" as part of a number of domain names for parking websites demonstrates that "'parking.com' names the genus of parking availability information website to the relevant consumer of the services."

The Board disagreed with SP Plus’s argument that the refusal must fail absent "evidence of the public referring to multiple websites as 'parking.coms.'" "Being the first to use a term does not preclude the term being found to be generic."

The Board pooh-poohed SP Plus's evidence purporting to show "that consumers use Applicant’s Mark to specifically identify Applicant as the source of Applicant’s parking availability information services." A handful of customer reviews were "greatly outweighed by the widespread third-party generic use to designate parking availability information websites." A declaration from an officer of ST Plus lacked detail and was unpersuasive.

In view of the evidence of record, we find that the Examining Attorney [David Tooley] has carried his burden of demonstrating that the relevant consumer understands “parking.com” to refer to the identified “website providing information regarding parking availability,” and Applicant has failed to rebut the evidence.

And so, the Board affirmed the genericness refusal.

Acquired Distinctiveness; Assuming arguendo that PARKING.COM is not generic, the Board considered SP Plus's claim of acquired distinctiveness. The Board found that PARKING.COM is highly descriptive of the recited services and therefore SP Plus faces an “elevated burden to establish acquired distinctiveness.” Applying the CAFC's Converse factors, the Board found that SP Plus failed to prove acquired distinctiveness.

Applicant has been successful in promoting its services and attracting consumers, but we do not see evidence that this success is tied to consumer recognition of its mark. Indeed, the success could be wholly tied to the popularity of the parking availability information service. While the online reviews and Applicant’s uses include sparse use as a service mark, the record overwhelmingly shows a proliferation of parking websites, and use of parking.com to identify the genus of the websites or their Internet address.

Conclusion: And so, the Board rejected SP Plus's alternative Section 2(f) claim, and it also denied registration on the Supplemental Register.

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TTABlogger comment: If one assumes arguendo that PARKING.COM is not generic, shouldn't it be eligible for the Supplemental Register? Just because applicant failed to prove acquired distinctiveness today doesn't mean it might not acquire it some time later.

Text Copyright John L. Welch 2023.