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 In re SP Plus Corporation, Serial No. 87906630 (August 11, 2023) [not precedential] (Opinion by Judge Elizabeth A. Dunn).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.
Read comments and post your comment here.
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.
posted by John L. Welch @ 8/15/2023
7 comments
7 Comments:
This flies in the face of Booking.com! Ugh...I didn't read it yet so don't know how they distinguished it, if they did, but I thought it was now well-settled (even with examining attorneys I've recently dealt with) that ALL domain name marks are at least eligible for the Supplemental Register unless its generic as a whole (but what generic term ends in .com?)
Before I get any comments about this follows the USPTO's guidelines that wrongly interpreted Booking.com (bringing in the relevance of third party domain names that contain the TLD), I realize that, but I think this may be the first time that the Board had to choose to follow those misguided guidelines. It was a missed opportunity to rule that those guidelines missed the mark. A few major TV commercial campaigns and you have a 'booking.com' (i.e., a trademark)
Gene: perhaps you should read the decision first, then comment. ;)
The Board found the entire term "parking.com" to be generic for parking information websites. Ergo, no Supplemental Registration. Then, strangely, it denied a Supplemental Registration even assuming "parking.com" was not generic. That seems wrong to me.
John: your stellar summaries allow me to safely comment before reading the decision ;) Notwithstanding, in this case I didn't have to read the decision because there was no way it could have been justified in light of booking.com regardless of how they got to the wrong decision. I did print it out for some nice evening reading however (you're right..I do need a life!). And I also have to work on getting all of my thoughts in my first comment so I'm not the first one to reply to myself.
I have read the parking.com case once.
I wish I had the ability to tune out the Supreme Court like the Board does.
When I read the discussion of "parking availability websites" being a genus (and that being relevant to how consumers perceive "parking.com," I had the same depressed feeling I have when I read Alito discussing affirmative action - someone powerful has their mind made up and is doing sleight of hand to get me to agree.
The rebuttal to the assertion that there is no evidence of use of the phrase ‘parking.coms’, namely that there isn’t evidence because applicant is the first - seems to ignore who has the burden of proof (page 53). The particular sentence strikes me as the Board assuming what it set out to prove (and uses the absence of proof as proof).
However, the part of the decision that seemed to honestly identify an authentic argument against this application is the discussion starting on page 41 in the bit about BaltimoreParking.com and the like. That strikes me as a convincing argument against acquired distinctiveness in this case.
Now let me lace up my SNKRS and get to work.
Assuming the applicant already owns the domain PARKING.COM, does he really need
a trademark registration? Anybody else out there pretending to be PARKING.COM is going
to drive traffic to, uh, PARKING.COM... What am I missing here?
Having a TM registration for PARKING.COM might scare off others from adopting similar marks, block other attempted registrations of similar marks.
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