by Dennis Crouch
In re: GJ & AM, LLC, Docket No. 19-01214 (CA Fed 2020) (CookinPelletsCOM)
In this case GJ&AM is seeking to register a trademark on the mark “COOKINPELLETS.COM.” The company sells grilling pellets on its website as well as via Amazon and local dealers.
The USPTO refused to register the mark — finding “cookinpellets.com” would be “understood by consumers as referring to a company that sells cooking pellets online.” The Board (TTAB) also used the (former) shortcut almost-per-se rule of the patent office that adding “.com” would not transform a generic word into a registrable mark. See Booking.com B.V. v. Pat. & Trademark, 18-1309, 2020 WL 3578671 (U.S. July 2, 2020). After the BOOKING.COM decision, the Federal Circuit received supplemental briefing. However, rather than deciding the case the court remanded to the TTAB. “The impact of the Supreme Court’s decision in Booking.com is best determined by the Board in the first instance.”
In its supplemental briefing, the USPTO had suggested that the court could go ahead and decide the case — revealing its approach to narrowly applying Booking.com. The PTO’s brief begins with its statement of the decision:
In Booking.com, the Supreme Court was presented solely with the legal question whether a generic term combined with the top level domain “.com” results in a combination that is necessarily generic. The Supreme Court rejected a rule that a “generic.com” term is always generic and also rejected a rule that such a term is automatically non-generic.
[Supplemental Briefing PTOSupplementalBriefPelletCookin].
The TTAB had rejected the mark as both rejected the mark as both generic and merely descriptive without proof of acquired distinctiveness. On appeal, the PTO argued that Booking.com‘s holding did not disturb the distinctiveness holding:
The Supreme Court’s decision in Booking.com implicates only the genericness refusal ground …. If the Court determines substantial evidence supports the merely descriptive and lacks acquired distinctiveness refusal ground, the Court should affirm the Board’s decision on that basis alone without reaching the genericness refusal.
The problem with the PTO’s argument here is that the Board did not give any weight to the “.com” portion of the mark when determining distinctiveness or acquired distinctiveness. Rather the Board applied the now-rejected PTO almost-per-se rule that “.com” adds nothing and therefore could not “expand the meaning of the mark” beyond that of “cookinpellets” itself. The PTO briefing on this point does not appear to fully consider the holding of Booking.com — it will be interesting to see how the TTAB responds.