“Generally, where the matter sought to be registered identifies [services] that are a primary or central focus of the [business], we have considered the term to be generic.” In re Cordua Rests. LP, 100 USPQ2d 1227, 1231 (TTAB 2014) (citations omitted) (bracketed words in original), aff'd, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015); H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986).

“[T]he determination of whether a mark is generic must be made in relation to the goods or services for which registration is sought, not in the abstract.” In re Virtual Indep. Paralegals, LLC, 2019 USPQ2d 111512, at *2 (TTAB 2019). Determining whether a term is generic is fact intensive and depends on the record. See In re Tennis Indus. Ass'n, 102 USPQ2d 1671, 1680 (TTAB 2012); see also Royal Crown Co., Inc. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1044 (Fed. Cir. 2018) (“Whether an asserted mark is generic or descriptive is a question of fact” based on the entire evidentiary record).

The two-part test for genericness is: (1) what is the genus (class or category) of the goods or services at issue; and (2) does the relevant public understand the designation primarily to refer to that genus of goods or services. Marvin Ginn, 228 USPQ at 530; Princeton Vanguard, 114 USPQ2d at 1830; Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1462 (TTAB 2014).

What's the Genus?

In trademark prosecution, the identification of goods in a trademark application is commonly relied upon in defining the genus. In re Reed Elsevier Prop. Inc., 482 F.3d 1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007); 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”).

If the proposed mark is generic for any one of the services in the identification, then registration is appropriately refused for that entire class of services. In re Katch, LLC, 2019 USPQ2d 233842, at *10 (TTAB 2019).

What's Understood by the Relevant Public?

For the second part of the Marvin Ginn test for determining genericness, the relevant public is the purchasing or consuming public for the identified goods.” Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 124 USPQ2d 1184, 1187 (TTAB 2017) (citing Magic Wand, 19 USPQ2d at 1553); Loglan Inst. Inc. v. Logical Language Grp. Inc., 962 F.2d 1038, 22 USPQ2d 1531, 1533 (Fed. Cir. 1992); Sheetz of Del., Inc. v. Doctor's Assocs. Inc., 108 USPQ2d 1341, 1351 (TTAB 2013). “Evidence of the public's understanding of the term may be obtained from any competent source, such as purchaser testimony, consumer surveys, listings in dictionaries, trade journals, newspapers and other publications.” Royal Crown Co., Inc. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1046 (Fed. Cir. 2018) (citing In re Merrill Lynch, 4 USPQ2d at 1143); see also In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016); Princeton Vanguard, 114 USPQ2d at 1830; In re Reed Elsevier, 82 USPQ2d at 1380 (finding third-party websites competent sources for determining what the relevant public understands mark to mean).

“An inquiry into the public's understanding of a mark requires consideration of the mark as a whole.” Princeton Vanguard, 114 USPQ2d at 1831 (quoting In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005)). “Even if each of the constituent words in a combination mark is generic, the combination is not generic unless the entire formulation does not add any meaning to the otherwise generic [term].” In re 1800Mattress.com IP LLC, 586 F.3d 1359, 1363, 92 USPQ2d 1682, 1684 (Fed. Cir. 2009) (quoting In re Steelbuilding.com, 75 USPQ2d at 1421); see also Princeton Vanguard, 114 USPQ2d at 1832.

RESPONSIVEADS

In an appeal of a genericness refusal of the RESPONSIVEADS mark for “advertising, marketing, and promotional services relating to structuring, formatting, layout, generation, and distribution of advertising content and creatives material, namely, creative marketing design services and distribution of advertising materials,” the TTAB upheld the refusal to register for genericness. In re Responsiveads, Inc., Ser. No. 88453313 (TTAB Sept. 30, 2022).

The TTAB relied on the Google Ads Help glossary which defined “responsive ads” as advertisements that “automatically adjust their size, appearance, and format to fit available ad spaces.”

As to the relevant public's understanding of the term “responsive ads,” the TTAB cited the numerous uses of “responsive ad(s)” in the record.

            RESPONSIVEADS is generic if ordinary consumers and businesses understand the term RESPONSIVEADS to refer to a genus, or category, of services when the term is used in connection with Applicant's Services.

***

            Competitors in the marketing and advertising field use the term “responsive” to describe a key feature of their own services that cause advertisements to respond, or adjust, quickly to the unique formats or layouts of the screens on which the advertisements are displayed. For example, Marin Software, Bannersnack, Firestride Media, Homendo, Sizmek, Specless, Mashable, Zurb, Eleven Brand Studio, WordPress, and Amazon all offer “responsive ads” in which sensitivity and swift responsiveness to various screen dimensions are the key aspects of the services. Use by competitors in the field — and here, what appears to be use as a term of art by competitors in the field — is strong evidence of genericness. See, e.g., Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1048 (Fed. Cir. 2018) (“zero” used by competitors generally for soft drinks, sport drinks, and energy drinks with zero or near zero calories); BellSouth Corp. v. DataNational Corp., 60 F.3d 1565, 35 USPQ2d 1554, 1558 (Fed. Cir. 1995) (“Walking Fingers” logo, used by many competing telephone companies and directory publishers, found informational for Yellow Pages); In re Thunderbird Prods., 406 F.2d 1389, 160 USPQ 730, 732 (CCPA 1969) (“cathedral hull” used generally and by at least one competitor to describe specific type of boat hull). Cf. In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1144 (Fed. Cir. 1987) (genericness refusal of CASH MANAGEMENT ACCOUNT reversed where evidence “showed recognition in a substantial number of publications” that appellant was the source of the CASH MANAGEMENT ACCOUNT).

In response to the argument that the Responsiveads' services are broader than this particular “responsive” advertising outcome, and “responsive ad” is not the exclusive industry term for this particular product; the TTAB noted that if the proposed mark is generic for any one of the services in the identification, then registration is appropriately refused for that entire class of services, citing In re Katch, 2019 USPQ2d 233842, at *10.

There Can Be More Than One Generic Term for a Genus

In addition, there can be more than one generic term for a particular genus of goods or services. See In re Empire Tech. Dev. LLC, 123 USPQ2d 1544, 1551 (TTAB 2017) (“It is well established that the availability of other words for competitors to use does not, by itself, transform a generic term into capable matter.”); In re Trek 2000 Int'l Ltd., 97 USPQ2d 1106, 1109 (TTAB 2010).

Any term that the relevant public understands to be referring to the genus is generic. See In re 1800Mattress.com, IP, LLC, 586 F.3d 1359, 1364 (Fed. Cir. 2009) (“We … disagree with Dial- A- Mattress's assertion that there can only be one generic term, which is ‘online mattress stores.' Instead, any term that the relevant public understands to refer to the genus of ‘online retail store services in the field of mattresses, beds, and bedding' is generic.”); Roselux Chem. Co. v. Parsons Ammonia Co., 299 F.2d 855, 132 USPQ 627, 632 (CCPA 1962) (“[I]n considering whether ‘sudsy ammonia' is a common descriptive name of the product we cannot fail to take into consideration the class of people who will commonly be using it and what they will commonly call it.”); Clairol, Inc. v. Roux Distrib. Co., 280 F.2d 863, 126 USPQ 397, 398 (CCPA 1960) (“The same merchandise may, and often does, have more than one generic name.”).

Accordingly, the TTAB affirmed the refusal to register the applied-for RESPONSIVEADS mark on the ground of genericness.

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