“Generic terms are common names that the relevant purchasing public understands primarily as describing the genus of goods or services being sold.” In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1344 (Fed. Cir. 2001) (citations omitted). Generic terms are incapable of indicating a particular source of the goods or services, and cannot be registered as trademarks. USPTO v. Booking.com B.V., 591 U.S. 549, 551 (2020) (“Booking.com”).
The genericness inquiry follows a two-part test: “First, what is the genus of goods or services at issue? Second, is the term sought to be registered … understood by the relevant public primarily to refer to that genus of goods or services?” H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed. Cir. 1986); see also Princeton Vanguard, LLC v. Frito-Lay North Am., Inc., 786 F.3d 960, 966 (Fed. Cir. 2015) (“[T]here is only one legal standard for genericness: the two-part test set forth in Marvin Ginn[.]”).
A term is generic if the term refers to a subcategory of the claimed genus of services or a key aspect of them; there is no requirement that the term refer to the entire genus. In re Cordua Rests., Inc., 823 F.3d 594, 605 (Fed. Cir. 2016) (“[T]he term ‘pizzeria' would be generic for restaurant services, even though the public understands the term to refer to a particular sub-group or type of restaurant rather than to all restaurants.”); In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1361, 1364 (Fed. Cir. 2009) (affirming that “mattress” is generic for online retail store services featuring mattresses and related goods); In re Twenty-Two Desserts, LLC, No. 86586833, 2019 TTAB LEXIS 269, at *4 (“Any term that the relevant public uses or understands to refer to the genus of goods, or a key aspect or subcategory of the genus, is generic.”). A trademark application's description of services often adequately defines the genus. In re Nordic Naturals, Inc., 755 F.3d 1340, 1343 (Fed. Cir. 2014) (the relevant goods were adequately defined by “nutritional supplements containing DHA”).
Whether a term is generic “turns on whether that term, taken as a whole, signifies to consumers the class of … services.” Booking.com, 591 U.S. at 557. See also In re Steelbuilding.com, 415 F.3d 1293, 1297 (Fed. Cir. 2005) (“An inquiry into the public's understanding of a mark requires consideration of the mark as a whole.”). This often begins with dictionary definitions. See Stratus Networks, Inc. v. UBTA-UBET Commc'ns Inc., 955 F.3d 994, 996 (Fed. Cir. 2020) (“The Board relied on dictionary definitions of the terms ‘stratus' and ‘strata' to evaluate similarities in the connotation of each mark.”).
The TTAB recently found the TARGETED DELIVERY mark for "Providing temporary use of on-line non-downloadable software tools for implementing a production and delivery timeline for direct mail campaigns with enhanced scheduling and pricing options to ensure delivery to household mailboxes nationwide within a three-day time window" to be generic for the services, and affirmed a refusal to register on the Supplemental Register. In re Data Network Marketing, Inc., Serial No. 97817090 (TTAB Feb. 27, 2026).
Applicant argued that the term "is almost exclusively used in conjunction with targeting specified individuals or audiences to receive direct mail," not targeting a specific date range.
We begin with common sense. Consider a direct mail campaign aimed at voters in an election. Surely, the date-range of the deliveries of such mail are important, perhaps just as important as “targeting specified individuals or audiences.” If the election is on date X, it would be of little value to deliver mail promoting a particular candidate or issue days or weeks after the election. Or consider a direct mail advertising campaign for a President's Day sale. Surely it is important that such mail be delivered prior to the President's Day holiday, that is before the sale ends. It simply makes no sense to structure these common types of direct mail campaigns without targeting a date-range for delivery of the mail. Applicant's arguments to the contrary are not credible.* * *There is nothing distinctive about calling your service what it is, and that is exactly what Applicant has done here. Indeed, even if Applicant were the first business to use the “targeted delivery” phrase for? such services, that would not mean the phrase is distinctive. See, e.g., In re Fat Boys Water Sports LLC, No. 86490930, 2016 TTAB LEXIS 150, *10 (noting that even the first user of a merely descriptive term or phrase does not avoid a Section 2(e)(1) refusal).
The TTAB further noted that other direct mail business also used date ranges as part of the targeting of the direct mail, and that timing is a key target for many direct marketing campaigns.
While the evidence of record shows that one meaning of “targeted delivery” is “targeting individuals or audiences to receive direct mail,” this fact does not undermine the refusal because terms often have multiple meanings.
The TTAB concluded that consumers who know that a company provides targeted delivery based on a date range (i.e., the relevant genus for our analysis), will understand the applied-for TARGETED DELIVERY mark to refer to that genus.
In a comment on TTABlog about the focus of the TTAB analysis on whether the relevant purchasing public understands the mark as “primarily” describing the genus of goods or services being sold, Tom McCarthy wrote:
The Board seems determined to blur the category of descriptive or generic as much as possible so as to put more terms in the “generic name” category. In three different places, the Lanham Act states that the test is whether the term is a “generic name.” The Supreme Court in Booking.com followed the statute: “A generic name—the name of a class of products or services—is ineligible for federal trademark registration.” What law is the T.T.A.B. following?
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