Precedential No. 15: HEALTHPLANS.COM Generic For Health Insurance Advertising Services, Not For Online Software For Tracking Advertising

In an enervating 22-page opinion, the Board rendered a split decision in this appeal from a genericness refusal of the service mark HEALTHPLANS.COM (in standard character form), for advertising services in the field of medical and life insurance (class 35) and online software services for tracking, administration, billing, and reporting of advertising (class 42). The Board affirmed the class 35 refusal under Section 23(c) but reversed the class 42 refusal. In re Katch, LLC, Serial No. 86301765 (June 20, 2019) [precedential] (Opinion by Judge Peter W. Cataldo).

Applicant Katch sought registration on the Supplemental Register. The Board observed that "[i]n order to qualify for registration on the Supplemental Register, a proposed mark 'must be capable of distinguishing the applicant's goods or services."' In re Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1089 (TTAB 2017) (quoting 15 U.S.C. § 1091(c)). Generic terms do not qualify for such registration because "by definition [they] are incapable of indicating a unique source." In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1267 (Fed. Cir. 2015).

In Marvin Ginn, the CAFC formulated a two-step inquiry to determine whether a term is generic: First, what is the genus (category or class) 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? , The relevant public's perception is the chief consideration in determining whether a term is generic. See Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1833 (Fed. Cir. 2015). "[A] term can be generic for a genus of goods or services if the relevant public ... understands the term to refer to a key aspect of that genus." Royal Crown, 127 USPQ2d at 1046 (quoting Cordua, 118 USPQ2d at 1637).

As to the first step of the Marvin Ginn test, the genus may be defined by the services identified in the application. See Reed Elsevier, 82 USPQ2d at 1380; 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).

Class 35: For the class 35 services, the application, and thus the genus, includes "Insurance lead collection and matching services, namely, matching consumer requests for insurance policy quotes collected over the Internet to pre-qualified insurance...

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