A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used. See USPTO v. Booking.com B.V., 591 U.S. 549, 556-57 (2020); Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 965 (Fed. Cir. 2015) (quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90 (Fed. Cir. 1986)). A two-part inquiry is used to determine whether a designation is generic:

1. (1) What is the genus of goods or services at issue?
2. (2) Does the relevant public understand the designation primarily to refer to that genus of goods or services?

See Bullshine Distillery LLC v. Sazerac Brands, LLC, 130 F.4th 1025, 1030 (Fed. Cir. 2025) (quoting Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d at 966); In re Cordua Rests., Inc., 823 F.3d 594, 599 (Fed. Cir. 2016) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d at 990). This inquiry is concerned with the relevant public’s perception "contemporaneous with the time of registration." Bullshine Distillery LLC v. Sazerac Brands, LLC, 130 F.4th at 1030. See TMEP §1202.05(b) regarding the two-step inquiry for determining whether a color mark is generic.

It is not necessary to show that the relevant public uses the term to refer to the genus. The correct inquiry is whether the relevant public would understand the term to be generic. In re 1800Mattress.com IP LLC, 586 F.3d 1359, 1364 (Fed. Cir. 2009).

The genus of the goods or services may be defined by an applicant’s identification of goods or services. See In re Cordua Rests., Inc., 823 F.3d at 602 (quoting Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 640 (Fed. Cir. 1991). The USPTO is not compelled to accept an applicant’s proposed genus description. In re PT Medisafe Techs., 134 F.4th 1368, 1376 (Fed. Cir. 2025). The relevant public for a genericness determination refers to the purchasing or consuming public for the identified goods or services. Loglan Inst., Inc. v. Logical Language Grp., Inc., 962 F.2d 1038, 1041 (Fed. Cir. 1992) (quoting Magic Wand Inc. v. RDB Inc., 940 F.2d at 641); Int’l Dairy Foods Ass’n v. Interprofession Du Gruyere, 2020 USPQ2d 10892, at *12 (TTAB 2020); Milwaukee Elec. Tool Corp. v. Freud Am., Inc., Can. No. 92059634, 2019 TTAB LEXIS 384, at *20 (2019).

The examining attorney must establish a prima facie case that a term is generic. In re PT Medisafe Techs., 134 F.4th at 1373. A prima facie case is established by providing a reasonable predicate (or basis) that the relevant purchasing public would primarily use or understand the matter sought to be registered to refer to the genus of goods or services in question. See id. at 1374. See TMEP §1202.02(b)(i) regarding establishing genericness for product design trade dress and §1202.05(b) for color marks.

Evidence of the relevant public’s understanding of a term may be obtained from any competent source, including dictionary definitions, research databases, Internet websites, newspapers, and other publications. Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1366 (Fed. Cir. 2018) (quoting In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 1570 (Fed. Cir. 1987)); In re Uman Diagnostics AB, Ser. No. 88960633, 2023 TTAB LEXIS 77, at *11-12 (2023); see USPTO v. Booking.com B.V., 591 U.S. at 561 n.6 ("Evidence informing [a genericness] inquiry can include not only consumer surveys, but also dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning."); In re Consumer Prot. Firm PLLC, 2021 USPQ2d 238, at *8-12 (TTAB 2021) (THE CONSUMER PROTECTION FIRM held generic for legal services, where the examining attorney cited examples of webpages of third party consumer protection law firms and three different lawyer search sites where "consumer protection" could be selected as a search term for consumers to find attorneys in that practice area); see also In re Cordua Rests., Inc., 823 F.3d at 594 (finding the evidence of record, which included dictionary excerpts, online magazine articles, and newspaper articles, supported the conclusion that CHURRASCOS is generic for restaurant services); In re Northland Aluminum Prods., Inc., 777 F.2d 1556 (Fed. Cir. 1985) (BUNDT, a term that designates a type of cake, held generic for ring cake mix, where the examining attorney cited cookbooks and food-related news articles); In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d, 871 F.2d 1097 (Fed. Cir. 1989) (ANALOG DEVICES held generic for devices having analog capabilities, where the examining attorney cited dictionaries and Nexis® articles). Applicant’s website and the websites of others are also proper sources of evidence as to the meaning of the proposed mark and the manner in which it is used in relation to the goods or services. In re Reed Elsevier Props. Inc., 482 F.3d 1376 (Fed. Cir. 2007) (finding that, in holding LAWYERS.COM generic for "providing an online interactive database featuring information exchange in the fields of law, legal news and legal services," the Board properly considered applicant’s website and eight other websites containing "lawyer.com" or "lawyers.com" to determine the meaning of applicant’s "information exchange about legal services."). In addition, competitor use is recognized as evidence of genericness. In re Uman Diagnostics AB, 2023 TTAB LEXIS 77, at *21-22 (finding probative the generic uses of "NF-Light" or "NF Light" by competitors as an abbreviation for the neurofilament light subunit); In re Hikari Sales USA, Inc., 2019 USPQ2d 111514, at *2 (TTAB 2019) (finding probative the generic uses of the term "algae wafers" by competitors); Cont’l Airlines, Inc. v. United Air Lines, Inc., 53 USPQ2d 1385, 1395 (TTAB 1999) (use of term "e-ticket" by media and competitors indicates term is generic for electronic tickets); Philip Morris Inc. v. Brown & Williamson Tobacco Corp., 230 USPQ 172, 176 (TTAB 1986) (evidence that competitors have used a particular word as the name of their goods is persuasive evidence of genericness)).

There can be more than one generic term for a particular genus of goods or services. "Any term that the relevant public uses or understands to refer to the genus of goods [or services], or a key aspect or subcategory of the genus, is generic." In re Twenty-Two Desserts, LLC, 2019 USPQ2d 292782, at *2 (TTAB 2019) (citing Royal Crown Co. v. Coca Cola Co., 892 F.3d 1358, 1368 (Fed. Cir. 2018)); see In re Cordua Rests., Inc., 823 F.3d at 604; In re 1800Mattress.com IP, LLC, 586 F.3d at 1364. See TMEP §1209.03(v) regarding generic terms that are a key aspect of goods or services.

The test for genericness is the same whether the mark is a compound term or a phrase, and the examining attorney should include, if available, evidence showing use of the mark as a whole in the record. See Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d at 968 (citing In re Am. Fertility Soc’y, 188 F.3d 1341, 1348-49 (Fed. Cir. 1999)). However, the fact that there is no evidence of third-party use of the precise compound term or phrase is not, by itself, necessarily fatal to a finding of genericness. In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1957 (TTAB 2018). When a term consists of a compound word or a telescoped word, the examining attorney may establish that the term is generic by producing evidence that each of the constituent words is itself generic, and that the separate words retain their generic significance when joined to form the compound or telescoped word that has "a meaning identical to the meaning common usage would ascribe to those words as a compound." In re Gould Paper Corp., 834 F.2d 1017, 1018-19 (Fed. Cir. 1987) (holding SCREENWIPE generic where "screen" and "wipe" were "as generic in the compound as individually, and the compound thus created [was] itself generic"); In re Virtual Indep. Paralegals, LLC, 2019 USPQ2d 111512, at *8 (TTAB 2019) (holding VIRTUAL INDEPENDENT PARALEGALS generic where "virtual paralegal" referred to a paralegal who worked remotely, "independent paralegal" identified a class of paralegals who performed their work without attorney supervision, and combining these terms provided no additional or changed meaning); In re Mecca Grade Growers, LLC, 125 USPQ2d at 1958 (holding MECHANICALLY FLOOR-MALTED generic where "mechanically" meant "of or relating to machinery" and "floor-malted" was the adjectival form of "floor malting," which was an established practice in the brewing and distilling industry that could be performed manually or with machinery; and combining these terms provided no additional or changed meaning); In re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1081 (TTAB 2010) (finding that consumers were likely to perceive the telescoped term NANDRIVE merely as a stylized version of the generic term "nand drive"); In re Wm. B. Coleman Co., 93 USPQ2d 2019, 2021 (TTAB 2010) (finding that ELECTRIC CANDLE COMPANY is the combination of two generic terms joined to create a compound).

However, the U.S. Court of Appeals for the Federal Circuit has expressly limited the holding in Gould to "compound terms formed by the union of words" where the public understands the individual terms to be generic for a genus of goods or services, and the joining of the individual terms into one compound word lends "no additional meaning to the term." In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1345 (Fed. Cir. 2001) (citing In re Am. Fertility Soc'y, 188 F.3d at 1348-49). Thus, in In re American Fertility Society, the court held that evidence that the components "Society" and "Reproductive Medicine" were generic was not enough to establish that the composite phrase SOCIETY FOR REPRODUCTIVE MEDICINE was generic for association services in the field of reproductive medicine because, unlike in Gould, the evidence did not establish that the public would perceive "the mark as a whole" to be no less generic than its constituents. In re Am. Fertility Soc’y, 188 F.3d at 1348; see also Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d at 968. In In re Wm. B. Coleman Co., however, the Board stated that In re American Fertility Society cannot be read to suggest that an applicant can create a trademark merely by adding a clearly generic term to a non-source-identifying word, even without proof that others have used the composite. In re Wm. B. Coleman Co., 93 USPQ2d at 2025; accord Princeton Vanguard , LLC v. Frito-Lay N. Am., Inc., 786 F.3d at 968 ("[T]he Board must then consider available record evidence of the public’s understanding of whether joining those individual words into one lends additional meaning to the mark as a whole." (emphasis added)).

In In re Dial-A-Mattress Operating Corp., the court found that 1-888-M-A-T-R-E-S-S was not generic as applied to "telephone shop-at-home retail services in the field of mattresses," because there was no evidence of record that the public understood the term to refer to shop-at-home telephone mattress retailers. Therefore, to establish that a mnemonic telephone number is generic, the examining attorney must show that the relevant public would understand the mark as a whole to have generic significance.

With respect to Internet domain names, as with other marks, even if the evidence shows that the individual components that make up the proposed mark are generic, one must determine whether the evidence shows that the composite is itself generic or is instead merely descriptive and thus capable of indicating source. See USPTO v. Booking.com B.V., 591 U.S. at 549. However, "[a] compound of generic elements is [also] generic if the combination yields no additional meaning to consumers capable of distinguishing the goods or services." Id. at 560. See also TMEP §1209.03(m) and §1215.05 regarding domain names comprising generic matter.