IP Law Daily, TRADEMARK—TTAB: COOKIEBOT mark was generic for internet cookie management software, (May 15, 2023)

By Kevin M. Finson, J.D.

The mak COOKIEBOT would likely be seen by consumers as referring to the genus of software services for managing internet cookies.

A Trademark Examining Attorney properly found that the proposed mark COOKIEBOT was unregistrable because it was generic for the applicant’s services—software as a service for monitoring and managing data collection and Internet usage, user and permissions management regarding website access, data collection and Internet usage tracking—the Trademark Trial and Appeal Board has held, in affirming the refusal to register. The Board also affirmed the alternative refusal to register on the ground that the mark was merely descriptive and lacked sufficient proof of acquired distinctiveness (In re: Cybot A/S, May 9, 2023, Cataldo, P.).

Cybot A/S (Cybot) sought registration on the Principal Register for the standard character mark COOKIEBOT for use with “Software as a service (SAAS) services featuring software for monitoring and managing data collection and Internet usage tracking” and related services in International Class 42. The Examining Attorney refused registration on the ground that the applied for mark was generic, or in the alternative that it was merely descriptive and lacked a showing of acquired distinctiveness. Cybot appealed.

Genericness. The Board first determined that the identification of services adequately defined the genus of services at issue and the relevant consumers was website owners and those who visit websites.

The Examining Attorney presented numerous examples of use of the word “cookiebot” as an informal term in the website industry for an automated program which managed the use of “cookies” placed by websites on visitors’ computers for marketing or other purposes. The applicant asserted that its proposed mark “is routinely described in conjunction with the generic terms ‘CMP’ or ‘Consent Management Platform.’” According to the applicant, consent management platform or CMP is the generic term for its services, rather than its proposed mark.

The Board was not persuaded by the applicant’s argument, noting that there can be more than one generic term for a genus of goods or services. “In other words, there is nothing preventing the purchasing public from perceiving both COOKIEBOT and Consent Management Platform or CMP as a generic term for the genus of Applicant’s services,” the Board said.

Based upon the evidence, the Board found that COOKIE may be defined as a file stored on the local computer of an Internet user containing information used by the website to record, track and collect data regarding the user’s browsing habits. The Board also found that BOT may be defined as a computer program that automates mundane tasks, even when the user is not logged in, acting as an agent for a user or program and may simulate human activity. “Combined together, COOKIEBOT may be defined as a computer program that automates various activities related to the collection, monitoring and management of data concerning Internet usage by an individual,” the Board said.

The Board concluded that the relevant public would see the term COOKIEBOT as describing the genus of the identified services—software as a service for monitoring and managing data collection and Internet usage, user and permissions management regarding website access, data collection and Internet usage tracking—and not as a source indicator. The refusal to register was affirmed.

Descriptiveness. For the same reasons it found the mark to be generic, the Board held that the mark was highly descriptive. Cybot offered evidence of use since 2015, but did not address any of the other acquired distinctiveness factors. The Board ruled that Cybot did not meet its burden of showing acquired distinctiveness and also affirmed the alternative refusal to register on this ground.

The Case is Serial No. 90044987.

Attorneys: Nathan C. Lovette (Tucker Ellis LLP) for Cybot A/S. Kim Teresa Moninghoff for the USPTO.

Companies: Cybot A/S

Cases: Trademark USPTO