Decisions · 86301765
In re Katch, LLC
Serial No. 86301765 · Decided 2019-06-20 · Other
What happened
The USPTO’s refusal of HEALTHPLANS.COM for health insurance lead-generation and advertising services (Class 35) was upheld because the Board found that consumers would recognize the term as simply the name for a website where you shop for health insurance plans — too generic to function as a brand — but the Board overturned the same refusal for the associated advertising-management software services (Class 42) because that software helps insurers track and bill for advertising and does not itself provide health plans, so the term is not generic in that narrower technical context; the refusal to put the mark on the main trademark register (the Principal Register) was also upheld for both classes because the applicant never argued against it on appeal.
The marks
Applicant
HEALTHPLANS.COM
Advertising services, insurance lead collection and matching, demand creation and lead generation to health insurers (Class 35); Providing temporary use of on-line non-downloadable software for tracking, administration, billing, and reporting of advertising via an on-line communications network (Class 42)
Why this decision is significant
Precedential decision establishing that a .com domain name combining a generic health insurance term with .com is unregistrable for services whose genus the term names, but not necessarily generic for ancillary software services directed at industry purchasers. The split outcome and the distinction between consumer-facing and business-facing services in the same health insurance context makes this a useful precedent for .com domain name applications in regulated industries.
Research significance is Trademark Valet's editorial rating of how useful a decision is to practitioners. It is not a statement of precedential weight — that is the separate Precedential field, which comes from the Board.
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The original record
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