Trademark law distinguishes four gradations of distinctiveness of marks, in
descending order of strength: fanciful or arbitrary, suggestive, descriptive, and
generic.

An arbitrary or fanciful mark bears no logical relationship to the product
or service it is used to represent. Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178,
1184 (5th Cir. 1980) (giving example of “Kodak”).

A suggestive mark refers to
some characteristic of the goods, but requires a leap of the imagination to get from
the mark to the product. Id. (giving example of “Penguin” for refrigerators).

A descriptive mark identifies a characteristic or quality of the service or product. Id.
at 1183-84 (giving example of “Vision Center” for eyeglasses store).

There are several different approaches to defining “generic.” By one test, a
generic name refers to “a particular genus or class of which an individual article or
service is but a member.” Soweco, 617 F.2d at 1183 (internal quotation marks
omitted). By another measure, a generic name is the term by which the product or
service itself is commonly known. See Nat’l Conference of Bar Exam’rs v.
Multistate Legal Studies, 692 F.2d 478, 487 (7th Cir. 1982). Still other courts say
a generic name depicts the product or service as a whole, rather than any particular
feature, quality, or characteristic of the whole. Blinded Veterans Ass’n v. Blinded
Am. Veterans Found., 872 F.2d 1035, 1039 (D.C. Cir. 1989) (citing Zatarains, Inc.
v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 790 (5th Cir. 1983)). Genericness
lies not in the term itself, but in the use of the term: “A word may be generic of
some things and not of others: ‘ivory’ is generic of elephant tusks but arbitrary as
applied to soap.” Soweco, 617 F.2d at 1183.

A generic use of a word may not be registered as a trademark. Park ‘N Fly,
Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194 (1985). A descriptive name, on
the other hand, though not inherently distinctive, can acquire distinctiveness or
“secondary meaning” by becoming associated with the proprietor’s product or
service. Am. Television & Communications Corp. v. Am. Communications &
Television, Inc., 810 F.2d 1546, 1548-49 (11th Cir. 1987). A name has acquired
secondary meaning when “the primary significance of the term in the minds of the
[consuming] public is not the product but the producer.” Id. at 1549 (quoting
Vision Ctr. v. Opticks, Inc., 596 F.2d 111, 118 (5th Cir. 1979) (quoting Kellogg
Co. v. Nat’l Biscuit Co., 305 U.S. 111, 118 (1938))). A proprietor can make a
prima facie showing of “secondary meaning” by showing that the name has been
used in connection with the proprietor’s goods or service continuously and
substantially exclusively for five years. 15 U.S.C. § 1052(f). Whether a name has
attained secondary meaning depends on the length and nature of the name’s use,
the nature and extent of advertising and promotion of the name, the efforts of the
proprietor to promote a conscious connection between the name and the business,
and the degree of actual recognition by the public that the name designates the
proprietor’s product or service. Conagra, Inc. v. Singleton, 743 F.2d 1508, 1513
(11th Cir. 1984).

Courts have generally held that a term used generically cannot be
appropriated from the public domain; therefore, even if the name becomes in some
degree associated with the source, a generic mark cannot achieve true secondary
meaning. See Soweco, 617 F.2d at 1185 n.20 (secondary meaning not relevant to
generic mark); Vision Ctr. v. Opticks, Inc., 596 F.2d 111, 115 & n. 11 (5th Cir.
1979) (“Most courts hold that a generic term is incapable of achieving trade name
protection”; courts refuse to allow proof of secondary meaning to elevate generic
term to trademark status); see also Schwan’s IP, LLC v. Kraft Pizza Co., 460 F.3d
971, 974 (8th Cir. 2006); Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d
786, 790-91 (5th Cir. 1983); Nat’l Conference of Bar Exam’rs, 692 F.2d at 487; 2
J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 15:24
(4th ed. 2007). But see Am. Heritage Life Ins. Co. v. Heritage Life Ins. Co., 494
F.2d 3, 11 (5th Cir. 1974) (generic name will be protected if it acquires secondary
meaning).

additionally:
but by definition a trademark has to be distinctive in its class to be capable of being registered.

The decision and my post contained the price the domain was purchased for:

“”The Respondent acquired the disputed domain name on February 24, 2010 from an aftermarket service for the amount of $4,074″

But overall I do not think being offshore was the main issue. I think the panelist truly felt that it was a completive term in a very competitive industry where lots of insurance companies would love to get their hands on a domain like this. And we are all familiar how thousands of websites use the phrase “first quote” to get you to sign up. So… IMO that was the deciding factor.

domains.com or domainnames.com would be example of generic names in the domain space

-fanciful or arbitrary – Flikr
-suggestive – Internatational Business Machines (IBM)
-descriptive – Internatational Business Machines (IBM) ?
-generic – Go Daddy is generic. Anything to do with domains can’t use the name, “Go Daddy. ” Or Amazon. Anything to do with books can’t use, “Amazon” – are those good examples?

Is IBM suggestive or descriptive?

The above quote is the crux of the decision. Weak mark, valid explanation regarding registration and use and no presumption of prior knowledge due to location of the respondent. If the respondent had defaulted complainant would have won. If the respondent had been from the US it would have been a very close call and I can think of 20 or so other panelists who would have granted the complaint. Respondent took a risk with a single panel.