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“Generic.com” Can be Eligible for Federal Trademark Registration

By Procopio Senior Associate Rosie Kim

In a significant ruling for trademark owners, the U.S. Supreme Court rejected the United States Patent and Trademark Office’s (USPTO) urging of a nearly per se rule that a generic term combined with “.com” or another generic top-level domain is generic. In doing so, the Court held that a mark consisting of a generic term combined with “.com” is a generic name for a class of goods or services only if the term has that meaning to consumers.” United States Patent and Trademark Office v. Booking.com B.V., No. 19-46 (June 30, 2020).

Eligibility for Protection

A mark is only eligible for protection under the Trademark Act if it can act as a source identifier, meaning that it is capable of allowing consumers to distinguish the goods or services offered under the mark from goods or services of others. Generic marks are incapable of acting as source identifiers and are thus ineligible for registration. Marks that are descriptive of their corresponding goods or services may be registered upon a showing of acquired distinctiveness.

Background

Booking.com B.V. provides hotel reservation and related services under the mark “Booking.com,” and filed service mark applications for different versions of the mark. The USPTO Examining Attorney and Trademark Trial and Appeal Board found “Booking.com” to be generic and unregistrable for Booking.com B.V.’s services.  Upon review, the U.S. District Court for the Eastern District of Virginia determined “Booking.com” is not generic of Booking.com B.V.’s services, but rather descriptive. Finding that the term acquired secondary meaning, the District Court concluded the marks were eligible for registration.  The USPTO appealed the determination that “Booking.com” is not generic and argued that the combination of a generic term and “.com” is necessarily generic. The Court of Appeals for the Fourth Circuit affirmed the District Court’s judgment, and the USPTO appealed to the U.S. Supreme Court.

U.S. Supreme Court Opinion

Justice Ginsburg, writing for an 8-1 majority, started by noting three general principles: (1) generic terms designate a class of goods or services rather than a particular feature or exemplification of the class; (2) the distinctiveness inquiry for a compound term trains on the term’s meaning as a whole; and (3) the meaning of a term to consumers is the relevant meaning. Thus, whether “Booking.com” is generic depends on whether that term, taken as a whole, signifies to consumers the class of online hotel reservation services. In an example provided by the Court, if “Booking.com” were generic, we may “expect that a consumer, searching for a trusted source of online hotel-reservation services, could ask a frequent traveler to name her favorite “Booking.com” provider.” The courts below determined consumers do not perceive the term “Booking.com” that way.

The USPTO argued that a consumer-perception inquiry was unnecessary, which the majority interpreted as a “nearly per se rule” that every “generic.com” term is generic. In an 1888 Supreme Court case predating the Trademark Act, the Court concluded the addition of the word “Company” supplied no protectable meaning as it merely indicates the parties formed an association or partnership. Goodyear’s India Rubber Glove Mfg. Co. v. Rubber Co., 128 U.S. 598 (1888). The USPTO argued that adding “.com” to a generic term is like adding “Company” to a generic term, and conveys no additional meaning to the generic term that would distinguish services from one entity from those provided by others. The Court was not persuaded and noted a domain name can only be occupied by one entity at a time, and consumers can infer that “Booking.com” refers to a specific entity.

The USPTO also argued that trademark protection for “Booking.com” could exclude or inhibit competitors. The Court noted that this concern applies to any descriptive mark, and pointed to the doctrines of fair use and likelihood of confusion as guarding against such anticompetitive effects.  While “booking.com” may be registrable, registration would not prevent competitors from using the term “booking” to describe their own services, and even Booking.com B.V. acknowledges that a likelihood of confusion will be difficult to establish, even against close variations.

If you are considering filing a trademark application for a domain name, it is important to understand what it signifies to consumers, and what  benefits a registration may provide.  Contact us and we can assist you with the process of preparing an appropriate trademark application and ensuring that the USPTO follows this new Supreme Court holding that allows registration of certain “generic.com” marks.

 

Rosie Kim is a Senior Associate whose practice focuses on all areas of intellectual property law. She prepares and prosecutes domestic and international patent applications across numerous technologies, including medical devices, consumer devices, image recognition technologies, ophthalmic formulations and devices, and pharmaceuticals. Beyond patent prosecution, she prepares, prosecutes and enforces trademark portfolios, and represents clients in enforcing their intellectual property rights before the U.S. Patent and Trademark Office Trial and Appeal Board. Rosie regularly works with associates throughout the world to obtain intellectual property protection for clients internationally, and handles transactional matters such as negotiating and drafting agreements.