Jul 1, 2020Legal
A Mark Styled "Generic.Com" May Be Trademark Eligible

Before the Supreme Court of the United States. On Writ of Certiorari from the United States Court of Appeals for the Fourth Circuit.

Summary: A term styled "generic.com" is not necessarily generic and can be eligible for federal trademark protection if consumers view the mark as distinguishing the source of the goods.

Booking.com sought to register the mark "Booking.com." The USPTO refused registration, concluding that "Booking.com" is a generic name for online hotel-reservation services. The Board affirmed the examining attorney’s refusal to register, concluding that "Booking" means making travel reservations and ".com" signifies a commercial website such that customers would understand the term "Booking.com" primarily to refer to an online reservation service for travel.

Booking.com sought review in the U.S. District Court for the Eastern District of Virginia. The District Court concluded that "Booking.com" is not generic, based on evidence of consumer perception provided by Booking.com. The USPTO appealed the District Court's determination that "Booking.com" is not generic to the Court of Appeals for the Fourth Circuit. The Fourth Circuit affirmed the District Court's ruling that the mark is not generic.

The Supreme Court granted certiorari and affirmed, holding that whether a term styled “generic.om” is generic depends on whether consumers in fact perceive that term as a name of a class or capable of distinguishing among members of the class.  The USPTO argued that adding a top-level domain name, like ".com," is similar to adding a generic corporate designation like "Company." In Goodyear's India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, the Supreme Court held that adding "Company" to a generic term did not confer trademark eligibility because Company only indicated the parties formed an association.  The Supreme Court disagreed with the USPTO, holding that ".com," unlike a company designation, may convey to consumers a source-identifying characteristic, an association with a particular website. The USPTO further argued a categorical rule against registration of "generic.com" terms was needed for policy reasons, to avoid giving mark owners undue control over similar language. However, the Supreme Court held this policy concern was true of any descriptive mark, noting there are doctrines in place against anticompetitive effects. Because the lower court found that "Booking.com" is not a generic name to consumers, the Supreme Court affirmed.

Justice Breyer dissented, noting that the mark "Booking.com" does no more than inform the consumer of the basic nature of its business and is thus generic. Justice Breyer further noted that the decision will lead to a proliferation of "generic.com" marks, which would inhibit free competition in online commerce.

Editor: Paul Stewart

Written by: Lindsay Laddaran & Kendall Loebakka

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