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July 2020

Supreme Court Rules "Generic.com" Trademarks Eligible for Federal Registration

On June 30, 2020, the United States Supreme Court rejected a per se rule that marks consisting of a generic word in combination with a domain name (e.g., “.com”) are automatically generic and ruled that a mark consisting of a generic word combined with “.com” may be entitled to federal trademark registration if consumers perceive the mark as non-generic.

The United States Patent and Trademark Office (“USPTO”) refused to register the mark BOOKING.COM on the ground that a generic term combined with a generic top-level domain name such as “.com” is automatically generic as a whole and thus unregistrable. That ruling was ultimately overturned on appeal and made its way to the Supreme Court.

By way of background, generic marks are simply the name of the products or services they are used in connection with (e.g., RESTAURANT brand restaurants) and are never protectable or eligible for registration. Similarly, descriptive marks convey an immediate idea of a characteristic of the goods or services they are used in connection with. However, descriptive marks, unlike generic marks, can be eligible for registration provided they have acquired secondary meaning – i.e., a showing that consumers associate the mark with a single specific source.

The Supreme Court found that the mark BOOKING.COM is descriptive, but not generic. The Court noted that “[w]hether any ‘generic.com’ term is generic . . . depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.” In this case, evidence, including a consumer survey, demonstrated that consumers perceive BOOKING.COM as a brand and as referring to a specific travel arrangement company rather than all travel arrangement companies or services generally. Justice Ginsberg further noted that “only one entity can occupy a particular Internet domain name at a time,” and that, as such, consumers can understand that a generic.com term refers to a specific website and specific source.

The opinion notes the limits on descriptive marks such as BOOKING.COM – rights in descriptive trademarks are much narrower and weaker than rights in inherently distinctive marks. Indeed, Booking.com acknowledged that its BOOKING.COM mark was relatively weak. However, the fact that a mark is weak does not automatically mean it is not entitled to registration or protection.

Going forward, this decision will make it easier for trademark owners to register their marks styled as domain names, even if the mark combines a generic word with a top level domain extension such as “.com”. However, in order to obtain registration, mark owners need to be able to sufficiently demonstrate that consumers perceive their generic.com marks as a specific brand or identifying a specific source.

If you have questions about how this decision may affect you, please contact your CSG attorney or one of the authors below.

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