The Supreme Court Rejects Rule Barring Federal Registration of “Generic.com” Trademarks

James GriffithCase Studies

Registration-of-“Generic.com”-Trademarks

For many years, the Trademark Office has refused registration to marks consisting of a generic word combined with a top-level domain, such as “.com,” on the grounds that the combination of two generic elements cannot create a protectable mark.  The rationale for this nearly per se rule was that such marks could not be protected any more than the combination of a generic word with another generic suffix, such as “Inc.” or “Corp.”  

BACKGROUND

Booking.com, the internet travel company, applied for four trademarks in connection with its online booking and travel services.  A USPTO examining attorney, as well as the PTO’s Trademark Trial and Appeal Board, concluded that “Booking.com” was a generic term, and therefore did not qualify for registration.  Alternatively, the Board ruled that even if “Booking.com” were descriptive, and not generic, then the term would still be unregisterable because it lacks secondary meaning.

On review, the U.S. District Court for the Eastern District of Virginia found that the term “Booking.com” was not generic because the consuming public does not primarily recognize the term as referring to a “genus” of services, the well-established test for determining genericness.  Instead, the evidence showed that the consuming public views “Booking.com” as “descriptive of services involving ‘booking’ at that domain name.”  

On appeal, the Fourth Circuit agreed with the district court’s conclusion that the combination of a generic word with “.com” is not necessarily generic.  The Supreme Court granted certiorari. 

In affirming the ruling of the Fourth Circuit, the Supreme Court utilized foundational principles of trademark law to reject the nearly per se bar advanced by the Trademark Office.  Specifically, the court stated that whether a term is generic is ultimately a factual inquiry grounded in consumer perception.  Even if a word and a top level domain are properly considered generic separately, whether the resulting combination is generic must be taken on a case-by-case basis.  

Additionally, the animating principle behind not permitting a monopoly on generic words – – to permit competitors to freely use terms needed to compete with one another – – is inapplicable in the case of domain names, which by definition, can only point to a single internet address.  Because the Trademark Office did not appeal the ruling that “Booking.com” is associated by consumers with the applicant, the term could not be deemed generic and the Trademark Office’s nearly per se rule barring registration of “generic.com” trademarks could not stand. 

THE LESSON

By relying on core principles rather than permitting agency reliance on per se rules, the Supreme Court has opened the door for a new class of registered trademarks.  The immediate implication is that owners of “generic.com” domain names will see an immediate benefit, as those names are now at least capable of achieving federal trademark protection with all of its attendant benefits.  That capacity immediately enhances the value in such domain names.  

Granted, not ALL such names will be capable of registration, certainly not immediately.  The owner of the name still must show use of the domain name as a trademark in commerce and demonstrate through evidence that consumers have come to associate the term with a particular source and not as merely the kind of product or service being offered.  However, the per se bar no longer exists.  

A word of caution might also be in order.  While the recent ruling indicates that “generic.com” domain names CAN function as trademarks, the ability to establish such rights in a given circumstance is highly fact intensive.  To ultimately prove such rights, a domain name holder likely would need to invest significant resources in establishing the name as a trademark in the minds of consumers sufficient to establish secondary meaning.  This is not a light (or inexpensive) undertaking.  Nothing in the recent decision changes the age-old advice from trademark lawyers that the strongest, most robust trademarks tend to be fanciful or arbitrary marks with a high level of inherent distinctiveness.  

Article by James Griffith and Ashley Pendleton

James Griffith

James Griffith

James Griffith is the Head of Ziliak Law’s Entertainment and Media Practice.For 20 years, Jim has offered practical, strategic legal advice to clients in a wide variety of industries and markets, including both Fortune 500 corporations and emerging start-ups.Read more
James Griffith