On June 30, 2020, the US Supreme Court held that a “generic.com” mark (a generic term in combination with “.com”) could be eligible for federal trademark registration, refusing to adopt the US Patent and Trademark Office’s proposed categorical rule denying registration to almost all marks combining a generic term with a top-level domain. Justice Ginsburg authored the Court’s opinion, forming an 8-1 majority. Justice Breyer authored a dissent closely following the principles of the nineteenth century Goodyear case and emphasizing the anticompetitive consequences of permitting registration of “generic.com” marks. This decision will be beneficial for businesses utilizing a “.com” mark, but establishing secondary meaning may be more difficult for smaller businesses.
In keeping with the theme of the impact of the Internet, Booking.com was the first live, remote oral argument at the Supreme Court.
Background on US Patent and Trademark Office v. Booking.com B.V.
In 2011-2012, online travel service Booking.com filed four trademark applications for the use of BOOKING.COM. The USPTO denied the applications as not protectable for two reasons: 1) BOOKING.COM is generic as applied to the services for which Booking.com sought registration and 2) alternatively, the marks are “descriptive” and Booking.com failed to establish secondary meaning. The Trademark Trial and Appeal Board (TTAB) affirmed the decision, holding that BOOKING.COM is a generic term for these types of services.
In 2017, Booking.com appealed to the US District Court for the Eastern District of Virginia, which held that while “booking” is generic for these types of services, BOOKING.COM is a descriptive mark. The District Court further held that Booking.com demonstrated the mark had acquired secondary meaning, pointing to Booking.com’s Teflon survey, which demonstrated that 74.8% of respondents identified BOOKING.COM as a brand name. The US Court of Appeals for the Fourth Circuit affirmed the District Court’s decision that the mark was protectable.
The Supreme Court granted certiorari on November 8, 2019.
Supreme Court: No per se rule denying registration to “Generic.com” marks
The Court affirmed the Fourth Circuit, confirming that there is no per se rule denying registration to “generic.com” marks. The Court focused on the Lanham Act’s primary significance test, which states, “the primary significance of the registered mark to the relevant public . . . shall be the test for determining whether the registered mark has become the generic name of goods or services.” §1064(3). Specifically, for compound terms that combine two or more generic terms, under this test, one must look at the meaning of the term as a whole to consumers. For example, if “Booking.com” were generic, consumers might be expected to understand Travelocity—another such service—to be a “Booking.com.”
The Court rejected the USPTO’s per se rule that would deny registration to nearly all “generic.com” marks, except in extremely rare cases. The USPTO followed the 1888 case, Goodyear’s Rubber Mfg. Co. v. Goodyear Rubber Co., 128 US 598 (1888), which held that adding a generic corporate designation to a generic term does not make the term eligible for trademark protection. Notably, the Goodyear decision predated the Lanham Act and thus did not apply the primary significance test. The Court held that, contrary to the USPTO’s argument, “generic.com” could convey a source-identifying characteristic because only one entity is able to use a particular domain name. Further, the Court stated that the USPTO’s rule was incompatible with the bedrock principle of the Lanham Act: that genericness is determined based on a term’s meaning to consumers. The Court interpreted Goodyear to be compatible with the Lanham Act, stating, “a compound of generic elements is generic if the combination yields no additional meaning to consumers capable of distinguishing the goods or services.”
Moreover, the Court held that the USPTO’s two policy concerns were not valid. First, the USPTO was concerned that granting registration to “generic.com” marks would hinder competitors, particularly by allowing an owner to control use of marks comprising similar language. The Court countered that this is a concern with any descriptive mark, and the law contains protections to limit this impact. For example, an owner must show there is a likelihood of confusion in order to prove trademark infringement. Because “generic.com” marks are weak marks, making consumer confusion much less likely. Second, the USPTO argued that “generic.com” marks did not need trademark protection and unfair competition law would provide enough protection. The Court countered that federal trademark registration would provide greater protection, and the existence of other protections does not disqualify a mark from registration.
Potential impact of the court’s decision
While this decision is certainly good news for businesses that have been building a “.com” brand, proving secondary meaning for a mark involves considerable effort. One way to establish secondary meaning is by using a Teflon survey. However, achieving the level of brand recognition reported in the Teflon survey submitted by Booking.com – 74.8% – requires a significant level of advertising, which can be extremely expensive for smaller businesses. New governing precedent should provide more guidance on the metes and bounds of a proper survey as businesses pursue registration of “generic.com” marks at the USPTO following this decision. This decision also appears to have the effect of permitting registration of “generic.com” marks on the supplemental register, because they are now deemed descriptive trademarks, not generic terms. If registration on the principal register does not initially succeed, businesses should consider recording such marks on the supplemental register, which can provide at least some benefits, including the right to use the ® registration notice, and the right to reapply for the principal register after five years.
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