United States trademark law makes a strong distinction between “descriptive” and “generic” terms. The former are potentially accorded substantial benefits, while the latter can never be entitled to protection and are not trademarks at all. Unsurprisingly, landing on the wrong side of this divide can be disastrous for brand owners.
This Monday, May 4, 2020, the United States Supreme Court will hear its first-ever telephonic oral arguments in a case regarding the nature of this critical boundary. While the question presented is narrow—whether the addition of a generic top-level domain (such as “.com”) to an otherwise generic term (such as “booking” for travel booking services) can create a protectable trademark—the Court’s ruling could affect how a wide array of brands are (or are no longer) enforced.
Generic terms are those for which the primary significance to the purchasing public is a reference to the category of goods or services at issue, like “laptop” or “supermarket.” Because they do not tell consumers from whom a particular good or service is coming, generic terms cannot function as source-identifying trademarks. Descriptive terms, on the other hand, convey information about the relevant products or services, but do not represent the entire category. While descriptive terms like “International Business Machines” or “Home Depot” aren’t automatically entitled to trademark protection, they can become powerful source identifiers with extensive use and advertising.
In the pending Booking.com case, the United States Patent and Trademark Office (USPTO) refused to register the term “booking.com” for travel booking services, arguing that the individual elements “booking” and “.com” are both generic, and that the sum of these two generic elements is no greater than its parts. This argument stems from an 1888 Supreme Court decision that held that the addition of an entity designation like “Company” to a generic term does not, in itself, result in a protectable trademark. Based on this case, the USPTO advocates for a bright-line rule whereby the addition of “.com” or another generic top-level domain, like “Company,” “Co.,” or “Inc.,” would never be sufficient to turn an otherwise generic term into a protectable mark.
Booking.com argues that consumers think of a particular company, not a category of services, when they see “booking.com” in connection with travel booking services. According to Booking.com, while “booking” and “.com” might be individually generic, “booking.com” has become a distinctive trademark. Booking.com emphasizes that its extensive marketing and promotion efforts have created a strong association between “booking.com” and its services. Indeed, it conducted a survey in which 74.8% of participants identified the term with Booking.com. Additionally, Booking.com asks, how can a term be generic if no consumer would use it to refer to the category of services at issue?
The Supreme Court’s decision is likely to have a significant impact on many brand owners. If it adopts the USPTO’s bright-line rule, brand owners that have made considerable investments in terms that include a generic component coupled with a generic top-level domain will face an uphill battle protecting that investment. In addition to trademark infringement actions, many other avenues of redress that require a trademark registration, such as UDRP actions to stop cyber squatters, domain name takedown requests, and social media removal requests, will be precluded. The USPTO has also granted registration to numerous generic.com terms, such as weather.com, rentals.com, and cooking.com, which may be subject to cancellation actions. On the other hand, allowing companies to protect generic terms simply by appending “.com” could empower aggressive trademark owners to shut down the use of generic terms that competitors need for the purpose of referring to their products or services. Successfully defending a trademark infringement suit can be costly, and the threat of litigation can therefore chill use of a similar mark, even if that mark were not ultimately found infringing.