How Generic.Com Trademarks Could Shape the Future of IP Law

Generic terms almost never get trademark protection. That is settled law. But a 2020 U.S. Supreme Court ruling is refocusing us on the question of what makes a term “generic” for purposes of trademark law. The Court rejected a U.S. Patent and Trademark argument that if a company adds “.com” to an otherwise generic term, the resulting “generic.com” shall always be deemed generic as well — and so not eligible for federal trademark registration. As a practical matter, this was a big change to what many thought was settled law because the USPTO had long refused registration for “generic.com” marks. But as a matter of legal theory, the decision is well-grounded in trademark jurisprudence and serves as a reminder that in trademark law the distinctiveness of each proposed mark must be considered based on evidence.

That the decision has roots in long-established law does not make it any less revolutionary. When the Court ruled that the term “Booking.com” was not generic, making this domain eligible for federal trademark registration, the decision opened the door to other “generic.com” trademarks. But its potential impact goes further. It could pave the way for arguments over ways that any otherwise generic term might be trademarked if it is used in a way that leads consumers to associate it with a particular provider of goods or services. Let’s take a look at this significant ruling and the multiple ways in which it could impact the future of trademark law.

The Specifics of the Original Case

The underlying case, United States Patent and Trademark Office v. Booking.com B.V., involved a digital travel company that filed a trademark application with the USPTO to register the term “booking.com.” Applying its rule that adding “.com” could not transform a generic term into a descriptive one, the USPTO deemed “booking.com” generic and rejected the registration. In response, Booking.com took the matter to the U.S. District Court for the Eastern District of Virginia, which, after considering evidence that consumers perceived “booking.com” as being associated with a particular provider of hotel booking services, ruled that the term was not generic in this case. The USPTO appealed, and the Supreme Court ruled 8-1 on June 30, 2020 that the trial court was right: “A term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers.’”

Implications of the Generic.Com Ruling

In some ways, the Booking.com decision changes nothing about trademark law. As Justice Ginsburg recounted in her majority opinion, it is well established that to receive federal trademark protection, a “mark must be one ‘by which the goods of the applicant may be distinguished from the goods of others.’ … Distinctiveness is often expressed on an increasing scale: Word marks “may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.” The higher a proposed mark is on that scale, the easier it is for it to secure trademark registration. At the low end of the scale, generic terms will rarely qualify for registration, and descriptive terms only qualify if their user proves the mark has established secondary meaning (also known as “acquired distinctiveness” with consumers.

The Supreme Court ruled that the question in Booking.com was whether that term had obtained secondary meaning. The trial court — the court charged with weighing evidence — concluded it had. That was why this particular domain qualified for trademark registration. It’s important to remember that the Court did not rule that adding “.com” to any generic term automatically qualifies it for trademark protection.

Still, new rules push parties and lawyers to test limits. So with this decision, there is likely to be an uptick in the number of trademark registration applications for domain names that would have traditionally been considered to be too generic. This may also prompt a number of infringement litigation cases or encourage companies to register a slew of generic.com trademarks in order to gain control over these terms. It will take time — years probably — for courts to work through the implications of the Booking.com decision and better define the boundaries between generic and descriptive domains. Any business facing this issue should take time to consult with an experienced trademark lawyer.

Trademark Registration in Minneapolis

As the effects of the Supreme Court ruling begin to take shape, you may want to discuss your trademark needs with a knowledgeable IP law attorney. Trademark infringement cases—and even the trademark registration process itself—can be quite complex, so it’s a good idea to enlist the assistance of an experienced IP law attorney who can provide you with the customized and effective legal support you need.

 

Want to learn more about trademark law in the St. Paul or Minneapolis area? Contact the friendly IP law attorneys at Rubric Legal LLC today by calling (612) 465-0074 to get started.