Published 7/9/2020
The U.S. Supreme Court (8-1) upheld the right of Booking.com B.V. to register Booking.com with the U.S. Patent and Trademark Office (“USPTO”). This is significant as “Booking” and “.com” were seen as two generic words places together.
Background. In order to be registered, a trademark must show the source of the product or service and be used as trademark. Much like adding “Inc.” or “Company” to a generic name, adding “.com” has not been seen as transforming a generic mark into a protectable trademark.
The general rule is that “the generic name for the goods or services” is not eligible for U.S. trademark registration (Lanham Act 15 U.S.C Section 1127) because a generic mark just describes a type of product or service. The reasoning is that one should not be able to own generic words like Pacific, Fish, Car, Boat, etc. or the combination of such and preclude others from using a generic term. This has been a strict, even per se, rule of the USPTO. The same is generally true with marks that “merely describe” a product or service like French Wine, Pacific Fish, Corner Café, etc.
Ruling. Now, if one can prove, on a case by case analysis, that consumers associate a “generic.com” trademark with a single source, they may achieve registration. Booking.com showed evidence that the consuming public “primarily understands that Booking.com does not refer to a genus, rather a description of services involving ‘booking’ available at that domain name”. In terms of trademark law, we would say that Booking.com showed that the mark was distinctive of a particular source and had acquired secondary meaning to consumers in the marketplace as to hotel registration services. It had become known as the origin of those services.
Thoughts. Examiners often seem to place the burden on the applicant to prove that the mark is not generic, is not merely descriptive and/or is not confusingly similar to another, and that the mark is being used as a trademark. The Court looked to consumer perception rather than the USPTO’s strict per se rule against generic marks. We believe that an applicant using a top-level domain name like “.com” should be prepared to provide strong proof of both trademark use and that consumers primarily associate the mark with the source of the goods or services. We would caution that those who now think that they are free to register generic terms, should think again as the facts of each case should be reviewed. Consumer perception seems to be the key.
Kevin J. Collette is an attorney in Ryan Swanson’s Business Group and can be reached at 206-654-2252 or [email protected].
Because each situation is different, this information is intended for general information purposes only and is not intended to provide legal advice on any specific facts and circumstances. Ryan, Swanson & Cleveland, PLLC is a full-service law firm located in Seattle, Washington.
