Wednesday, 1 July 2020

When is a Generic Word + “.Com” Not Generic? When the Public Doesn’t Think So.

by Laura J. Winston, guest blogger

The Supreme Court of the United States has ruled in United States Patent and Trademark Office v. B.V. that a generic term paired with ".com" is not automatically generic and has the potential to function as a trademark. However, it takes a great deal of advertising and investment in public recognition to reach a level of consumer recognition for this to happen.

The dispute over the registrability of BOOKING.COM began after filed four federal trademark applications. A USPTO Examining Attorney rejected those applications based on the view that BOOKING.COM is generic and therefore incapable of acquiring “secondary meaning” as a trademark. In other words, because BOOKING is generic, and .COM is merely an identifier for use on the internet, BOOKING.COM is generic and not entitled to registration. appealed the decision, first to the Trademark Trial and Appeal Board (TTAB), which sided with the USPTO.

The company appealed again in the Eastern District of Virginia. It was there that presented as evidence a survey showing that a majority (approximately 75%) of consumers recognize the name “BOOKING.COM” as a brand rather than a generic term for a reservation service. The court was convinced and reversed the TTAB’s decision, determining that had adequately differentiated its name from the generic term “booking.” The case was then brought to the Fourth Circuit Court of Appeals, which upheld the lower court’s decision. The USPTO appealed.

After the Supreme Court’s first-ever remote and live-streamed oral argument, Justice Ruth Bader Ginsburg wrote the 8-1 majority opinion. Calling the USPTO’s rule against registration of generic terms paired with .COM “sweeping” and “nearly per se”, the Court held that although “booking” is a generic term for hotel reservation services, adding the “.com” element rendered it a compound term that needs to be considered as a whole. “If `’ were generic,” the Court said, “we might expect Travelocity – another such service – to be a `’”

The Court repeatedly looked to consumer perception that “” identifies a particular source of the travel reservation services, stating plainly that “Because `’ is not a generic name to consumers, it is not generic.” The Court also called attention to the USPTO’s inconsistent application of its rule that a generic term paired with “.com” is generic and cannot function as a trademark – “ART.COM” is registered as a trademark for online retail store services offering art prints, original art and the like, and “DATING.COM” is registered for “dating services”.

The Court made clear that just as there is no sweeping rule that such a term is generic, it is not automatic that it is not generic either. Again, the Court stated that it depends on consumer perception – whether the public will assume the “” term is the name of a class of goods or services, or as a term capable of distinguishing among members of this class. In the latter situation, a term may be descriptive rather than generic, and under the theory of “acquired distinctiveness”, a descriptive term can gain significance as a trademark if the public comes to associate it with a single source of the goods or services. The Court concluded this to be the case here.

Justice Stephen Breyer wrote the dissent, which focused in part on’s consumer surveys. “The survey participants who identified `’ as a brand likely did so because they had heard of it, through advertising or otherwise.” In this author’s opinion, this argument actually makes the majority’s point – that it is public recognition that gives “BOOKING.COM” its acquired distinctiveness and makes it eligible for trademark protection.

Laura J. Winston is a Principal in the New York office of Offit Kurman, P.A. and a member of the firm's Intellectual Property Practice Group. She practices in the area of trademark and copyright law, focusing on the acquisition and enforcement of IP rights as well as defense against claims of infringement. Find her on Twitter @LauraWinston. There, as here, the views expressed are her own.

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