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Supreme Court rejects per se rule precluding registration of certain trademarks

published in McAfee & Taft tiPsheet | July 1, 2020

Ordinarily, a word that is generic for a class of products or services cannot be registered as a trademark for use in connection with those goods and services. This week, however, the U.S. Supreme Court held that even generic terms have the potential to become registrable when used in connection with a domain name.

Booking.com is a travel company that utilizes a website of the same name to provide travel reservation services to its customers. When Booking.com sought to obtain federal trademark registrations for marks incorporating the BOOKING.COM mark, the United States Patent and Trademark Office (USPTO) rejected the applications, holding that a generic term, when followed by the phrase “.com”, was per se generic. Booking appealed, arguing that its mark cannot be generic, as there are no goods or services known or described by that term.

In an 8-1 decision, the Supreme Court agreed. While the parties and the Court agreed that the term BOOKING is generic, the Court disagreed with the USPTO’s position that a generic term combined with “.com” would always yield a generic result. The Court noted that a proposed mark is generic for a particular set of goods or services only if the proposed mark has meaning to the customers who purchase those services. The Court rejected the assumption that the general public would understand the proposed mark to refer to a category of goods or services; no customer would, for example, believe Travelocity to be offering services known as BOOKING.COMs on its website. Instead, customers would understand the mark to be descriptive of a particular entity’s services offered on a particular website.

Although the Court’s opinion opens the door for companies to use and register domain names that incorporate generic terms, trademarks using a generic term followed by “.com” are not per se registrable. Some such marks may still be deemed generic if they describe a category of goods or services, and even those that are descriptive cannot be registered absent a showing of acquired distinctiveness. Finally, the Court noted that many marks incorporating a generic term and the word “.com” are likely to be relatively weak, such that consumers would not be confused by the adoption and use of similar marks by others within the industry. So, while the Court’s opinion allows the registration of trademarks incorporating a generic term and “.com,” companies should proceed with caution before investing in a generic “.com” trademark.