skip to main content

July 2, 2020

Stroock Special Bulletin

By: Laura Goldbard George, Binni N. Shah, Walker H. Bowman

Consistent with traditional trademark law principles, the Supreme Court ruled 8-1 on June 30, 2020, in an opinion by Justice Ruth Bader Ginsburg, that the determination of the registrability of a generic term followed by a top-level domain (“TLD”) such as .com, .org, or .net is based on consumer perception.[1] United States Patent and Trademark Office et al. v. Booking.com B.V., 591 U.S. ___, 2020 WL 3518365 (June 30, 2020).[2] Indeed, there is no axiomatic rule barring the United States Patent and Trademark Office (“PTO”) from registering generic domain names, as was advocated by the PTO. But, the Supreme Court’s decision does not go so far as to render such generic domains automatically protectible. Rather, the guiding principle is whether a consumer views a particular term as generic or descriptive. 

The PTO initially refused to grant Booking.com B.V. (“Booking.com”) a trademark for Booking.com, on the basis that “Booking” was generic for the services offered, and therefore was unregistrable, even with the addition of the TLD.”[3] Id. at *3-*4. The District Court for the Eastern District of Virginia, later affirmed by the Fourth Circuit, overturned the PTO’s refusal, holding that the term “Booking.com” as a whole was not generic but rather descriptive of the services offered by that specific domain name, and therefore able to be registered. Id. at *4; Booking.com B.V. v. Matal, 278 F. Supp. 3d 891, 918 (E.D.V.A. 2017). The PTO sought review of the Fourth Circuit’s decision, focusing its arguments as to the genericism of Booking.com. Notably, however, it did not appeal the district court’s determination that “Booking.com” had acquired secondary meaning as to hotel-reservation services. 2020 WL 3518365, at *4.

The Supreme Court affirmed the Fourth Circuit, and declined to adopt the PTO’s per se rule barring registration for any generic term with a TLD added. The PTO argued that a per se rule should be implemented because it is nearly impossible to distinguish these generic terms from those that share the same space in commerce. [4] Id. at *5. The PTO further argued that this is analogous to the 140-year-old common law principle that adding a corporate designation such as Inc., Co., or Corp., to a generic company name does not confer any protectable meaning.[5] The PTO claimed that a TLD “conveys no additional meaning that would distinguish [one provider’s] services from those of other providers.” Id. at *6.

The Supreme Court swiftly swept this argument under the rug, holding that a generic.com term “might also convey to consumers a source-identifying characteristic: an association with a particular website. . . . [O]nly one entity can occupy a particular Internet domain name at a time, so [a] consumer who is familiar with that aspect of the domain-name system can infer that BOOKING.COM refers to some specific entity.” Id. (internal quotations omitted).

The PTO raised the concern that generic.com registrations could result in anticompetitive behavior by granting a monopoly to basic words. Such concern was rejected. In establishing that the registration of “Booking.com” would not monopolize the term “booking” for the petitioners, the Supreme Court underlined the mark’s weakness and the narrowness of the owner’s rights, meaning that it would be difficult for Booking.com to show a likelihood of confusion in an infringement action, and that competitors would be free to use the term “booking” in describing their own services. Id. at *8. This underscores that evidence of distinctiveness will likely have to be substantial.

Permitting registration of generic.com terms does not mean website domains will be granted federal trademark protection as a matter of course. While the Supreme Court rejected “the rule proffered by the PTO that ‘generic.com’ terms are generic names,” the Supreme Court did “not embrace a rule automatically classifying such terms as nongeneric. Whether any given ‘generic.com’ term is generic . . . depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.” Id. at *7. However, even if a “generic.com” term is found to be descriptive, registration on the principal register will only be allowed upon a showing of acquired distinctiveness or secondary meaning. Otherwise, owners will have to first apply for the supplemental register.

Nevertheless, the decision appears to open the door to others to apply for “generic.com” trademarks, which may result in an increase in new filings in the PTO. At the PTO, the inquiry will be focused on whether consumers perceive the term as a whole to be generic; however, the full extent and type of evidence needed to prove that a generic.com mark is not generic is not as yet known. Certainly, the reference in the Supreme Court’s decision to consumer surveys, dictionaries, usage by consumers and competitors and other sources of consumer protection of the term provides some guidance but is not comprehensive. Id. at *7 n.6. Accordingly, the implementation of the rule remains to be seen and may result in an increase in litigation. Such litigation is likely to be lengthy, as evaluating the validity of the domain name marks and the similarity to other marks are fact intensive questions which are not typically resolved at the summary judgment stage.

Accordingly, the practical effects of the Supreme Court’s decision are unclear. Indeed, the decision may lead to an increase by opportunistic third parties to squat on domain names hoping that a company will want to purchase a particular domain name. But, what is clear is that consideration of the “primary significance” of the mark determines whether it is generic, even in the case of generic.com marks. If it is not generic to consumers, it is not generic. Evaluating consumer perception is the key to this determination.

___________________________________________

For More Information:

Laura Goldbard George

Binni N. Shah

Walker H. Bowman

[1] Generic terms, i.e. those that are simply the names of the goods or services offered, are ineligible for registration, as they are unable to distinguish an owner’s goods or services from others in the same class. 2020 WL 3518364, at *3. On the other hand, descriptive terms, those that describe the type of good or service offered, are able to be registered on the supplemental register, and/or upon a showing of acquired distinctiveness or secondary meaning, on the principal register.

[2] This was the Supreme Court’s first ever remote oral argument.

[3] Although the terms “booking” and “.com” are by themselves generic, it is the term as a whole that must be examined during the distinctiveness inquiry. See Estate of P.D. Beckwith Inc. v. Commissioner of Patents, 252 U.S. 538, 545-46 (1920) (“The commercial impression of a trade-mark is derived from it as a whole, not from its elements separated and considered in detail.”)

[4] The PTO did admit that generic terms that were combined with a generic TLD that resulted in wordplay (such as “tennis.net”) would be registerable, however, as acknowledged by the PTO, this special circumstance did not impact the analysis for this case. 2020 WL 3518365, at *5 n.4.

[5] See Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602 (1888) (holding that the addition of “Company” or “Manufacturing Company” to the end of the otherwise generic term “Goodyear Rubber” did not establish the terms as being “capable of exclusive appropriation.”)

This Stroock publication offers general information and should not be taken or used as legal advice for specific situations, which depend on the evaluation of precise factual circumstances. Please note that Stroock does not undertake to update its publications after their publication date to reflect subsequent developments. This Stroock publication may contain attorney advertising. Prior results do not guarantee a similar outcome.

Related Services