Recently, the Supreme Court provided some clarity and guidance to trademark protection for generic terms registered as a domain and used as a trademark. In Patent and Trademark Office v. Booking.com B. V., No. 19-46 (U.S. Jun. 30, 2020), the Court held that the mark “Booking.com” is not generic and is capable of trademark registration, even though the term “booking” is generic for a class of goods and services related to online hotel registrations. Essentially, the Patent and Trademark Office was arguing for a bright line rule that the addition of a generic Internet-domain-name suffix to an already generic term, for a related category of goods, is also generic; i.e. one cannot trademark the term “generic.com” for a generic description of a category of goods.
Within its decision the Court reasoned that current trademark practice and policy requires that the generic qualities of a given term depends upon the meaning of that term to consumers. In other words, does a consumer feel that a given term, in its entirety, represents the name of the class of goods the term is registered within or is that term capable of distinguishing itself, in the mind of consumers, among other potential members of the class.
While we reject the rule proffered by the PTO that “generic.com” terms are generic names, we do not embrace a rule automatically classifying such terms as nongeneric. Whether any given “generic.com” term is generic, we hold, depends on whether consumers in fact perceive that term as the name of a class or, instead as term capable of distinguishing among members of the class. Id. at 13.
In the instant case, at the district court level, Booking.com was able to show that with the addition of the top level domain moniker “.com” consumers were able to differentiate the service provided from the generic term “booking” through the use of consumer survey data. Although consumer survey data is helpful and was ultimately key in this particular case, the Court highlights additional items that may be helpful in the form of dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a terms meaning.
This ruling is not surprising given that the Court merely clarifies existing law, wherein the use of survey data regarding consumer perception may be used to allow a descriptive term to be registered as trademark when that descriptive term is clearly used as a trademark and obtains secondary meaning by consumers as a trademark though this perception. Now, even a generic term may be granted protection through the addition of a domain moniker, such as .com, .org, .biz, etc. provided that this domain name moniker is utilized with the term to operate as trademark and is shown to be recognized by consumers not as the generic term, but as a source identifier for the good or service.
So, what does this really mean?
It means that it may now be easier to obtain trademark protection for a domain that uses a generic term since there is no bright line rule preventing registration. However, the decision clearly highlights that for this registration to occur the mark owner must present additional evidence to show that the registration is in fact perceived by consumers as a trademark. Accordingly, registrations of this type will likely require some type of consumer survey data, with the added expense of conducting the survey, and need to show through the appropriate specimens of use that the entire domain name, including the moniker, is utilized as the trademark.
If you have any questions, we're here to help. Give me a call at 651.968.4716 or shoot me an email at greg.geiser@gutweinlaw.com. You can also check out gutweinlaw.com/informed-ip for more information on all things intellectual property related.
