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Whether a Combination of a Generic Term with a Top-level Domain Name Like “.com,” Is Trademarkable?

Introduction

A trademark is a word, symbol, phrase, or a combination thereof that identifies the source of goods or services offered by a specific provider. The distinctiveness of a mark is a significant factor in deciding whether the mark can be protected under trademark laws and whether it can be federally registered as a trademark. Generally, the more distinctive the trademark, the higher the chances of being approved as an eligible trademark for federal registration. 

We may consider the trademark distinctiveness as a continuum of the most to the least trademarkable terms that are respectively classified as fanciful, arbitrary, suggestive, descriptive, and generic. One end of this spectrum of distinctiveness includes fanciful and arbitrary terms that are very likely to become a trademark, and the other end of the spectrum contains the generic terms like the word “Booking,” that are least likely to be registered as a trademark. Ordinarily, generic terms, like the word wine or booking, are not eligible to be protected under trademark law because they identify a class of goods or services rather than the source of a specific product or service. Additionally, the registration of such generic or descriptive terms may give such power to their owners to monopolize a generic term and to prevent other competitors from fairly describing their products or services.

Previously, the generic terms like “Booking,” and their combination with top-level domains such as “.com” could not be protected under trademark laws; however, the recent precedential decision of the Supreme Court of The United States in Booking.com (June 2019) has significantly changed the law in favor of the trademark eligibility of a compound of generic terms.

How the Supreme Court’s Decision in USPTO Et Al. v. Booking.com B. V. (June 2019) Affects the Trademark Eligibility of a Combination of Generic Terms?

In USPTO v. Booking.com, an online international travel agency sought to federally register its domain name, Booking.com, as a trademark. Subsequently, the USPTO denied the registration of the term Booking.com based on its well-established rule that a combination of a generic name with a generic internet domain suffix like “.com” is also a generic term that is not trademarkable per se. In Booking.com, the Supreme Court of the United States opposed the USPTO’s aforementioned rule and introduced a new inquiry for assessment of the genericness of a name or a combination of generic terms. 

Under the Supreme Court’s decision in Booking.com, in order to determine the genericness of a compound term, the USPTO must consider whether from the standpoint of consumers, the proposed term or phrase, taken as a whole and not by considering its parts in isolation, identifies a class of goods or services rather than a member of the class; and if so, the compound term is a generic term that is not eligible to be federally registered as a trademark. However, if the USPTO determines that the generic term, from the consumers’ perspective, identifies a specific provider and does not direct to a class of goods or services, the term is eligible to be registered as a trademark. 

In Booking.com, the Supreme Court explained that the combination of a generic term with a generic suffix like .com was distinguishable from the Court’s prior decision in Goodyear (1888) in which the combination of a generic term with another generic term like “company” was found ineligible to be protected under trademark law. In this regard, the Court reasoned that a phrase like generic.com identifies a specific unique website or URL, and consumers would not perceive another travel agency like Travelocity the same entity as Booking.com.

Moreover, although the Supreme Court opined that the USPTO’s previous rule regarding the per se genericness of a compound of generic terms, styled as generic.com, was faulty, the Court asserted that the new inquiry, based on consumers’ perception, does not necessarily classify all terms like generic.com as non-generic. In other words, if consumers perceive that a generic term like Booking.com can distinguish one member of a class of goods or services from the other members, the term is not a generic term under trademark law, and therefore, it is eligible to be federally registered as a trademark. In this regard, the consumers’ perception can be determined by providing evidence of carefully designed consumer surveys, dictionaries, consumers’ and competitors’ usage, and other evidence to show the objective perception of consumers regarding a proposed, disputed generic term.

Conclusion

In sum, the new decision of the Supreme Court of the United States in Booking.com substantially affects the USPTO’s method of trademark eligibility assessment regarding generic terms, specifically, a combination of generic terms styled as generic.com or the terms that are a combination of generic names and generic suffixes such as .com. After this precedential decision, the USPTO will no longer reject proposed compound of generic terms per se as not being eligible to become a trademark, and the Patent and Trademark Office will determine the eligibility of a compound of generic names by assessing whether the consumers perceive the term, taken as a whole, as a source identifier of a specific good or service, or whether they find it as indicative of a general class of goods or services. 

The new decision on one hand, by an emphasis on consumer’s perception, allows many businesses to register their trademarks that were previously ineligible under the old USPTO’s rule, and on the other hand, this recent change in the law burdens other businesses in choosing names like “ebooking.com” or “hotel-booking.com.” Subsequently, businesses in choosing their trademarks and in particular, website names, must be aware of the potential likelihood of consumer confusion that may subject them to infringement actions initiated by owners of trademarks like Booking.com! 

This new shift in the law and its resulting underlying interpretations require specific knowledge and expertise in the field of trademark law. Michael Ahmadshahi, Ph.D., Esq., Law Offices, with many years of experience in the field of intellectual property and trademark law, can assist you with the registration and prosecution of your desired trademark. If you are an entrepreneur, a business owner, or a service provider contact Michael Ahmadshahi Law Offices to get initial consultation regarding your trademark registration, trademark prosecution, or any other trademark infringement matters.

References

See generally United States Patent And Trademark Office Et Al. v. Booking.com B. V. (Decided June 30, 2020).

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