Generic.com Trademarks Are PossibleJul 15, 2020 Published Article
The Supreme Court recently ruled in USPTO v. Booking.com that generic words can become trademarks when associated with a website domain if consumers see the total trademark as a source identifier, and not a generic service/product. This has been a surprise to some, as trademark protection is typically not available for a mark consisting of a generic word plus a corporate identifier like “Corporation” or “Company.” So legally, now, “Booking Corporation” may be seen as quite different from “Booking.com.” In light of this ruling, it is now necessary for a business owner to have a clear understanding on their ability to expand their trademark portfolios to utilize generic terms while also avoiding creating marketplace confusion with other permissible generic marks.
Booking.com, a company which provides online travel bookings, such as flights and hotel stays, applied for a trademark with the United States Patent and Trademark Office ("USPTO"). However, the USPTO denied the trademark, on the grounds that the addition of ".com" to a generic term cannot make the term into a protectable trademark. The USPTO came to this conclusion using prior case law where the mere addition of words like "corporation," "company" or "Inc." to an otherwise generic name was deemed to not create the secondary meaning to an otherwise generic mark. However, the Supreme Court has clarified that ".com" is different because it can serve as a source identifier for an otherwise generic mark unlike the addition of "corporation" identifier. Notably, previous lower court decisions had disallowed generic trademarks for “Mattress.com” and other similar .com marks.
Why is ".com" an identifier while "Inc." "Company" or "Corporation" is not?
The Supreme Court ruled that simple ".com" can be an identifier, as typical consumers see ".com" as being an identifier. First, Booking.com had actually demonstrated that consumers did not perceive "booking.com" as "generic." Second, "generic.com" trademarks can demonstrate to consumers an actual source-identifier beyond the notion that the goods are offered online, and nothing more. This is because unlike something generic like "the Wine Company," the trademark actually directs the consumers to a website. Because only one entity can own a URL at a time, this sets them apart from adding "Inc." or "Company" at the end of a company's name. To that point, the Supreme Court clarified the earlier rule from a prior case, Goodyear, stressing that a compound of generic elements is generic if the combination yields no additional meaning to consumers capable of distinguishing the goods or services.
Are Generic Marks Protectable?
This does not mean that generic marks are per se protectable, but merely that marks that are descriptive or a combination of generic words describing the goods may have some additional support if they can show that consumers deem there is an additional meaning. For the holders of marks that may be verging on the edge of being "generic," this means that strong trademark development processes should still be used. While it may be tempting to rely heavily on consumer surveys, as that was a focus in this case, the concurring opinion clarifies and stresses that surveys are not infallible, and stress that other methods, such as dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term's meaning. As such, holders of marks that may be perceived as weaker should proactively focus on broader marketing efforts to increase awareness of the brand and carefully monitor how competitors use the mark. For example, if a mark must be used to describe a product, it would still be generic. However, if a mark wasn't necessary to describe the product, it would be more likely to be generic. Ultimately, this means for a trademark, proper policing of the mark, its usage, and actions to prevent genericide from occurring are still necessary.
What Businesses Can Do For the Future
For future applications, this means that web domains for weaker descriptive marks over plain words can be used to help preserve the mark and supplement it. This is akin to a trademark for a logo because the URL address helps to create a secondary meaning for consumers by directing them to a specific source identifier as the mark owner would presumably be the only one to hold that website. However, it also means that registering and maintaining web domains becomes more important as it may create a failure for the mark to serve as a source identifier.
For businesses, taking active steps to expand trademark portfolios to include similar generic terms should ensure that they own their web domains that include generic terms, assist with the prevention of third party cybersquatting, so they, like booking.com, are seen as a source identifiers. On the other hand, the failure to maintain the web domain, including the prevention of cybersquatting or failure to guard against abandonment, may complicate efforts to create secondary meaning, as the URL address would no longer be acting as a source identifier.