United States Patent and Trademark Office v. Booking.com B.V., 591 U.S. ___ (2020)

In United States Patent and Trademark Office v. Booking.com B.V., 591 U.S. ___ (2020), the U.S. Supreme Court rejected the U.S. Patent and Trademark Office's ("Trademark Office") categorical rule that generic terms to which a top level domain name has been added, so-called "generic.com" marks, were always generic and incapable of registration. The Court found the rule to be incompatible with a bedrock principle of trademark law that consumer perception is the determinant of whether a term is understood as an indicator of source, and thus capable of trademark protection, or whether a term identifies a genus of goods or services, and thus is generic. Evidence in the case also showed that the Trademark Office had already granted registration to "scores" of generic.com marks, and these registrations would have been put at risk of cancellation had the Court upheld the Trademark Office's per se rule.

While striking down the categorical rule, the case does not, however, establish that any "generic.com" domain name is now registrable. The Court held that a term styled "generic.com" is a generic term for a class of goods or services only if the term has that meaning to consumers.  Therefore, whether any given "generic.com" mark is registrable is determined by consumer perception.  In a footnote, the Court identified evidence in the nature of consumer surveys, dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term's meaning, as relevant to the inquiry into consumer perception.

Following the Court's decision, many new applications for "generic.com" marks have been filed with the U.S. Trademark Office.  The fate of applications for wine.com, gambling.com, ladders.com, cruises.com and others now await examination under yet-to-be announced Trademark Office guidelines implementing the Court's decision.  The open question is whether the Trademark Office will impose a higher level of proof of consumer perception of non-genericness for "generic.com" terms than it does for marks traditionally adjudged to be merely descriptive.  Merely descriptive marks can be registered upon proof of acquired distinctiveness, which in some instances may be established by substantially exclusive and continuous use for the preceding five years. Going forward, will the Trademark Office permit registration of a "generic.com" mark based only on a claim of five years of substantially exclusive and continuous use, or will it set a higher threshold of actual evidence of consumer perception?

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