IP Alert: U.S. Supreme Court Expands Registration of .COM Trademarks | Brouse McDowell | Ohio Law Firm

IP Alert: U.S. Supreme Court Expands Registration of .COM Trademarks

on July 2, 2020

Trademarks are categorized on a scale based on their uniqueness and ability to differentiate competitors of the same goods or services. On one far end of this scale are generic trademarks. These marks are simply the commonly-used name of a class of goods or services, such as “Bookstore” for a place that sells books and other printed material. Generic marks are not eligible for registration on either the Principal or Supplemental Register of the United States Patent and Trademark Office (PTO). The reason for this is that generic terms fail to distinguish the user’s products from competitors because everyone in the market uses those terms. If you told a friend you were headed to the “Bookstore,” your friend wouldn’t think of a particular company associated with that term, but would consider everything from mom and pop bookshops to Barnes & Noble within the category of “Bookstore.” 

Generally, to be eligible for registration, the applied-for mark must be, at least, descriptive of the good or services on which it is used. Descriptive terms describe a characteristic of the goods or services. The addition of words to a generic term can create a descriptive mark that would be registrable. For example, adding “World’s Best Tasting” to “Coffee” to be used on “coffee” makes the mark descriptive and registrable. However, the PTO has repeatedly determined that addition of commonly-used generic terms, such as “Company” to the generic term does not make a trademark descriptive. This means that “Bookstore Company” is just as generic as “Bookstore.”

In the recent case of United States Patent and Trademark Office v. Booking.com B.V., the PTO sought to expand its practice of denying registration to generic term plus “Company” to generic term plus “.com.” Essentially, the PTO sought to make any “generic.com” per se unregistrable. Thus, when Booking.com BV, the operator of a website that provides booking services for hotel accommodations, sought to register “Booking.com” as a trademark, the PTO denied the registration for genericness. Through various appeals of this decision, the issue eventually made it to the U.S. Supreme Court. In an 8-1 decision released on June 30, 2020, the Court held that a “generic.com” trademark is not automatically generic, but may be descriptive depending on how consumers perceive the term in the marketplace. In other words, a “generic.com” term can be eligible for registration if consumers, upon viewing the mark, consider as relating to a particular website and not a category of website. In the case of “Booking.com,” a consumer would not consider Travelocity or Hotwire a “Booking.com” website. Instead, consumers would consider “Booking.com” to refer to a particular hotel booking website. 

This decision recognizes the difference between how the internet market works as opposed to the brick and mortar market. Or, more specifically, how the addition of “.com” is different from the addition of “Company.” When a user types a generic term plus “.com” in the address bar of an internet application, it takes the user to a specific website that is the only website with that particular URL. On the other hand, a search for a generic term with the addition of “Company” might bring up several businesses under the name in different states. Because the generic.com term is unique to a particular website, consumers are more likely to perceive the term as referring to a particular user and not a general group of users.

In the end, the decision is good news for internet-based businesses. The possibilities are open for the registration of generic terms if “.com” is added to the end. It is likely that many such applications will be filed following the Supreme Court’s decision. If you are considering registering a trademark, whether it is a “.com” trademark or not, it is recommended that you consider hiring an experienced trademark attorney to help guide you through the process. The trademark attorneys at Brouse McDowell are always available to assist you with your trademark needs.

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