Generic.com Terms May Be Eligible for Federal Trademark Protection
By Jessica D. Kemper and David G. Barker
Today, the Supreme Court held in U.S. Patent & Trademark Office v. Booking.com B.V. that a generic term paired with an internet designation such as “.com” (called a “generic.com” term by the Court) may be eligible for federal trademark registration. When will a generic.com term be eligible for registration? According to the Court, one key consideration is whether consumers associate the generic.com term with the source of the goods or services.
A generic term—the name of the good or service itself—is not eligible for trademark protection because it cannot distinguish one company’s goods or services from another’s. A term that describes the goods or services, on the other hand, may receive federal trademark protection if the mark has acquired “secondary meaning,” which means the public associates the mark with the source of the goods or services.
Booking.com offers travel services through its website at booking.com. Booking.com sought federal trademark registration for “Booking.com,” but the U.S. Patent & Trademark Office (“PTO”) determined that Booking.com was generic and denied registration. The district court for the Eastern District of Virginia held that the term was descriptive, but had acquired secondary meaning, and was therefore entitled to registration. The PTO appealed the district court’s determination that the mark was nongeneric, and the Fourth Circuit affirmed.
With Justice Ginsburg delivering the 8-1 majority opinion, the Court affirmed, holding that generic.com terms can sometimes be eligible for federal trademark registration. What made Booking.com trademark-eligible in this case was that “Booking.com” was not a “generic name to consumers.” In other words, the term had acquired secondary meaning. The Court noted, for example, that a generic.com term could convey source to consumers through a specific website domain name, which cannot be appropriated by any other domain name holder. This conclusion was different from previous cases holding that commercial designations such as Inc. and Co. were not sufficient to make an otherwise-generic term eligible for registration.
The Court did not hold that all generic.com terms are subject to registration, nor did the Court hold that the addition of “.com” alone is sufficient to prove secondary meaning. That means proof of secondary meaning will continue to be an important consideration in future generic.com cases. Further, Booking.com conceded that “Booking.com” is a weak mark, which would make it harder to prevent others from using the term “booking.” Responding to the PTO and to Justice Breyer’s dissent, the Court reasoned that these considerations, among others, would limit any “anticompetitive effects” of allowing the registration.