The U.S. Patent and Trademark Office (USPTO) is offering new guidance on how it plans to comply with the U.S. Supreme Court’s decision in USPTO v. Booking.com. In the precedential ruling, the Court rejected the USPTO’s per se rule that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is automatically generic.
Supreme Court Decision in USPTO v. Booking.com
In 2012, Booking.com filed four federal trademark-registration applications for marks that included or consisted of the term “Booking.com.” The applications sought registration for use of the marks in connection with “online hotel reservation services.” The USPTO refused registration, concluding that the term “booking” is generic for the services as to which Booking.com sought registration, and that the addition of the generic top-level domain “.com” did not create a protectable mark.
On appeal, the U.S. District Court for the Eastern District of Virginia held that the term Booking.com was non-generic. The Fourth Circuit Court of Appeals affirmed. It held that the public’s understanding of Booking.com, taken as a whole, establishes it as a descriptive mark rather than a generic term.
The U.S. Supreme Court agreed, holding that whether a compound term is generic turns on whether that term, taken as a whole, signifies to consumers a class of goods or services. The Court further concluded that consumers do not in fact perceive the term “Booking.com” that way.
“Whether any given ‘generic.com’ term is generic, we hold, depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class,” Justice Ruth Bader Ginsburg wrote on behalf of the Court. In reaching its decision, the Court rejected the USPTO’s proposed per se rule that when a generic term is combined with a generic Internet-domain-name suffix like “.com,” the resulting combination is generic.
USPTO Guidance on Generic.com Trademarks
The USPTO recently issued an Examination Guide regarding how trademark examiners should approach any applied-for mark consisting of a generic.com term, that is, any combination of a generic term and generic top-level domain, such as “.com,” “.net,” “.org,” “.biz,” or “.info.” Going forward, examining attorneys must assess on a case-by-case basis whether, based on the evidence of record, consumers would perceive a generic.com term as the name of a class of goods and/or services or, instead, as at least capable of serving as a source indicator.
The USPTO advises that to establish that a generic.com term is generic and incapable of serving as a source indicator, the examining attorney must show that the relevant consumers would understand the primary significance of the term, as a whole, to be the name of the class or category of the goods and/or services identified in the application.
“Generally, evidence showing generic use of the generic.com term in its entirety, including evidence of domain names containing the term for third-party websites offering the same types of goods or services, is a competent source of the consumers’ understanding that will support a finding of genericness,” the Examining Guide states. “However, even in the absence of such evidence, a genericness refusal may be appropriate if the evidence of record otherwise establishes that the combination of the generic elements of the proposed mark ‘yields no additional meaning to consumers capable of distinguishing the goods or services.’”
The USPTO provides the following examples of the types of evidence that may support the conclusion that consumers would perceive the generic.com term, as a whole, as the name of the class of goods and/or services:
- a combination of dictionary excerpts defining the component elements of the generic.com term;
- significant evidence of generic usage of those elements or the combined term by consumers or competitors in the relevant marketplace;
- evidence of the “generic.com” term used by third parties as part of their domain names (e.g., “[adjective]generic.com”) in connection with the same or similar goods and/or services; and/or
- evidence of the applicant’s own use of the generic.com term.
In cases where the trademark applicant claims that the mark has acquired distinctiveness, the USPTO instructs the examining attorney to carefully review the applicant’s evidence in support of the claim, along with all other available evidence, to determine whether the relevant consumers have, in fact, come to view the proposed generic.com term as an indicator of source for the identified goods and/or services. The USPTO further states that given the nature of generic.com terms, applicants will generally have a significant evidentiary burden to establish that the proposed mark has acquired distinctiveness.
“Accordingly, evidence of five years’ use or reliance solely on a prior registration for the same term will usually be insufficient to support a Section 2(f) claim for a generic.com term,” the Examining Guide states. “Typically, the applicant will need to provide a significant amount of actual evidence that the generic.com term has acquired distinctiveness in the minds of consumers.” Evidence may include the following:
- Consumer surveys;
- Consumer declarations;
- Declarations or other relevant and probative evidence showing the duration, extent, and nature of the applicant’s use of the proposed mark, including the degree of exclusivity of use;
- Related advertising expenditures;
- Letters or statements from the trade or public; and
- Any other appropriate evidence tending to show that the proposed mark distinguishes the goods or services to consumers.
The Examining Guide further instructs that if the examining attorney determines that the evidence of record establishes that the generic.com term is, in fact, a generic name for the identified goods and/or services, the examining attorney must refuse registration on the ground that the term is generic and indicate that the claim of acquired distinctiveness does not overcome the refusal.
The USPTO’s Examining Guide makes it clear that because generic.com terms are neither per se generic, nor per se non-generic, traditional “genericness” analysis will apply. To overcome the hurdle, trademark applicants must be able to show that consumers perceive the term as a source indicator.
If you have questions, please contact us
If you have any questions or if you would like to discuss the matter further, please contact me, David Einhorn, or the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.