By: Julie Tolek
Last week, the United States Supreme Court ruled in favor of Booking.com, allowing the company to trademark the term associated with their domain name. Previously, Booking.com had been denied registration by the United States Patent and Trademark Office (“USPTO”), which argued that generic names are not eligible for trademark protection.
Under federal trademark law, a generic term is one which refers to an entire class of goods or services, in other words, they are words or symbols that communicate what type of product or service is being offered. Conversely, a descriptive term describes goods or services such as the location, quality, and/or quantity of the goods or services. While descriptive terms may become eligible for trademark registration if they acquire a distinctiveness through a secondary meaning, generic terms remain unregistrable with the USPTO.
The cornerstones of the Lanham Act (the federal law that governs trademarks) are based on consumer perception. Specifically, the Lanham Act asks whether there exists a likelihood of consumer confusion from a term or whether a consumer would perceive a term to be the generic name of a class. In the above case, the court looked at whether Booking.com was perceived as a generic name to consumers (as opposed to generic in the view of a non-consumer). Ultimately, the Court held that “Booking.com” is not generic because it is not perceived as generic to consumers.
In its arguments in favor of Booking.com being generic, the USPTO relied on another case, Goodyear’s Rubber Glove Mfg. Co. v. Goodyear Rubber Co., which held that the term “Goodyear Rubber” was generic and merely adding “company” to a generic term did not convey any additional information to distinguish one source of goods from another to make it non-generic. The USPTO argued that adding “.com” to a generic term is similar to adding “company” and the term remains generic, as it did in the Goodyear case. The Supreme Court disagreed and held that “generic.com” terms are eligible for registration.
Practically speaking, it remains to be seen how this ruling will impact the weight the USPTO gives to otherwise generic terms when “.com” is added. Booking.com is an accommodation and travel booking website that is already very well known to consumers. A startup business or brand with an otherwise generic name that has not reached consumer perception to the level that Booking.com has might have a more difficult time registering a generic name simply by adding “.com” to the end.
Strategically, it remains essential to consider the name of your business, brand, goods, or services you wish to trademark as early as possible. During the business startup process, these considerations help to avoid issues with generic terms as much as possible, and allow businesses to explore options and potential outcomes to registration. The earlier a business can rule out words that might cause registration issues, such as generic terms, the better.