Tuesday, November 24, 2020

Registration of “Generic.com” Trademarks after Booking.com

One of the most critical aspects of starting a new enterprise, or growing an existing business, is
establishing and protecting a strong brand. For most modern entrepreneurs, this means not only selecting a name and logo but also acquiring a domain name. Some online businesses have taken the approach of using a domain that incorporates a generic term for the sort of goods or services provided by that business and using that domain not only for their website but also as their primary brand for advertising and sales purposes (for example, shoes.com, hotels.com, mattress.com). While these domains can be valuable from a marketing perspective, it can be difficult to protect these domains from a trademark perspective. This is a particular challenge for businesses that have come to use a domain as their primary brand, because such “generic.com” terms are often denied federal registration as trademarks. 

In June 2020, the U.S. Supreme Court issued a decision in United States Patent and Trademark Office v. Booking.com B.V. stating that trademarks that combine a generic term with a top-level domain such as “.com” should not automatically be considered generic overall. The United States Patent and Trademark Office’s (USPTO) had rejected Booking.com’s applications to register the mark BOOKING.COM for online hotel-reservation services on the basis that these terms are generic and unregistrable by default. However, the Supreme Court found that, if consumers recognize an applicant’s “generic.com” mark as specifically identifying that applicant as the source of the goods or services, the mark may be registrable. 

The Booking.com decision received quite a bit of attention among brand owners when it issued as it established that applications to register “generic.com” marks should not be automatically rejected and therefore suggested that owners of “generic.com” marks might have better chances at registration. This optimism is reflected in USPTO filings: a brief search of new trademark applications filed in the one-month period after Booking.com issued revealed that the number of applications containing the element “.com” more than doubled as compared to the same periods in 2019 and 2018. However, now that the USPTO has issued formal examination guidance for “generic.com” trademark applications, it is worth considering what brand owners, particularly entrepreneurs, should think about before filing a trademark application. 

Descriptive vs. Generic

The Booking.com decision involved a specific scenario in which an applied-for mark combined a generic term with the “.com” top-level domain. Generic terms can never be protected as trademarks, because they are the names consumers use to refer to a type or class of goods (for example, the term “shoe” would be a generic term). Trademark law also does not protect descriptive terms automatically without something more (for example, the term “sturdy” for shoes). For purposes of federal registration, a generic term could never be registered, but a descriptive term could be registered (a) if the owner proves that the mark has acquired distinctiveness by years of exclusive use, such that consumers have come to recognize the mark as identifying that owner’s goods specifically, or (b) on the Supplemental Register, a register reserved for marks which could be capable of becoming distinctive in the future. Generally, the strongest trademarks are neither descriptive nor generic, but rather terms which do not describe or even suggest a quality of the goods and services offered under the mark.

The decision in Booking.com does not establish that “generic.com” terms can automatically be registered. Rather, by holding that such marks are not necessarily generic overall, the decision keeps the door open for mark owners such as Booking.com to possibly register descriptive “generic.com” marks if they are able to prove that the mark has acquired distinctiveness through long use. 

USPTO Guidance

The USPTO recently issued Examination Guide 3-20: Generic.com Terms after USPTO v. Booking.com. This guide provides specific, detailed guidance for evaluating “generic.com” applications.

A term combining a generic name for a product or service with a generic top-level domain such as “.com,” “.net,” “.org,” “.biz,” or “.info” should not be automatically rejected. However, the USPTO also states that Booking.com “did not otherwise significantly alter the genericness analysis to be applied to generic.com terms or the USPTO’s examination procedures regarding these terms.” When refusing an application based on genericness, the USPTO examining attorney must provide evidence that consumers would consider the primary significance of the “generic.com” term as a whole to be the name for a class or category of goods or services. 

If an applicant successfully argues that its “generic.com” mark is not generic but rather descriptive, it will still face a hurdle in the form of a descriptiveness refusal and a relatively high bar for establishing acquired distinctiveness. In the case of “generic.com” marks, the USPTO states that merely alleging that the mark has been in use for five years, a typical argument in these cases, is likely insufficient. The applicant may need to present “a significant amount of actual evidence” such as consumer surveys, advertising figures, and statements from the trade or public. 

The USPTO’s Examination Guide also notes another drawback to “generic.com” marks, namely that they may be subject to a narrow scope of protection. When examining applications, the USPTO compares the applied-for mark to prior registered marks and will refuse registration if a confusingly similar mark has already been registered. In the case of “generic.com” marks, the Guide suggests that relatively minor differences between “generic.com” marks may be sufficient for consumers to distinguish one from another. Accordingly, mark owners should be aware that registering their own “generic.com” mark might not prevent third parties from registering similar but non-identical “generic.com” marks. 

Should Entrepreneurs Attempt to Register “generic.com” Marks?

The Booking.com decision may be encouraging for entrepreneurs that want to use and protect “generic.com” marks in connection with their products and services, but it does not guarantee registration.

Mark owners applying for registration should be prepared to present evidence (1) that consumers do not consider the “generic.com” term to identify a generic class or type of products or services and (2) that consumers have come to recognize that “generic.com” does not merely describe the type of applicant’s goods or services but rather identifies applicant as the source of such goods or services.

In light of these requirements, it is particularly crucial that mark owners are careful to use the “generic.com” term as a brand in prominent connection with their goods and services, rather than merely as a means of directing consumers to a webpage, so as to build the strongest exclusive rights possible. Although Booking.com kept the door open for protection of “generic.com” marks, this opening is only narrow and, as a practical matter, only available to well-established brands that can prove longstanding and exclusive use of the mark. Entrepreneurs seeking to protect “generic.com” marks should still be prepared for an uphill battle.

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