/>iIn its recent decision in USPTO v. Booking.com, the U.S. Supreme Court declined to adopt a sweeping rule that would automatically render “generic.com” marks unregistrable. This opens the door for future applicants to apply for their own “.com” trademark registrations.
For the first time, on May 4, 2020, the Supreme Court broadcasted live audio of oral arguments. The first case on the docket that day was USPTO v. Booking.com, a case questioning whether the addition of a generic top-level domain (such as “.com”) to an otherwise generic term (such as “booking”) can create a protectable trademark.
The USPTO’s argument was principally based on the 1888 Goodyear1 case that held adding the term “company” after a generic term does not make the phrase registerable. The USPTO argued that “generic.com” marks should be analyzed under Goodyear and that the mark “BOOKING.COM” (and similar “.com” marks) should always be found generic.
Booking.com argued that the Lanham Act (which is the applicable statute governing trademarks) essentially overruled older common law, including the Goodyear case. Based on the plain language of the Lanham Act, the determination of whether an otherwise generic mark that is combined with another term is registerable is done using the “primary significance” test. The “primary significance” test looks to evidence such as consumer surveys (though surveys are not dispositive) to determine the mark’s primary significance to the public.
Justice Ginsburg delivered the majority opinion on the Booking.com case with seven Justices joining. Justice Sotomayor concurred but noted that survey evidence is not the “be-all and end-all” in determining descriptiveness/genericness and that the USPTO may have been right that the evidence supplied by Booking.com was insufficient. Justice Breyer dissented primarily on the public policy grounds of Goodyear.
The Court upheld the lower court’s findings that it is possible for a “generic.com” name to, in the eyes of the consumer, primarily signify the source of the goods. Put another way, a “generic.com” mark is only generic (and therefore, unregistrable) if consumers primarily perceive it to mean the class of goods or services offered under the mark.
Ultimately, the Court resolved the relatively narrow issue that “generic.com” applications should not be barred at the gate. It’s unclear how the USPTO will actually implement the Court’s advice. Historically, the primary significance test is a high bar to meet and Justice Sotomayor’s concurrence and Justice Breyer’s dissent hint at the difficulties surrounding survey evidence and the importance of additional evidence (such as dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning) when determining the primary significance of a mark.
Applicants for “generic.com” trademark registrations should carefully consider the perception of their trademark in the market prior to application. In many cases, “generic.com” applications that canovercome the primary significance test (though survey and other evidence) will likely also be required to overcome the “secondary meaning” test of a descriptiveness rejection (through additional survey and other evidence, substantially exclusive and continuous use of a mark for five years, or registration on the supplemental register). Careful consideration of the trademark’s current perception in the marketplace can reveal what evidence will likely be required to acquire “generic.com” trademark registrations in the wake of USPTO v. Booking.com.
