Supreme Court Landmark Ruling on Generic.com Trademarks
On June 30, 2020 the Supreme Court handed down a landmark ruling in trademark law. It decided generic terms can be registered as trademarks when followed by .com.
Why Generic Terms Were Historically Unregistrable
Trademark law had, up to this time, held that generic terms are not registrable*. For example, getting a trademark on the word “Farm”. Farm is a generic description of a type of property. As such, it would be improper to grant rights of usage for the word to one party. In the same way a generic term couldn’t be combined with “Inc.” to bypass the principle, the PTO held that adding “.com” to a generic term yields a generic composite, not a distinctive mark.
Booking.com Challenges the USPTO
It was this basic principle that led the USPTO to reject Booking.com as eligible for trademark.
So Booking.com took the case all the way to the Supreme Court. The Patent and Trademark Office asked the Supreme Court to hand down a clear decision upholding the prohibition. It argued that overturning it could lead to large companies like Booking.com, abusing smaller companies that use the generic term “booking” anywhere.
Supreme Court Decision: Consumer Perception Matters
Instead, the Supreme Court, by an 8-1 decision, rejected the USPTO’s request. It found that if consumers perceive a term as not being generic, then it isn’t generic. This reasoning is consistent with trademark law. The whole point of which is to protect consumers in their ability to know the source of goods and services. But the Court was clear that while they could not create a bright line rule prohibiting generic.com trademarks, neither would such names be automatically considered distinctive. A substantial amount of evidence would be required to convince the PTO that consumers view such names as trademarked.
Implications for Future Trademark Applications
This ruling will likely lead to another gold-rush of companies trying to register such names. Lacking the bright-line rule, the PTO will have to consider the merits case by case. We expect there will be no shortage of registration attempts and subsequent challenges over the marks.
See our FAQ page on Trademark Basics: What are the levels of Distinctiveness?