The Supreme Court has, by an 8-1 margin, held that generic top-level domains (i.e. .com, .net, etc…) can be added to otherwise-generic words to make a protectable trademark. This holding, welcome news to many brands, upends settled legal advice on the way domain suffixes are treated by the USPTO. Moving forward, it appears likely that companies will aggressively seek out domains featuring generic industry terms in an attempt to build brand equity around them.
In USPTO v. Booking.com, BV, 591 U.S. __ (2020), Booking.com, a very well-known travel company, sought registration for its name BOOKING.COM, and the USPTO refused, concluding that “booking” is a generic term, and that “.com”, the generic top-level domain (“gTLD”), also conferred no source-identifying power. Therefore, the resulting mark, composed of two generic elements, is also generic. Booking.com appealed this decision, arguing that the relevant consideration is whether the combination of elements in a mark produced a distinctive, protectable whole. Lower courts sided with Booking.com, and the USPTO appealed these decisions to the Supreme Court, which affirmed them.
The Court rejected the USPTO’s “sweeping rule” that generic terms affixed to a gTLD are per se generic and not entitled to protection. Justice Ginsburg, writing for the majority, noted that nobody thinks of a “booking.com” as a generic good or service. Instead, consumers know “booking.com” to refer to a particular company. She concluded: “That should resolve this case: Because “Booking.com” is not a generic name to consumers, it is not generic.”
The USPTO attempted to equate a gTLD to a generic company designation, relying on earlier Court precedent holding that generic organizational terms like “company”, added to generic words “would tread on the right of all persons to deal in such articles.” The Court was flatly unpersuaded. In fact, at oral argument, counsel for Booking.com had deftly undermined the USPTO’s argument here by noting that domain registrations are owned one at a time, whereas company names are not. Therefore, a domain name is far more likely to produce a brand that is recognizable to consumers, since the website resolves to a single company. The Court ultimately agreed.
In dissent, Justice Breyer expressed concern that this holding would cause a run on registrations for generic terms affixed to gTLDs and also produce anti-competitive outcomes: “Because they immediately convey the nature of the business, the owner needs to expend less effort and expense educating consumers. . . . And a generic business name may create the impression that it is the most authoritative and trustworthy source of the particular good or service.” Justice Breyer worried about giving even more commercial advantages to these users. Ultimately, his concerns could not sway his colleagues, who used well-settled trademark law (rather than these policy concerns) to resolve the question.
Given this holding, it is fair to expect a proliferation of applications for generic terms affixed to gTLDs. If they succeed, the effect may be that companies will feel pressure not to use legitimately generic industry terms. For example, one can easily imagine an electronics company obtaining registration for TELEVISIONS.COM aggressively enforcing its rights in “television” against smaller and more shallow-pocketed competitors. These efforts may be effective in deterring use of a genuinely generic term if parties would rather change their behavior than risk the expense of contentious actions. While rightly-decided on the merits, it is fair to wonder if this case may have unintended consequences that will lead to further litigation to define more clearly the scope of protection afforded by these registered marks.
The fundamentals of trademark law are unchanged by this holding. Rights still accrue through use. A trademark registration is a frightening and powerful tool in enforcement activity, but a registrant has to prove a likelihood of confusion. For a mark composed of a generic term and a gTLD proving this is a challenge. Only marks that are extremely well-known in the public consciousness can expect a very wide scope of protection. Competent counsel should always be retained to determine whether your use infringes a mark of this nature; likewise, competent counsel can opine as to whether, if you are the owner of such a mark, it affords you sufficient rights to deter others’ use.
Dated January 12, 2021
Written by Zach Eyster, Esq.
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Zach Eyster’s experience in trademark, brand, licensing, and technology runs deep, as he has operated within these very specialized, niche areas of practice over the course of his entire legal career.
Having accrued significant experience before the USPTO and Trademark Trial & Appeal Board, and in the day-to-day protection and growth of clients’ IP assets, he is well-prepared to counsel on the most efficient, cost-effective, and investment-worthy courses of action with clients at all stages of growth and maturity.