Effect of Booking.com US Supreme Court Decision One Year Later

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Tom Wolfe, Managing Partner of Moore Brewer Wolfe Jones Tyler & North.

Almost a year ago (June 30, 2020) late Justice Ruth Bader Ginsberg wrote her final majority opinion for the United States Supreme Court in United States Patent and Trademark Office, et al v. Booking.com which addressed whether generic terms used as domain names could be afforded trademark protection.

Generic terms cannot serve as trademarks (i.e., identify products) or service marks (i.e., identify services) because they identify the class of goods or services and not the source of the goods or services. Only terms that are capable of distinguishing one person’s products or services from another person’s products or services can serve as trademarks. “Credit Union” is a classic example of a generic term that cannot be any one credit union’s trademark only since it identifies a type of financial institution. 

The types of marks that are entitled to trademark protection are graded by strength. The strongest trademarks are invented or made-up words such as “Kodak” and “Xerox.” No one would disagree that an invented word is inherently distinctive of whatever product or service it identifies and these are “fanciful” marks that receive the greatest trademark protection.   The next strongest marks are arbitrary terms which have no meaning at all when associated with the products or services they identify. “Apple” is one of the most well-known arbitrary marks.  Next on the strength scale are suggestive marks. A “suggestive” mark hints at a quality or characteristic of the product or service it identifies without describing it.  The test for determining if a mark is “suggestive” is if the consumer, when coming across the mark, must exercise some thought or imagination to connect the mark with the products or services.  “Netflix” is a famous suggestive mark for streaming services. The final and weakest category for trademarks is “merely descriptive” trademarks that have acquired a secondary meaning. “Merely descriptive” terms are not capable of trademark protection because they merely describe an ingredient, quality, characteristic, function, feature, purpose or use of the product or services. If a “merely descriptive” term acquires “secondary meaning” then trademark protection is allowed. “Secondary meaning” occurs when, in the mind of the consumer, the term identifies not the product or services but the source/producer. This is often accomplished by use of the merely descriptive mark by the producer over a number of years. 

The United States Trademark and Patent Office (“USPTO”) has allowed trademark protection for marks combined with “.com” or another generic Internet name suffix so long as the mark is either “fanciful”, “arbitrary”, “suggestive”, or “merely descriptive” with acquired secondary meaning. Some examples are “word of mouth.org” for books and education services, “swim and sip.com” for insulated containers and sleeve holders for beverage, and “patch ops.com” for hats and shirts.    

The USPTO, however, viewed “Booking” as a generic term when used to identify hotel reservations. The USPTO’s position was that any generic term combined with a generic Internet name suffix could never acquire secondary meaning to identify the source/producer rather than the product or service itself. In other words, the resulting combination would always remain generic because both terms are generic.

In writing the majority opinion, Justice Ginsberg disagreed and held that a generic term combined with a generic Internet name suffix (e.g., “.com” or “.org”) could be allowed trademark protection (and therefore be federally registrable as a trademark/service mark) if consumers perceive the term, taken as a whole, as capable of identifying the source of goods or services rather than just identifying the goods or services. It is important to note that Booking.com was able to produce voluminous evidence, including customer surveys, to establish that the mark had acquired secondary meaning.

A review of current pending applications with the USPTO shows that a number of producers of products and services have sought federal registrations for generic.com marks since the Booking.com decision but it is too soon to determine how many will be successful.  It is often not easy to show secondary meaning for a “merely descriptive” or generic mark particularly if the mark has not been in use for at least 5 continuous years.  Below are some pending applications, most of which were recently filed, and it will be interesting to see the effect of the Booking.com decision on these applications for generic.com marks:

  • Nursing.com for software and education services related to nursing
  • Candy food truck.com for candy
  • Box.org for charitable services
  • Bottle of water.com  for online store for non-alcoholic water based beverages.
  • Slip covers hop.com for furniture slipcovers
  • Bumper superstore.com for online store for sale of bumpers for trucks
  • One that has been published for opposition and did pass the secondary meaning test is “We want a divorce.com” for legal services.

In summary, credit unions that use their domain names in marketing even if the domain name is of the “generic.com” or the “merely descriptive.com” variety, should review their usage and consider for whether secondary meaning has been acquired for a possible federal registration of the domain name. 

Article by Tom Wolfe, Managing Partner of Moore Brewer Wolfe Jones Tyler & North.

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