SCOTUS Opens the Door to Generic Marks in USPTO v.

In its recently released opinion in the case United States Patent and Trademark Office et al. vs. BV, the U.S. Supreme Court held that the combination of a generic word “booking” with a common domain designation “.com” was not per se generic, and could be registered as a trademark by the USPTO subject to meeting other requirements. The 8-1 majority opinion came from Justice Ginsberg , with concurrence by Justice Sotomayor seeking to narrow the court’s opinion to state that no per se rule existed to support the USPTO refusal to register the BOOKING.COM mark. Justice Breyer authored the single dissent.

As a general rule, generic terms cannot serve as trademarks. For example, APPLE cannot serve as a trademark for apples, since the term is the general name of the product itself rather than a brand of a particular source of that product. Granting trademark rights would cause problems in commerce if a single purveyor held the right to identify goods by their name. In addition, the USPTO disregards domain extensions such as “.com” when used in a mark as merely descriptive, similar to “Inc.” or “Company.” In the case of the application for BOOKING.COM, these two rules were applied by the USPTO to deny registration, since the addition of “.com” did not change the generic nature of “booking” in the mark BOOKING.COM, used to identify online booking and reservation services. Today’s Supreme Court decision makes clear that the USPTO cannot apply these rules to automatically reject a mark like BOOKING.COM as generic, but must consider other evidence that shows consumers associate the mark with a particular source – that it has acquired distinctiveness and is not merely descriptive or generic as naming a class of goods or services.

As a result of the ruling in, businesses should examine their use of domain names to see if their use as trademarks should be protected by application for registration. Trademark use must go beyond use as merely a domain address, and show acquired distinctiveness – i.e., that consumers associate the domain name as a mark identifying the source of goods and services, and not just a descriptive or referential use. For example, mere use of “” as a website address for the sale of washing machines does not automatically qualify for trademark protection; however if consumers identify “” with a particular source of those goods or services, it may be sufficiently distinctive to serve as a trademark rather than a descriptive term, and could qualify for registration.

Please contact the trademark team at H&C for advice regarding the effect of this case on your trademark registration and brand protection strategies.

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