time to register your generic.com

United States Patent & Trademark Office (USPTO) v. Booking.Com B.V. (Supreme Court 2020) [Full Decision PDF]

In this trademark case, the USPTO asked the court to implement its “nearly per se” rule that a generic term remains generic even if coupled with a generic top level domain (such as “.com”).  The 4th Circuit sided with BOOKING.COM and the Supreme Court has now affirmed: “[W]e discern no support for the PTO’s current view in trademark law or policy.” Id.

According to the majority, the question is not whether some portion of BOOKING.COM is generic but rather whether the term “taken as a whole” is generic.  Then the court queries — what type of generic thing is a “booking.com”

That should resolve this case: Because “Booking.com” is not a generic name to consumers, it is not generic.

In its opinion, the court notes the PTO inconsistency (ART.COM and DATING.COM are both registered).

The following quote from the case is probably the most controversial:

[I]f “Booking.com” were generic, we might expect consumers to understand Travelocity—another such service—to be a “Booking.com.” We might similarly expect that a consumer, searching for a trusted source of online hotel-reservation services, could ask a frequent traveler to name her favorite “Booking.com” provider. Consumers do not in fact perceive the term “Booking.com” that way, the courts below determined.

The majority opinion was written by Justice Ginsburg and joined by six other justices, including all five conservatives. Justice Sotomayor concurred in a very short opinion; and Justice Breyer wrote in dissent and would have applied Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598, 602 (1888). Justice Breyer writes:

Goodyear recognized that designations such as “Company,” “Corp.,” and “Inc.” merely indicate corporate form and therefore do nothing to distinguish one firm’s goods or services from all others’. . .  .[W]here a compound term consists simply of a generic term plus a corporate designation, the whole is necessarily no greater than the sum of its parts. . . .

Breyer in dissent.

Breyer spends some time focusing on the problems associated with survey evidence.  I suspect that aspect of his dissent will have some impact on how courts conduct trademark cases in the future.

 

18 thoughts on “time to register your generic.com

  1. 6

    I don’t get what is so controversial here. Isn’t TM law supposed to be about what a brand means to the average consumer? The “controversy” seems to stem from an ignorant view that TM law is an IP right in the words themselves.

    What am I missing here?

    1. 6.1

      I don’t get it either. Why people are trying to impose rules that simply do not comport with how people’s minds work when TM is all about secondary meaning and source of goods.

      It is typical of the likes of Breyer.

  2. 5

    What TM practitioners know is that there’s no “nearly per se rule” at the TTAB. The Board’s genericness precedent is inscrutable and, no matter which side you’re on, often just wrong. The Court really could have gone a lot farther in clearing it up.

    1. 5.1

      What is the difference between ‘per se’ and ‘nearly per se?’

      (no snark — leastwise towards you)

    2. 5.2

      Also (since Night Writer appears to not want to open his eyes), do you understand the difference between generic and descriptive as levers (here’s a hint: in only one of these two is it THEN permissible to even engage the likes of surveys).

  3. 4

    Breyer’s dissent is partially premised on “.com” being a corporate designation. However, I don’t think that the public sees it that way. There is certainly no requirement that corporations use “.com” or that only corporations are allowed to use “.com”.

    1. 4.1

      A decent point, NS II — and one that opens a wider door, given the plentitude of other ‘after the dot’ options that will ALSO follow the ‘logic’ of the majority position that any ‘before the dot’ word (be it generic or be it someone else’s trademark) coupled with that ‘after the dot’ — and then taken as a whole, cannot lead to any confusion based on the fact that the web works such that there is ONLY ever one owner of a website (at a time).

      Disney.WHATEVER — look out!

  4. 2

    A boon to attorneys (and showing yet again, the lack of capacity for discernment from the Bench for IP matters).

  5. 1

    This is exactly what I said. What matters is what it creates in the consumers mind just like when Musk added an “X” to “Space.”

    Space X becomes a company and a brand instantly just as “bookings.com” does.

    1. 1.1

      Let the “land grab” begin!

      What you said — and the absence of legal reasoning — have collided.

      1. 1.1.1

        >>A term styled “generic.com” is a generic name for a class of goods
        or services only if the term has that meaning to consumers.

        It is exactly what I told you the holding would be.

        1. 1.1.1.1

          … and exactly lacking the legal insight that I told you.

          Yay, we both ‘win.’

        2. 1.1.1.2

          Let’s do more than merely scratch the surface here please.

          It is a given that the way that the “dot anything” works is that THAT “dot anythingnecessarily creates a singular Internet destination that (now) De Facto means that there can be NO confusion (and anyone who can not set up a survey to show this will not be long in the survey supply business).

          This entirely eviscerates the notion that “generic” should not be the subject of trademarks.

          And that is only one of the fallouts.

          Another fallout is that distinction now arises from both sides of the “dot,” as long as one can have some single difference on either side of the “dot,” then a ‘non-confusing’ single website destination is reachable.

          For those then WITH a brand and with only one or two of the ‘after dot’ domains, are you now faced with having to expand (to protect your TM) to any/all/most of the other ‘after dot’ options? After all, the ‘logic’ here of the Court fully applies to ANY word (as merely a first part) if the keep-out of ‘generic’ no longer applies. Even words that are of themselves trademarks.

          1. 1.1.1.2.1

            Well, I suppose that I should be happy with Night Writer taking baby steps to seeing the necessary legal consequences, as in the next thread he (apparently reluctantly) admits that the very issues I put on the table are indeed likely to occur.

            1. 1.1.1.2.1.1

              Wouldn’t it matter, how the owner of generic.com used its trademark “generic.com” in its publications, sales literature, etc. in the past as policy and custom? I suggest most owners of domains.com have probably mis-used their domain.com If some have slandered themselves, does it factor into validity of many of the TM’s this would seem to cover ?

              1. 1.1.1.2.1.1.1

                Yes. I think the PTO will continue to take the stance that you have to do more than just use the domain.com as a domain name. — that won’t count as a specimen of use in commerce.

              2. 1.1.1.2.1.1.2

                Sure – you have to at least attempt to use it as a trademark.

                That’s an exceedingly low bar to slide over.

                The bottom line remains (in the best Highlander meme): There can be only one.

                (Only one ‘in total’ “anything” before the dot PLUS any of the vast plurality of ‘after the dot’ items.

                The pure functionality of the web address now guarantees the availability of the domain name (no matter WHAT that domain name may be) as a trademark.

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