Reconsidering DESCRIPTIVE.COM trademark registrations after BOOKING.COM

by Dennis Crouch

In re: GJ & AM, LLC, Docket No. 19-01214 (CA Fed 2020) (CookinPelletsCOM)

In this case GJ&AM is seeking to register a trademark on the mark “COOKINPELLETS.COM.”  The company sells grilling pellets on its website as well as via Amazon and local dealers.

The USPTO refused to register the mark — finding “cookinpellets.com” would be “understood by consumers as referring to a company that sells cooking pellets online.”  The Board (TTAB) also used the (former) shortcut almost-per-se rule of the patent office that adding “.com” would not transform a generic word into a registrable mark. See Booking.com B.V. v. Pat. & Trademark, 18-1309, 2020 WL 3578671 (U.S. July 2, 2020).  After the BOOKING.COM decision, the Federal Circuit received supplemental briefing.  However, rather than deciding the case the court remanded to the TTAB. “The impact of the Supreme Court’s decision in Booking.com is best determined by the Board in the first instance.”

In its supplemental briefing, the USPTO had suggested that the court could go ahead and decide the case — revealing its approach to narrowly applying Booking.com. The PTO’s brief begins with its statement of the decision:

In Booking.com, the Supreme Court was presented solely with the legal question whether a generic term combined with the top level domain “.com” results in a combination that is necessarily generic. The Supreme Court rejected a rule that a “generic.com” term is always generic and also rejected a rule that such a term is automatically non-generic.

[Supplemental Briefing PTOSupplementalBriefPelletCookin].

The TTAB had rejected the mark as both rejected the mark as both generic and merely descriptive without proof of acquired distinctiveness.  On appeal, the PTO argued that Booking.com‘s holding did not disturb the distinctiveness holding:

The Supreme Court’s decision in Booking.com implicates only the genericness refusal ground …. If the Court determines substantial evidence supports the merely descriptive and lacks acquired distinctiveness refusal ground, the Court should affirm the Board’s decision on that basis alone without reaching the genericness refusal.

The problem with the PTO’s argument here is that the Board did not give any weight to the “.com” portion of the mark when determining distinctiveness or acquired distinctiveness.  Rather the Board applied the now-rejected PTO almost-per-se rule that “.com” adds nothing and therefore could not “expand the meaning of the mark” beyond that of “cookinpellets” itself.  The PTO briefing on this point does not appear to fully consider the holding of Booking.com — it will be interesting to see how the TTAB responds.

13 thoughts on “Reconsidering DESCRIPTIVE.COM trademark registrations after BOOKING.COM

  1. 3

    Bueller?

    Bueller?

    Bueller?

    Bueller?

    1. 3.1

      Maybe my pal with the shifting historical pseudonyms (and over 95% rate of attention to a single person) can chime in here with the veritable ‘depth’ of their wisdom…

      [guffaw]

      1. 3.1.1

        Yep, that’s what I figured – Shifty has nothing at all (besides his ACME kits).

  2. 2

    If booking.com gets sufficiently famous, could they stop me from registering “BOOKING.HORSE” for my website that connects travelers with horse boarding services near their vacation destinations?

    1. 2.1

      I have already covered that point.

      1. 2.1.1

        What about “BOOK.ING,” my website about how to cosplay as your favorite book?

        1. 2.1.1.1

          Sounds solid to me.

          Anyone want to advance a position otherwise that survives the logic as applied by the Court?

          Anyone?

          Bueller?

  3. 1

    and also rejected a rule that such a term is automatically non-generic.

    Except for the fact that the Court did no such thing – and that the logic of what the Court DID DO is unmistakable: is there any chance whatsoever that (given the necessary functioning of the Internet) ANY ‘before the dot’ item combined with ANY ‘after the dot’ item can ONLY lead to a single solitary source, how can anyone EVER claim or get to any type of professed confusion?

    There are necessary consequences of what the Court has done.

    1. 1.1

      … and to note that the title of the professor’s post here slightly misses in that along the spectrum of classifications for trademarks, “descriptive” is along that spectrum towards ease of registering — in and of itself.

      IF the Court allows “GENERIC.COM” how is that any “DESCRIPTIVE.COM” not going to be able to overcome any objection?

      I welcome any cogent and on point remark that is able to distinguish the necessary ramification of the necessary sole-source effect of a web site.

      To date, none have been advanced.

    2. 1.2

      That’s not how trademarks work. Disney’s headquarters are located at “500 S. Buena Vista Street” in Burbank, California. This address can only lead to a single solitary source, and no other company can have this address. That doesn’t mean “500 S. Buena Vista Street” is a trademark of Disney or not a trademark of someone else.

      1. 1.2.1

        That’s not what the Court did here, id – the ‘street address’ or ‘telephone number’ distinctions have been thrown out.

        While it does not mean that any one address IS an (automatic) trademark, the LOGIC used by the Court may very well open the door for such to become trademarks.

        1. 1.2.1.1

          For example, “1 Infinite Loop” is both Apple’s address in Cupertino, and is likely distinctive as it is instantly associated with Apple for anyone in the industry.

          1. 1.2.1.1.1

            A possible drawback is that which you identify — alone — may not be the same as the (mandatory) sole source that a web address (ANY ‘before the dot’ combined with ANY ‘after the dot’ combination) would provide.

            There well may be one such in Cupertino, one in Waco, one in Springfield,…

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