20 Aug Supreme Court Rules that There Is an Exception to the “No Generics” Trademark Restriction
If you have been following this blog for a while, you know there are a few basic rules that determine whether a trademark application is likely to be accepted. We go into greater depth elsewhere on our blog, but here’s the golden rule: a trademark needs to identify the source of the goods or services, so it cannot be purely descriptive or generic in nature. In short, the trademark needs to be unique, so that potential customers will not be confused about who is providing the product.
On June 30, 2020, however, the Supreme Court decided in an 8-1 decision that a generic term can be trademarked if followed by “.com.” The company at issue in this case is Booking.com, the online travel registration site. The Trademark Trial and Appeal Board denied Booking.com’s registration on the grounds that the name was generic, and in no way unique.
Why Would the USPTO Care about Generic.com Trademarks?
At first glance, it may not be clear why the USPTO would continue this fight with Booking.com all the way to the Supreme Court. What do they have to lose? In their arguments, the USPTO was concerned that allowing individual companies to trademark a generic term, followed by “.com” would grant monopoly power to a specific company within a particular industry. Imagine a company called “Catfood.com” taking over the marketplace for cat food, or something of the sort.
However, the Court rejected this argument, stating that consumers are able to view a web address more flexibly. Justice Ruth Bader Ginsburg wrote in the opinion, “Consumers…do not perceive the term ‘Booking.com’ to signify online hotel-reservation services as a class. In circumstances like those this case presents, a “generic.com” term is not generic and can be eligible for federal trademark registration.”
How Can You Tell if Your Generic.com Trademark Application Will be Accepted?
Of course, this Supreme Court decision did not create a new blanket rule within trademark law. It is not the case that, as a result of this decision, all “generic.com” trademark applications will be accepted. In her opinion, Justice Ginsburg goes into greater detail, emphasizing the role of consumer perception. If consumers would view a “generic.com” trademark as designating an entire class of goods or services, then it cannot be trademarked. However, if consumers are able to determine that the “generic.com” mark is indicating a particular source of goods or services, it can stand.
How Does this Change Your Trademark Decision-Making?
As a business owner, you are likely always thinking about your business’ assets. You are thinking about sourcing high-quality materials, cultivating a brand that communicates the essence of your services, and working around the clock to make sure that you are providing your customers with top-of-the-line products. However, it is easy to overlook our intellectual property assets. Your brand, which you have spent so much time and money developing, should be protected through legal registration. Otherwise, it is yours to lose.
At The Brand Protected ®, we do everything we can to help our business clients build strong brands that are well-protected. This includes providing consultation around brand names and whether they are likely to be awarded trademark protection at the federal level. Before this Supreme Court decision, we may have encouraged business owners with generic.com websites to develop a more unique brand identity. Now, there is a little more flexibility. Not sure how this case impacts your business’ ability to protect your brand? Let’s talk. Click here to schedule a call.