Whatever.com: The Implications of the Supreme Court Overruling the USPTO’s Per Se Generic.com Rule

By: Demitri Dawson

In the world of trademark protection, one rule has remained a constant—generic terms do not qualify for trademark protection. Trademarks are “any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods.”^[1] It is something that must uniquely identify your product or service.^[2] Generic marks, by contrast, are marks that refer to a general class of goods and cannot identify a source of goods.^[3] For example, in Ale House Management, Inc. v. Raleigh Ale House, Inc., the appellant sought to enjoin the appellee’s use of the mark “Ale House”, alleging infringement.^[4] The court rejected this claim, finding that the mark “Ale House”, when referring to restaurants that serve food and beer, was generic.^[5] The mark itself identified a class of services and did not identify a source.^[6] This principle is uniformly enforced across jurisdictions and within the United States Patent and Trademark (“USPTO”) office.

However, recently, the scope of this per se rule was challenged. In United States Patent & Trademark Office v. Booking.com, the USPTO rejected Booking.com’s attempt to register “Booking.com” as a trademark for its services.^[7]The USPTO concluded that “‘Booking.com’ is a generic name for online hotel-reservation services.”^[8] Although both parties agreed that the term “booking” is generic for such services, Booking.com argued that adding the conversion of the generic term into a domain name removed it from the “generic” category.^[9] Both the district court and the court of appeals agreed with this argument.^[10] In response, the USPTO filed a writ of certiorari, which the Supreme Court granted.

In affirming the appellate court’s decision, the Supreme Court rejected the USPTO’s contention that combining a generic term with “.com” yields nothing more than a “generic composite,” which is ineligible for protection.^[11] The Court found that domain names are unique because domain names “might also convey to consumers a source-identifying characteristic: an association with a particular website . . . ‘[a] consumer who is familiar with that aspect of the domain-name system can infer that “Booking.com” refers to some specific entity.’”^[12] Accordingly, the Court found, generic terms, when inserted into a domain name, may be viably non-generic depending on consumer perception.^[13]Accordingly, because it was uncontested that consumers do not view booking.com as a generic, the Court found it improper to refuse registration.^[14]

The Court also rejected the USPTO’s argument that allowing registration would give Booking.com a monopoly over the term “booking.”^[15] This possibility, the USPTO contended, contravenes the principles set forth in trademark law that competitors be allowed to the use the terms that are necessary to describe the products or services that they provide.^[16] The Court found that the nature of trademark protection will naturally prevent this possibility.^[17]Specifically, the Court found that the strength of protection given to marks that have low distinctiveness is weak and, as a result, competitors will be able to register similar marks without infringement.^[18] So, the exclusive license to “Booking.com” will likely not prevent the use of marks that incorporate the word booking.^[19]

The Courts refusal to extend the per generic mark rule to the domain name context may have serious implications. First, as noted by the Court itself, the exclusive right to a “generic.com” mark is something that will give businesses easier paths toward search engine optimization and market recognizability.^[20] Second, this decision makes it more difficult for competitors to use terms that describe the goods and services they provide. Despite the Court’s contention that structural safeguards will allow competitors to use similar marks, the Court’s decision upped the incentive for competitors to pursue aggressive litigation strategies aimed toward maintaining a semblance of trademark monopolization. Since trademark infringement is premised on a “likelihood of confusion” analysis—i.e. would the allegedly infringing mark lead a consumer to believe there is a connection between the mark and your goods or services—the area over which aggressive litigants may enforce their mark is extremely broad.^[21] So, businesses considering the big picture of brand protection may find it worthwhile to deter potential competitors from entering their brand space to maintain search engine optimization and peak market recognizability. Only time will tell how impactful this decision will end up being, but, at the very least, businesses that manage to capture a “generic.com” mark will have a significant leg up on industry competitors.

^[1] 15 U.S.C. § 1127.

^[2] See id.

^[3] See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 10 (2d Cir. 1976).

^[4] 205 F.3d 137, 139 (4th Cir. 2000).

^[5] See id. at 145.

^[6] Id. at 141.

^[7] 140 S.Ct. 2298, 2309 (2020).

^[8] See id. at 2301.

^[9] Id.

^[10] Id. at 2309.

^[11] Id. at 2305.

^[12] Id. at 2306.