If consumers do not consider a word generic, it is not generic. USPTO v. BOOKING.COM

If consumers do not consider a word generic, it is not generic. USPTO v. BOOKING.COM

A trademark is a word, phrase, symbol, or design that distinguishes products from one company from products of another company.  Trademark law generally allows the owner of a trademark to exclude others from using a trademark that may lead to consumer confusion about the seller of a product.  If someone other than the owner of a trademark brands good with the trademark in a way that leads to consumer confusion that can be considered trademark infringement.  The likelihood that a plaintiff in a trademark infringement will be successful depends on a number of factors including, the strength of the trademark.  Registration of a trademark with the United States Patent and Trademark Office will strength the rights associated with the trademark, however registration is not required to begin using a trademark in commerce.

In the United States trademarks are divided into five categories: Fanciful, Arbitrary, Suggestive, Descriptive and Generic.  Trademarks that are fanciful, arbitrary, or suggestive are easier to register as trademarks.  Descriptive marks may be registered if the trademark owner can demonstrate that the trademark has acquired a secondary meaning.  Generic marks cannot be registered as trademarks.  Generic marks are the name of the product itself or so closely related that consumers no longer thing of a trademark as a brand, they think of it as the name of the product. The use of a trademark must be carefully monitored so that a popular trademark does not become generic.

The question then becomes, can a business choose a generic mark and create sufficient secondary meaning to make the generic mark a trademark that can be registered? The United States Patent and Trademark Office Trademark Manual of Examining Procedure indicates that when a trademark is considered generic, that trademark may never be registered. However recent Supreme Court precedent indicates that generic terms can be elevated to trademarks in certain circumstances.

UNITED STATES PATENT AND TRADEMARK OFFICE  v. BOOKING.COM B.V., 19-46 (USSC 2019) is a case in which a trademark successfully registered a term that was considered generic as a trademark.  The main issue in this case is whether the addition of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.

The Respondent in this case operates a website called Booking.com.  The website allows users to register for hotels, plane tickets and various other services.  A common slang term for the process that the website enables is “booking”.  When a person purchases airlines tickets it is common for them to say the “booked” a trip.  In 2018 the Respondent had revenue of over $14.5 billion USD so naturally, the Respondent wanted to protect its trademark by registering it with the United States Patent and Trademark Office.  The USPTO refused registration. The USPTO concluded that the term “booking” is generic for the services as to which respondent sought registration, and that the addition of the generic top-level domain “.com” did not create a protectable mark.

The Respondent appealed the USPTO decision to the United States District Court for the Eastern District of Virginia.  The District Court held that the term BOOKING.COM was non-generic. The USPTO appealed to the Court of Appeals for the Fourth Circuit, which affirmed the District Court. The USPTO then appealed the case to the United States Supreme Court.

The Supreme Court affirmed the decision of the lower courts.  The Supreme Court found that an unyielding legal rule that entirely disregards consumer perception is incompatible with a bedrock principle of the Lanham Act: The generic (or nongeneric) character of a particular term depends on its meaning to consumers, i.e., do consumers in fact perceive the term as the name of a class or, instead, as a term capable of distinguishing among members of the class. A term is generic when consumers perceive the term to be generic. In the case of Booking.com, because consumers do not perceive the term to be generic, it is not generic.

This case will have a profound impact on the definition of a generic trademark and will allow many companies to register trademarks which were once considered generic by the USPTO.

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