Generic word + .com = Non-generic registrable mark

Intellectual property law has for long always strived to keep up with the dynamic business environment and this inherent quality of molding itself as per the need of hour, makes it stand out. The evolution of the law to accommodate itself with the changing business requirements especially in online trade can be considered a key factor behind the US Supreme court’s ruling of June 30th 2020, holding that ‘BOOKING.COM’ is registrable as a trade mark, even when the term ‘BOOKING’ per se is generic for hotel-reservation services. Some key takeaways from the Court’s finding which are important to reflect upon for all brand owners and stakeholders are as follows:

1. The court stated the guiding principles for adjudging the distinctiveness of generic marks, which are as under:

  • A “generic” term names a “class” of goods or services, rather than any particular feature or exemplification of the class.
  • For a compound term, the distinctiveness inquiry trains on the term’s meaning as a whole, and not its parts in isolation.
  • The relevant meaning of a term is its meaning to consumers.

2. The court turned to the intent of the Lanham Act i.e. focus on consumer perception and stated that the section governing cancellation of registration provides that “the primary significance of the registered mark to the relevant public . . . shall be the test for determining whether the registered mark has become the generic name of goods or services” and held that, because “” is not a generic name to consumers, it is not generic. It was held that a “” term might also convey to consumers a source-identifying characteristic: an association with a particular website. “” has an added advantage that it occupies a particular Internet domain name, so a consumer who is familiar with that aspect of the domain-name system can infer that BOOKING.COM refers to some specific entity.

3. The court turned to the already registered marks on PTO which are a combination of generic name and top level domain; Trademark Registration No. 3,601,346 for “ART.COM” on principal register for, inter alia, online retail store services” offering “art prints, original art, and art reproductions”; Trademark Registration No. 2,580,467 for “DATING.COM” on supplemental register for “dating services” and ruled against PTO’s contention that when a generic term is combined with a generic top-level domain like “.com”, the resulting combination is generic.

4. The court went on to state that PTO’s reliance on Goodyear case and the analogy derived therein was faulty. The PTO averred that Goodyear makes clear that could not register “Booking Company” as a mark for its services and that the same principle applies to the addition of “.com”, which conveys only that the company operates a commercial website via the internet. The court held this premise is faulty and ruled that a “” term might also convey to consumers a sourceidentifying characteristic: an association with a particular website. It was also observed that the “exclusivity” of “” terms sets them apart from terms like “Wine, Inc.” and “The Wine Company”. The consumers can understand a given “” term to describe the corresponding website or to identify the website’s proprietor.

While reaching at this opinion, the Court put the consumer perception of a mark on the highest pedestal which also should be the way forward for future cases. However, before a party initiates claiming rights on any “”, it is significant to evaluate whether the consumers would perceive that term as the name of a goods/services or instead, as a term capable of standing out among consumers.

Article by Omesh Puri and Ruchi Sarin,1st published in Lexology.