Booking.com—floodgates open?
The US Supreme Court’s decision in Booking.com is unlikely to lead to a “flood” of ‘generic.com’ trademarks, but concerns over the justices’ reasoning remain, lawyers have told WIPR.
The court ruled yesterday, June 30, that combining an otherwise generic term, such as "booking", with ".com" could create a protectable trademark, in a defeat for the US Patent and Trademark Office (USPTO).
Lawyers for the USPTO warned the court that a decision in favour of Booking.com could lower the quality of trademarks on the federal registers, with more ‘generic’ marks being allowed.
But the USPTO’s proposed ‘per se’ or categorical ban on ‘generic.com’ marks was out of step with the Supreme Court’s analysis.
Delivering the opinion for the 8-1 majority, Justice Ruth Bader Ginsburg wrote that consumer perception should be the decisive factor in determining whether a mark was generic.
Brett Heavner, partner at Finnegan, said the court’s ruling came down to “the need for trademark law to mirror the reality of the online marketplace”.
According to the majority, so-called ‘generic.com’ marks were capable, in some circumstances, of functioning as a trademark and indicating the commercial source of the goods or services in question.
Nonetheless, the decision is still likely to introduce a “degree of uncertainty into trademark prosecution and enforcement,” Heavner said.
While marks like Booking.com will now be allowed, it’s not clear how strong the level of protection they afford to the owner will be, the Finnegan partner added.
Danielle Johnson, associate at Goldberg Kohn, said the ruling highlights “just how slippery the difference is between a generic word and a descriptive trademark”.
“The result is a bit of a double-edged sword,” she said, adding: “I hope it will result in revisions to internal training at the USPTO, leading to a more nuanced, less formulaic analysis of highly descriptive compound trademarks.
“I have often wished for this for my clients, and know well the frustration of putting care into crafting arguments against a descriptiveness refusal only to receive a response that does not appear to take into consideration the realities of consumer perceptions.”
Justice Stephen Breyer’s lone dissenting opinion raised “valid concerns” that owners of “weak” ‘generic.com’ trademarks could instigate or threaten costly litigation, Johnson warned.
But overall, lawyers don’t seem to share the USPTO’s concerns that the decision will “flood” the trademark registers with weak ‘generic.com’ marks.
David Bell, partner at Haynes and Boone, said that while ‘generic.com’ marks can now be registered, they have to meet the same distinctiveness requirements as any other application.
“The domain must still be used as a trademark—and not merely as a domain name,” he said.
A ‘generic.com’ brand will still have to be perceived by consumers as a trademark in order to warrant registration, Bell added.
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