Supreme Court to Hear “Not-So-Generic” Case Regarding Generic Trademarks

UPDATE: In an 8-1 decision, the Court found in favor of and held that its trademark was entitled to registration (Patent and Trademark Office v. B. V.). The Court reasoned that since one entity can own an Internet domain name at the same time that a domain name can serve a source-indicating function to the general public. The Court rejected the USPTO’s categorical rule against registration of a generic word following by a “.com” or other top-level domain name. Writing for the majority, Justice Ginsburg explained that the controlling test “depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.”

The U.S. Supreme Court will hear a case that could have profound implications for owners of generic marks.  In United States Patent and Trademark Office v. B.V., the U.S. Supreme Court will decide if adding the term “.com” to a generic word creates a protectable trademark for an online business.  This case arose when the U.S. Patent and Trademark Office (USPTO) refused registration of “” as a trademark for an online travel website.  The USPTO determined that the word “Booking” was generic for hotel reservation services.  Adding the top-level domain “.com” to the generic word, the USPTO reasoned, did not create a distinctive mark because top-level domains do not ordinarily serve a source-indicating function.

To understand this case, it is important to understand the different types of trademarks and their relative strengths.  Trademark strength is determined on a continuum of five categories, with fanciful terms comprising the strongest marks and generic terms the weakest.  Generic marks consist of the common name of a product or service and identify its general nature.  Generic words are never eligible for trademark protection because the public needs to be able to refer to the product using common terms.  Descriptive trademarks are one step above generic marks.  Descriptive marks describe a feature, characteristic, or function of a product.  Descriptive marks are not ordinarily eligible for protection, but may become eligible if the user can show that the mark has obtained acquired distinctiveness through extensive use or consumer recognition.

After the USPTO denied registration of the “” mark, the applicant sought judicial review of the decision in federal district court.  The district court reversed the USPTO and concluded that top-level domains are generally source-identifying and that a mark composed of a generic term and a top-level domain formed a descriptive mark.  The court found that the applicant demonstrated acquired distinctiveness in its descriptive mark, thus making it eligible for registration.  The U.S. Court of Appeals for the Fourth Circuit affirmed the decision.  The Fourth Circuit’s reasoning was at odds with two other appeals courts that have considered the issue.  These previous appeal courts held that top-level domains function like corporate indicators in company names (i.e. Inc., Co., Ltd., etc.), and that they do not serve a source-identifying function.  In those circuits, adding a top-level domain to a generic word would not transform the generic mark into a protectable mark.  The Supreme Court has granted certiorari and will resolve the circuit split.

It is unusual for the Supreme Court to take up the issue of genericness.  However, this case is important because if the Supreme Court upholds the Fourth Circuit, many previously unregistrable marks could become protectable.  An online business that has been using a generic word with a top-level domain as part of its branding would have a descriptive mark.  If use has been extensive, those businesses could claim that their marks have acquired distinctiveness and are eligible for registration.  It is not difficult to imagine a rush to register those marks if the Supreme Court rules in favor of  We plan to monitor this case and author an update as soon as the Supreme Court issues its decision, likely by June 2020.

This article is provided for general information and should not be relied upon as legal advice for a specific situation. If you are in need of specific advice or legal representation, please do not hesitate to contact us.

©2019 Bea & VandenBerk