Article by Lee J. Eulgen and Bari L. Nathan, Guest Bloggers
A word or logo can only function as a trademark if it is distinctive (i.e., capable of identifying and distinguishing the goods and services with which it is used from others' goods and services) and, as most readers of this blog will readily recognize, a trademark's distinctiveness ranges along a spectrum, sometimes called a hierarchy of marks. In order from least distinctive to most distinctive, the categories of distinctiveness are: generic, descriptive, suggestive, arbitrary, and fanciful.
Marks that are suggestive, arbitrary, or fanciful are deemed sufficiently distinct to automatically function as trademarks. Descriptive marks, on the other hand, are not considered inherently distinctive, and can only function as a trademark if they have obtained secondary meaning (also known as acquired distinctiveness) in the minds of consumers. Generic terms are common identifiers for a type or category of product or service (e.g., "E-MAIL" used to identify an e-mail service, or "FITNESS CENTER" used to identify fitness centers or gyms) and, as such, the law does not allow these types of terms to be protected as proprietary to one party and registered as trademarks. This treatment of generic terms is based on the principle that people and companies deserve the right to accurately identify and describe their products and services, and granting a single party an exclusive right to a generic term would unfairly impede competition.
Based on the principle that generic terms cannot function as trademarks, the USPTO and federal courts across the United States have routinely rejected trademark protection for brands comprised of arguably generic or highly descriptive terms combined with top-level domain extensions such as ".com" (e.g., "HOTELS.COM" and "MATTRESS.COM") for some time. In 2009, the US Court of Appeals for the Federal Circuit in In re Hotels.com, L.P., 573 F.3d 1300, affirmed the Trademark Trial & Appeal Board's (TTAB) decision to refuse to register "HOTELS.COM" for hotel information services. The TTAB held that the proposed mark "HOTELS.COM" was a generic term for hotel information and reservations and that the "dot-com" indicated internet commerce but did not convert the generic term "hotels" into an otherwise protectable trademark. On appeal, the US Court of Appeals for the Federal Circuit found that the TTAB's conclusion that "HOTELS.COM" was generic was supported by "substantial evidence."
Similarly, in In re 1800Mattress.com IP, LLC, the Federal Circuit affirmed the TTAB's refusal to register the proposed mark "MATTRESS.COM" for online retail store services in the field of mattresses, beds, and bedding on the ground that the mark was generic, reasoning that the combination of generic terms "mattress" and ".com" added no new meaning given the prevalence of the term "mattress.com" in the website addresses of multiple online mattress retailers.
These cases and a number of similar decisions left brands of this ilk without protection and, frankly, with little hope of ever achieving trademark protection.
Recently, however, the US District Court for the Eastern District of Virginia in Booking.com v. Matal reversed the TTAB's decision to refuse to register the mark "BOOKING.COM" for hotel and travel reservation services. In its decision, the Court found that the term "booking" by itself was generic, but in analyzing whether the composite term "BOOKING.COM" was also generic, it found persuasive the fact that substantial evidence showed that the consuming public understood "BOOKING.COM" to be a specific brand, rather than a generic name for online booking services. The Court concluded that "BOOKING.COM" was descriptive of hotel and travel reservation services, and proceeded to analyze whether the mark had acquired secondary meaning such that it could function as a trademark. The Court ultimately held that "BOOKING.COM" had acquired secondary meaning and ordered the TTAB to register the term as a protectable trademark.
Booking.com revisited whether a generic term can in fact function as a trademark if it is combined with a top-level domain extension and suggests that the TTAB and federal courts may turn over a new leaf on this issue after years of contrary jurisprudence and allow the protection of such brands as trademarks. The focus of the inquiry would be on the scope of protection for such marks and the likelihood of confusion analysis, rather than whether the mark is generic.
The whole premise behind a term functioning as a trademark is that it serves as a source identifier, and the critical issue with respect to genericness is whether consumers primarily use or understand the term to generally refer to the type of goods or services in question. Therefore, as long as a generic or highly descriptive term combined with a top-level domain extension is perceived by potential purchasers to indicate a source (rather than a type or category of products or services), allowing its registration is consistent with recognized principles of trademark law. While it took time, it is the authors' view that the pendulum swinging back in favor of granting some — albeit narrow — protection for such marks is an overdue move in the right direction. It is the authors' view that the consuming public generally views such terms as trademarks and that any concerns regarding overreaching by the owners of such marks can be addressed through narrow treatment in the likelihood of confusion analysis. We hope that the trend started by the Booking.com decision continues.
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