The U.S. Supreme Court recently confirmed that a "generic.com" term may be eligible for federal trademark registration in the U.S., in certain circumstances. We will review the relevant decisions, discuss the Canadian legal framework with respect to registration of such mark and consider the implications of seeking registration of a "generic.com" or a "generic.ca" mark in Canada.
The Relevant Decisions
In United States Patent and Trademark Office v. Booking.com B.V, the travel reservation company Booking.com B.V. ("BBV") sought to register four marks, each containing the term "Booking.com", with the United States Patent and Trademark Office ("USPTO"). BBV offers its travel reservation services under the brand "Booking.com" and operates a website with the same domain name.
The USPTO refused to register the marks on the basis that they represented a generic name for online hotel-reservation services. A generic name, being a name which identifies a class of goods or services, cannot be registered on the principal register and protected under U.S. trademark law1 .
Rather, a mark must be distinctive so that the goods or services of one business may be distinguished from the goods or services of another2 . Distinctiveness is often expressed on an increasing scale from generic, descriptive, suggestive, arbitrary or fanciful.3 Marks which are found to be inherently distinctive may be registered with the USPTO, as well as descriptive marks which have acquired distinctiveness or secondary meaning "in the minds of the public".4
BBV sought initial review of the USPTO's decision - the District Court for the Eastern District of Virginia (the "District Court") held that "Booking.com" was not generic. The District Court found that the consuming public "primarily understands that BOOKING.com does not refer to a genus, rather it is descriptive of services involving 'booking' available at that domain name".5 The District Court went on to find that "Booking.com" was descriptive but had acquired secondary meaning as to hotel-reservation services, and ultimately held that the marks met the distinctiveness requirement for registration.6
Then, on appeal, the Court of Appeals for the Fourth Circuit upheld the District Court's determination that the marks were not generic and confirmed that there was no error in the District Court's assessment of how consumers perceived the term "Booking.com".7
Subsequently, the U.S. Supreme Court granted certiorari and affirmed the lower courts' decisions. In its decision, the Supreme Court recognized certain guiding principles:
- A "generic" term names a "class" of goods or services, rather than any particular feature or exemplification of the class;
- With respect to the distinctiveness inquiry, a court must look at the term's meaning as a whole; and
- The relevant meaning of a term is its meaning to consumers.8
The Supreme Court held that "whether any given 'generic.com' term is generic, 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".9
Upholding the lower courts' decisions, the majority recognized that the courts found that consumers did not perceive "Booking.com" as a generic name, and that the USPTO did not contest this determination. The Court held that this finding alone should be determinative of the matter.10
However, the Supreme Court went on to consider and reject the USPTO's submission that a mark that includes a generic term combined with a generic top-level domain like ".com" is generic, absent exceptional circumstances.11 In contrast to the USPTO's position, the Court opined that a "generic.com" term may act as a source identifier because only one entity can occupy a particular Internet domain name at a time.12
As well, the USPTO submitted that businesses like BBV had other legal protections available to it, such as unfair-competition law, and that it did not require statutory trademark protection to protect its brand. Notably, the Supreme Court rejected this position and held that (i) BBV should not be denied the additional protections afforded to registered trademark owners; and (ii) the exclusive connection
between a domain name and its owner made trademark protection more appropriate in the circumstances, not less.13
1 Slip Opinion, U.S. Patent & Trademark Office v. Booking.com, No. 19-46 (U.S. June. 30, 2020) at 1.
2 Ibid at 3.
5 Ibid at 5.
8 Ibid at 6.
9 Ibid at 11.
10 Ibid at 7.
11 Ibid at 8.
12 Ibid at 9.
13 Ibid at 13
Originally published 11 August, 2020
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