USPTO Issues Guidance On Booking.com Decision
Earlier this year, the U.S. Supreme Court rejected a rule that a proposed trademark consisting of a generic term (e.g. “computer” for computers) and a generic top-level domain (“TLD”) (like .com) is automatically generic. That decision was previously blogged about here: https://t-rexlaw.com/supreme-court-rules-booking-dot-yeah/, and the decision looked closely at whether the domain name Booking.com was intrinsically generic.
The U.S. Patent and Trademark Office (“USPTO”) took this decision to heart (as it is required to do) and issued a new Examination Guide for Examining Attorneys at the USPTO to follow. The Guide starts off by noting “a proposed mark composed of a generic term combined with a generic top-level domain, such as “.com,” is not automatically generic, nor is it automatically non-generic.” This means the Examining Attorney must look at the proposed trademark and evaluate all available evidence, including consumer perception, to determine whether the proposed trademark is capable of functioning as a trademark (i.e. a source identifier). This analysis must be done on a case-by-case basis.
In order for an Examining Attorney to determine that the proposed trademark is generic, the Examiner must “show that the relevant consumers would understand the primary significance of the term, as a whole, to be the name of the class or category of the goods and/or services identified in the application.” Evidence of consumer perception can include dictionary definitions, usage in trade or by competitors, or other sources showing how a consumer would perceive the term.
However, Examining Attorneys may not initially refuse registration on the grounds of genericness, but instead must issue a refusal based on the trademark being merely descriptive and must provide supporting evidence. If the Examiner believes the evidence strongly suggests the generic.com term is not capable of functioning as a trademark, the Examiner must note responding with a claim of acquired distinctiveness or moving the application to the Supplemental Register (which grants some, but not all rights of the Principal Register) is not recommended.
If an applicant chooses to claim acquired distinctiveness (i.e. that consumers would perceive the generic.com term as an indicator of source based on longstanding use, advertisement, etc.), the Examiner must carefully review that evidence. Evidence to support a claim of acquired distinctiveness can consist of “consumer declarations; declarations or other relevant and probative evidence showing the duration, extent, and nature of the applicant’s use of the proposed mark, including the degree of exclusivity of use; related advertising expenditures; letters or statements from the trade or public; and any other appropriate evidence tending to show that the proposed mark distinguishes the goods or services to consumers”.
Ultimately, the Examination Guide is a step in the right direction – at a minimum generic.com domain names cannot be assumed to be generic without a thoughtful analysis. It will be interesting to see what domain names get registered and which do not in the years to come.
The full Examination Guide can be accessed here: