“The question becomes, if the addition of a TLD to a generic term cannot create a protectable trademark, who decides whether the term preceding the TLD is generic?”
On November 8, the U.S. Supreme Court granted a Petition for Writ of Certiorari from the U.S. Patent and Trademark Office (USPTO) on the following issue: “Whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.” The issue stems from Booking.com B.V.’s attempt to register four versions of the trademark “booking.com” for, among other services, “making hotel reservations for others.” The applications, filed in 2011 and 2012, were refused by the USPTO on the grounds that “booking” and “.com” are generic terms which, when combined, nonetheless create a generic term which describes the travel agency and reservation services. In general, generic terms do not function as trade or service marks and cannot be registered.
The question on certiorari presents a potentially interesting conundrum which could limit the scope of its relevance in future cases. Specifically, the question presumes both the TLD (.com or .net for example) is inherently generic, and the term preceding the TLD is likewise generic. This, however, was not settled in the Booking.com case. Booking.com B.V. asserted that, as to the term “booking,” there was no evidence the public used the term in a generic sense, such as “I just logged on to my booking,” or “Expedia is one of several bookings.” It argued that the lack of such evidence shows the USPTO failed to meet its burden to show “booking” is a generic term. The question then becomes, if the addition of a TLD to a generic term cannot create a protectable trademark, who decides whether the term preceding the TLD is generic? Normally, this is a question of fact to be decided on a case-by-case basis, not as a matter of law. As a rule, the USPTO bears the burden of proving that the primary significance of a term, as a whole, is generic rather than being recognized as coming from one source, and thus functioning primarily as a trademark. The steps in this analysis include: (1) identifying the genus of goods or services in issue; and (2) determining whether the public understands the mark, as a whole, to refer to that genus. Yet, if the question on certiorari is decided in the negative, this rule could completely change. Would such a result lift the proof burden on the USPTO to conduct the two-step analysis and set a hard rule that any generic term coupled with a generic top-level domain (TLD) such as .com is universally generic and ineligible for trademark protection? If so, then how do we know whether the term coupled with the TLD is a generic term or not? It seems that only in a case where everyone agrees a term which precedes a TLD is clearly understood by the relevant consuming public to be generic would the rule apply.
Booking, B.V. argues it is improper to presume a specific common term is generic, and would exclude registration of some terms which are clearly recognized by the relevant consuming public as identifying a particular source, citing examples such as Coca-Cola® and American Airlines®. Nor, Booking.com B.V. argues further, is there any reason to create a special rule for proposed marks which include “.com” or any other TLD. The traditional test of whether the mark primarily refers, in the minds of the public, to the goods or services in connection with which it is used or to be registered is still proper and applicable. Specifically, that issue is a question of the facts of each case, not a rule of law which flatly precludes protection of any such terms. In support, it cited the 2004 decision of the U.S. Court of Appeals for the Federal Circuit in Oppedahl & Larson, 373, F.3d 1171 (Fed. Cir. 2004), in which the court concluded that the proposed mark PATENTS.COM was descriptive rather than generic and that “TLD marks may obtain registration upon a showing of distinctiveness.” Examples of such marks which have been accepted for registration include WEATHER.COM for online publications in the field of meteorology; ANCESTRY.COM for online electronic databases in the field of genealogy research; and SCUBA.COM for online retail store services in the field of scuba equipment.
To further complicate matters, Booking.com B.V. also noted that the court in Oppedahl stated that “Appellant’s identification of goods includes the use of the Internet. Accordingly, ‘.com’ is descriptive of this feature in the application.” So, if the question of genericness of the terms is in dispute, then asking on certiorari whether the combination of a “generic” TLD with “an otherwise generic term” seems to further presume that everyone would be in agreement that both the TLD and the term preceding the TLD are generic. Neither was true in this case, since Booking.com B.V. also asserted that “.com” as used with “booking” in relation to its services was descriptive, not generic, as concluded in Oppedahl. This may be one area where the Supreme Court can offer some clarity, namely, whether TLDs are inherently generic, as the USPTO suggests, or rather capable of being descriptive, as the Oppedahl decision seems to suggest.
As for any term which precedes a TLD, someone is still going to have the burden to show it is or is not generic in the minds of the consuming public. That burden has fallen on the USPTO in relation to terms proposed for registration, and it will likely stay with the USPTO. In only the very narrow instance where the term which precedes the TLD is universally understood or proven by the USPTO to be generic in the minds of the public would trademark protection then be precluded.
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