The Supreme Court’s Holding that Generic Terms Can Be Trademarks Is Not Fair to Struggling Startups

By Loletta Darden
August 17, 2020

“One critical reason the Court put forward was consumers’ association of “Booking.com” with one source: Booking Holdings, Inc. Yet, under existing trademark law, no amount of consumer recognition can transform generic terms into registrable marks.”

https://depositphotos.com/6496641/stock-photo-looking-at-the-opinion-section.htmlAt a time when small businesses are reeling, the Supreme Court decided to make life even more challenging for startups and mom and pop shops. The Court recently decided that a generic term combined with “.com” or “.net” could be registered as a federal trademark. If that sounds like no big deal to you, you have not thought it through. Based on the Court’s decision in United States Patent and Trademark Office et al. v. Booking.com, someone could register a trademark for autorepair.com. That would mean that Joe of Joe’s Auto Repair would have to get permission, and likely pay a licensing fee, to use the name Joe’s Auto Repair on his website and marketing materials. Multiply that by thousands of other generic business categories and the reality becomes clear.

The Court’s decision finding “Booking.com” to be a registrable service mark for online travel booking services introduces minefields of uncertainty into the trademark and branding efforts of mom and pop shops and start-ups. These companies will inevitably face increased fees and costs figuring out what can be used or registered as a trademark.

Generic terms are informational. They simply identify or name the class or type of products or services being offered: auto or computer repair service, booking (travel) services, soft drinks, or shoes, for example. Traditionally, a business using FranksComputerRepair.com would not have exclusive right to “ComputerRepair.com;” the Court’s decision turns over a carefully stocked apple cart.

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The Rationale

One critical reason the Court put forward was consumers’ association of “Booking.com” with one source: Booking Holdings, Inc. Yet, under existing trademark law, no amount of consumer recognition can transform generic terms into registrable marks. Why? Because generic terms identify a category (like fruit, snacks, medical devices) that all market-players need to use to compete.

The Court also argued that the evidence did not show “Booking.com” to be in generic use. But that is just not so. The U.S. Patent and Trademark Office (USPTO) has routinely denied applicants a trademark for the word “booking” for uses like CruiseBooking.com and Fish&HuntBooking.com. Also, a simple internet search would have shown the Court that people most certainly treat booking as a category; witness the websites Hotelbooking.com, Airfarebooking.com and ibooking.com. Ask a friend what booking.com would do and the answer will come back swiftly and confidently—booking services.

Uncertainty Unleashed

Before the Court’s decision, the trademark office checked to see if competitors used a term like “tax preparation” or “booking” or “landscaping” to sell the same service or goods. When they found competitors using the same term, they treated this as evidence that the term was generic. The Court chose to ignore this sensible approach, which opens the door for a lot of uncertainty going forward.

How far should the Court’s decision reach? Should registration of “Booking.com” preclude registration or use of trademarks like “ebooking.com,” “autobooking.com,” or “boatbooking.com”? Should the Court’s decision permit registration of trademarks like grocerystore.com; dolls.com; or lawnmowing.net, which would make registration and use of mom and pop versions like Tedslawnmowing.com more expensive, maybe even impossible? Of course not. No one owns generic terms. They belong to all of us—like our national parks.

Take Steps Now to Protect Your Business

For now, Booking.com is the law, so here are some options for small businesses looking to use and register trademarks incorporating a generic category.

  • Check both the domain name registry and the USPTO database to determine if the purely generic name is available for use and registration as a domain name and a trademark. If it is, consider registering the generic name along with .com or .net as a trademark. If the generic name is not available on either database, consideration must be given to the likelihood that the owner of a generic name plus “.com/.net” will demand a license fee for use of that generic name in combination with other words.
  • Refer to your business as a .com or .net provider of goods. In the Booking.com case, the Court attempted to create a new class of business that provides online booking services that it called “a Booking.com”. So, for a business providing services or goods over the internet, such as Marystaxprep.com, you should refer to the business as “a taxprep.com.” This approach could help prevent one of your competitors from registering “taxprep.com” as a trademark.

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The Author

Loletta Darden

Loletta Darden is an Associate Clinical Professor of Law at the Suffolk University Law School in Boston. Loletta is a registered Patent Attorney and Professor of Law at Suffolk University Law School. Loletta teaches in the area of intellectual property law (patent, trademark, copyright, and trade secret). She is the Director of Suffolk's Intellectual Property & Entrepreneurship Clinic, a multi-disciplinary clinic serving new and emerging businesses. In the Clinic, Loletta teaches a seminar on practical applications of intellectual property law and related skills, including trademark clearance, prosecution and registration; design/utility patent searching and clearance; advertising, branding and marketing law; litigation and TTAB practice; copyright, patent and trademark counseling; licensing; transactional drafting, advocacy; client counseling and interviewing; and negotiation. Loletta also teaches a trademark class entitled USPTO Trademark Practice, which teaches the skills necessary to practice before the U.S. Trademark Office. Prior to joining Suffolk, Loletta was Chief IP Counsel for Honeywell Consumer Products. She also has experience in private practice where she and advised emerging technology businesses, Fortune 100® companies, and individuals on protecting, exploiting and creating rights in patents, trademarks, and copyrights. After graduating from Suffolk Law School, Loletta served as Law Clerk to the Honorable Francis J. Boyle, Chief Judge, United States District Court for the District of Rhode Island. During her career, Loletta has had the opportunity to participate in several precedent setting patent and trademark cases, including Atlantic Thermoplastics v. Faytex Corp., Micron Separations, Inc. v. Pall Corporation - the companion case to Markman v. Westview Instruments, and Curtin v. United Trademark Holdings (trademark opposition finding consumer standing to oppose registration).

For more information or to contact Loletta, please visit her Suffolk University Bio Page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 12 Comments comments.

  1. TFCFM August 17, 2020 9:55 am

    LD: “…someone could register a trademark for autorepair.com. That would mean that Joe of Joe’s Auto Repair would have to get permission, and likely pay a licensing fee, to use the name Joe’s Auto Repair on his website and marketing materials

    This would appear to be so ONLY if Joe receives shockingly poor legal advice. Absent well-developed evidence that folks reading “Joe’s Auto Repair” would confuse Joe with the proprietor of autorepair.com (?or perhaps that folks generally believe the registrant to be the source of all the world’s auto repair services?), it’s difficult to imagine how the registrant might prevail in a trade-mark based suit.

    Keep in mind what the Supreme Court did and didn’t say in the Booking.com case. It DID say that the US Trademark Office could not refuse registration based on a per se rule that all generic terms, combined with a top-level domain signifier (“.com,” “.net”…). It DID NOT say that registrants of such marks are authorized to restrain common (or even merely descriptive) use of words contained in the mark, or even that such marks have scope beyond literal use of the full mark itself.

  2. Xtian August 17, 2020 11:12 am

    I didn’t think that a basis for refusal of a registration was that the mark is “generic.” I thought the legal term is that the mark is “descriptive.” Wouldn’t the term “generic” be better used to describe a famous mark (e.g. Xerox) that lost its distinctiveness, e.g., “the teacher xeroxed the classwork and gave a copy to each student”

  3. Anon August 18, 2020 8:13 am

    Prof. Darden’s write-up here is troubling.

    Troubling that the message is so off base as to raise questions as to what she teaches aspiring law students.

    Her bio provides a background that simply is askew from this article. The article starts with a some good questions about the case (and the case itself DOES show some very questionable ‘legal logic’ being used by the Justices), but from those initial hints, the Professor herself makes some very odd leaps of her own ‘logic.’ Assertions are made without support, or even anything close to logic.

    This would most definitely not pass if turned in for a grade.

  4. George August 19, 2020 2:14 pm

    @Anon

    Why don’t YOU become ‘non-Anon’, so others can criticize you by name as well?!!! At least I use my real first name!!! You are afraid to even do that!!!

  5. George August 19, 2020 2:20 pm

    Congress will now have to fix this decision! It’s pretty stupid unless limited to specifically the ‘entire’ and ‘exact’ trademark, including any ‘dot . . .”

    Only if another’s domain name is identical to, or ‘easily’ and ‘consistently’ confused with a trademarked domain name (as proven by actual evidence of that), should there be any possibility of objecting to its usage. That’s just common sense.

  6. Anon August 19, 2020 4:16 pm

    George,

    Feel free to criticize the content that I provide.

    I note that you do not even do that (with it without your real name) — as ‘brave’ as you are to use a first name only, I do not care whether or not a real name is used, and have explained many times on these boards the fallacy that attaches to such ‘out yourself’ proclamations.

  7. Anon August 21, 2020 11:51 am

    So…. George “I Use My Real Name” appears to be only able to use his real name (and first name at that)…

    Tell me George, do you understand how domain names work (and why there is a de facto NON confusion inherent in ANY single one domain name?

  8. Loletta Darden August 22, 2020 12:01 pm

    This post was written to inform business people of the very real market impact of Booking.com — their ability to register and use trademarks that include a generic term combined with a TLD could become more difficult and costly. At oral argument Booking.com said it would not bring legal action against others that sought to register or use marks that include “booking.com”. So while there is disagreement that such lawsuits or oppositions are likely, this is a real possibility. It is possible that the owner of the mark “autorepair.com” could prevent the use and registration of “joesautorepair.com” as a trademark. The trademark law permits it — that is what the likelihood of confusion test is about.

  9. Anon August 23, 2020 8:24 am

    “George,”

    Here is a tip for you: when you call out someone else (on a weak premise), and then you yourself are called out and FAIL to answer, you prove the point of your opponent and make yourself out to be the fool.

    How is that for you and your ‘bravery’ of using your ‘real name?’

  10. Anon August 24, 2020 2:12 pm

    their ability to register and use trademarks that include a generic term combined with a TLD could become more difficult and costly.

    Why?

    Certainly not for the reasons provided in the article. If anything, it is NOW EASIER to carve out a specific (and actually used) web address if only for the reason that web addresses MUST only provide a single source of material.

    this is a real possibility. It is possible that the owner of the mark “autorepair.com” could prevent the use and registration of “joesautorepair.com” as a trademark.

    NO – certainly not under the logic that the Court used. Quite the opposite.

    Where the point seems to miss the good professor (regardless of her cred) is that the web must provide a single source, and the Court has blessed the ‘no confusion’ COUPLED WITH the necessary action of the web.

    In this case, even the plaintiff disclaimed that minor variations of their mark would be covered by the explicit web address. The Professor is attempting to insert an “old world view” and absolutely misses the point of the case.

    If you have difficulty setting up a survey that basically makes the non-remarkable point that any ONE web address must (with zero confusion) lead to one source, then you might want to stop teaching.

  11. George September 7, 2020 3:45 pm

    Anon . . . I’ll let others judge what I have said – NOT YOU!!! Also, I have provided my business email address! If you can’t see it, too bad. The owners of this website CAN reach me anytime they want!

    Is sure hope you’re not an attorney refusing to use even a first name! LOL! What’s the ‘risk’ there?

  12. George September 7, 2020 3:53 pm

    Anon – you really LIKE insulting everyone – by name – don’t you? Maybe this isn’t the place for you if you don’t want to be reciprocated? Who else uses ‘Anon’ here? As if to make the point they NEVER want their identity to be known.

    I don’t care if someone knows my full name. Not ashamed of anything I say here. Why might you be? Do that on Twitter too?
    Make you a deal – you use your real name and I’ll do the same!