Businesses often want to have a trademark that describes what they’re selling, but in order to be protectable, a trademark must be “distinctive.” This means it must be used to identify the source of the product or service.
Courts classify marks into categories of distinctiveness. The most distinctive marks are those that are arbitrary or fanciful. Examples include EXXON for gasoline and APPLE for electronics.
Suggestive marks, those that require some imagination to determine the nature of the goods or services, are also protectable. An example is MUSTANG for fast cars.
A descriptive mark receives trademark protection only if the mark’s owner can prove that the mark has acquired “secondary meaning” in the minds of the relevant public. In other words, consumers must associate the mark with a unique source and think of the term as a brand name rather than as a description.
For example, TV GUIDE is descriptive of a guide to TV programs, but because of its extensive advertising, promotion and public recognition, this mark has achieved secondary meaning and is protectable.
A generic term is the name for a general class of product or service. Take, for example, a shoe manufacturer with a line of sandals branded as SANDALS. When consumers see that term, they’ll think of open shoes with straps from any manufacturer, not just your brand. Generic terms receive no trademark protection.
This week, the US Supreme Court held that a generic word combined with “.com” can be protected as a trademark. Booking.com B. V. sued the US Patent and Trademark Office (PTO) challenging the decision to deny registration to BOOKING.COM as a trademark for use in connection with its travel-reservation website, booking.com.
The PTO had said that the combination of a generic word and “.com” is always generic, and because “booking” is generic for the type of services provided at the booking.com website, BOOKING.COM is also generic.
According to the PTO, “customers would understand the term BOOKING.COM primarily to refer to an online reservation service for travel, tours, and lodgings,” and even if “booking.com” is descriptive instead of generic, it’s unregisterable because it lacks secondary meaning.
The Supreme Court disagreed, holding that [generic mark].com is a generic name for a class of goods or services only if the term as a whole has that meaning to consumers, and that BOOKING.COM is not generic.
The Supreme Court explained that if BOOKING.COM were generic, consumers might consider Travelocity to be “a booking.com” or ask people to name their favorite “booking.com” provider. No evidence was submitted to show this and, in fact, evidence showed that consumers do associate the term with a specific source.
The Court also pointed out that only one entity can occupy a particular domain name at a time, so most consumers understand that a [generic mark].com term describes the corresponding website.
However, the Court specifically said that it’s not creating a rule automatically classifying [generic mark].com terms as non-generic. Whether such a term is generic, said the Court, 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.
Please feel free to contact us if you have any questions about or need help with choosing, protecting, or enforcing your trademarks.
Photo by Michal Kubalczyk on Unsplash
