Supreme Court Rules Addition of .COM to a Generic Term Can Be Trademarked

On June 30, 2020, The Supreme Court of the United States (SCOTUS) Ruled that adding a Top Level Domain (TLD), like “.com”, to a generic term can make the combined term eligible for trademark protection.   In its decision in the matter of the United States Patent and Trademark Office (USPTO) v. Booking.com B.V., the SCOTUS held that, “A term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers.”  In the present matter, the justices held in an 8-1 decision that “Booking.com” warranted trademark protection because it is not a generic name to consumers.

The USPTO had requested the justices provide a “[N]early per se rule” that would prevent registration of generic terms combined with generic TLDs, such as “.com” or “.net”.  Arguing that the granting of such marks would provide such owners a monopoly on the broader generic term itself, giving the mark owner, “[U]ndue control over similar language that others should remain free to use.”

Justice Ginsberg, penning the majority’s opinion on the matter, noted that this theory and request goes against the USPTO’s own past practice, which allowed registrations for marks such as “ART.COM” and “DATING.COM” for services that are largely directly related to the generic term before the generic TLD.  Justice Ginsberg further noted that concerns over the monopolization of the generic term “Booking” was unfounded, as the mark is decidedly a “weak” and “descriptive” mark, making it harder to show a likelihood of confusion with other marks that may also include the term.  The opinion notes that other terms, such as “Grand” in the names of hotels, are easily discernible by consumers, and “[C]onsumers, ‘may have learned to carefully pick out’ one mark for another.”

While the ruling does not open the floodgates for every company with a generic term attached to a TLD to obtain a trademark registration, it does provide a pathway for those companies who have developed substantial brand recognition with consumers to get protection on their marks.  Companies like Cars.com, Wine.com and Dictionary.com have noted that they have been following the case with great interest, as the outcome would likely dictate their ability to obtain or maintain registrations in their names.

For those companies that have developed a significant consumer recognition in their brand, where the name is otherwise a combination of a generic term plus a TLD, it has finally been settled that those names may be afforded trademark protection.  While there does exist the presumption that these marks will be relatively “weak,” they still allow for the application of federal trademark law and associated remedies for such registrations.  As the court noted in the present case, such a registration is not going to prevent the use of the generic word by itself where the generic word plus TLD is registered, but it would allow for the mark registrant to pursue the standard likelihood of confusion analysis to determine whether another user is infringing on the rights of the registrant.

One important final note on the decision is on how the finding of whether a mark is protectable weighs on several factors, not just consumer perception of the mark.  While consumer surveys are frequently used to evidence that the consumers associate the mark with a company, the court noted certain limitations and complexities of relying solely on survey evidence.  The court noted that other evidence considered in the analysis would be sources, such as “[D]ictionaries, usage by consumers and competitors and any other source of evidence bearing on how consumers perceive a term’s meaning.”

Before attempting to proceed with a registration of a generic + TLD mark, it is important to understand not just how well consumers associate the mark with the company/brand, but also other ancillary evidence.  For instance, if the generic part of the mark has more than one meaning, it could impact the ability to register the generic + TLD combination.  A full analysis should be considered before proceeding, as the process of obtaining a registration at the USPTO may still be complex, even given the ruling in the presently discussed matter.