Law Office of Scott Nielson
Litigation Prevention Services
- Tel: 760-230-9450
- |
- Mail: info (at) scottnielson.com
Law Office of Scott Nielson
Litigation Prevention Services
USPTO lost 8-1 on a sweeping rule that would bar "generic.com" from being registered. USPTO argued that combining two generic terms like "booking" and ".com" created a compound generic name and therefore unregisterable. That resoning was rejected all the way to the SC. The KEY for Trademark registration is simply this, the mark must be one: "by which the goods of the applicant may be distinguished from the goods of others." The test is DISTINCTIVENESS not whether generic labels automatically make a name unregisterable.
TAGS:Trademark, Genericness, Distinctiveness, Likelihood of Confusion,
A generic name-the name of a class of products or services-is ineligiblefor federal trademark registration.
The appellate court also rejected the PTOs contention that, as a rule, combining a generic termlike booking with .com yields a generic composite.
Held: 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. Pp. 6-14.
(a) Whether a compound term is generic turns on whether that term,taken as a whole, signifies to consumers a class of goods or services. The courts below determined, and the PTO no longer disputes, that consumers do not in fact perceive the term Booking.com that way. Because Booking.com is not a generic name to consumers, it is not generic. Pp. 6-7.
(b) Opposing that determination, the PTO urges a nearly per se rule: When a generic term is combined with a generic Internet-domainname suffix like .com, the resulting combination is generic. The rule the PTO proffers is not borne out by the PTOs own past practice and lacks support in trademark law or policy. Pp. 7-14.
That premise is faulty, for only one entity can occupy a particular Internet domain name at a time, so a generic.com term could convey to consumers an association with a particular website. More-over, an unyielding legal rule that entirely disregards consumer perception is incompatible with a bedrock principle of the Lanham Act: The generic (or nongeneric) character of a particular term depends onits meaning to consumers, i.e., do consumers in fact perceive the termas the name of a class or, instead, as a term capable of distinguishingamong members of the class. Pp. 8-11.
A trademark distinguishes one producers goods or services from anothers. Guarding a trademark against use by others, this Court has explained, secure[s] to the owner ofthe mark the goodwill of her business and protect[s] the ability of consumers to distinguish among competing producers. Park N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U. S. 189, 198 (1985); see S. Rep. No. 1333, 79th Cong., 2d Sess., 3 (1946) (trademark statutes aim to protect the public so it may be confident that, in purchasing a product bearing a particular trade-mark which it favorably knows, it will get the product which it asks for and wants to get). Trademark protection has roots in common law and equity. Matal v. Tam, 582 U. S. ___, ___ (2017) (slip op., at 2). Today, the Lanham Act, enacted in 1946, provides federal statutory protection for trademarks. 60 Stat. 427, as amended, 15 U. S. C. §1051 et seq. We have recognized that federal trademark protection, supplementing state law, supports the free flow of commerce and foster[s] competition. Matal, 582 U. S., at ___, ___-___ (slip op., at 3, 4-5) (internal quotation marks omitted).
The owner of a mark on the principal register enjoys valuable benefits, including a presumption that the mark is valid. Iancu v. Brunetti, 588 U. S. ___, ___ (2019) (slip op., at 2); see §§1051, 1052.
The supplemental register accords more modest benefits; notably, a listing on that register announces ones use of the designation to others considering a similar mark. See 3 J. McCarthy, Trademarks and Unfair Competition §19:37 (5th ed. 2019) (hereinafter McCarthy). Even without federal registration, a mark may be eligible for protection against infringement under both the Lanham Act and other sources of law. See Matal, 582 U. S., at ___-___ (slip op., at 4-5).
Prime among the conditions for registration, the markmust be one by which the goods of the applicant may be distinguished from the goods of others. §1052; see §1091(a)(supplemental register contains marks capable of distinguishing . . . goods or services). Distinctiveness is often expressed on an increasing scale: Word marks may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5)fanciful. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U. S. 763, 768 (1992).
The more distinctive the mark, the more readily it qualifies for the principal register. The most distinctive marks- those that are arbitrary (Camel cigarettes), fanciful (Kodak film), or suggestive (Tide laundry detergent)-may be placed on the principal register because they are inherently distinctive. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U. S. 205, 210-211 (2000). Descriptiveterms, in contrast, are not eligible for the principal registerbased on their inherent qualities alone. E.g., Park N Fly, Inc. v. Dollar Park & Fly, Inc., 718 F. 2d 327, 331 (CA91983) (Park N Fly airport parking is descriptive), revd onother grounds, 469 U. S. 189 (1985). The Lanham Act, liberaliz[ing] the common law, extended protection to descriptive marks. Qualitex Co. v. Jacobson Products Co., 514 U. S. 159, 171 (1995). But to be placed on the principal register, descriptive terms must achieve significance in the minds of the public as identifying the applicants goods orservices-a quality called acquired distinctiveness or secondary meaning. Wal-Mart Stores, 529 U. S., at 211
At the lowest end of the distinctiveness scale is the generic name for the goods or services. §§1127, 1064(3), 1065(4). The name of the good itself (e.g., wine) isincapable of distinguish[ing] [one producers goods] from the goods of others and is therefore ineligible for registration. §1052; see §1091(a). Indeed, generic terms are ordinarily ineligible for protection as trademarks at all. See Restatement (Third) of Unfair Competition §15, p. 142 (1993); Otokoyama Co. v. Wine of Japan Import, Inc., 175 F. 3d 266, 270 (CA2 1999) ([E]veryone may use [generic terms] to refer to the goods they designate.).
Although the parties here disagree about the circum- stances in which terms like Booking.com rank as generic, several guiding principles are common ground. First, a generic term names a class of goods or services, rather than any particular feature or exemplification of the class. Brief for Petitioners 4; Brief for Respondent 6; see §§1127, 1064(3), 1065(4) (referring to the generic name for the goods or services); Park N Fly, 469 U. S., at 194 (A generic term is one that refers to the genus of which the particular product is a species.). Second, for a compound term, the distinctiveness inquiry trains on the terms meaning as a whole, not its parts in isolation. Reply Brief 9; Brief for Respondent 2; see Estate of P. D. Beckwith, Inc. v. Commissioner of Patents, 252 U. S. 538, 545-546 (1920). Third, the relevant meaning of a term is its meaning to consumers. Brief for Petitioners 43-44; Brief for Respondent 2; see Bayer Co. v. United Drug Co., 272 F. 505, 509 (SDNY 1921) (Hand, J.) (What do the buyers understand by the word for whose use the parties are contending?). Eligibility for registration, all agree, turns on the marks capacity to distinguis[h] goods in commerce. §1052. Evidencing the Lanham Acts focus on consumer perception, the section governing cancellation of registration provides that [t]he primary significance of the registered mark to the relevant public . . . shall be the test for determining whether the registered mark has become the generic name of goods or services. §1064(3).3
Existing registrations inconsistent withthe rule the PTO now advances would be at risk of cancellation if the PTOs current view were to prevail. See §1064(3). We decline to adopt a rule essentially excluding registration of generic.com marks. As explained below,we discern no support for the PTOs current view in trademark law or policy.
A The PTO urges that the exclusionary rule it advocatesfollows from a common-law principle, applied in Goodyears India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128
U. S. 598 (1888), that a generic corporate designation added to a generic term does not confer trademark eligibility.
That premise is faulty. A generic.com term might also convey to consumers a source-identifying characteristic: an association with a particular website. As the PTO and the dissent elsewhere acknowledge, only one entity can occupy a particular Internet domain name at a time, so [a] consumer who is familiar with that aspect of the domain-namesystem can infer that BOOKING.COM refers to some specific entity. Brief for Petitioners 40. See also Tr. of Oral Arg. 5 (Because domain names are one of a kind, a significant portion of the public will always understand a generic .com term to refer to a specific business . . . .); post, at 7 (the exclusivity of generic.com terms sets them apart from terms like Wine, Inc. and The Wine Company).
The PTOs reliance on Goodyear is flawed in another respect. The PTO understands Goodyear to hold that Generic Company terms are ineligible for trademark protection as a matter of law-regardless of how consumerswould understand the term. Brief for Petitioners 38. But, as noted, whether a term is generic depends on its meaning to consumers. Supra, at 6. That bedrock principle of theLanham Act is incompatible with an unyielding legal rulethat entirely disregards consumer perception. Instead, Goodyear reflects a more modest principle harmonious with Congress subsequent enactment: A compound of generic elements is generic if the combination yields no additional meaning to consumers capable of distinguishing the goodsor services.
Notably, a competitors use does not infringe a mark unless it is likely to confuse consumers. See §§1114(1), 1125(a)(1)(A); 4 McCarthy §23:1.50 (collecting state law). In assessing the likelihood of confusion, courts consider the marks distinctiveness: The weaker a mark, the fewer are the junior uses that will trigger a likelihood of consumer confusion. 2 id., §11:76. When a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the marks owner. Ibid. Similarly, [i]n a crowded field of lookalike marks (e.g., hotel names including the word grand),consumers may have learned to carefully pick out one mark from another. Id., §11:85. And even where some consumer confusion exists, the doctrine known as classic fair use, see id., §11:45, protects from liability anyone who uses a descriptive term, fairly and in good faith and otherwise than as a mark, merely to describe her own goods. 15 U. S. C. §1115(b)(4); see KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U. S. 111, 122-123 (2004).
The PTO also doubts that owners of generic.com brandsneed trademark protection in addition to existing competitive advantages. Booking.com, the PTO argues, has already seized a domain name that no other website can use and is easy for consumers to find. Consumers might enter the word booking in a search engine, the PTO observes, or proceed directly to booking.com in the expectation that[online hotel-booking] services will be offered at that address. Brief for Petitioners 32. Those competitive advantages, however, do not inevitably disqualify a mark fromfederal registration. All descriptive marks are intuitively linked to the product or service and thus might be easy forconsumers to find using a search engine or telephone directory. The Lanham Act permits registration nonetheless.See §1052(e), (f ). And the PTO fails to explain how the exclusive connection between a domain name and its owner makes the domain name a generic term all should be free to use. That connection makes trademark protection moreappropriate, not less. See supra, at 9.
Brief for Coalition of .Com Brand Own- ers as Amici Curiae 14-19 (trademark rights allow mark owners to stop domain-name abuse through private dispute resolution without resorting to litigation). We have no cause to deny Booking.com the same benefits Congress ac- corded other marks qualifying as nongeneric.
Copyright © 2001 - 2026 - All Rights Reserved - scottnielson.com
If you need help navigating you can check out my sitemap
Nothing on this Page or this website shall be relied upon or considered legal advice.
You can always review our Terms of Use, Privacy Policy and Satisfaction Guarantee
Last Updated: Tuesday, May 9, 2023