Trademark examination guide for Generic.com terms

The United States Patent and Trademark Office (USPTO) issued a trademark examination guide for Generic.com terms.

The guide issued this month was of course written after the now famous USPTO v. Booking.com case.

On June 30, 2020, the U.S. Supreme Court decided USPTO v. Booking.com B.V., 140 S. Ct. 2298, 2020 USPQ2d 10729 (2020) (Booking.com), rejecting a rule that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is automatically generic. In view of the Court’s decision, this examination guide addresses the procedures for examining applications for these “generic.com terms.” This guidance supersedes any previous United States Patent and Trademark Office (USPTO) guidance on this topic to the extent there are any conflicts.

Overview of Booking.com

Booking.com arose from the USPTO’s refusal to register the proposed mark BOOKING.COM on the ground that it is generic as applied to the identified hotel reservation services, or, in the alternative, that it is merely descriptive and has not acquired distinctiveness. The Trademark Trial and Appeal Board affirmed both refusals, but appeals at the district and circuit court levels were resolved in favor of the applicant, who had argued that the evidence of record, including new evidence introduced in the district court proceeding, established that consumers perceive the term as a source indicator, rather than as a class of online reservation services, and that the term had acquired distinctiveness in the minds of consumers.

While the lower-court decisions considered whether the evidence of record established that BOOKING.COM was generic, the Supreme Court’s opinion in Booking.com focused on the question of whether the USPTO may employ a per se rule that a generic term combined with a generic top-level domain, such as “.com,” results in a combination that is necessarily generic. The Court rejected such a per se rule, holding that “[w]hether any given ‘generic.com’ term is generic … 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.” In reaching its decision, the Court left undisturbed the circuit court’s finding that “.com does not itself have source-identifying significance when added to a [second-level domain] like booking.”

Therefore, under Booking.com,a proposed mark composed of a generic term combined with a generic top-level domain, such as “.com,” is not automatically generic, nor is it automatically non-generic. Instead, as in any other genericness analysis, examining attorneys must evaluate all of the available evidence, including the applicant’s evidence of consumer perception, to determine whether the relevant consumers perceive the term as generic for the identified class of goods and/or services or, instead, as capable of serving as a mark.

Accordingly, generic.com terms are potentially capable of serving as a mark and may be eligible for registration on the Supplemental Register, or on the Principal Register upon a sufficient showing of acquired distinctiveness. However, a generic.com term may still be refused as generic when warranted by the evidence in the application record.

Examination of Generic.com Terms

Booking.com rejected a per se rule that generic.com terms are automatically generic but did not otherwise significantly alter the genericness analysis to be applied to generic.com terms or the USPTO’s examination procedures regarding these terms. The following guidance pertains to any applied-for mark consisting of a generic.com term, that is, any combination of a generic term and generic top-level domain designating an entity or information, such as “.com,” “.net,” “.org,” “.biz,” or “.info.”

You can download the complete trademark examination guide for Generic.com terms by USPTO here:

Examination Guide 3-20 Generic.com Terms after USPTO v. Booking.com (pdf)