Turning the Page: Dotcom Trademark Registrations Following Booking.com
Massy Vainshtein | March 29, 2021
Introduction
One of the most significant trademark law decisions to arise out of the Supreme Court in the last year was United States Patent and Trademark Office v. Booking.com B.V.
In a landmark move, the Court declined to adopt the United States Patent and Trademark Office’s (USPTO) per se rule that all generic terms plus top-level domain marks (hereafter “generic.com” trademarks) are generic and may not be protected as trademarks. The bright line rule stemmed from the USPTO’s earlier decision in In re Hotels.com, L.P., where HOTELS.COM was held generic for “providing information for others about temporary lodging; travel agency services.”
In the 8-1 majority opinion, Justice Ginsburg pointed out that several registrations already conflicted with this general rule, including ART.COM on the Principal Register for “[o]nline retail store services” offering “art prints, original art, [and] art reproduction,” and DATING.COM on the Supplemental Register for dating services. For more information about the protracted battle to register Booking.com, watch this webinar recording.
Registering Generic.com Marks Post-Booking.com
So what does this mean for brand owners hoping to register a generic.com mark? According to an Examination Guide (hereinafter, the “Guide”) published by the USPTO in October of last year, successfully registering a generic.com mark on the Principal Register is no simple feat.
Despite the ruling in Booking.com, examining attorneys must still assess whether a generic.com mark is in fact generic. When an applicant applies for a mark on the Principal Register, the examining attorney will determine whether “relevant consumers would understand the primary significance of the term, as a whole, to be the name of the class or category of the goods and/or services identified in the application” before making a determination as to whether the mark is generic. However, even if strong evidence of genericness exists, examining attorneys are directed to refuse the application as merely descriptive and determine whether the generic.com term is capable of serving as a source indicator. An applicant can demonstrate that their mark is a source indicator if they are able to show that their mark has acquired distinctiveness.
According to the Guide, an examining attorney must carefully review evidence submitted in support of the generic.com application claiming acquired distinctiveness under 15 U.S.C. §1052(f) (hereafter, “§2(f)”). The USPTO has concluded that the nature of generic.com marks is highly descriptive and, therefore, consumers are less likely to think they indicate source. As such, prima facie evidence of use of the generic.com mark for over five years will likely be insufficient to support a §2(f) claim. Instead, examining attorneys are asked to look for “actual” evidence of acquired distinctiveness; that is: “consumer surveys; consumer declarations; declarations or other relevant and probative evidence showing the duration, extent, and nature of the applicant’s use of the proposed mark, including the degree of exclusivity of use; related advertising expenditures; letters or statements from the trade or public; and any other appropriate evidence tending to show that the proposed mark distinguishes the goods or services to consumers.” However, the cost of providing “actual evidence” like consumer surveys can be prohibitive, particularly for small businesses. According to IPWatchDog, consumer surveys can range from $20,000 to $25,000 on the low end.
Where an applicant is unable to provide “actual evidence” of acquired distinctiveness, the applicant can pursue registration on the Supplemental Register. According to the Guide, “if the examining attorney determines that the available evidence establishes that the proposed generic.com term is at least capable of indicating source but is insufficient to show that the term has acquired distinctiveness, the examining attorney may allow registration on the Supplemental Register, if otherwise appropriate.” Post Booking.com, several applicants have pursued registration on the Supplemental Register for their generic.com marks:
- PUERTORICO.COM for “providing information, news and commentary in the field of travel”
- Here, the applicant’s §2(f) claim was unsuccessful following an examining attorney’s finding of descriptiveness, despite an assertion that the mark has acquired distinctiveness due to open and continuous use in commerce for almost 25 years. The applicant’s evidence consisted of the following: dates of use, search results on Bing and Google, and screen shots from the applicant’s website, Puertorico.com. This evidence was determined to be insufficient to show acquired distinctiveness of the applied-for mark because the wording “PUERTORICO.COM” merely informs the consumer of the subject to the services.
- CLOWNS.COM for children’s entertainment services
- Initially, the examining attorney determined that the mark was generic and that the applicant’s claim of acquired distinctiveness under §2(f) was insufficient to overcome the refusal because “generic terms cannot be rescued by proof of distinctiveness or secondary meaning no matter how voluminous the proffered evidence may be.” The applicant amended the application and was granted registration on the Supplemental Register. While the record does not explicitly detail what led to this amendment, we can infer that as a result of Booking.com, the applicant was able to successfully argue that while CLOWNS.COM may consist of two generic parts, and while it had not yet acquired distinctiveness, the mark is at least capable of indicating source.
Using Disclaimers to Register Generic.com Marks
If an applicant is unable to prove acquired distinctiveness pursuant to §2(f), they may be able to achieve registration on the Principal Register if they apply for a combined word and design mark and opt to disclaim their generic.com mark. Typically, disclaimers are statements that are included in an application to indicate that the applicant does not claim exclusive rights to an unregistrable portion of the mark. But according to the Guide, when disclaiming a generic.com term, the term must be disclaimed in its entirety, rather than disclaiming the generic term and the generic top-level domain separately. This means that disclaimers can only be used in connection with generic.com marks when the mark at issue is a combined word and design mark. When the applicant disclaims the literal element of the mark, the portion of the mark that receives trademark registration is the design element. An applicant would obviously not be able to disclaim a generic.com word mark as a disclaimer would result in the applicant disclaiming the entire mark.
A USPTO search of generic.com marks on the Principal Register indicates that many mark owners have chosen this pathway to registration for their combined word and design generic.com marks. Registrations like COOKIES.COM for online retail store services featuring baked goods and CAKES.COM for cakes and muffins show that applicants with combined word and design marks have been able to successfully register their generic.com marks on the Principal Register by disclaiming the literal elements of their marks.
Interestingly, an applicant may pursue more than one pathway towards registration. As mentioned in the previous section, the applicant for CLOWNS.COM was able to register its word mark on the Supplemental Register. However, for its combined word and design mark CLOWNS.COM, the applicant was able to successfully register the mark on the Principal Register after the applicant disclaimed the literal element of the mark.
How to Navigate a Generic.com Trademark Application
If your client is looking to secure a trademark registration for a generic.com mark, the following steps can help you navigate the process:
-
File a trademark application seeking registration on the Principal Register, claiming acquired distinctiveness
-
If you receive an office action citing §2(e)(1) that the mark is merely descriptive, submit evidence indicating that the mark has acquired distinctiveness pursuant to §2(f), e.g. verified statements of long term use, advertising and sales expenditures, examples of typical advertisements, affidavits and declarations of consumers, or customer surveys.
-
If the evidence is not enough to overcome the §2(e)(1) claim, consider amending the application to the Supplemental Register. For more information about the differences between the Principal and Supplemental Registers, check out our article here.
-
If you receive an office action finding there is strong evidence of genericness despite a claim of acquired distinctiveness, the examining attorney may issue a refusal on that basis. You may still choose to amend the application to the Supplemental Register.
-or-
If the mark is a combined word and design mark, you may choose to disclaim the literal element of the mark. This may allow for the application to move forward on the Principal Register. Note: You can only disclaim the literal element of a combined word and designed mark; disclaimers for word marks without a design element will likely result in a refusal.
Conclusion
The Booking.com decision has opened a pathway for brand owners to seek registration of their generic.com marks. Though there are obstacles to overcome, there are options available for those who are willing to make certain concessions on mark protections. These options are not final though: the Supreme Court decision is fairly new and trademark attorneys are always working on creative solutions to overcome existing hurdles.