In the recent Booking.com case (see the IP Law Trends article here discussing that case), the U.S. Supreme Court held that a trademark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is not automatically generic. In addition, such terms are not automatically non-generic either.
Prior to the Booking.com decision, the U.S. Patent and Trademark Office (USPTO) had been automatically rejecting attempts to register such trademarks. Given the updated direction from the Supreme Court, however, the USPTO has now issued new guidance to its examining attorneys.
Accordingly, the USPTO will no longer apply a per se rule. Instead, the examining attorneys will assess on a case-by-case basis whether consumers would perceive a “generic.com”-type mark as being generic.
In addition, the applicant may claim that its “generic.com” mark has acquired distinctiveness. The USPTO has cautioned, though, that for this type of mark “applicants will generally have a greater evidentiary burden to establish that the proposed mark has acquired distinctiveness.” Accordingly, the applicant may need to show more than just five years of use of the mark in commerce or a prior registration for the same term, both of which are common approaches to asserting acquired distinctiveness. Instead, according to the USPTO’s guidelines, “the applicant will need to provide a significant amount of actual evidence that the generic.com term has acquired distinctiveness in the minds of consumers.”
In other words, trademarks of the type “generic.com,” will be treated the same as other marks that are suspected of being generic terms.
The complete Examination Guide issued by the USPTO is at this link.
