{"id":475,"date":"2020-06-30T12:00:47","date_gmt":"2020-06-30T16:00:47","guid":{"rendered":"https:\/\/trademarks.harnessip.com\/?p=475"},"modified":"2020-06-30T12:09:21","modified_gmt":"2020-06-30T16:09:21","slug":"public-perception-not-per-se-rules-determines-registrability-of-marks-with-generic-terms","status":"publish","type":"post","link":"https:\/\/trademarks.harnessip.com\/?p=475","title":{"rendered":"Public Perception, Not Per Se Rules, Determines Registrability of Marks with Generic Terms"},"content":{"rendered":"\n

Today in U.S.P.T.O v. Booking.com B.V., the Supreme Court rejected the USPTO\u2019s position that BOOKING.COM was unregistrable because it merely a combination of a generic term and a tld designator.\u00a0 The Supreme Court rejected the application of a per se<\/em> rule against the registrability of compound marks based on generic terms, finding instead that consumer perception of the term should control.\u00a0 Judge Ginsberg noting that \u201c[b]ecause \u2018Booking.com\u2019 is not a generic name to consumers, it is not generic.\u201d<\/p>\n\n\n\n

The Court distinguished Goodyear\u2019s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co.<\/em>, 128 U. S. 598 (1888), where it held that a generic corporate designation added to a generic term does not confer trademark eligibility. \u00a0The Court found the comparison faulty because of the nature of the internet — a \u201cgeneric.com\u201d term could convey to consumers a source-identifying characteristic: an association with a particular website.<\/p>\n\n\n\n

The Court also rejected a per se<\/em> rule that every generic term combined with a tld is automatically not generic, holding that whether any given generic.com term is generic \u201cdepends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of dis\u00adtinguishing among members of the class.\u201d<\/p>\n\n\n\n

It will be interesting to see what the USPTO does with the application on remand.\u00a0 Will it require a disclaimer of the generic term \u201cbooking\u201d and the tld \u201c.com\u201d?\u00a0 If so, then the applicant will have disclaimed the entire mark apart from itself.<\/p>\n\n\n\n

It will also be interesting to see what booking.com will do with its registration.\u00a0 No reasonable competitor would consider using \u201cbooking.com\u201d as their own brand, because they would be driving customers to booking.com.\u00a0 What is the point?\u00a0 Can booking.com tie up booking combined with other tld\u2019s? Booking.com conceded that booking.com would be \u201cweak\u201d (Tr. of Oral Arg. 66). Indeed they will get a registration only because of the association of the term with a particular website.\u00a0 What of a booking.online (which presently appears to be available)?\u00a0 Would that create a likelihood of confusion, or would the fame of booking.com that won them a registration make such confusion unlikely?\u00a0 Competitors are entitled to use the generic term “booking”, what remains to be seen is how.<\/p>\n","protected":false},"excerpt":{"rendered":"

Today in U.S.P.T.O v. Booking.com B.V., the Supreme Court rejected the USPTO\u2019s position that BOOKING.COM was unregistrable because it merely a combination of a generic term and a tld designator.\u00a0 The Supreme Court rejected the application of a per se … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"class_list":["post-475","post","type-post","status-publish","format-standard","hentry","category-uncategorized"],"_links":{"self":[{"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/475","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=475"}],"version-history":[{"count":3,"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/475\/revisions"}],"predecessor-version":[{"id":478,"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/475\/revisions\/478"}],"wp:attachment":[{"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=475"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=475"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=475"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}