July 2, 2020Client Alert

Supreme Court Expands Trademark Registration Opportunities for “.Com” Marks in Decision

In an 8-1 decision on June 30, the U.S. Supreme Court upheld the right of to register its trademark with the U.S. Patent and Trademark Office (PTO). In doing so, it overruled the PTO’s longstanding position that a generic word plus a “.com” addition cannot create a registrable trademark except in rare circumstances. The opinion, authored by Justice Ginsburg, rejected any such bright line rule. “Whether any given ‘’ term is generic, we hold, 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 a class.” The PTO did not challenge’s evidence that consumers perceived the mark as a source indicator rather than as a generic hotel booking service. Justice Ginsberg concluded that such consumer perception alone resolves the case: ”Because ‘’ is not a generic name to consumers, it is not generic.” This decision clears the way for U.S. registration of the mark and other similarly situated  “.com” trademarks.

Generic terms like “cars” or “booking” are ineligible for federal trademark registration because they describe a type of product or service rather than designate the provider or source of the product or service. Monopolization of a generic term for a type of products or services would unfairly restrict a competitor’s right to accurately describe its own products or services. The Supreme Court and the PTO have held that adding “Company” or “Inc.” or similar name designations cannot transform a generic term into a protectable trademark. The PTO has long taken (but inconsistently applied) the position that the addition of “.com” to a term also does not add any trademark significance, and that a generic term cannot be registered even if it has become identified with a first user in the minds of the consuming public. The Supreme Court’s decision held otherwise, finding that the perception of the consuming public is paramount and the dispositive inquiry for determining trademark registrability. The Court found that any monopolization concerns were overblown, since other trademark doctrines such as the “fair use” principle and the inherent weakness of descriptive terms will hem in such marks, limiting the range of similar marks their owners could successfully challenge.

Justice Breyer dissented, arguing that the Court’s decision “will lead to a proliferation of ‘’ marks, granting their owners a monopoly over a zone of useful, easy-to-remember domains… that will inhibit, rather than promote, free competition in online commerce.” He argued that the decision threatens the linguistic commons, and is inconsistent with the Court’s precedent that adding the word “Company” to a generic term did not yield a protectable trademark. Unlike the majority, he concluded that consumer surveys showing association of a generic term with a single source do not change the generic nature of the term itself.

This case opens the door to federal registration of many more domain name marks that the PTO previously refused to register. Federal registration carries with it a number of benefits, including a presumption of validity, ownership, and exclusive nationwide rights in the mark, access to federal courts, protection against registration of confusingly similar marks, enhanced remedies, and a registration certificate and PTO record that will greatly assist in deterring and preventing infringement. A U.S. trademark registration can be used with cease and desist letters, to invoke the assistance of U.S. Customs, and to deprive online infringers of access to popular online markets and social media platforms. Although it will be necessary to prove that consumers associate a “” trademark with a single source to obtain registration, satisfying this requirement will be aided by the fact that domain names are exclusively registrable to a single source. Nevertheless, the PTO will likely require strong proof that consumers primarily associate a particular “” mark with a single source before allowing that mark to proceed to registration. This evidence can be presented by consumer surveys, evidence of usage by consumers and competitors,  dictionary definitions, and any other evidence of how consumers perceive a term’s meaning. For more information about protecting your brands and trademarks, contact your Michael Best trademark counsel or one of the authors.

back to top