- Published: 28 May 2021 28 May 2021
By Eric M. Gayan, Partner, Patent Attorney, Standley Law Group LLP
Clients often ask whether domain names can serve as trademarks. That is, for example, can .com, .net, or some other top-level domain (TLD) in conjunction with another term(s) be trademarked? While the answer has in the past been based almost exclusively on the term(s) with which the TLD is combined, that has recently changed – at least in certain circumstances.
The United States Patent and Trademark Office (USPTO) has traditionally allowed a domain name to be registered as a trademark (word mark) as long as the term(s) associated with the TLD is eligible for registration by itself. As a result, domain names previously registered as federal trademarks have typically included a term(s) of a suggestive, arbitrary, or fanciful nature – thereby rendering the domain name “inherently distinctive” and eligible for registration on the trademark Principal Register without the need to consider the attached TLD.
On the other hand, the USPTO has almost exclusively maintained that a domain name consisting of a descriptive/generic term(s) coupled with a TLD is not eligible for federal trademark registration. With respect to a generic term combined with a TLD, for example, it has been the USPTO’s position that since all TLDs are also generic in the sense that they signify only the type of entity using the domain name as opposed to functioning as an identifier of the source of goods or services, a generic term + a TLD1 is also generic and, therefore, ineligible for federal trademark 2 except in rare circumstances3.
Recently, however, the U.S. Supreme Court decided the case of United States Patent and Trademark Office, et al. v. Booking.com B. V., 591 U.S. ___ (2020). In Booking.com, the Court rejected, by an 8-1 margin, the USPTO’s “nearly per se rule” that a generic term(s) combined with a TLD (referred to as a “generic.com” term by the Court) will always result in a generic combination absent exceptional circumstances. Booking.com, slip op. at pp. 7-8. In this regard, the Court in Booking.com took issue with several of the USPTO’s arguments, including its position that a generic.com term is “categorically incapable” of identifying a source of goods or services because such terms are capable of “signifying only an entire class of online goods or services.” Id. at pp. 9-10 (emphasis added).
On a more fundamental level, the Court held that a “bedrock principle of the Lanham Act” (i.e., U.S. trademark law) commands that “whether any given “generic.com” (or other) 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.” Id. at pp. 10-11 (internal quotes in original)4. In other words, if consumers perceive a given term (e.g., domain name) as indicating a source of goods or services, then that term is not generic and is eligible for registration as a trademark. Because evidence was presented in the lower courts that consumers actually perceive “Booking.com” to represent a particular source of services as opposed to a generic term for a class of services, and the USPTO did not contest that evidence, the Booking.com Court held that the “Booking.com” domain name is not generic and, therefore, not automatically ineligible for federal trademark registration on that basis as was asserted by the USPTO.5,6
The Booking.com decision is potentially important to anyone seeking to trademark a domain name where the non-TLD portion of the domain name is not clearly inherently distinctive (e.g., potentially generic). Whereas in the past, a “generic.com” term would almost certainly have been routinely rejected by the USPTO, the Booking.com decision requires the USPTO to now give greater consideration to the combined term as a whole, and to also consider evidence of how consumers actually perceive the combined term. According to the Court, evidence regarding consumer perception of a “generic.com” term may include things such as consumer surveys, dictionaries, consumer and competitor usage of the term, and “any other evidence bearing on how consumers perceive a term’s meaning.” Id. at p. 11, footnote 6.7
As a result of the Booking.com decision, a greater number of domain names may now be eligible for federal trademark protection. However, the trademark eligibility of a “generic.com” domain name is still far from automatic due to the type and degree of evidence that must be presented and potential problems with the use of some of the types of evidence identified by the Court.8Consequently, clients interested in registering a domain that may be considered generic should definitely contact a trademark attorney to seek advice.
If you have questions regarding inventorship of an invention, seek the advice of your patent attorney.
1 Commonly referred to in combination as “gTLD” by the USPTO.
2 See, e.g., Trademark Manual of Examining Procedure (TMEP) § 1209.03(m).
3 The USPTO has identified a few possible exceptions to the rule, such as when adding a generic term to a TLD results in wordplay (e.g., “tennis.net”). See Booking.com at slip op. p. 8. See also TMEP § 1209.03(m) and §§ 1215.04 and 1215.05 (e.g., steelbuilding.com is descriptive but not generic).
4 According to the Court, the USPTO improperly interpreted and relied on the earlier case Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598 (1888), in holding that consumer understanding of a “generic.com” term is irrelevant to a trademark eligibility analysis.
5 The Court’s opinion affirmed the decisions of the lower District and Appellate courts.
6 The USPTO granted registration to several versions of the “Booking.com” trademark on January 5, 2021.
7 Relevant evidence may also include, but is not limited to, “examples of advertising and promotional materials that specifically promote the mark shown in the application, with or without the "." or "dot," as a trademark or service mark in the United States; dollar figures for advertising devoted to such promotion; and/or sworn consumer statements of recognition of the applied-for mark as a trademark or service mark.” TMEP § 1215.02(d)(ii).
8 The Court recognized that while surveys can be helpful evidence of consumer perception, care is required in their design and interpretation because, e.g., survey respondents may “conflate the fact that domain names are exclusive with a conclusion that a given “generic.com” term has achieved secondary meaning.” The Court also recognized that “difficult questions may be presented when a term has multiple concurrent meanings to consumers or a meaning that has changed over time.” Booking.com slip op., footnote 6.