Consumer Perception Is King: The Case for Generic.com Marks

Author: Camille Brown, J.D. Candidate, 2022

Introduction

The Lanham Act recognized that consumer perception, like language, is dynamic when it adopted the primary significance test to determine whether or not a phrase is generic.1 In an increasingly digital marketplace, this then begs the question: does the Lanham Act consider a compound phrase, such as a generic term coupled with a generic top-level domain like “.com,” per se generic? Or can the phrase transcend the sum of its generic parts by satisfying the primary significance test and demonstrating secondary meaning, thus qualifying for trademark protections? The Supreme Court highlighted a lack of consistent evaluation standards for Generic.com phrases when it recently granted certiorari in United States Patent and Trademark Office v. Booking.com B.V. to decide whether the company Booking.com may register the term Booking.com as a mark.2

This blog post will argue that adding a top-level domain, such as a “.com” to an otherwise generic term can create a protectable mark, provided the composite phrase satisfies the Lanham Act’s primary significance test and demonstrates secondary meaning. Unlike a per se rule, the primary significance test is the only test explicitly endorsed by the current law governing trademark registrations.3 The primary significance test also ensures that consumers have a voice in trademark proceedings through survey evidence. Finally, a per se rule foreclosing any Generic.com trademark registration is not necessary to preserve fair competition online.

Factual Background

After the Trademark Trial and Appeal Board (TTAB) agreed with the United States Patent and Trademark Office (USPTO) that the phrase Booking.com was generic, Booking.com appealed its decision in federal district court and won, with a divided court of appeals affirming the phrase as descriptive.4 The Supreme Court subsequently granted certiorari to clarify the analytical framework for evaluating whether phrases composed of a generic term and a generic top-level domain are eligible for trademark protections as descriptive marks.5  

In 2012, eight years after registering the mark Bookings.com6, Booking.com filed another application for the phrase, Booking.com.7 The USPTO rejected the phrase as generic.8 The company appealed the judgement to the TTAB, who affirmed the USPTO’s decision.9 Booking.com then filed a civil action in federal district court, arguing that the phrase was descriptive because it was understood by consumers to identify the source of a good or service, thus demonstrating source-identifying secondary meaning.10 The company bolstered its position with evidence including a consumer survey demonstrating 75% of the relevant purchasing public recognized Booking.com as a brand, rather than a generic phrase for online travel reservations.11 Based on the evidence presented, the district court reversed, finding the phrase to be descriptive, and thus, eligible for trademark protections.12 A divided Fourth Circuit Court of Appeals affirmed.13 The Supreme Court subsequently granted certiorari.14

Legal Background

A. Federal Common Law Views on Generic Marks and The Lanham Act’s Impact

Standards for trademark protections have changed over time. At present, the Lanham Act protects “any word, name, symbol, or device, or any combination thereof” that is used as a mark to identify the source of a good or service and distinguish it from those of competitors.15 Prior to the Lanham Act’s passage in 1946, the federal common law of trademarks only granted protections for marks that intrinsically identified the source of goods or services.16 It was under this common law framework that the Supreme Court, in Goodyear’s India Rubber Glove Manufacturing Company. v. Goodyear Rubber Company, declined to extend trademark protections to phrases that merely described a product’s attributes.17

Fifty-eight years later, the Lanham Act expanded trademark protections to include all “distinctive” marks.18 Courts ascertain how distinctive a proposed mark is by placing it into one of four categories, in descending order: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic.19 Like the federal common law, the Lanham Act never grants trademark protections for generic phrases that merely identify a product’s common name or class without any source-identifying significance.20 Examples of generic phrases include Light Beer for light beer and Convenience Store for convenience stores.21 In contrast to federal common law, however, the Lanham Act does grant trademark protections for descriptive marks that describe a characteristic of a good or service.22 To qualify, a descriptive mark must demonstrate secondary meaning by proving that relevant consumers associate it with the source of a specific product or service.23 The mark becomes eligible for trademark protections once the applicant demonstrates, using evidence like consumer surveys, advertising data, and press coverage, that the mark’s primary significance to the relevant purchasing public is to identify the source of the applicant’s product, rather than its common name or class.24 Examples of descriptive marks that have acquired secondary meaning include The Container Store, a national retail chain selling containers, and The Waffle House, a national restaurant chain serving waffles.25

B. The Evolution of Domain Name Trademark Protections Under the Lanham Act

Once online commerce exploded during the “dot-com” boom of the mid-1990s, trademark protections broadened to provide online businesses the same protections enjoyed by their brick and mortar counterparts.26 Due to its functional use of identifying commercial domain names online, the top-level domain “.com” quickly emerged as the Internet’s most popular domain-name base with over 144 million registrations.27 Unsurprisingly, as the popularity of “.com” increased, so too did the need for trademark protections.28 Companies raced to register their domain names as trademarks in order to secure the ability to shut down cyber scams through in rem proceedings.29 Some of them, like Weather.com, Rent.com and Tickets.com harnessed consumer perception to transcend the sum of their generic parts by demonstrating secondary meaning as descriptive marks.30 Others, like Advertising.com, Hotels.com, and Mattress.com failed to demonstrate secondary meaning and remained vulnerable as generic phrases.31 Each of these domain names was evaluated as a whole by the USPTO, and in some cases, a federal court, who reviewed evidence of the complete phrase’s primary significance to the relevant purchasing public before reaching a decision.32 None dismissed a domain name as per se generic based solely on its generic components.33

Why Booking.com Should Prevail

A. The Primary Significance Test Should Decide if a Generic.com Mark is Generic

The Lanham Act mandates that the primary significance test governs whether a term is generic and, thus, eligible for trademark protections.34 The primary significance test, in turn, places this critical decision in the hands of the relevant consumers.35 If evidence demonstrates that consumers associate the term with a specific source of goods or services, the term becomes eligible for trademark protections as a descriptive mark.36 And, despite its statutory location in a provision of the Lanham Act governing the cancellation of trademarks, federal courts of appeals have consistently affirmed applying the primary significance test in a registration context.37 Even in decisions specifically dealing with disputes over phrases composed of a generic term and a generic top-level domain, each court to evaluate the issue has applied the primary significance test before rendering a decision.38

Furthermore, a per se rule automatically condemning a Generic.com phrase as generic would flout the Lanham Act’s policy objectives by prioritizing the government’s perception of the phrase over that of the relevant consumers.39 While both parties to the dispute agree that the Lanham Act does not explicitly reject a composite mark made up of generic language as a matter of law40, the USPTO argues that implementing a per se test would prevent companies from purchasing a monopoly over language.41 Automatically refusing to register Generic.com phrases as trademarks, they assert, would ensure competing manufacturers could continue to use generic words in their own domain names.42 Though their argument has merit, the fear of a hypothetical monopoly does not justify subverting the Lanham Act’s aims of protecting consumer perception by allowing the government to unilaterally foreclose marks. Effective protections remain in force when phrases are evaluated, as a whole, on a case-by-case basis with the primary significance test. And, since evidence of consumer perception is fact-based, no two factual records for a mark composed of a generic term and a generic top-level domain will be alike.43 Any mark’s resulting protections will be applied based on the relevant consumers’ views of the mark, just as the Lanham Act intended.

B. Survey Evidence is Still Compelling in Factual Evaluations of Generic.com Marks 

Incorporating survey evidence into the primary significance test gives consumers a voice in trademark registration disputes. By looking to whether consumers perceive a phrase as signifying a common name of goods or services, the primary significance test forces courts to make a factual assessment of what consumers actually believe.44 And, rather than relying exclusively on indirect evidence of consumer perception through dictionary definitions, advertising expenditures, or press coverage, consumer surveys allow the court to take their inquiry straight to the relevant public.45 Indeed, surveys have been trusted by federal courts for so long that they have become “almost de rigueur in litigation over genericness.”46 Even the USPTO relies upon consumer surveys as evidence of consumer perception when determining a phrase’s eligibility for trademark protections.47

In fact, consumer surveys are especially relevant to evaluating Generic.com phrases because they provide critical evidence of public perception. By combining a generic top-level domain with a generic term, Generic.com phrases create a composite term whose meaning must be evaluated anew as a whole by the primary significance test.48 Thus, a Generic.com term may secure trademark protections as a descriptive mark if an applicant is able to demonstrate that the composite term is perceived by relevant consumers as indicative of a source of a given good or service, rather than a common name of a class of goods or services.49 Since surveys demonstrate a term’s public perception, they are consequently a probative source of evidence in Generic.com trademark disputes.50

And this fact-finding exercise is not just a formality. Courts have denied trademark registration to generic phrases because the evidence presented fails to demonstrate that relevant consumers perceive the phrase to identify a specific source of goods or services.51 Recent precedent even shows that surveys, while persuasive, are never dispositive in Generic.com disputes.52 Yet, surveys remain compelling because they directly represent the people trademark protections were designed to serve: the consumers.53

C. Potential Overbreadth of Generic.com Marks Are Checked by Existing Protections

Finally, a per se rule is not necessary to preserve fair competition online. Granting one company trademark protections over a domain name comprised of a generic term and a generic top-level domain does not preclude all others from using its components independently in their own marks for three reasons. First, Generic.com marks are foreclosed from monopolizing individual, generic terms because they are evaluated and protected as a composite phrase.54 Second, trademarks only protect against infringement regarding the mark’s registered goods or services, thus allowing companies to freely use the phrase in all other unprotected industries.55 Third, any hypothetical monopoly powers bestowed upon the trademark’s holding company are presently checked by anti-competition laws and fair use doctrine.56

Since the Lanham Act mandates that marks must be evaluated for trademark protections as a whole57, Generic.com marks are precluded from bringing infringement claims against phrases that merely possess the same generic components58. This existing procedural check preserves the fair use of common names for services or goods by labeling individual terms as generic while affording composite Generic.com marks the same protections against unlawful use enjoyed by their brick-and-mortar counterparts. 

Also, trademark protections are enforced only for the specific services or goods registered with a given mark, which considerably narrows the scope of protections for any mark composed of a generic word and a generic top-level domain.59 For instance, in Booking.com B.V., the respondent’s mark was only found to be descriptive for the company’s hotel reservation services, and not for the travel agency services it also included in its application.60 Such narrow protections necessarily check a company’s impulse to bring an infringement complaint against their competitors by forcing the company to evaluate the complaint’s basis within their mark’s relevant protections. If the alleged infringement exceeds their mark’s registered scope, the complaint is doomed. 

And the unique nature of domain name marks may force Generic.com trademark holders to satisfy a higher burden of proof in infringement proceedings. Anti-competition laws mandate that a plaintiff must prove trademark infringement by demonstrating that a defendant mark is likely to cause confusion about the origin of a given good or service protected by the plaintiff’s trademark.61 Since domain names are unique by nature and relevant consumers may perceive the plaintiff’s mark as indicating a single site, it could be more difficult for domain-name plaintiffs to demonstrate a likelihood of confusion.62 Additionally, fair use doctrine supplies defendants with an affirmative defense: independently generic terms within a domain-name mark are free for all to use.63

Conclusion

The primary significance test should determine whether a phrase composed of a generic term, coupled with a generic top-level domain, such as “.com,” is generic. In contrast to a per se rule, the primary significance test is explicitly endorsed by the current law governing trademark registrations. The test also ensures that the group of people trademark protections aim to serve have a voice in the proceedings. Finally, existing procedural and legal checks against monopolizing language by trademarking Generic.com phrases already preserve fair competition online, making a per se rule redundant. Thus, phrases consisting of a generic term coupled with a generic top-level domain should be afforded trademark protection as distinctive marks upon satisfying the Lanham Act’s primary significance test and demonstrating source-identifying secondary meaning.

 

  1. See Brief for Respondent at 1, U.S. Patent & Trademark Office v. Booking.com B.V. at 1, No. 19-46 (U.S. Feb. 12, 2020) (quoting § 1064(3) of the Lanham Act, 15 U.S.C. § 1064(3) (2012)). ↩
  2. See Jessica Litman, Argument Preview: Is Booking.com generic for online hotel reservation services?. SCOTUS Blog (Mar. 16, 2020, 10:03 AM), https://www.scotusblog.com/2020/03/argument-preview-is-booking-com-generic-for-online-hotel-reservation-services/ (“The statute doesn’t define the terms “generic” or “descriptive” or give much guidance on how to tell the difference. The courts have adopted a variety of rules of thumb, but the rules are neither consistent or predictable.”). ↩
  3. Brief for Respondent supra note 1; Brief for Am. Intellectual Prop. L. Ass’n as Amici Curiae Supporting Neither Party at 12, U.S. Patent & Trademark Office v. Booking.com B.V., No. 19-46 (U.S. Jan. 13, 2020) (quoting Lanham Act § 1064(3), 15 U.S.C. § 1064(3) (2012)). See also Transcript of Oral Argument at 32, U.S. Patent & Trademark Office v. Booking.com B.V., No. 19-46, (U.S. May 4, 2020) (“(W)hy aren’t existing doctrinal tools under the Lanham Act sufficient?”). ↩
  4. Litman, supra note 2. ↩
  5. See Dariush Adli, Feature: Generic Branding, 43 Los Angeles Law. 24, 26 (2020) (discussing the various analysis frameworks that the Supreme Court could use to decide a trademark resolution dispute). ↩
  6. Brief for Respondent, supra note 1, at 10 (“(R)espondent purchased the Bookings.com trademark, which the PTO registered in 2004 on the supplemental register for online advertising services (including advertising of booking services.”). ↩
  7. Litman, supra note 2. ↩
  8. Booking.com B.V., 2016 TTAB LEXIS 63, at *4 (T.T.A.B. 2016), rev’d, 278 F. Supp. 3d 891 (E.D. Va. 2017), aff’d, 915 F.3d 171 (4th Cir. 2019), reh’g denied, 915 F.3d 171 (4th Cir. 2019), cert. granted, No. 19-46 (U.S. Nov. 8, 2019). ↩
  9. Kat Greene, Booking.com Demands Better Answers from USPTO, Law 360, Sept. 6, 2016. ↩
  10. Booking.com B.V. v. Matal, 278 F. Supp. 3d 891, 915 (E.D. Va. 2017), rev’g, Booking.com B.V., 2016 TTAB LEXIS 63 (T.T.A.B. 2016), aff’d, 915 F.3d 171 (4th Cir. 2019), reh’g denied, 915 F.3d 171 (4th Cir. 2019), cert. granted, No. 19-46 (U.S. Nov. 8, 2019). ↩
  11. Id. ↩
  12. Id. at 923. ↩
  13. Booking.com B.V. v. U.S. Patent & Trademark Office, 915 F.3d 171, 187 (4th Cir. 2019), aff’g, 278 F. Supp. 3d 891 (E.D. Va. 2017), reh’g denied, 915 F.3d 171 (4th Cir. 2019), cert. granted, No. 19-46 (U.S. Nov. 8, 2019). ↩
  14. Adli, supra note 5, at 25. ↩
  15. Lanham Act § 1127, 15 U.S.C.A. § 1127 (West 2006) (“The term “trademark” includes any word, name or symbol, or device, or any combination thereof . . . to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”). ↩
  16. Brief for Respondent, supra note 1, at 4-5. ↩
  17. Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 603 (1888) (“Names which are thus descriptive of a class of goods cannot be exclusively appropriated by any one.”). ↩
  18. 15 U.S.C.A. § 1052(f) (“(N)othing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce.”). ↩
  19. Id. ↩
  20. Brief for Petitioners at 4, U.S. Patent & Trademark Office v. Booking.com B.V., No. 19-46 (U.S. Jan. 6, 2020). ↩
  21. Booking.com B.V., 915 F.3d at 177. ↩
  22. Id., (quoting Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir. 1996)). ↩
  23. Id. (emphasis added). ↩
  24. Brief for Am. Intellectual Prop. L. Ass’n as Amici Curiae Supporting Neither Party, supra note 3, at 10 (discussing the current framework federal courts use to analyze whether or not a given term is generic). ↩
  25. Brief for Respondent, supra note 1, at 3. ↩
  26. See Brief for Respondent, supra note 1, at 26 (“That argument would undercut trademark protection for all 10,000 registered domain-name marks . . . .”). ↩
  27. Brief for Elec. Frontier Found. as Amici Curiae Supporting Petitioners at 6, U.S. Patent & Trademark Office v. Booking.com B.V., No. 19-46 (U.S. Jan. 13, 2020). ↩
  28. See Brief for Respondent, supra note 1, at 25-26. ↩
  29. Transcript of Oral Argument, supra note 3, at 50. ↩
  30. Brief for Respondent, supra note 1, at 23-24 (quoting § 1064(3) of the Lanham Act, 15 U.S.C. § 1064(3) (2012)). ↩
  31. Brief for Respondent, supra note 1, at 28. ↩
  32. Brief for Intellectual Prop. Owners Ass’n as Amici Curiae Supporting Respondent, supra note 28, at 6. ↩
  33. Id. at 5 (“None of these circuits, however, has adopted a categorical rule that a mark containing a generic term with a generic TLD is generic per se.”). ↩
  34. See Brief for Respondent, supra note 1, at 1 (quoting § 1064(3) of the Lanham Act, 15 U.S.C. § 1064(3) (2012)). ↩
  35. See, e.g., Booking.com B.V. v. U.S. Patent & Trademark Office, 915 F.3d 171, 182 (4th Cir. 2019), aff’g, 278 F. Supp. 3d 891 (E.D. Va. 2017), reh’g denied, 915 F.3d 171 (4th Cir. 2019), cert. granted, No. 19-46 (U.S. Nov. 8, 2019) (“We agree with the USPTO that the ultimate inquiry in determining whether a term is generic is what the public understands the proposed mark to mean.”); Brief for Respondent, supra note 1, at 1 (“Under the Lanham Act . . . trademark protection turns on whether a mark permits consumers to distinguish one brand of products from another.”). ↩
  36. Id., at 177. ↩
  37. Brief for Respondent, supra note 1, at 19-20; Booking.com B.V., 915 F.3d at 179. ↩
  38. Booking.com B.V., 915 F.3d at 179 (“(A)lthough those courts recognized the inclusion of the proposed mark in longer domain names was strong evidence of genericness, they nonetheless remained open to considering consumer surveys to determine the public’s understanding of the mark.”). ↩
  39. Lanham Act § 1127, 15 U.S.C.A. § 1127 (West 2006) (“(T)o protect persons engaged in such commerce against unfair competition.”). ↩
  40. Transcript of Oral Argument, supra note 3, at 44, 50. ↩
  41. See Brief for Petitioners, supra note 20, at 28 (quoting Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 603 (1888)). ↩
  42. See Brief for Petitioners, supra note 20, at 28 (quoting Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 603 (1888)). ↩
  43. Brief for Respondent, supra note 1, at 25 (“Different sets of consumers perceive different words in different ways . . . . Unsurprisingly, different factual records produce different results.”); See Booking.com B.V., 915 F.3d at 182 (discussing federal case precedent for evaluating a term’s genericness). ↩
  44. See Brief for Respondent, supra note 1, at 30 (discussing the USPTO’s current process for evaluating whether or not a term is generic); Brief for Petitioners, supra note 20, at 8 (describing how the USPTO examining attorney found the term Booking.com to be generic); Booking.com B.V., 2016 TTAB LEXIS 63, at *6 (T.T.A.B. 2016), rev’d, 278 F. Supp. 3d 891 (E.D. Va. 2017), aff’d, 915 F.3d 171 (4th Cir. 2019), reh’g denied, 915 F.3d 171 (4th Cir. 2019), cert. granted, No. 19-46 (U.S. Nov. 8, 2019) (“The examining attorney has the burden of establishing by clear evidence that the mark is generic.”). ↩
  45. See Brief for Respondent, supra note 1, at 30. ↩
  46. Id. (quoting J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:14 (5th ed. 2018)). ↩
  47. See Id., at 31 (noting how the USPTO eventually registered the term Waffle House as a trademark after receiving survey evidence demonstrating that 92% of relevant consumers recognized the term as a brand). ↩
  48. Booking.com B.V. v. U.S. Patent & Trademark Office, 915 F.3d 171, 185 (4th Cir. 2019), aff’g, 278 F. Supp. 3d 891 (E.D. Va. 2017), reh’g denied, 915 F.3d 171 (4th Cir. 2019), cert. granted, No. 19-46 (U.S. Nov. 8, 2019) (“(L)ooking to the component parts of a domain name may not unambiguously represent the primary significance of a term as a whole . . . .”). ↩
  49. Id. ↩
  50. Id. ↩
  51. Id., at 186 (“Tellingly, even where courts have found that the individual components of a domain name are independently generic, and that when added together the resulting composite merely describes the genus of the service provided, courts still considered other evidence such as consumer surveys in determining whether the mark was generic. . . . (T)hese courts have generally found the resulting composite of adding “.com” to certain SLDs to be generic . . . . ”). ↩
  52. Id. ↩
  53. Lanham Act § 1127, 15 U.S.C.A. § 1127 (West 2006) (“(T)o protect persons engaged in such commerce against unfair competition.”). ↩
  54. Brief for Am. Intellectual Prop. L. Ass’n as Amici Curiae Supporting Neither Party, supra note 3, at 13 (“(T)he PTO must assess the primary significance of the entire mark, not just its individual components.”). See also Lanham Act § 1052(e)(5), 15 U.S.C.A. § 1052(e)(5) (West 2006) (“(C)omprising any matter that, as a whole, is functional.”). ↩
  55. Booking.com B.V., 2016 TTAB LEXIS 63, at *5-6 (T.T.A.B. 2016), rev’d, 278 F. Supp. 3d 891 (E.D. Va. 2017), aff’d, 915 F.3d 171 (4th Cir. 2019), reh’g denied, 915 F.3d 171 (4th Cir. 2019), cert. granted, No. 19-46 (U.S. Nov. 8, 2019). ↩
  56. Booking.com B.V., 915 F.3d at 187. ↩
  57. 15 U.S.C.A. § 1052(e)(5). ↩
  58. See Booking.com B.V. v. Matal, 278 F. Supp. 3d 891, 911 (E.D. Va. 2017), rev’g, Booking.com B.V., 2016 TTAB LEXIS 63 (T.T.A.B. 2016), aff’d, 915 F.3d 171 (4th Cir. 2019), reh’g denied, 915 F.3d 171 (4th Cir. 2019), cert. granted, No. 19-46 (U.S. Nov. 8, 2019) (“(A)lthough the USPTO has registered marks with what it as determined are descriptive SLDs . . . this has not stopped competitors from using the words “workout,” “entertainment,” or “weather” in their domain names. To the contrary, such domain names abound and many . . . have actually been afforded trademark protection by being registered on the Principal Register.”). ↩
  59. Booking.com B.V., 2016 TTAB LEXIS 63, at *7 (“Because the identification of goods or services in an application defines the scope of rights that will be accorded the owner of any resulting registration under Section 7(b) of the Trademark Act . . . .”). ↩
  60. Booking.com B.V., 2016 TTAB LEXIS 63, at *7 (“Because the identification of goods or services in an application defines the scope of rights that will be accorded the owner of any resulting registration under Section 7(b) of the Trademark Act . . . .”). ↩
  61. Reply of Petitioners at 16, U.S. Patent & Trademark Office v. Booking.com B.V., No. 19-46 (U.S. Mar. 13, 2020). ↩
  62. Booking.com B.V., 915 F.3d at 187 (“Given that domain names are unique by nature and that the public may understand a domain name as indicating a single site, it may be more difficult for domain name plaintiffs to demonstrate likelihood of confusion.”). ↩
  63. See Brief for Intellectual Prop. Owners Ass’n as Amici Curiae Supporting Respondent, supra note 28, at 10-11. ↩