Supreme Court Expands Trademark Protection for Generic “.com” Marks

Types : Alerts

The below alert was authored by Montgomery McCracken summer associate Skyler Morgan and associate Brianna Vinci.

The Supreme Court issued a decision last week, on June 30, 2020, of moment to companies interested in obtaining federal trademark registrations from the U.S. Patent and Trademark Office (“PTO”) for marks incorporating generic top-level domains such as “.com.” The Court ruled that the addition of “.com” to a generic term can create a protectable trademark if the applicant provides evidence that consumers perceive the mark as distinguishable from a class of goods or services. The Court reasoned that the primary significance of the registered mark to the public adequately turns a generic term into a descriptive term, which can be registered after acquiring secondary meaning.

Booking.com was initially denied trademark protection by the PTO when it submitted four marks with “Booking.com.” The PTO concluded that the terms, “booking” and “.com,” in the aggregate were generic. It argued that “booking” refers only to making travel reservations and “.com” signifies only a commercial website. Booking.com then sought review in the U.S. District Court and presented evidence of consumer perception that the mark had acquired secondary meaning, as required for trademark protection of a descriptive mark. Both the district court and the Court of Appeals for the Fourth Circuit agreed that the mark was not generic. The Supreme Court concluded that the exclusivity of a domain name allows a consumer to associate the mark with a particular website, which in turn makes trademark protection appropriate. However, submitting a domain name as a mark alone does not guarantee that the mark will earn a spot on the PTO’s principal register. The mark might be considered merely descriptive; as such, an applicant company must submit evidence to the PTO to prove that consumers associate the primary significance of the mark with that particular company. Applicants may rely on carefully crafted surveys, dictionaries, and common usage by consumers and competitors to persuade the PTO of a “.com” mark’s secondary meaning and obtain registration.

In dissenting and concurring opinions, Justices Breyer and Sotomayor highlighted some important considerations for companies with plans to apply for trademark protection. First, they each addressed the limited probative value of consumer surveys. Surveys should be crafted with care in their design and interpretation to provide a valid indicator of  secondary meaning. Second, Breyer warned that broad trademark protection will have anticompetitive consequences. He expressed fears that companies will rush to purchase generic domain names to reap the benefits of increased web traffic and additional sales—therefore monopolizing the market. Further, the inability of startups to use variances of a registered name could eventually create a “one firm per product” economy. However, trademark rights allow future mark owners to stop domain name abuse through private dispute resolution without resorting to costly litigation. Additionally, most generic names are already taken, and companies with such names likely already have well-established domain names and have instead trademarked more identifiable marks.

Companies should also consider whether their marks have multiple meanings or if the meanings have changed over time as, with such marks, it may be difficult to show their primary significance to consumers. The Court left this question open in the “.com” context.

If you have any questions about a potential mark or a trademark application, members of  Montgomery McCracken’s Intellectual Property and Private Capital and Emerging Companies practice groups are available to assist.