In USPTO v. Booking.com (slip op. 2020), the United States Supreme Court held that a trademark sometimes can be claimed in a generic term combined with a TLD indicator (such as “.com” or “.org”) The U.S. Trademark Office has now issued an amended Examination Guide explaining how it intends to apply that ruling to the examination of applications to register these kinds of trademarks. (Examination Guide No. 3-20, “Generic.com Terms after USPTO v. Booking.com,” October 2020.)

The ultimate question, of course, is whether the combination of the generic term with the TLD indicator has acquired distinctiveness in the minds of consumers. Do consumers perceive it as referring to a general category of goods or services, or do they perceive it as an indicator of the source/provider of particular goods or services? If the former, then it is generic and cannot be registered as a trademark. If the latter, then it might be registrable as a trademark.

The Examination Guide gives some examples of the kinds of evidence that may be relevant to establish genericness in this area. This could include such things as dictionary definitions of the terms in the domain name, evidence of significant generic usage of the term or the combined term by consumers, evidence of the applicant’s own generic use of the term, and evidence that the “generic.com” construction is being used by others in connection with the same or similar goods or services. None of these things, standing alone, is necessarily conclusive of the issue.

A “generic.com” mark, wherein the generic term relates to the goods or services offered, is not inherently distinctive. Instead, an applicant will need to present evidence to the USPTO to establish acquired distinctiveness. Five years of continuous and exclusive use normally will not be enough.

Kinds of evidence that could be used for this purpose include consumer surveys, consumer statements, evidence of the duration and nature (and extent) of the applicant’s use of the proposed mark, evidence of the degree of exclusivity of use, related advertising expenditures, and any other relevant and admissible evidence of distinctiveness.

Because domain names that include the generic term for a particular product or service usually come with high price tags, and because registering such marks generally involves more legal work than a fanciful, arbitrary, or suggestive mark does, it can be expected that large companies will benefit from these developments more than small businesses will. Nevertheless, even a small business may still be able to register a mark that includes a generic term within it without incurring a great deal of expense. Specifically, adding an inherently distinctive term and expressly disclaiming the generic term might do the trick. For example, if someone else has already registered “bikes.com,” a maker of Flamingo brand bikes might nevertheless be able to register “flamingobikes.com” as a trademark by including a disclaimer of any rights in “bikes.com.” Booking.com is a very recent decision so its scope and application have yet to be worked out in the courts, but traditional principles of trademark law would seem to me to support that conclusion.

In addition, there is this from the USPTO: “[I]f there is other matter in either of the marks that would allow consumers to differentiate them, the examining attorney may reasonably determine that confusion as to source is not likely.”

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