Your Internet Street Address is Safe: Generic.com Can Function as a Trademark if your Consumers Say So

June 30, 2020
Marshall Gerstein Alert

On June 30, 2020, the United States Supreme Court in an 8-1 opinion written by Justice Ginsberg held that a generic.com term, in this case Booking.com, can function as a trademark if consumers of the products and/or services, in this case internet/online hotel reservation services, sold under the mark recognize the mark as an indication of the source for such goods or services.  In so holding, the Supreme Court rejected the United States Patent & Trademark Office position that generic.com terms per se fail to function as a trademark.  The pre-Lanham Act decision Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598 (1888), found that “generic company” terms are incapable of functioning as a trademark holding “A compound of generic elements is generic if the combination yields no additional meaning to consumers capable of distinguishing the goods or service.”  Rejecting the applicability of the Goodyear decision, in Booking.com, the Court held that generic.com terms can by their very nature only pertain to one specific domain name holder at a time.  Therefore, as a unique identifier of a specific domain name holder, consumers can perceive the generic.com term to indicate a single source.  In litigation, consumer surveys are often used for the purpose of establishing consumer perception.  In the Booking.com case, consumer surveys established that consumers of online hotel reservation services perceived Booking.com as a specific source of such services.  This decision puts the interpretation of a mark for internet-based businesses in the hands of the consumer, which is generally the intent and “bedrock” of trademark law and policy.

The sole dissenting opinion, authored by Justice Breyer, argued that the majority’s decision will have a chilling, anti-competitive effect from a proliferation of generic.com trademarks that will silence competition through monopolies arising from useful and easy to remember domain names, and enforcement by expensive litigation. 

Indeed, the practical effect of legally protecting trademark rights in generic.com terms might be as Justice Breyer fears. However, the Court’s protection of generic.com terms as trademarks is consistent with historical trademark protection of unique geographic terms.  For example, Willis Tower is located at 233 S Wacker Drive.  233 S Wacker Drive can function as a trademark for a retail establishment in the building if consumers perceive 233 S Wacker Drive as an indication of the source of that establishment.  Generic.com terms are cyber “street addresses.”  As such, the Court is appropriately treating such terms in the same manner trademark law and policy has historically treated geographic terms - specific geographic locations can function as trademarks.

Questions or comments regarding the information above may be directed to Maureen Beacom Gorman.