Suppose that you want to federally register a trademark that has a domain indicator like “.com” at the end that identifies a source of goods or services related to your business. The trademark may have a first part that is generic like “automobile” and a second part that is a domain indicator like “.com”. Should you attempt to register your trademark with the U.S. Patent and Trademark Office (USPTO)? Can you obtain a registration from the USPTO? The answer to both questions is YES!
In the marketplace, there exist trademarks that typically consist of a combination of a generic term and generic top-level domain indicator like “.com,” “.net,” “.org,” “.biz,” or “.info.” Previously, the USPTO has taken the position that a top-level domain indicator like “.com” has no source-identifying significance. See In re CyberFinancial.Net Inc., 65 U.S.P.Q.2d 1789 (T.T.A.B. 2012). In such a situation, if the first part of the combination is generic, the USPTO has refused registration of the combination mark as being generic.
However, the law in this situation has changed. In the recent case of United States Patent and Trademark Office et al. v. Booking.com B.V., 591 U.S. ____ (2020), Booking.com filed a federal trademark application to federally register the mark BOOKING.COM for online hotel reservation services. The USPTO denied registration for the mark based on genericness. The USPTO applied a “nearly per se rule” that a trademark having a generic first part combined with a generic top-level domain indicator second part still rendered the combination mark generic. As a result, Booking.com filed a federal lawsuit seeking to overturn the USPTO refusal and the court determined that “Booking.com”—unlike the term “booking” standing alone—is not generic. The USPTO then appealed to the Court of Appeals for the Fourth Circuit and the appellate court affirmed the lower court. The appellate court rejected the USPTO’s contention that, as a rule, combining a generic term like “booking” with “.com” yields a generic composite. The appellate court found no error in the lower court’s assessment of how consumers perceive the term “Booking.com.” and affirmed the lower court. The USPTO then appealed to the Supreme Court.
The Supreme Court found that a combination mark “generic.com” is generic for a class of goods or services only if the term has that meaning to consumers. The Supreme Court determined whether a combination mark is generic is dependent upon whether that mark, taken as a whole, signifies to consumers a class of goods or services. The Supreme Court found that consumers do not in fact perceive the combination mark “Booking.com” as a generic name. However, the Supreme Court also found that registered generic.com marks may be subject to a narrower scope of trademark protection, noting that “[w]hen a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the mark’s owner”.
In October 2020, after the Booking.com case, the USPTO issued Examination Guidelines entitled “Generic.com Terms after USPTO v. Booking.com”. Upon reviewing the Examination Guidelines, combination marks must be examined on a case-by-case basis, based on the evidence of record, to determine if consumers would perceive a generic.com combination mark as the name of a class of goods and/or services or at least capable of serving as a source indicator. The Examination Guidelines provided examples of the types of evidence that the USPTO may provide to support the conclusion that consumers would perceive the generic.com combination mark, as a whole, as the name of the class of goods and/or services as follows: “a combination of dictionary excerpts defining the component elements of the generic.com term; significant evidence of generic usage of those elements or the combined term by consumers or competitors in the relevant marketplace; evidence of the “generic.com” term used by third parties as part of their domain names (e.g., “[adjective]generic.com”) in connection with the same or similar goods and/or services; or evidence of the applicant’s own use of the generic.com term”.
Under the Examination Guidelines, when combination marks contain generic.com terms and other matters, the USPTO must require a disclaimer when the generic.com term is incapable of serving as a source indicator and is separable from the other matter, whether registration is sought on the Principal Register or Supplemental Register. When submitting a disclaimer of a generic.com term in the combination mark, the USPTO will require that the generic.com term be disclaimed in its entirety, rather than disclaiming the generic term and the generic top-level domain indicator separately. In addition, under the Examination Guidelines, the USPTO will examine the specimen of use as to whether the generic.com term is being used solely as a website address and not in a trademark or service mark manner. Further, the USPTO will determine whether a prior registration for a generic.com term that contains the same generic or highly descriptive terms that appear in the combination mark should be cited under a likelihood of confusion.
What if your trademark has a first part that is descriptive and not generic for a combination mark? What can you do to obtain a trademark registration? In the United States, a federal trademark registration can be obtained based on the acquired distinctiveness of the mark in connection with the goods and services. Therefore, you could submit a claim of acquired distinctiveness based on five years of substantially exclusive and continuous use in interstate commerce and/or evidence of secondary meaning in the marketplace. If a claim of acquired distinctiveness is submitted, the USPTO will carefully review the evidence submitted in support of the claim, along with all other available evidence, to determine whether relevant consumers have, in fact, come to view the generic.com combination mark as an indicator of source for the identified goods and/or services.
Thus, a combination trademark containing a top-level domain indicator can be federally registered for goods and services if consumers would perceive the combination trademark as at least capable of serving as a source indicator. If your combination trademark is not being used solely as a website address and being used in a trademark or service mark manner for your goods and services, you can obtain a registration from the U.S. Patent and Trademark Office. However, you may have to submit evidence that the relevant consumers have, in fact, come to view the combination mark as an indicator of source for the identified goods and/or services. Although such combination marks may be registered and subject to a narrower scope of trademark protection, they are worth pursuing to prevent potential infringers from using identical or similar marks. Therefore, it is recommended that you register your combination trademark with the United States Patent and Trademark Office.