Practice Area: Trademark and Copyright Law

In the past, a business may be out of luck if it was seeking a trademark protection for a generic name. However, in the recent Supreme Court of the United States case USPTO v. Booking.com B.V., 140 S. Ct. 2298 (2020), the Supreme Court ruled in favor of a company named Booking.com, a business which provides the service of making online travel reservations.

Let’s start with what is considered “generic” by the USPTO. A generic trademark is the good or service sought be protected, such as a soft drink company calling itself “soda,” or a bicycle company applying to register its latest product it calls a “bicycle.” These generic marks fail at distinguishing the good or service it seeks to protect from other similar goods and services in the same class.

Without further descriptive elements, the mark has no distinctiveness and the USPTO will not grant its registration. Moreover, trademarks can be cancelled/revoked if the brand name becomes generic. “Aspirin” was owned by Bayer until revoked. “Elevator” was owned by Otis until revoked.

So what happens if a business with a generic name seeks trademark registration? What can a business do to obtain trademark protection over its goods and services if it hasn’t developed any descriptive names for those goods and services?

The USPTO rejected four trademark applications filed by Booking.com. Though each mark featured different travel-related elements and images, all included the term “Booking.com.” In explaining its reasoning for rejection, the USPTO contended that the word “booking” is generic as its relates directly to making travel reservations, and the “.com” is similarly generic since it fails to add specific meaning that would distinguish Booking.com from its competitors. Combining a generic term (booking) with another generic term (.com), the USPTO argued, did not warrant trademark registration.

In an 8-1 decision led by the late Justice Ruth Bader Ginsberg, the Supreme Court agreed with lower courts’ decision to overrule the USPTO’s decision denying registration of any mark styled as “generic word.com.” The Supreme Court ruled that consumers determine whether such trademarks are generic. And, to the contrary to the USPTO’s position, by attaching the “.com” suffix to the proposed trademark, Booking.com had actually added distinctiveness.

The Supreme Court recognized that consumers did not identify the mark “Booking.com” with the entire class of the travel reservation website industry, but with that specific company known as Booking.com. Ultimately, whether consumers perceive an otherwise generic mark to identify a class of goods or services or specific exemplar of that class will determine its eligibility for trademark protection.

Current business owners, especially those who own businesses with a “.com” or other internet domain extensions in its name, should be mindful of the Booking.com decision, as they can now confidently apply for trademark registration for their company’s name. The Booking.com decision may be even more impactful in the age of the COVID-19 pandemic, when consumers conduct business—and their everyday lives—online at an ever-increasing clip. Companies which avoid traditional brick and mortar facilities for online only business may now be more inclined to include the “.com” as part of their branding.

Though its is not clear whether the Booking.com opinion has created greater opportunities for the registration of generic trademarks, businesses and individuals seeking registration of a generic mark will likely point to the new precedent when prosecuting the mark with the USPTO. Applicants will still need to demonstrate distinctive elements in the proposed mark, just as the “.com” suffix increased the distinctiveness when combined with the otherwise generic term “Booking.” Businesses and individuals looking to trademark their company name, goods, and/or services should consult an attorney to determine how successful they would be in applying for trademark registration.

On Monday, June 24, 2019 the United States Supreme Court ruled that FUCT branded clothing was entitled to trademark protection. In so doing, the Supreme Court struck down a long standing Disparagement Clause of the Lanham Act (AKA the Trademark Act) that banned registration of proposed trademarks that are scandalous or immoral.

Hopefully you have realized by now that “FUCT” when read phonetically sounds similar to the past tense of another F-word. In the early 1990s, a couple of entrepreneurs were looking for a brand name for their clothing line that would be anti-establishment and counter culture. They developed FUCT, which founder Erik Brunetti says stands for “Friends U Can’t Trust.” Read Brunetti’s response to the ruling through his lawyer, John R. Sommer here.

The Trademark Office, relying upon the Disparagement Clause, rejected the application. This led many to believe that the entrepreneurs were Fuct. However, the entrepreneurs appealed to the Federal Circuit Court of Appeals and prevailed. The Federal Circuit ruled that although FUCT was scandalous, the Disparagement Clause barring such trademarks violated freedom of speech.

In a 6-3 decision, the Supreme Court agreed with the Federal Circuit. In an odd combination, Justice Kagan wrote the majority opinion and was joined by Justices Ginsberg, Thomas, Alito, Gorsuch and Kavanaugh, and held that the Disparagement Clause restricting registration permitted “registration of marks that champion society’s sense of rectitude and morality, but not marks that denigrate those concepts.” The majority opinion further held that the Disparagement Clause did “not draw the line at lewd, sexually explicit or profane marks” and as a result the provision was overly broad in application.

The FUCT decision continues the course the Supreme Court set in 2017, when the Court permitted a band in Oregon to register and trademark the name of a rock band “The Slants.” Although the Court has turned decisively conservative, it appears that a majority exists on the Court that values First Amendment protections over trademarks that can be interpreted as scandalous, divisive, vulgar and/or profane.

If you are interested in exploring trademarking a name and need guidance, contact Jim Shrimp at jshrimp@highswartz.com or visit High Swartz’s Intellectual Property page for more information.