How can a business obtain trademark protection when its own name generically describes its goods or services?

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. B.V., 140 S. Ct. 2298 (2020), the Supreme Court ruled in favor of a company named, 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 Though each mark featured different travel-related elements and images, all included the term “” 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 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” 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, had actually added distinctiveness.

The Supreme Court recognized that consumers did not identify the mark “” with the entire class of the travel reservation website industry, but with that specific company known as 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 decision, as they can now confidently apply for trademark registration for their company’s name. The 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 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.

FUCT at the Trademark Office – Not So Fast!

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 or visit High Swartz’s Intellectual Property page for more information.

11 High Swartz Attorneys named to PA Super Lawyers and Rising Stars lists

High Swartz is pleased to announce that 11 of its attorneys have been named among Pennsylvania’s 2019 Super Lawyers and Rising Stars. Among the highlights are two inclusions on the 50 Top Female Lawyers in Pennsylvania list going to Melissa M. Boyd and Mary Cushing Doherty of the High Swartz Domestic Relations practice.

2019 High Swartz Super Lawyers Melissa Boyd David Brooman Mary Cushing Doherty Mark Fischer Gilbert High, Thomas Panzer Thomas Rees Joel Rosen
2019 High Swartz attorneys added to the Super Lawyers List

What is Super Lawyers?

The Super Lawyers list recognizes no more than 5 percent of attorneys in each state. The Super Lawyers Rising Stars list recognizes no more than 2.5 percent of attorneys in each state. To be eligible for inclusion in Rising Stars, a candidate must be either 40 years old or younger, or in practice for 10 years or less. High Swartz 2019 Super Lawyers and Rising Stars are listed below in alphabetical order.

Melissa M. Boyd: Has been nominated to her 5th consecutive Super lawyer list preceded by 6 Rising Star distinctions. On top of her streak, Missy has been nominated to 3 Super Lawyers Top Lists in Pennsylvania. Those accolades are 100 Top Lawyers in Pennsylvania, 100 Top Lawyers in Philadelphia and 50 Top Female Attorneys in Pennsylvania. Missy is a partner and family law attorney with High Swartz and advocates in various areas including divorce, prenuptial and postnuptial agreements, child custody and child support, equitable distribution, alimony, adoptions, protection from abuse and juvenile law.

David J. Brooman: 2019 marks the return to the Super Lawyers list for David. This is his 10th selection. As a land development and litigation attorney, David J. Brooman has more than three decades experience in zoning and land use development, as well as environmental law.

Mary Cushing Doherty: This will be Mary’s 16th consecutive selection to the Super Lawyers list. Along with her distinction, she’ll join the 50 Top Female Lawyers in Pennsylvania list. With a distinguished record of professional and community service, Mary Cushing Doherty has more than 35 years of legal experience as a family law lawyer. She concentrates her practice on all aspects of marital dissolution and family law issues including divorce, child support, custody, spousal support and alimony, premarital agreement asset protection, complex property division, and is the chair of High Swartz’s Family Law practice.

Mark R. Fischer: Mark has been nominated to his second consecutive Super Lawyer designation. He focuses his practice primarily on representing businesses in breach of contract, payment collection, construction defect, and consumer protection disputes throughout Pennsylvania and New Jersey.

Gilbert P. High, Jr.: This will be Gil’s 14 section in a row. Gil’s impressive career is devoted primarily to the practice of municipal and Real Estate and Land Use Law. He regularly speaks on issues pertaining to municipal liability, particularly regarding the maintenance of the Urban Forest, a subject on which he has lectured nationally.

Thomas E. Panzer: This is Tom’s first and much-deserved selection to the Super Lawyers’ list. Thomas E. Panzer, a workers’ compensation attorney, joined High Swartz in 2016 as a result of a merger with McNamara, Bolla & Panzer, Attorneys at Law, a firm for which he served as Managing Partner. Mr. Panzer is active in his community and is currently the Bucks County, Pennsylvania Treasurer.

Thomas D. Rees: Elected to his 14th Super Lawyers list, Tom heads the firm’s Litigation and Employment Practice. He focuses his practice primarily on employment law and private education law. In the education area, Tom represents a number of independent schools in the Philadelphia area, handling employment, student discipline, contract, and governance matters.

Joel D. Rosen: As High Swartz’s Managing partner, Joel has been a Super Lawyer since 2017. With more than 30 years of legal experience as a corporate law attorney, Joel Rosen’s areas of practice include franchise law, business and commercial law, employment law, trademark/copyright law and commercial leasing.

list of 2019 high swartz super lawyers rising stars
2019 Rising Stars attorneys from High Swartz

Kevin Cornish: Recently elected as a partner at High Swartz, Kevin receives his 8th Super Lawyers Rising Star selection. Kevin focuses his practice on commercial, civil, and contract & multi-state litigation support. His clients include individuals as well as local, regional, and national businesses up and down the east coast.

Elizabeth Early: has been nominated to her third consecutive Rising Star selection. Her areas of specialization include divorce, custody, support, equitable distribution, pre and post-nuptial agreements, parenting coordination and abuse matters. Liz also serves as court-appointed counsel and guardian for minor children.

Brittany M. Yurchyk: High Swartz congratulates Brittany’s first nomination to the Super Lawyers’ list as a Rising Star. Specializing in alternative dispute resolution, Brittany concentrates her family law practice on equitable distribution, child custody, child and spousal support, abuse and domestic relations.

How were the High Swartz Super Lawyers selected to the list?

Super Lawyers nominates the best attorneys using a unique selection process. Peer evaluations and nominations are combined with independent research. Nominees are evaluated on 12 indicators from professional achievement through peer nominations. Nominations are made on an annual, state-by-state basis. The Super Lawyers objective is to create a credible, comprehensive and diverse listing of outstanding attorneys on a national level that can be used as a resource for attorneys and consumers searching for legal counsel. As an aid to those selecting a lawyer, Super Lawyers only selects outstanding local lawyers who are able to be retained by the public.