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  • Writer's pictureWendi Gundersen

"" might be a registrable trademark says SCOTUS

In United States Patent and Trademark Office v. B. V., the Supreme Court considered whether the USPTO’s proposed practice of rejecting any trademark filing that combines a generic term with a generic top-level domain name should be rejected under the legal reasoning of Rubber Glove Mfg. Co. v. Goodyear Rubber Co.

Justice Ginsburg, writing for the Court, held that the USPTO functionally per se rule to reject trademark applications for marks structured as “” was contrary to the Lanham Act and principles of trademark law. The Court in Rubber Glove had held that the combination of a generic term describing the genus of a product or service combined with a generic corporate designation, like “Company,” could not make an otherwise generic term protectable. The USPTO argued that the same rationale applied here in the context of “” where the applicant’s proposed trademark combined what the parties agreed was the generic term “booking” with a generic top-level domain “.com.”

The Court disagreed.

It determined that many times the combination of a generic domain with a generic top-level domain functioned descriptively to specify a particular website. The Court then explained that an application should not be rejected in these circumstances as a matter of law, because—like all descriptive marks—it may be possible for an applicant to show that it has acquired secondary meaning (origin-designation significance). The Court emphasized that the touchstone of recognizing a trademark was whether the consumer would recognize it as a designation of origin, not that whether the mark happened to be a combination of generic elements—especially in this case where the combination did point to a particular website that hosted a particular service. The Court contrasted this with the combination of a generic corporate designation in Goodyear Rubber that did not direct a customer to a particular service-provider site or location.

The Court appeared to be strongly influenced by the fact that was able to adduce evidence at the district court to show that the mark had acquired secondary meaning. This supported the Court’s conclusions that in many “” cases a secondary meaning could be acquired.

Justice Sotomayor concurred in the judgment but registered her concern that the Court had given too much value to surveys in its analysis as compared to other—more objective—evidence like dictionaries or use by competitors.

Justice Breyer dissented. His main concern was that there was no meaningful distinction with Goodyear Rubber because every generic corporate designation in combination with a generic term identifies a particular company—just like a domain name. Indeed, although he did not mention it, many states have rule that prevent companies from using the same trade name as a pre-existing company or corporation that is already registered with the secretary of state. Therefore, many times, even a generic name combined with a generic corporate designation will identify a unique company. Yet, under Goodyear Rubber, these trade names would not qualify for a trademark at common law or for federal registration under Goodyear Rubber. Justice Breyer was also concerned that this expansion would allow companies that were first to register generic domain names to engage in monopolistic activity to use consumer desire for generic services to prevent other service providers from including generic terms in their domains as well.

The Court tried to address Justice Beyer’s concerns by noting that any “” trademark would likely be very narrow, and that many times, the holder of a “” mark would not be able to enforce it beyond the specific domain name it had protected.

Moving forward, businesses may want to consider picking more generic domain names and being aggressive in seeking protection—especially if they couple that decision with an effective advertising strategy that will generate good secondary-meaning evidence.

This article is for informational purposes only and does not constitute legal advice. This article does not create any attorney-client relationship between Gundersen & Gundersen LLP and the recipient. Any testimonial or endorsement in this document does not constitute a guarantee, warranty, or prediction regarding the outcome of your legal matter. Previous results do not guarantee a similar outcome.



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