Practice Areas

Print PDF

SCOTUS has no reservations about trademark

Year End 2020 IP Newsletter

The U.S. Supreme Court recently sided with digital travel company in a much-anticipated trademark ruling. The Court’s holding, which makes the combination of a generic word with “.com” eligible for federal trademark registration, reportedly has already led to a wave of registration applications for such terms.

Trip to the high court provides hotel reservations and other services through a website that uses the domain name It filed applications to register four marks in connection with travel-related services. Each had different visual features, but they all included the term

Both an examining attorney at the U.S. Patent and Trademark Office (PTO) and the PTO’s Trademark Trial and Appeal Board (TTAB) found that the term is generic for the services at issue and therefore ineligible for registration. When went to the courts for relief, both the trial court and the U.S. Court of Appeals for the Fourth Circuit reversed the TTAB and found that the term “,” unlike the term “booking” alone, isn’t generic.

The appellate court rejected the PTO’s argument that, as a rule, combining a generic term with “.com” necessarily produces an ineligible generic term. The PTO appealed to the Supreme Court.

The confirmation

A generic name (that is, the name of a class of products or services) is ineligible for federal trademark registration. The company and the PTO agreed that the word “booking” is generic for hotel reservation services. They parted ways on whether “” also was generic.

The Supreme Court, like the Fourth Circuit, rejected the PTO’s proposed rule regarding the combination of a generic term with “.com.” Rather, it found that whether a “” term is generic depends on whether the term, taken as a whole, signifies to consumers the class of online hotel reservation services.

If “” were generic, the Court said, consumers might be expected to understand “Travelocity,” which offers a similar service, to be a site. Or, searching for a trusted source of online hotel reservation services, a consumer might ask a frequent traveler to share her favorite provider. The Court concluded, though, that consumers don’t perceive the phrase “” in this way.

Turning its attention to the PTO’s proposed rule, the Court cited the agency’s own past practice as inconsistent with it. After all, the PTO had previously issued trademark registrations for “” (for online retail services offering art prints, original art and art reproductions) and “” (for dating services). Those registrations would be at risk of cancellation if the PTO’s stance in this case prevailed.

The Court also dismissed the PTO’s contention that the rule follows from an existing rule that a generic corporate designation added to a generic term doesn’t confer trademark eligibility. The Supreme Court had applied that rule in an 1888 case involving the Goodyear Rubber Company.

According to the PTO, adding “.com,” like adding “Company,” conveyed no additional meaning that would distinguish one provider’s services from those of another. The Supreme Court found this reasoning faulty.

The Court pointed out that a term also could convey to consumers a source-identifying characteristic — an association with a particular website. Consumers, it said, could understand a given term to describe the corresponding website or to identify the website’s proprietor.

And the Court rejected the PTO’s claim that protecting terms as trademarks could exclude or hinder competitors from using similar language (for example, It found that doctrines such as likelihood of consumer confusion would ensure that a trademark holder wouldn’t have a monopoly on the corresponding generic term.

It pays to lodge complaints

In addition to loosening some of the restrictions on federal trademark registration eligibility, the Supreme Court’s ruling makes clear that challenging the PTO can prove worthwhile. The Court has ruled in favor of the would-be registrant against the PTO in several landmark cases in recent years, and lower courts also haven’t hesitated to rule against the agency.

Sidebar: Don’t take registration for granted

Although the U.S. Supreme Court’s decision in the case (see main article) opens the door to the trademark registration of “” terms, applicants shouldn’t take registration for granted. As the Court stressed, it didn’t adopt a rule automatically classifying such terms as nongeneric.

Establishing that consumers perceive a term as a term capable of distinguishing among members of a class — rather than as the name of the class — won’t be easy. The Court indicated in a footnote that relevant evidence could include dictionaries, usage by consumers and competitors, and consumer surveys.

But mark owners would be wise not to rely solely on such surveys. The Court noted that surveys require care in their design and interpretation. Notably, justices agreed that consumer survey evidence may be “an unreliable indicator of genericness.” Wrote one justice: “Flaws in a specific survey design, or weaknesses inherent in consumer surveys generally, could limit the value of surveys.”

Read the newsletter here