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Testing for Genericness After USPTO v. Booking.com
In the recent U.S. Supreme Court case of USPTO v. Booking.com, No. 19-46 (June 30, 2020), the Court held that the term Booking.com is not necessarily generic merely because it is composed of two components, each itself generic. In so deciding, Justice Ginsburg averred that there is an appropriate metric to determine if such a term is indeed generic, that of consumer perception. The Court cited the Lanham Act's provision on cancellation that states: the "primary significance of the registered mark to the relevant public … shall be the test for determining whether the registered mark has become the generic name of goods or services."
The opinion goes on to state that "booking.com" can be tested to determine if consumers perceive it to be a generic term. The PTO had argued that "adding .com to a generic term — like adding "Company" — conveys no additional meaning that would distinguish [one provider's] services from those of other providers" (from the opinion quoting the PTO). The Court disagreed with this position and stated "that premise is faulty." A generic.com term might also convey to consumers a source-identifying characteristic: an association with a particular website." [emphasis added]
The Court's conclusion was stated succinctly: "While we reject the rule proffered by the PTO that generic.com terms are generic names, we do not embrace a rule automatically classifying such terms as nongeneric." And in footnote 6 to the opinion, the Court left the entire matter to evidence of consumer perception, including, but not limited to, surveys or "usage by consumers" (which also amounts to empirical investigations or inquiries related to consumer behavior). (The other evidence would be indirect such as dictionaries).
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