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The Intellectual Property StrategistFeaturesIntellectual PropertyLitigationTrademarksUnited States Supreme Court

Testing for Genericness After USPTO v. Booking.com

By Alex Simonson
October 01, 2020

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]

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