Trademarks help companies communicate with their customers.  The presence of a trademark on a product assures the marketplace that all goods bearing the mark come from the same producer and are of uniform quality.  The system of trademark registration in the United States is administered by the United States Patent and Trademark Office (“USPTO”).  The USPTO generally functions well and adapts its regulations to fit changing circumstances.  On occasion, however, the USPTO adopts or continues to apply regulations that seem out of touch.  In a decision issued June 30, 2020, the Supreme Court of the United States struck down one such regulation in United States Patent and Trademark Office v. B.V.

Central to the case is the distinction between “generic terms” and “trademarks.”  Generic terms (“pistol” for example) refer to an entire class of goods or services and cannot be registered or otherwise protected.  Trademarks refer to the producer or source of goods or services.  Generally, the owner of a trademark has the right to exclude others from using its mark. 

In the recently decided case, the USPTO rejected an application by the online travel reservations service to register BOOKING.COM as a trademark.  In doing so, the USPTO applied a regulation (the “per se rule”) that categorically refused registration status to any trademark that consists of a generic term followed by “.com.” acknowledged that the terms “booking” and “.com,” considered separately, were generic terms incapable of functioning as a trademark.  It argued, however, that the terms, when combined into the single unit BOOKING.COM, was recognized by consumers as a brand name (protectable trademark) and not a type of service (unprotectable generic term).  The USPTO outright refused to register the mark, even in the face of empirical survey evidence showing that 74.8% of consumers of online travel services recognize BOOKING.COM as a brand name. 

The Supreme Court upheld the lower appellate court’s determination that BOOKING.COM was eligible for registration as a trademark and rejected the USPTO’s per se rule.  In her opinion for the Court, Justice Ginsberg noted:

[W]e reject the [US]PTO’s sweeping rule.  A term styled ‘’ is a generic name for a class of goods or services only if the term has that meaning to consumers.  Consumers, according to lower court determinations uncontested here by the [US]PTO, do not perceive the term ‘’ to signify online hotel-reservation services as a class.  In circumstances like those this case presents, a ‘’ term is not generic and can be eligible for federal trademark registration.*  *  *  *  * Renzulli Law Firm’s Intellectual Property Group represents U.S. and global companies in a broad range of trademark, copyright, patent, and related matters.  Headed by founding partner John F. Renzulli, our capabilities include:

Clearance, Prosecution, & Maintenance: search and clearance of trademarks; opinion letters concerning trademark availability; strategic planning concerning trademark, domain name, and copyright protection and portfolios; filing and prosecution of U.S. trademark applications; coordination with non-U.S. counsel to file and maintain registrations outside the U.S.; copyright and domain name registrations.

Counseling:  proper trademark usage; anti-counterfeiting counseling and strategies, including recordation of trademark and copyright registrations with U.S. Customs.

Litigation & Enforcement:  litigation in the federal courts; opposition, cancellation, and concurrent use Proceedings before the U.S. Trademark Trial and Appeal Board; cybersquatting and UDRP Proceedings; Customs’ seizures.

If you have any questions or would like additional information about RLF’s capabilities in the area of intellectual property law, please contact John Renzulli.