Well, the Supreme Court has done it again. Under trademark law, a generic term is a term that the relevant purchasing public understands primarily as the common name for particular goods or services. SOCKS™ for socks, GROCERY STORE™ for grocery store services, and PLUMBERS™ for plumbing services are all examples of generic trademarks. In fact, “generic trademark” may be a contradiction, because generic terms may never be protected as trademarks. Trademark protection is also withheld from other ubiquitous terms that fail to identify a single source of goods and services, such as grammatical articles: “The Grocery Store” is treated the same as “Grocery Store,” and “The” does not add any extra trademark significance. Another example includes various business entity designations, such as Inc., Ltd., or LLC – so “Grocery Store, Inc.” would be just as unprotectable as “Grocery Store” as a mark for grocery stores. A third example involves top-level domain names for websites (.com, .net, .edu, etc.), with “Socks.com” being treated the same as “Socks.”
However, the Supreme Court recently upended the prevailing wisdom, as well as long-standing Trademark Office policy, by holding that “Booking.com” as a mark for services involving booking hotel reservations is not generic. The Court rested its decision in part on the fact that only one entity may own a particular domain name at a time. Only one company can have “Booking.com” for its website, so consumers may identify www.booking.com with a single source of booking services. The court also refused, as a general matter, to create a bright-line rule that any combination of generic elements is per se generic. Instead, the Court held that such a combination is generic only if it “yields no additional meaning to consumers capable of distinguishing the goods or services” (emphasis removed). Because consumers identified “Booking.com” as a source of services, and not merely as a series of generic terms strung together, the combination became more protectable than the sum of its parts. In essence, the Supreme Court changed the answer from “No” to “Maybe.”
The Court has allowed for the registration of so-called “generic.com” marks. The opinion also suggests the possibility of registering “Generic, Inc.” or “Generic LLC” marks. The key is whether the consuming public would recognize the term as a trademark, i.e. as identifying the source of goods and services. This, in theory, allows businesses that use generic.com or Generic, Inc. to protect such names as trademarks. It also means that similarly-named businesses need to be careful not to commit trademark infringement.