Trademark Law’s Monopoly Problem: The Supreme Court on Generic Terms as Trademarks
Abstract
American University Washington College of Law Research Paper No. 2021- 06
The U.S. Supreme Court’s June 30, 2020 decision in U.S.P.T.O. v. Booking.com B.V. held that consumer perception alone should determine whether terms are registrable as trademarks or generic and free for all to use. The issue was whether a term that is generic for the class of goods or services can be protected as a trademark when followed by “.com.” The case was about the proper test for genericity in “generic.com” cases. In its first domain name case, the Court held that “[a] term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers.” The Court chose not to apply its own precedent—Goodyear’s Rubber Mfg. Co. v. Goodyear Rubber Co.—that held that a generic term embellished only by the generic designation of a business entity necessarily produces a generic composite. The U.S.P.T.O. had argued that the consumer perception inquiry was unnecessary in this case just as it had been in Goodyear.