Supreme Court’s Latest Decision Will Change the Registration Game for Trademarks

What’s the spectrum of distinctiveness?

When considering whether to register a trademark, one of the factors the the U.S. Patent and Trademark Office (PTO) considers is where the mark falls on the spectrum of distinctiveness. In essence, the USPTO determines how distinctive, or strong, the mark is. If the mark is distinctive/strong, the more likely the mark can be registered. To note, trademark distinctiveness depends on what consumers perceive.  

So what does the spectrum look like? There are the five types of marks on the spectrum and they are listed below, from the weakest to the strongest.

Type 1 – Generic Marks
Generic marks are the common word for the good or service being sold. For example, if I wanted to register the trademark ORANGE in association with the sale of oranges, the PTO would not register the mark. The reason is because the entire world uses the term orange for the fruit and to consumers, my use of ORANGE is not really identifying a source. In general, generic marks cannot be registered. 

Type 2 – Descriptive Marks
Descriptive marks describe a trait or characteristic of the good or service being sold. A great example of this type of mark is TRAVELCENTERS OF AMERICA. This is a travel center located in either the US or Canada. While descriptive marks are more difficult to get registered, it is still possible for them to be registered.

Type 3 – Suggestive Marks
Suggestive marks require you to use thought or imagination to figure out the trait or characteristic of the good or service being sold. A great example of this type of mark is CHICKEN OF THE SEA. The product is tuna, which is as plentiful in the sea as chicken is on land. Suggestive marks are classified as “inherently distinctive” (meaning that they are strong) and are likely to be registered. Note, there is sometimes a fine line between descriptive and suggestive marks.

Type 4 – Arbitrary Marks
Arbitrary marks do not describe a trait or characteristic of the good or service being sold. The association of the mark with the good or service is random. A great example of this kind of mark is APPLE. An apple is an actual type of fruit. To use the term in association with computers, phones, and other electronics, in the way Apple, Inc. does, is random. Arbitrary marks are inherently distinctive and are likely to be registered. 

Type 5- Fanciful Marks 
Fanciful marks are made up words. A great example of this kind of mark is EXXON. Fanciful marks are inherently distinctive, are the strongest kinds of marks, and are likely to be registered. 

Thanks for the trademark lesson! So, what happened in this case?

My pleasure! In this case, the company Booking.com applied to register BOOKING.COM in association with online hotel reservation services (i.e. booking rooms). The USPTO rejected the application, stating that 1) the term “booking” was generic for the services provided and 2) adding .com to a generic term did not change the classification of the generic mark (i.e. the mark was still generic).  

The Supreme Court held the following:

• Whether a compound term is generic turns on whether that term, taken as a whole, signifies to consumers a class of goods or services. Consumers did not in fact perceive the term “Booking.com” that way because they knew the source of BOOKING.COM to actually be the company Booking.com, namely because only one company/party can own a domain name. Because “Booking.com” was not a generic name to consumers, it is not generic. 
• The Court rejected the PTO’s nearly per se rule: when a generic term is combined with a generic Internet-domain name suffix like “.com,” the resulting combination is generic. 

What do you think are the consequences of this decision?

I think that because of this decision, we will see an increase the number of registrations ending with domain name suffixes. While marks that are higher on the spectrum of distinctiveness (particularly the inherently distinctive marks) probably won’t register their domain name as a trademark, companies who want to register generic trademarks will. I’m curious what will happen if there are different variations of domain names being used with generic marks. For example, what if a company that provided similar services as those of Booking.com tried to register BOOKING.ORG?

For more information about the case, you can read the Supreme Court decision here. For more information about trademarks, you can read more trademark blog posts by clicking the TRADEMARK tag on the right or contacting me.