USPTO Provides Guidance in View of ‘Booking.com’

On June 30, 2020, the Supreme Court of the United States decided USPTO v. Booking.com B.V., rejecting a rule that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is automatically generic.[1] Booking.com arose from the U.S. Patent and Trademark Office’s (USPTO) refusal to register the mark BOOKING.COM on the grounds that it is generic for hotel reservation services or, in the alternative, that it is merely descriptive and has not acquired distinctiveness. The Supreme Court rejected the agency’s application of a per se rule that the combination of a generic term and a top-level domain is always ineligible for registration. In October 2020, the USPTO issued new guidance for trademark examiners on this issue in view of Booking.com. Under the new examination guide, a [generic.com] term may still be refused as generic, but only when warranted by the evidence in the application record.[2] The terms of the new guidance are summarized below.
I. Analyze term, as a whole, for source-identifying capability.
The guidelines provide that to establish that a [generic.com] term is generic, the examining attorney must show that the relevant consumers would understand the primary significance of the term as a whole to be the name of the class or category of the goods and/or services identified in the application. The examining attorney is required to explain how the evidence of record supports the issuance of a genericness refusal,  showing not only that the individual elements of the [generic.com] term are generic but also that when combined, the combination creates no new or additional significance capable of indicating source to consumers.