The term "" is not necessarily generic

The Supreme Court of the United States (SCOTUS) decided in USPTO v. on June 30, 2020, that a term styled "" is a generic name for a class of goods or services only if the term has that meaning to consumers.

USPTO rejected the application for registration of the term "" as a trademark, reasoning that the term "" is generic and lacks secondary meaning if the term "" is descriptive. sought judicial review an the U. S. District Court for the Eastern District of Virginia and the court determined that the term "" is not generic, relying on evidence of consumer perception. The USPTO appealed the determination that "" is not generic. The Court of Appeals for the Fourth Circuit affirmed the judgment of the district court, rejecting the argument by the PTO that the combination of ".com" with a generic term like "booking" must be generic.

The SCOTUS affirmed the decisions in the lower courts, and held that whether a term "" is generic depends on whether consumers in fact perceive that term as generic. In reaching the decision, the court reiterated the following principles:

  1. a “generic” term names a “class” of goods or services, rather than any particular feature or exemplification of the class;

  2. for a compound term, the distinctiveness inquiry trains on the term’s meaning as a whole, not its parts in isolation; and

  3. the relevant meaning of a term is its meaning to consumers.

The eligibility for registration as a trademark is determined on the basis of the capacity of the mark to distinguish goods or services in commerce.

As a result of the decision, it can be expected that the consumer survey evidence regarding the consumers' perception of a term to be much more significant and contested in future trademark practice. Justice Sonia Sotomayor alluded to the latter when she suggested that consumer surveys may be unreliable and the district court may be wrong.

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