Distinguishing Generic and Descriptive Marks under United States Trademark Law

Under United States trademark law, in general, a “trademark” is a word, phrase, symbol, design, or combination thereof, used in connection with a good in commerce to identify and distinguish the source of the good from others. In order to “identify and distinguish the source of a good,” a mark must have a certain quantum of distinctiveness; United States trademark law does not protect generic terms. Terms that are merely descriptive, however, are protected if they acquire a secondary meaning. This distinction can be crucial to companies seeking to build or maintain a brand. 

A term is “generic” if its primary significance to the public is a reference to the category of goods with which it is used. For instance, the term “apples” is generic when used in connection with apples. Distinguishably, a term is “descriptive” if it refers to an ingredient, quality, characteristic, function, feature, purpose, or use of the good with which it is used, as opposed to the category of the good. For instance, the term “tasty” would be descriptive when used in connection with apples because that term refers to a quality or characteristic of an apple. As mentioned, a descriptive term can be protected under trademark law if it acquires a secondary meaning. A descriptive term’s acquisition of a “secondary meaning” is established by showing that consumers primarily identify the descriptive term as the source of the goods rather than an ingredient, quality, characteristic, function, feature, purpose, or use of the goods. For example, a company named “cold and creamy” that uses its name in connection with ice cream would need to show that consumers primarily identify the phrase “cold and creamy” as meaning the company is the source of the ice cream, as opposed to a quality or characteristic of the ice cream, to establish that “cold and creamy” has acquired a secondary meaning. 

Recently, the Supreme Court of the United States opined on the issue of whether an otherwise generic mark can, by mere addition of a generic top-level domain (such as “.com”), form a mark eligible for protection under United States trademark law.  In United States Patent and Trademark Office v. Booking.com, Booking.com, a website for booking lodging reservations, asserted that its name, “Booking.com,” is not generic and thus barred from being accorded the protection of United States trademark law. Conversely, the USPTO maintained, among other things, that whenever a generic term is combined with a generic top-level domain, the resulting combination is generic, and so, accordingly, “Booking.com” is generic. The Supreme Court found in favor of Booking.com and rejected the USPTO’s proposition. In rejecting the USPTO’s proposition, the Supreme Court stated that the issue of whether a “generic.com” term is generic depends on “whether consumers perceive that term as the name of a class or, instead, as a term capable of distinguishing upon members of a class.” In other words, marks consisting of a combination of a generic term and a generic top-level domain are not categorically generic. Rather, such a mark will be generic only if consumers perceive that mark as the name of a class of goods instead of the identity of the source of the goods. And indeed, recognizing that only one entity can occupy a particular internet domain, consumers could understand a mark consisting of a generic term in combination with a generic top-level domain to “describe the corresponding website or the website’s proprietor.”

Notably, the Supreme Court did not explain the implementation of the fact-specific rule established in Booking.com, and so issues may likely arise regarding the evidence necessary to prove whether such a mark is generic. Such issues could provoke expensive litigation and incentivize the use of such litigation as leverage.

This information is provided by Bailey & Company, Attorneys & Counselors, P.A. (“Bailey & Company”), solely for informational purposes. This information does not form, nor should it be construed to form, an attorney-client relationship, or any other fiduciary relationship, with Bailey & Company or any attorney, agent, or employee of Bailey & Company. For additional information about the topic of this article, contact Drew Bailey.