In 2018, the Court of Appeals for the Federal Circuit clarified the standard for generic terms, and arguably narrowed the field of what could qualify for trademark protection, in Royal Crown Co. v. The Coca-Cola Co (IP Update, Vol. 21, No. 7). The boundary tightening continued in 2019, with the Trademark Trial and Appeal Board (TTAB) issuing a number of decisions refusing registration based on failure-to-function as a trademark. For example:

  • In re Schalk, Serial No. 86183499 (T.T.A.B. Oct. 10, 2019): The TTAB found that consumers were more likely to view the applied-for mark (shown below) as an informational message or opinion rather than as a source identifier for the goods (bumper stickers).

                 

  • In re Ocean Technology, Inc., 2019 U.S.P.Q.2d 450686 (T.T.A.B. 2019): The TTAB found that Applicant’s evidence of consumer perception (four declarations) was insufficient to demonstrate that the relevant consumers recognize the mark (shown below) as identifying the source of the goods instead of as mere information.

                 

  • adidas AG v. Christian Faith Fellowship Church, Cancellation No. 92053314 (T.T.A.B. Nov. 13, 2019): the TTAB found that ADD A ZERO would be understood by the relevant public as informational (and therefore not as a source identifier), but that the design elements of the applied-for mark (shown below) rendered it unitary and therefore registrable.

                   

  • In re Yarnell Ice Cream, LLC, Serial No. 86824279 (T.T.A.B. July 9, 2019): The TTAB found, inter alia, that SCOOP failed to function as a trademark “because, at most, it merely informs purchasers of the serving size of the goods.”

This year, the Supreme Court will hear U.S. Patent & Trademark Office v. Booking.com B.V., No. 19-46, which will determine whether the addition of a generic top-level domain (e.g., .com) creates a protectable trademark when added to an otherwise unprotectable generic term. The dispute centers on the registrability of BOOKING.COM for various travel services, including online hotel reservation services.

Booking.com first filed applications for its BOOKING.COM marks in 2011. The TTAB affirmed the USPTO’s refusals to register, finding BOOKING.COM to be generic for the relevant services. Booking.com appealed to the US District Court for the Eastern District of Virginia, which reversed the TTAB, and—despite the US Courts of Appeals for the Federal Circuit and the Ninth Circuit having previously rejected marks including ADVERTISING.COM and HOTELS.COM— the US Court of Appeals for the Fourth Circuit affirmed the district court, stating the addition of “.com” to “booking” can result in a protectable descriptive mark (i.e., non-generic) where evidence, such as survey evidence, shows that the relevant public is likely to primarily perceive the mark as a source-identifier (IP Update, Vol. 22, No. 3).  The US Patent and Trademark Office (PTO) argues, inter alia, that the addition of “.com” should be treated as an entity designation such as “company” or “Inc.,” which only convey the existence of a commercial establishment and typically do not have any source-identifying significance.

Should the Supreme Court create a per se rule that any generic term combined with a generic gTLD results in an unprotectable mark, it could further expand the scope of generic terms. The American Intellectual Property Law Association’s amicus brief cautions against such a rule, arguing that the Trademark Manual of Examining Procedure’s current guidance to review each mark comprised of a generic term with a generic gTLD on a case-by-case basis, is the best course of action. Others, including the PTO, have opined that allowing a registration for BOOKING.COM would have the anticompetitive effect of preventing others from using the term to refer to similar services.