In June 2020, the Supreme Court issued its decision in the much-anticipated case addressing the registrability of so-called “ terms” (a generic word followed by a generic top-level domain, such as .com). US Patent and Trademark Office et al. v. BV, 591 US ___ (2020). Rejecting a per se rule that terms are necessarily generic, and therefore incapable of serving as a trademark and ineligible for registration, the Supreme Court (in an 8-1 vote) held that the proper test turns on consumer perception: “Because ‘’ is not a generic name to consumers, it is not generic.”

Following the decision, the USPTO issued Examination Guide No. 3-20 to provide additional information regarding the examination and registrability of terms. Applicants seeking to register these marks should be prepared to present a significant amount of evidence demonstrating that consumers recognize the mark as a source identifier. The USPTO advised that reliance on five years’ use or a prior registration alone was unlikely to be sufficient. As the Supreme Court warned, “given the nature of these terms, the available evidence will likely support a conclusion that they are, at least, highly descriptive, and thus consumers would be less likely to believe that they indicate source in any party. Thus, for terms, applicants will generally have a greater evidentiary burden to establish that the proposed mark has acquired distinctiveness.”

Nearly 10 years after first applied to register its BOOKING.COM marks, the USPTO finally registered three of its applications on January 5, 2021. While this case cleared a path to registration for other terms, the Supreme Court and USPTO have made it clear that it is not necessarily an easy one.