SCOTUS: Can generic terms be valid trademarks?

On Behalf of | Dec 14, 2020 | business litigation, intellectual property & trade secrets

A business’s trademark is its identifier. It is the symbol that represents the business to any consumer that sees or hears it.

All trademarks must meet specific standards to be federally registrable, which often means they must be unique, but also distinctive from any other registered trademarks. A recent ruling by the Supreme Court of the United States does not deny these requirements, but it did make some changes of which business owners should be aware.

SCOTUS SIDES WITH COMPANY’S CASE OVER “GENERIC” TERM IN TRADEMARK

Booking.com is a popular website that allows travelers to make reservations all across the globe. The website name – Booking.com – is also the name of their company and domain. Therefore, the company filed a trademark for its name. The US Patent and Trademark Office (USPTO) denied the trademark registration, stating that the term “booking” was too common for the company to trademark.

However, according to NBC News, the Supreme Court ruled that the addition of “dot com” made the common term “booking” recognizable enough as a specific brand – and therefore a specific and recognizable trademark.

COULD THE RULING INCREASE THE RISK OF LITIGATION?

The article from NBC News also reports that some worry this ruling could only increase the chance of trademark disputes and litigation over infringement.

One of the most common causes of trademark infringement cases is that the symbol or name is too similar to another business’s, which could:

  • Confuse consumers;
  • Lead to lost business; and
  • Impact the business’s reputation.

Experts worry that SCOTUS approving the use of generic terms – as long as they are still identifiable – could lead to such confusion. Although this case pertained to online companies, we have already seen a similar dispute play out with the Lucky Brand case SCOTUS ruled on in May, as we discussed in a previous blog post.

There is no way to know for sure how this ruling will impact future business, but California business owners with online platforms should be consciously aware of the effects this new ruling could have.