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Dear Expert
Flawed or Fabulous?
One-upping rivals by trademarking words commonly used in media may seem brilliant. But legal eagle RONNIE RAJU explains the pitfalls.
Dear Expert, The recent U.S. Supreme Court decision that changed trademark laws has me wondering if I can register a generic mark like FMradiostation.com. I thought marks that consist of a generic term plus a top-level domain, when used in connection with goods or services (such as mattress.com for stores that sell bedding) could not be protected and federally registered. Scheming in Schenectady, N.Y.
Dear Schenectady,
The short answer is that you have a chance to obtain a federal registration for a generic term plus a top-level domain (generic + TLD) if you are using it as a trademark. However, you will have to be able to provide plenty of evidence that consumers recognize FMradiostation.com as a trademark.
In the case USPTO v. Booking.com, B.V., the Supreme Court upended what was once a bright-line rule that a mark consisting of a combination of a generic term and a top-level domain like “.com” is automatically generic.
As background, you have to understand that generic terms cannot function as trademarks and are not eligible for federal registration because granting a registration for a trademark means that competitors cannot use those terms. Terms that are necessary to accurately identify the type of goods or services being provided cannot be registered, as this would unfairly hamper competition. For example, if a company was able to register a generic mark such as “TV station” for broadcasting services, it could prevent others from using TV station when advertising their own broadcasting services.
In the Booking.com case, the Supreme Court ruled that booking.com is eligible for trademark registration even though “booking” is a generic term for online hotel reservation services. The Court indicated that a TLD such as .com, .biz, .org, etc., could distinguish a source because the resulting combination, generic + TLD, leads consumers to a specific website, and URL addresses can be owned by only one entity at a time.
The key is that a generic term + a TLD mark can be protected, but only if the owner can show that consumers associate the mark with a particular source. In other words, the owner has to show that the mark has acquired distinctiveness. The type of evidence that may be submitted to support a claim of acquired distinctiveness includes consumer surveys, consumer declarations, advertising expenditures and evidence that shows the duration, extent and nature of the applicant’s use of the proposed mark, including whether the use is exclusive.
Regarding consumer surveys in particular, the Supreme Court warned that they must be properly designed and interpreted to ensure that they are an accurate and reliable representation of consumer perception of a proposed mark. Therefore, an applicant submitting a survey must carefully frame its questions and provide a report that documents how the survey was conducted. There should be information about how the survey questions were developed; the number of consumers contacted; the number of respondents and the geographic scope of the survey.
Conducting trademark surveys is an art in itself and requires expertise in formulating the appropriate questions and the process of targeting the right population of respondents. You can expect to pay upwards of $35,000 for an effective trademark survey.
Booking.com was able to provide evidence that it started providing online booking services to U.S. customers at least as early as 1996 and that it was ranked first in consumer satisfaction among independent travel websites in a J.D. Power survey. Perhaps the most powerful piece of evidence was an extensive trademark survey in which 74.8% of relevant consumers considered booking.com to be a service emanating from a single company as opposed to a generic service. If you want to be able to register a generic term + TLD mark, make sure you are following the same rules that you should apply to all of your trademarks: 1. Make sure the generic + TLD mark is set off from the rest of the text by using a different font or unique stylization. 2. Always use the generic + TLD as an adjective, never as a noun or a verb. 3. Use a TM next to the generic + TLD so consumers know you view it as a trademark. 4. Keep good records of advertising expenditures and estimates of how many consumers are exposed to the advertising and your social media campaigns. 5. Consider having a trademark survey done to support any application for trademark registration of the generic + TLD mark.
Do you have a professional puzzle that MFM and BCCA experts might be able to
answer? We’ll mine the contact base and find Ronnie Raju is a partner at Wilkinson Barker the right person to answer your question. Knauer, LLP. She can be reached at (202) 383-3370 Just contact TFM editor Janet Stilson at or rraju@wbklaw.com.
