In other words, how to avoid wasting money on building name recognition and branding, only to fall prey to arguably the easiest pitfall in trademarking.
The most common (and avoidable) errors I witness trademark applicants make is inadvertently applying for what’s known as a “generic” or “descriptive” trademark. In a best case scenario, this can hamstring a business’ ability to get automatic full protection for their name; at worst, it can preclude registration altogether. “Descriptive” trademarks are just what they sound like: a name that (nearly) literally describes the good or service being sold in commerce. “Generic” trademarks don’t always receive the same amount of protection as other trademarks; hence, business owners who educate themselves on what these trademarks are can make strategic naming decisions that provide their businesses with greater protections. In SCOTUS’ (the Supreme Court’s) last bench session, they ruled on a case that directly pertains to many inquiries that cross my desk daily, that all business owners can strategically learn from.
Because many small business owners, in particular, spend money on trademark applications that never receive full protection because they are shot down by the USPTO for being descriptive. By definition, generic trademarks are descriptive trademarks that cannot distinguish the owner’s goods and service from another company’s, or designate an origin. For example, I see this most often when an entrepreneur turns a service into a product, and calls it the “___ Shop”. For example, the “Law Shop” or the “Venue Shop”, who sell products only within the specifically named industry, or only a specific type of product or service. These types of names simply do not (and cannot) describe the company with specificity. By definition, a generic trademark is one that describes the class of goods or services itself and nothing more.
In their most recent bench session, SCOTUS made a major ruling regarding generic trademarks with the case United States Patent and Trademark Office v. Booking.com by holding that “[a] term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers.” (Emphasis added). What does this mean for business owners?
In this case, Justice Ruth Bader Ginsburg boils it down for us:
The more distinctive the mark, the more readily it qualifies for the principal register [in the USPTO]. The most distinctive marks — those that are “‘arbitrary’ (‘Camel’ cigarettes), ‘fanciful’ (‘Kodak’ film), or ‘suggestive’ (‘Tide’ laundry detergent)” — may be placed on the principal register because they are “inherently distinctive.” [citations omitted]. “Descriptive” terms, in contrast, are not eligible for the principal register based on their inherent qualities alone … [because] descriptive terms must achieve significance “in the minds of the public” as identifying the applicant’s goods or services — a quality called “acquired distinctiveness” or “secondary meaning.” [citations omitted]. Without secondary meaning, descriptive terms may be eligible only for the supplemental register.
In other words, descriptive trademarks must acquire distinctiveness on the Supplemental Register before they are deemed distinctive enough for the Principal Register. In the booking.com case, the USPTO refused to register “booking.com” on the grounds that it lacked secondary meaning, despite the company’s argument that “.com” increased distinctiveness due to the fact that it is a generic top-level domain (gTLD) (of note, in the dissent, Breyer referenced prior case law and how “Company” or “Inc.” add nothing to refute whether or not the mark is “generic”, which is an interesting point).
In writing for the majority, Ginsburg stated that the inquiry “turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services.” In this case, SCOTUS held that “BOOKING.COM” did not, because no evidence presented in previous proceedings in the lower courts demonstrated that consumers considered the compound term, taken as a whole, to be generic of online booking and travel reservations.
In order to get past the argument of “generic” when registering your trademark, you must be prepared to clearly demonstrate that the consuming public identifies your entire mark with your business, specifically. Just having “.com”, a gTLD, or another domain extension, is not enough. Of course, coming up with this type of proof is difficult, to say the least, but this case opens the door to such an argument.