MIAMI BUSINESS LITIGATION: RECENT SUPREME COURT DECISION ON “GENERIC” TRADEMARKS

Effective protection of a Florida business’ trademark rights can be critical to the success of the business. Trademark protection can help a Florida business establish a reputation and prevent imitators from taking advantage of that reputation. A recent United States Supreme Court business litigation case held which types of generic marks can be registered with the United States Patent and Trademark Office (USPTO). Peter Mavrick is a Miami business litigation lawyer, and also represents clients in business litigation in Fort Lauderdale and Palm Beach. The Mavrick Law Firm represents clients in breach of contract litigation, non-compete agreement litigation, trade secret litigation, trademark infringement litigation, and other legal disputes in federal and state courts and in arbitration.

Trademark law allows businesses to cultivate a reputation by allowing trademark owners to protect the marks that help consumers identify the origin of a product or service. Trademark owners sometimes need to initiate business litigation to defend against trademark infringement. The most well-known method to protect a trademark is federal registration with the USPTO under the Lanham Act, 15 U.S.C. § 1051 et seq. “The Lanham Act provides national protection of trademarks in order to secure to the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers.” Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985). This method provides nationwide protection and the most remedies for registrants, but it can be time consuming and costly. Federal registration provides the registering business “‘prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate.’” Matal v. Tam, 137 S. Ct. 1744 (2017).

Registration of a mark with the USPTO can provide the most protection, but it can be difficult. Before a trademark may be registered, the USPTO must agree that the trademark is relatively distinct. Marks that resemble other marks such that there is a likelihood of confusion cannot be registered. 15 U.S.C. § 1052(d). Accordingly, generic names for goods and services cannot be registered. United States Patent & Trademark Office v. Booking.com B. V., 19-46, 2020 WL 3518365 (U.S. June 30, 2020) (“Indeed, generic terms are ordinarily ineligible for protection as trademarks at all”). Generally, “[t]he more distinctive the mark, the more readily it qualifies for the principal register.” Id.

On June 30, 2020, the United States Supreme Court issued its decision in United States Patent & Trademark Office v. Booking.com B. V., 19-46, 2020 WL 3518365 (U.S. June 30, 2020). The Booking.com case decided whether a generic term can nevertheless be registerable with the USPTO when it is put within the context of a website URL. Particularly, the company Booking.com sought trademark registration of its name. The USPTO initially refused to register the mark based on the principle that merely adding a corporate designation to a generic term does not confer trademark eligibility, as established in Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888). According to the USPTO, Booking.com could not be a registered trademark or the reasons that “Booking Company” would not be able to be registered. Because its corporate marketing strategy relies so heavily on its name vis-a-vis its competitors, Booking.com B.V. initiated business litigation against the USPTO to ensure the name “Booking.com” is a registered trademark

The Supreme Court disagreed with the USPTO, holding that whether a trademark is distinctive enough to be registered does not depend on whether there was a generic corporate identifier. Booking.com explained that the important question is whether consumers perceive the mark as distinct, despite the mark appearing to be two generic terms together. “[F]or a compound term, the distinctiveness inquiry trains on the term’s meaning as a whole, not its parts in isolation.” Id. Booking.com held that, “[w]hether any given ‘generic.com’ term is generic, we hold, depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.” As plaintiff business was able to show that consumers recognized “Booking.com” to refer to a distinct company’s services rather than “booking” as a whole, “Booking.com” could be registered with the USPTO.

A business that is able to show that its mark has gained a distinctive meaning can seek federal registration with the USPTO, even if the mark is a combination of generic terms. Peter Mavrick is a Miami business litigation attorney who also practices business litigation in Fort Lauderdale and Palm Beach. This article does not serve as a substitute for legal advice tailored to a particular situation.