The Supreme Court recently decided that the mark Booking.com was not generic, had acquired secondary meaning, and was registrable on the Principal Register. This post assesses its potential impact by analyzing prosecution trends.
The Prior State of Generic or Descriptive TLD Marks
Using our trove of 12 million + Office Actions and Responses, we searched for applications that went abandoned since 2010 and faced a genericness and/or 2(e)(1) refusal. (The Office isn’t incredibly consistent in its phrasing for these refusals, so we looked at both to be safe.) 2,500 applications met these criteria; of them, 184 were on the Supplemental Register already. 1724 marks made it to registration, about equally split between the Principal and Supplement Registers. We are looking at a reasonably-sized pool of marks that could be impacted, but it’s hardly a huge number when spread out over a decade.
The Impact of Booking.com
Since the Supreme Court decision was released on June 30, 2020, there have been twenty-two Office Action responses citing to the Booking.com decision. So far, it’s been cited in applications for HempConsultants.com (in two filings) and Canna-Consultants.com (same applicant, also two filings), American Hemp Brokers Association, Family Dental Care, Remodeling.com, TechTerms, FileInfo, Cooler Screens, StorageBoxes.com, PartyTentsDirect.com, CheapShit.com, CarParts.com, SensoryFX, Bottlestore.com, Heavy Duty Bedding, L’Ange, The Green Amendment, Qpon, and E Lend. Examiners for the first two hemp-related apps above and for Heavy Duty Bedding also cited to the case in outgoing office actions; each outgoing Office Action so far has taken a pretty narrow read on the applicability of the Booking.com decision.
It’s interesting to see how immediately the case is being adopted (at least by applicants) for arguments outside of the immediate fact pattern of the case: very weak or generic term + a gTLD. It will be interesting to follow these citations to see if the USPTO responds. Will it take a narrow interpretation of the decision, limiting its impact to marks that contain gTLDs. Or, will examination outcomes move a more permission approach to registration of the least distinctive marks?