generic terms

Fourth Circuit Upholds Finding That Is Not Generic

It is a truism that generic terms cannot be protected as trademarks.  And usually when additional generic terms are added, the result is itself still generic.

But a recent Fourth Circuit ruling in B.V. v. U.S. PTO (2019) upheld a district court finding that, taken as a whole, the mark BOOKING.COM for hotel reservation services was not generic.  Although each of the elements (BOOKING) and (.COM) by itself was generic, the mark, considered “as a whole” and given the survey evidence introduced, the district court found was not generic (rather it was found descriptive, and protectible with a showing of secondary meaning).

Counsel and parties dealing with trademarks should take into account that combinations of words, even generic words, might still be protectible, assuming that the public perceives the combination not as a generic term, but a descriptive one or a brand.  This could favor parties seeking protection for such marks. Conversely, parties against whom such combination marks are asserted should take this into account when such marks are asserted against them.