John Dugger, ‘“Surveys Are [Not] the Be-All and End-All”: Genericness Determinations After Booking.com

ABSTRACT
The Supreme Court of the United States’ October 2019 Term delivered several significant decisions that could reshape the intellectual property field for years to come. Three of these decisions came in trademark law cases, including the decision in United States Patent and Trademark Office v Booking.com BV. In Booking.com, the Court held narrowly that ‘Whether any given “generic.com” term is generic  … 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’. This holding, on its face, does not drastically alter trademark theory or practice related to genericness determinations.

Despite the limited holding in Booking.com, concern arose amongst trademark scholars, echoing the dissent of Justice Breyer, that the Court’s decision in Booking.com would open the door to a flood of generic.com registrations and eventually stifle competition in the online marketplace. These concerns were heightened by dicta throughout the Court’s opinion emphasizing Booking.com’s genericness survey. Acknowledging that the Court’s emphasis on consumer perception provides new support against a robust application of the secondary meaning doctrine, this note argues that the Court’s decision in Booking.com should drive trademark applicants, the United States Patent and Trademark Office (the ‘USPTO’), and other mark challengers to place increased emphasis on non-survey evidence of (non-)genericness and to more stringently and consistently challenge survey evidence of non-genericness.

Dugger, John, ‘Surveys Are [Not] the Be-All and End-All’: Genericness Determinations After Booking.com (May 5, 2021).

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