Generic trade marks have traditionally been those that have become generic over time. Put simply, they lost their necessary distinctiveness due to societal overuse. Most are familiar with the well-known cases involving common marks that have fallen into the everyday lexicon. There is a further category of trade mark that is registered (and remains registered) despite appearing to be generic ab initio. This was highlighted in the recent decision of United States Patent and Trade Mark Office et al v Booking.com BV. This latter category is more likely to impact on services as opposed to goods due to the proliferation of online services in an exponentially growing digital era. The dichotomy between goods and service will become blurred as the digital era continues to dominate. This article argues that today’s dynamic internet-reliant commercial environment means that genericness has far less time to develop than it formerly did. Further, evidence will be required to show that a generic.com mark has acquired enough distinctiveness to ward off a genericism challenge. Finally, whether service marks survive genericide threats in a digital era remains to be seen and will be decided, as always, on a case-by-case basis.
Nolan, Paul, Generic Trade Marks: Could Booking.com and the Goods/Services Dichotomy Create a New Generic Headache? (2022). Australian Intellectual Property Journal (2022) volume 32(3).