Why Not Put a Bow on Genericness?

‘Tis the season for gratitude and thankfulness, and avoiding conflict and fruitcake.

From a trademark perspective, every season is for avoiding genericness, right?

After all, generic designations are part of the public domain, they aren’t own-able.

So, why is Guaranteed Rate continuing to invest in Rate.com, found to be generic?

Perhaps because, for an online business, a generic domain name is quite valuable.

Beyond that, Hotels.com‘s persistence yielded 3 registrations (here, here, and here), despite losing a genericness appeal in 2009, so maybe Guaranteed Rate has Hotels.com-like optimism for a possible chance to prove acquired distinctiveness.

And, while it is true that the deck is pretty stacked against federal registration of claimed marks like Rate.com, it is also presently true that:

“[T]here is no per se rule that the addition of a non-source-identifying gTLD to an otherwise generic term can never under any circumstances operate to create a registrable mark. The [Federal Circuit] has held that in rare, exceptional circumstances, a term that is not distinctive by itself may acquire some additional meaning from the addition of a gTLD such as ‘.com’ or ‘.net’ that will render it ‘sufficiently distinctive for trademark registration.’”

In the coming year, we’ll have an opportunity to see whether that remains true.

The U.S. Supreme Court will decide this question in the Booking.com case:

“Whether, when the Lanham Act states generic terms may not be registered as trademarks, the addition by an online business of a generic top-level domain (‘.com’) to an otherwise generic term can create a protectable trademark.”

Interestingly, the very nature of a domain, as an online address, makes it singular.

And, it is important to keep in mind that a trademark not only identifies goods and distinguishes them from those of others, it also points to a singular source.

So, perhaps generic dot com brands should be considered at least capable.

The legal test ought to focus on consumer perceptions about distinctiveness.

Trademark types, will the Court permit generic dot coms to serve as marks?

Marketing types, when do you value domain names that can’t be trademarks?

And, when does putting a bow on genericness make business sense to you?

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