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

30 Pages Posted: 19 Jul 2021

See all articles by John Dugger

John Dugger

Boston University School of Law

Date Written: May 5, 2021

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 & Trademark Office v. Booking.com B.V. 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.

Keywords: Trademark Law, Genericness, Booking.com

JEL Classification: O34, K11

Suggested Citation

Dugger, John, “Surveys Are [Not] the Be-All and End-All:” Genericness Determinations After Booking.com (May 5, 2021). Available at SSRN: https://ssrn.com/abstract=3887882 or http://dx.doi.org/10.2139/ssrn.3887882

John Dugger (Contact Author)

Boston University School of Law ( email )

765 Commonwealth Avenue
Boston, MA 02215
United States

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