Skip to main content

Can Two Generic Terms Create a Trademark? Here’s What to Know

  • Nov 12 2020

Generally, when we think of what is trademark-able, we think of specific terms that can be protected rather than broad or generic ones. However, as evidenced in a case involving, this isn’t always true. In fact, according to the case, the Supreme Court found that a combination of two undisputed generic terms could be held as protectable via trademark.

While both parties agreed that the terms “booking” and “.com” were generic by themselves, the real question was whether or not in combination they could be trademark-able. The United States Patent and Trademark Office (USPTO) found that they could not, but the Eastern District of Virginia (EDVA) found that they could. The 4th Circuit Court affirmed the EDVA’s decision. 

What Makes a Term “Generic?”

In order to understand the Supreme Court’s final decision, we must first understand what makes one term generic and another specific. A term is considered generic if consumers would find that it is used to describe a class of goods. 

While most people looked at it as a general rule that a generic term combined with a “.com” is never protectable, the Supreme Court found that it could be if there was evidence that the combination of the two terms leads to consumer recognition of a specific meaning or identification. 

In other words, is the term the name of a class or can it be distinguished within members of the class? If a consumer can make a specific connection between the mark and the source, it’s representative of what trademark law is all about. 

Other Important Factors to Note

Aside from looking at whether the two terms of the trademark are generic or specific, there are other important factors to note:

  • According to the Trademark Manual of Examining Procedure (TMEP), a domain name can be registered if there is evidence that it serves as a trademark, or identifies a specific source. 
  • This decision by the Supreme Court is comparable to patentable inventions. Sometimes the combination of two known elements can still result in a patentable invention. 

Scully, Scott, Murphy & Presser Can Help Protect Your Business Name and Your Rights

If you or a loved one has an issue with a name, a product, or procedure that you wish to have protected, or if you have an existing piece of intellectual property (e.g. trademark, patent, copyright, etc.) that you believe is being infringed upon, it is in your best interest to consult with a knowledgeable and experienced intellectual property attorney to determine your best options. 

At Scully, Scott, Murphy & Presser, our qualified IP attorneys can help you to navigate the various application processes or can help to defend your intellectual property and your rights regarding any infringement. To learn more about prosecuting an infringement of your intellectual property, or to schedule a free consultation, contact us today!

Posted in: Trademarks

Website developed in accordance with Web Content Accessibility Guidelines 2.0.
If you encounter any issues while using this site, please contact us.