Although the U.S. Supreme Court's decision in U.S. Patent and Trademark Office v. Booking.com BV[1] was just handed down on June 30, it is not too soon to consider the implications of this high court ruling.

Commentators have noted that the decision rewards the tenacity of the Amsterdam-based company that owns Booking.com, but less attention has been given to how the case will benefit other trademark owners, particularly those whose marks have been refused federal registration based on the USPTO's rule that combining a generic term — that is, the commonly used name for a class of goods or services — with another arguably generic term necessarily results in an unregistrable generic composite mark.

Here we address the ways in which the Booking.com decision may help applicants for trademark registration generally, and particularly with a specific type of hashtag mark analogous to "generic.com" trademarks.

The court states in Booking.com that the crux of the genericness test is consumer perception: Whether any given "generic.com" term is generic, we hold, 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.

 But the court does not stop there; instead, it goes even farther by declaring that "the relevant meaning of a term" — that is, a term's meaning in the context of being a trademark — "is its meaning to consumers." As if to underline the significance of this point, the court stresses it at least three times, including an iteration in a footnote: "consumer perception demarcates a term's meaning."

The importance of the court's emphasis on the power of consumer perception to determine the meaning of a trademark term cannot be fully appreciated until we comprehend what it replaced: the USPTO's long-standing generic combination rule that generic.com marks are generic as a matter of law and without regard to any contrary evidence based on consumer perception.

Under the new test, an applicant for registration who receives a genericness refusal can force the USPTO to consider its compiled evidence of consumer perception that a composite mark is not generic. Before the Booking.com decision, the USPTO could refuse to look at such evidence, apply its rule, and reject the applied-for mark as a matter of law. The Supreme Court's ruling knocked the hinge-pins out of a gate that the USPTO had previously been able to shut in the faces of many applicants.

 Equally significantly, the court does not leave its new test in the realm of abstraction. In support of its implementation, the court articulates the ways in which applicants can demonstrate consumer perception before the USPTO: Evidence ... can include not only consumer surveys, but also dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term's meaning.

 This statement, though expressed in a footnote, is nonetheless part of the main opinion, and it was explicitly emphasized in the concurrence of Justice Sonia Sotomayor. Consequently, it is binding on the USPTO and must be implemented as part of USPTO's examining procedure for new applications. Accordingly, this statement, with its generous catchall phrase — "any other source of evidence" — provides practical tools that applicants can use in their efforts to achieve federal trademark registration at the USPTO.

As a specific practical example, the court's demolition of the USPTO's generic combination rule may have opened the door to registration of certain marks that are analogous in structure to [generic term].com marks. Just as examiners, until now, have concluded as a matter of law that a mark comprised of a generic term and .com is necessarily generic, they also have applied the generic combination rule to a particular kind of hashtag mark.

 Under the USPTO's Trademark Manual of Examining Procedure, the symbol "#" and the term "hashtag" "merely facilitate categorization and searching within online social media," and they do not provide any source-indicating function. Thus, the TMEP instructs examiners to apply the generic combination rule to certain hashtag marks: "if a mark consists of the hash symbol (#) or the term HASHTAG combined with wording that is merely descriptive or generic for the goods or services, the entire mark must be refused as merely descriptive or generic."[2]

Notably, one of the cases cited to support this absolute refusal statement is In re: Hotels.com LP[3], in which the court applied the now discredited generic combination rule to hold that adding a generic top-level domain to an otherwise unregistrable term does not add any source-identifying significance to the overall mark.

Armed with this guidance, examiners have refused #generic and hashtag generic marks in much the same manner as generic.com marks. For example, in an application to register "Hashtag Clothing"[4] for caps, hats, hooded sweatshirts, sweatpants, sweatshirts and T-shirts, the examiner found that the term "hashtag" has no source-indicating function because it "merely denotes matter intended to be a metadata tag" and therefore the combination of the term with the generic word "clothing" renders the whole entirely generic for the goods.

The applicant, who had used the mark in commerce for two years, argued that the mark was not being used as a metadata tag, nor was it related to any online activity but rather was functioning as a source-identifying brand for the company's clothing line. This use was supported by the specimens of record, which were photographs of clothing items bearing the mark on the front and back of the garment and, in one case, on the collar label.

The examining attorney was not persuaded and doubled down on the generic combination rule: Because the wording "HASHTAG" has no source-indicating function, applicant's mark is essentially "CLOTHING." The examining attorney has enclosed additional web pages showing that the term "HASHTAG" is merely a method of marking keywords and thus does not operate as trademark for any goods or services. Thus the examining attorney does not have to show that wording "HASHTAG" is descriptive for applicant's clothing items, since the office does not recognize the wording to have any trademark significance.

A similar refusal issued today would be incorrect under Booking.com because consumer perception now trumps any per se rule about the capacity of a mark comprised of a generic term and the word "hashtag" or the "#" symbol to identify the source of a single company's products or services. Under Booking.com, the applicant would be permitted to introduce consumer perception evidence that the specimens in the refused "Hashtag Clothing" application clearly show use of the designation in the manner of a trademark, not a metadata tag.

 The USPTO has issued nearly identical refusals for the marks "Hashtag Records"[5] for musical recordings and "#Cabernet" and logo design[6] for wine. The specimen of use for "Hashtag Records" was a screenshot of a webpage from ReverbNation where the applicant's music could be downloaded and which included a reference to the distributing record label Hashtag Records. In the "#Cabernet" application, the specimen was a photograph of applicant's wine bottles showing the mark on the front label.

In both applications, the examiner offered no analysis of the specimens or the public perception of the marks and summarily refused registration of the marks as generic. The refusals simply state that because the term "hashtag" or the "#" symbol have significance only "as a hashtag in online social media," the composite phrases do nothing more than inform consumers that the relevant goods are records and wine, respectively.

 Again, the principles enumerated in Booking.com now clarify that the examiner's absolute application of the generic combination rule without regard to any evidence of consumer perception focus is erroneous. Not only can examiners no longer disregard arguments based on consumer perception of a #generic or hashtag generic mark, but now those arguments must be given increased — indeed — crucial weight.

 The likely increase in the number of federal registrations of generic.com, #generic and hashtag generic marks in the coming months and years will show just how much the Booking.com ruling has empowered applicants seeking federal registration at the USPTO.


The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.

[1] United States Patent and Trademark Office v. Booking.com B.V. , U.S., No. 19-46, 6/30/20; 591 U.S. ___ (2020).

[2] TMEP § 1202.18.

[3] In re Hotels.com, L.P. , 573 F.3d 1300 (Fed. Cir. 2009).

[4] U.S. App. Ser. No.: 85918214.

[5] U.S. App. Ser. No.: 86340517.

[6] U.S. App. Ser. No.: 88207612.