Is WINE.COM generic?
It is fundamental to trademark law that generic terms are not protectable. Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. TMEP § 1209.01(c) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001)). In prior posts we have discussed the topic of classifying trademarks (e.g., fanciful, arbitrary, suggestive, descriptive, generic). See, e.g., https://www.nickguinn.com/blog/wine-not-wine-amp-trademarks-champre-how-fanciful.
It might be tempting to say that WINE.COM is a generic term, and thus not protectable. Prior to the Supreme Court’s decision in USPTO v. Booking.com B.V., 140 S. Ct. 2298, 2020 USPQ2d 10729 (2020) (holding that "[w]hether 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"), the USPTO all but would have categorically rejected WINE.COM as generic. This blog post discusses the Booking.com decision and how domain names like WINE.COM fare as trademarks.
A fictional bottle. The author is not aware of any wine produced by Wine.com LLC—or otherwise—that is labeled as WINE.COM.
Understanding Generic Terms
In trademark law, generic terms are those that refer to the common name of a product or service and are incapable of functioning as trademarks to identify the source of goods or services. Examples of generic terms include "apple" for apples, "car" for automobiles, and “wine” for wine. Because generic terms are essential for describing products or services, they are not eligible for trademark protection.
The Trademark Manual of Examining Procedure at Section 1209.01(c)(i) offers additional information:
A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used. See USPTO v. Booking.com B.V., 140 S. Ct. 2298, 2304, 2020 USPQ2d 10729, at *5 (2020) . . . . A two-part inquiry is used to determine whether a designation is generic:
(1) What is the genus of goods or services at issue?
(2) Does the relevant public understand the designation primarily to refer to that genus of goods or services?
In re Cordua Rests., Inc., 823 F.3d 594, 599, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (citing H. Marvin Ginn Corp., 782 F.2d at 990, 228 USPQ at 530).
. . . . The correct inquiry is whether the relevant public would understand the term to be generic. In re 1800Mattress.com IP LLC, 586 F.3d 1359, 1364, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009).
The genus of the goods or services may be defined by an applicant’s identification of goods or services. See In re Cordua Rests., Inc., 823 F.3d 594, 602, 118 USPQ2d 1632, 1636 (Fed. Cir. 2016) (quoting Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 640, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991). The relevant public for a genericness determination refers to the purchasing or consuming public for the identified goods or services. Loglan Inst., Inc. v. Logical Language Grp., Inc., 962 F.2d 1038, 1041, 22 USPQ2d 1531, 1533 (Fed. Cir. 1992) . . . .
The examining attorney must establish a prima facie case that a term is generic by providing a reasonable predicate (or basis) that the relevant purchasing public would primarily use or understand the matter sought to be registered to refer to the genus of goods or services in question.
Evidence of the relevant public’s understanding of a term can be obtained from any competent source, including dictionary definitions, research databases, Internet websites, newspapers, and other publications. See USPTO v. Booking.com B.V., 140 S. Ct. at 2307 n.6, 2020 USPQ2d 10729, at *7 n.6 ("Evidence informing [a genericness] inquiry 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.").
The Supreme Court's Decision in Booking.com
In June 2020, the Supreme Court issued its decision in United States Patent and Trademark Office v. Booking.com, holding that "Booking.com" is eligible for trademark protection despite "booking" being a generic term for reservation services. The Court reasoned that when a generic term is combined with a generic top-level domain (TLD) such as ".com," the resulting combination may be eligible for trademark protection if consumers perceive it as distinctive.
A question the Court posed was whether consumers used the term booking.com to refer to any number of online reservation businesses or solely booking.com (e.g., “Does this business offer booking.com services”?). There was little to no evidence indicating that consumers used booking.com to refer to anyone other than the party in that suit.
The USPTO has updated its guidelines with respect to marks of a form similar to booking.com and wine.com:
There is no per se rule that the addition of a generic term to a generic top-level domain (gTLD) (i.e., a "generic.com" term) can never under any circumstances operate to create a registrable mark. In reaching its decision in Booking.com, the Supreme Court left undisturbed a lower-court finding that ".com does not itself have source-identifying significance when added to a [second-level domain] like booking." Therefore, under Booking.com, a proposed mark composed of a generic term combined with a generic top-level domain, such as ".com," is not automatically generic, nor is it automatically non-generic. Instead, as in any other genericness analysis, examining attorneys must evaluate all of the available evidence, including the applicant’s evidence of consumer perception, to determine whether the relevant consumers perceive the term as generic for the identified class of goods and/or services or, instead, as capable of serving as a mark.
Accordingly, generic.com terms are potentially capable of serving as a mark and may be eligible for registration on the Supplemental Register, or on the Principal Register upon a sufficient showing of acquired distinctiveness. However, a generic.com term may still be refused as generic when warranted by the evidence in the application record.
TMEP § 1215.05 (internal citations omitted).
The Rise of Online Wine Retailers
Online wine retailers have become increasingly prevalent, offering consumers a convenient and diverse array of wine options at their fingertips (e.g., Wine Library, Drizzly, etc.). WINE.COM has emerged as a prominent brand in this space. One question to ask is whether the numerous online wine retailers are wine.com businesses or whether WINE.COM LLC is the only brand associated with that term.
Implications for WINE.COM
The question arises: Is WINE.COM eligible for trademark protection? While "wine" is undeniably a generic term for bottled wine, the addition of ".com" to create WINE.COM may imbue the term with sufficient distinctiveness to qualify for trademark protection. If consumers associate WINE.COM with a specific online wine retailer, rather than simply as a generic term for purchasing wine online, it may meet the criteria for trademark protection as a descriptive or suggestive mark.
Wine.com LLC filed an application for the mark WINE.COM to identify “Retail store services in the field of alcoholic beverages, gift baskets, glassware, novelty items, and houseware; On-line retail store services in the field alcoholic beverages, gift baskets, glassware, novelty items, and houseware; Administering an alcoholic beverages club by means of selecting alcoholic beverages based on consumer expectations and arranging periodic shipment to club members” in Class 35 on July 8, 2020. Recall that the Booking.com decision issued in June 2020.
The USPTO issued an Office Action on December 10, 2020 based on the following grounds:
REFUSAL – APPLIED-FOR MARK IS GENERIC
REFUSAL IN THE ALTERNATIVE – APPLIED-FOR MARK IS MERELY DESCRIPTIVE
SECTION 2(f) CLAIM - APPLICANT’S CLAIM OF ACQUIRED DISTINCTIVENESS IS INSUFFICIENT
IDENTIFICATION OF SERVICES
The applicant responded and the USPTO issued a Final Office Action on February 14, 2022, reasserting the first three issues above. The applicant filed a request for reconsideration, which the USPTO accepted and the USPTO withdrew the refusal. The application issued into U.S. Registration No. 7123639.
The applicant submitted extensive evidence of its advertising efforts, sales data, etc., to establish that wine.com is a well-known brand and that consumers associate it with a single source.
If you would like copies of the office actions or Wine.com LLC’s responses, please send me an email.
Conclusion: Navigating the Boundaries of Trademark Law
The question of whether WINE.COM is a generic term or eligible for trademark protection is a nuanced and complex issue that underscores the evolving nature of trademark law in the digital age. While generic terms are ineligible for trademark protection, the Supreme Court's decision in Booking.com has opened the door to the possibility that certain combinations of generic terms and TLDs may be eligible for protection if consumers perceive them as distinctive identifiers of specific goods or services. The distinctiveness and protectability of terms like WINE.COM will likely remain a subject of ongoing scrutiny in the realm of trademark law.
If you would like to discuss your trademark or domain name with an experienced trademark lawyer, please schedule a consultation here.
