The issue of consumer perception as the critical inquiry for generic.gTLD marks stands at the forefront of a recent decision by the TTAB. This notion was expounded in June 2020 when the U.S. Supreme Court rejected the rule positing that the coupling of a generic term and a generic top-level domain (“gTLD”) is inherently generic, as discussed in the pivotal case of USPTO v. Booking.com B.V., 140 S. Ct. 2298 (2020).
The Supreme Court argued that the genericness of any ‘generic.com’ term is contingent on how consumers perceive the term – whether they regard the term as the name of a class or perceive it as a distinguishing term among members of the class.
So what does this mean for legal professionals? It underscores the notion that the perception of consumers remains at the epicentre of this legal discourse. In other words, it is the consumers who, to a great extent, determine the genericness of a term in the context of gTLDs.
While this does introduce an element of unpredictability into the equation, as consumer perception is far from static and may shift over time, it does offer companies the opportunity to manage their domain name strategies more effectively and responsively.
For further understanding, the article authored by Fish & Richardson here delves deeper into the implications and nuances of the TTAB’s rule and its recent decision.