On June 30, 2020, in United States Patent and Trademark Office v. Booking.com B.V. (“Booking.com”), No. 19-46, 591 U.S. __ (2020), the Supreme Court rendered an 8-1 decision affirming the Fourth Circuit’s opinion that the term “Booking.com” is not generic, i.e., it is not the ordinary name of a service as perceived by consumers, and is therefore eligible for federal trademark registration.
Under the Lanham Act, trademarks are evaluated based on a spectrum of distinctiveness – the more distinctive a mark, the higher the degree of protection afforded the mark. At the lowest end of the spectrum are generic marks, i.e., marks that are ineligible for trademark registration because they constitute the ordinary names of goods or services. Booking.com, a company that provides online hotel reservations, filed several trademark applications to register marks that include the term “Booking.com.” The Patent and Trademark Office (“PTO”) concluded that “Booking.com” is unregistrable as it amounts to a “generic.com” term (where the “.com” merely indicates that the services are offered on a commercial website). The Eastern District of Virginia, relying on consumer perception evidence that was not presented to the PTO during prosecution of the applications, concluded that “Booking.com” is not generic and the Fourth Circuit affirmed. The PTO petitioned for, and the Supreme Court granted, a writ of certiorari.
The Supreme Court rejected the PTO’s “exclusionary rule” that the combination of a generic term and “.com” is inherently generic and not registrable. It specifically noted that the PTO’s own past practice failed to reflect such a rule, citing to existing trademark registrations for “ART.COM” and “DATING.COM.” The Court further explained that a “generic.com” term is generic for a class of goods or services only if the term has that meaning to consumers. Booking.com, Slip Op. at 1. As a result, the question of whether “Booking.com” is generic “turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services.” Slip Op. at 7. Because the lower courts determined that “Booking.com,” taken as a whole, is not perceived by consumers as a generic term that names a class of services, the Court ruled that the term is not generic under trademark law. Id. Accordingly, it declined to adopt a universal rule excluding registration of all “generic.com” marks, and in so doing, found no support for the PTO’s position.
Specifically, the Court rejected the PTO’s reliance on Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888), where the term “Goodyear Rubber Company” was determined ineligible for trademark protection because the term “Goodyear Rubber” was generic and the addition of the word “Company” merely indicated that the parties formed an association to deal in the goods (the PTO argued that adding “.com” to a generic term was analogous to adding “Company” to “Goodyear Rubber”). The Court explained that its precedent, which preceded the Lanham Act, demonstrates that a combination of generic terms is generic “if the combination yields no additional meaning to consumers capable of distinguishing the goods or services.” Slip Op. at 10. With respect to “generic.com” terms, these terms may convey to consumers a source-identifying characteristic by creating an association with a specific website or the website’s proprietor, particularly because only one entity can occupy a given Internet domain at a time. Slip Op. at 9. The uniqueness of “generic.com” domain names appeared to play a critical role in the Court’s analysis.
The Court also disagreed with the PTO’s policy concerns that protecting “generic.com” marks would hinder competition as competitors may be precluded from the using the term “booking.” The PTO’s objection, according to the Court, is not to exclusive use of “Booking.com” as a mark, but to a purported undue control over similar language, i.e., “booking,” that others should remain free to use. However, the Court explained that the PTO’s concern applies to all descriptive marks, and the law has embedded safeguards to limit the scope of protection for such marks, such as the fair use doctrine, the likelihood of confusion test (affording weaker protections to weaker marks), etc. Slip Op. at 12. These doctrines, in the Court’s view, protect against the anticompetitive effects identified by the PTO, ensuring that registration of “Booking.com” would not yield its holder a monopoly on the term “booking.” At bottom, the Court declined the PTO’s per se rule that combining a generic term with “.com” results in a generic combination, which would largely disallow registration of “generic.com” terms and open the door to cancellation of scores of currently registered marks.
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