In the ruling handed down this week in United States Patent and Trademark Office v. Booking.com B.V., No. 19-46, the United States Supreme Court voted 8-1 to affirm lower court rulings holding the trademark applications for “booking.com” were not generic for federal trademark purposes. This represents a key win for parties seeking protection for trademarks, which include top-level internet domain names (e.g., .com, .net, .info, etc.) tacked on to words which may otherwise be considered generic.
Generally speaking, everyday terms or broad classifications for goods or services are considered generic and not capable of federal trademark protection – for example, terms like mattress, house, laundry, or store cannot function as a unique identifier or brand name. The USPTO policy prevents applicants from registering these terms as federal trademarks, even when combined with another generic term such as a company designation (Company, Co., Inc.) or a domain suffix. For example, previous federal trademark applications for hotels.com and lawyers.com were found by the USPTO and courts to be generic and not capable of federal trademark protection.
When Booking.com filed four federal trademark applications in 2012 for “booking.com” for hotel registrations and other services, the USPTO rejected the applications because the marks were deemed generic, finding the addition of the “.com” suffix did not alter that determination. Appealing the USPTO refusal, the U.S. District Court for the Eastern District of Virginia sided with Booking.com, stating while “booking” was generic, the addition of “.com” made the marks descriptive, and consumers would not find “booking.com” to be a generic term. The District Court further held “booking.com” had acquired secondary meaning through use in commerce, such that people identified the mark with a particular travel services company and not more broadly only as a type or class of goods or services. Survey evidence submitted by Booking.com showed that almost 75% of the survey respondents identified “booking.com” as a brand name and a specific website rather than a generic site for travel services, and this played a significant part in the decision. The Fourth Circuit Court of Appeals affirmed, holding the resulting composite of adding .com to a generic second term may no longer be considered generic for federal trademark purposes when the mark is otherwise shown to be viewed by the public as a brand.
In support of its position before the Supreme Court appealing the 4th Circuit’s decision, the USPTO argued for refusal on two grounds: First, for a near-absolute rule that inclusion of a domain suffix to a generic term does not create a nongeneric mark, relying on the 1888 Supreme Court case Goodyear’s India Rubber Glove v. Goodyear Rubber Co. (holding a corporate designation like “Company” or “Inc.” plus a generic term did not create a protectable mark). Second, by allowing a generic term plus a domain name suffix (e.g., genericterm.com) to be afforded trademark protection, trademark owners would be granted monopoly-like power over otherwise generic terms to the detriment of others. Essentially, by permitting the registration of “booking.com,” Booking.com would be allowed to monopolize the term “booking” against other trademark owners seeking to use their own generic term domain name marks which may be similar in nature.
Finding in favor of Booking.com, the Court noted the proper analysis in this case was whether the primary significance of the term to the relevant public was as a brand or as a generic term for goods or services. In applying the primary significance test, the majority opinion found the survey evidence and consumer perception in that “booking.com” was not perceived by consumers to be a generic term unlike the word “booking” might. Simply put, the Court was persuaded “booking.com” was not generic because the relevant consumers said it wasn’t, but rather a brand name for Booking.com – “A term styled 'generic.com' is a generic name for a class of goods or services only if the term has that meaning to consumers,” Justice Ruth Bader Ginsburg wrote. “Consumers ... do not perceive the term 'Booking.com' to signify online hotel-reservation services as a class. In circumstances like those this case presents, a 'generic.com' term is not generic and can be eligible for federal trademark registration.” Finally, the Court took notice the USPTO had issued federal trademark registrations for other .com marks including ART.COM and DATING.COM as being contrary to the USPTO’s request for a comprehensive rule against affording trademark protection for “generic.com” trademarks. However, the Court stopped short of declaring “generic.com” trademarks are automatically nongeneric, stating instead consumer perception was a key element to make that determination on a case-by-case basis. In the lone dissent, Justice Stephen Breyer agreed the addition of .com did not add distinctive meaning to a generic term, and focused on the USPTO position that affording trademark protection to “generic.com” domains would essentially grant their owners a monopoly over otherwise useful, easy-to-remember domains and inhibit free completion on the internet.
Although this is a clear win for Booking.com, and not surprising given the current landscape of trademark law as favoring the marketplace over rigid legal rules, the decision is not entirely without some concern. While avoiding a hard-and-fast rule stating such “generic.com” marks are never capable of protection, it is important to remember showing these marks are capable of protection may still be an expensive, uphill battle, requiring evidence of consumer perception as a brand to overcome the general USPTO resistance to these marks.