The Supreme Court held last week that BOOKING.COM—when used in connection with hotel reservation services—is not generic, rejecting the USPTO’s “sweeping rule” that a combination of a generic word and “.com” is generic. The Supreme Court instructed that “[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,” relying on a “bedrock principle of the Lanham Act” that consumer perception determines whether or not a term is generic.
Almost a decade ago, Booking.com B.V. applied to register BOOKING.COM for various hotel, holiday, and resort reservation services. BOOKING.COM was refused registration on the ground that it was generic for the applied-for services because consumers understand “booking” to mean “making travel reservations” and “.com” to signify a commercial website. The Trademark Trial and Appeal Board also found that, at most, BOOKING.COM was a merely descriptive term that was devoid of secondary meaning.
On appeal to the U.S. District Court for the Eastern District of Virginia, the parties did not dispute that “booking” is generic for hotel reservation services. Rather, the issue was whether the addition of “.com” was sufficient to allow the mark to be or become distinctive. In reviewing consumer-survey evidence submitted by Booking.com, the court held that BOOKING.COM was not generic because the consuming public understood it to be descriptive of online services that involve booking services, and that BOOKING.COM had acquired secondary meaning. The Fourth Circuit Court of Appeals affirmed. The USPTO sought review by the Supreme Court, arguing that evidence of consumer perception was unnecessary and irrelevant because BOOKING.COM was generic and a generic term is incapable of becoming distinctive through consumer awareness.
In its appeal to the Supreme Court, the USPTO urged the Court to adopt its sweeping rule that when a generic term is combined with a top-level domain like “.com,” the resulting combination is generic. The USPTO grounded its argument in Goodyear’s India Rubber Glove Mrf. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888), in which the Supreme Court held that adding a generic corporate designation (“Company”) to a generic term does not confer trademark eligibility. The Court disagreed, differentiating its Goodyear decision and recognizing that the addition of “.com”—unlike “Company”—could refer to a specific entity because only one entity can own that particular domain name at one time.
The USPTO also cited anticompetitive policy concerns, arguing that granting registration of the BOOKING.COM trademark would inhibit competitors from using “booking” in their own domains. The Court disagreed, finding that the nature of the likelihood of confusion analysis and the doctrine of fair use together guard against anticompetitive effects. Specifically, the Lanham Act allots weak marks less protection, and such marks may only be enforced against highly similar marks for highly similar goods.
The Court affirmed the decision of the Court of Appeals for the Fourth Circuit. Only Justice Sotomayor concurred, cautioning that consumer-survey evidence may be unreliable in relation to genericness, that dictionaries and usage by consumers and competitors may be more useful, and that the USPTO could have properly concluded the mark was in fact generic but it did not contest the lower courts’ findings based on the survey evidence. Justice Breyer submitted the lone dissent, arguing that BOOKING.COM is generic because it answers the question of “what”; that “.com” has no capacity to identify and distinguish source, making the present case similar to Goodyear; and that the anticompetitive concerns should be given more weight.
Moving forward, the USPTO is sure to see more filings for marks that pair top-level domains with nondistinctive terms. However, applicants should heed the Supreme Court’s cautionary note that not all marks that include “.com” are protectable. Consumer perception is the key to determining protectability.
The Supreme Court’s full opinion is available here. For more information about trademark infringement litigation, please contact your Fish attorney or email us at [email protected].
Authors: Sarah Kelleher and Kristen McCallion
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.
Kristen McCallion is a principal in the New York office of Fish & Richardson P.C. and chair of the firm’s copyright group. Ms. McCallion represents businesses in the consumer products, internet, media, and interactive entertainment industries in copyright, trademark, false advertising, trade dress, and unfair competition litigation...
Sarah Kelleher is an associate in the Boston office of Fish & Richardson P.C. Sarah counsels clients on trademark, trade dress, trade secret and copyright matters with a focus on trademark clearance, prosecution and enforcement in the U.S. and abroad. Her experience includes representing trademark owners in opposition and cancellation...