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IP/Entertainment Case Law Updates

United States Patent and Trademark Office v. Booking.com B.V.

U.S. Supreme Court holds that adding “.com” to generic term can transform combination into federally protectable trademark if mark holder can establish acquired distinctiveness under Lanham Act.

Booking.com B.V. is a digital travel company that provides hotel reservations and other services under the brand “Booking.com,” which is also the domain name of its website. Booking.com filed applications to register four marks with the U. S. Patent and Trademark Office in connection with travel-related services, each with different visual features but all containing the term “Booking.com.”

Both a USPTO examining attorney and Trademark Trial and Appeal Board (TTAB) concluded that the term “Booking.com” is generic for the services at issue and is therefore unregistrable. “Booking,” the TTAB observed, means making travel reservations, and “.com” signifies a commercial website. The TTAB then ruled that “customers would understand the term BOOKING.COM primarily to refer to an online reservation service for travel, tours, and lodgings.” In the alternative, the TTAB held that even if “Booking.com” is descriptive, not generic, it is unregistrable because it lacks secondary meaning.

Booking.com sought review in the U.S. District Court for the Eastern District of Virginia. Relying in significant part on Booking.com’s evidence of consumer perception, the district court concluded that “Booking.com”—unlike “booking”—is not generic. The “consuming public,” the district court found, “primarily understands that BOOKING.COM does not refer to a genus, rather it is descriptive of services involving ‘booking’ available at that domain name.” Having determined that “Booking.com” is descriptive, the court concluded that the term has acquired secondary meaning as to hotel-reservation services. For those services, Booking.com’s marks meet the distinctiveness requirement for registration. 

The USPTO appealed only the district court’s determination that “Booking.com” is not generic. Finding no error in the district court’s assessment of how consumers perceive the term “Booking.com,” the Fourth Circuit affirmed the judgment and, in so ruling, rejected the USPTO’s contention that the combination of “.com” with a generic term such as “booking” “is necessarily generic.” 

The USPTO appealed the Fourth Circuit’s determination that “Booking.com” is not generic, again arguing that as a rule, combining a generic term with “.com” yields a generic composite. The U.S. Supreme Court granted certiorari. After argument on May 4, 2020, Justice Ginsburg delivered the opinion of the Court on June 30, 2020, affirming the Fourth Circuit’s judgment.

The USPTO’s argument relied heavily on the common-law principle, applied in the Court’s 1888 opinion in Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., that a generic corporate designation added to a generic term does not confer trademark eligibility. In Goodyear, a decision predating the Lanham Act, the Supreme Court held that “Goodyear Rubber Company” was ineligible for trademark protection because “Goodyear Rubber” referred, in those days, to “well-known classes of goods produced by the process known as Goodyear’s invention,” and “addition of the word ‘Company’” supplied no protectable meaning, “only indicat[ing] that parties have formed an association or partnership to deal in such goods.” Permitting exclusive rights in “Goodyear Rubber Company” (or “Wine Company, Cotton Company, or Grain Company”), the Court explained, would tread on the right of all persons “to deal in such articles, and to publish the fact to the world.” According to the USPTO, adding “.com” to a generic term—like adding “Company”—“conveys no additional meaning that would distinguish [one provider’s] services from those of other providers,” rendering “generic.com,” like “Generic Company,” ineligible for trademark protection, let alone federal registration.  

While the dissent, written by Justice Breyer, endorsed the USPTO’s proposition that “generic.com” conveys that the generic good or service is offered online “and nothing more,” the majority opinion rejected the government’s reliance on Goodyear for several reasons. First, the majority opinion explained that this premise is faulty because “generic.com” might also convey to consumers a source-identifying characteristic: an association with a particular website. Moreover, as the USPTO and the dissent acknowledged, only one entity can occupy a particular internet domain name at a time, so “[a] consumer who is familiar with that aspect of the domain-name system can infer that BOOKING.COM refers to some specific entity.”  

Second, the majority explained that rather than establishing a hard-line rule that “Generic Company” terms are ineligible for trademark protection as a matter of law—regardless of how “consumers would understand” the term, Goodyear reflects a more modest principle harmonious with the subsequent enactment of the Lanham Act by Congress: A compound of generic elements is generic if the combination yields no additional meaning to consumers capable of distinguishing the goods or services. The majority also rejected the USPTO’s proposed comprehensive rule as contrary to its own past practice, citing trademark registrations for “ART.COM” (on principal register for, inter alia, “[o]nline retail store services” offering “art prints, original art, [and] art reproductions”) and “DATING.COM” (on supplemental register for “dating services”).  

The USPTO and the dissent argued that the majority’s approach results in inappropriate reliance on survey evidence to determine consumer understanding, explaining that it is possible for a generic term to achieve an association with a single source either because that producer has enjoyed a period of exclusivity in the marketplace or because it has invested money and effort in securing the public’s identification. The dissent, bolstered by Justice Sotomayor’s concurrence on this point, questioned the value of survey evidence and concluded that evidence of such an association, no matter how strong, does not negate the generic nature of the term. “If someone were to start a company called ‘Washingmachine.com,’” Justice Breyer wrote, “it could likely secure a similar level of consumer identification by investing heavily in advertising. Would that somehow transform the nature of the term itself? Surely not.” The majority opinion rejected this conclusion.

The USPTO, echoed by the dissent, also argued that protecting “generic.com” terms as trademarks would disserve trademark law’s animating policies, fearing that trademark protection for “Booking.com” could exclude or inhibit competitors from using the term “booking” or adopting such domain names as “ebooking.com” or “hotel-booking.com.” The majority opinion rejected this concern as inherent in any descriptive mark and assuaged by the fact that a competitor’s use does not infringe a mark unless it is likely to confuse consumers. The Court explained that when a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the mark’s owner. Similarly, in a crowded field of look­alike marks (e.g., hotel names including the word “grand”), consumers “may have learned to carefully pick out” one mark from another. And even where some consumer confusion exists, the doctrine known as classic fair use protects from liability anyone who uses a descriptive term, “fairly and in good faith” and “otherwise than as a mark,” merely to describe her own goods. Applying this analysis, the Court concluded, and Booking.com conceded, that “Booking.com” would be a “weak” mark because it is descriptive, making it “harder . . . to show a likelihood of confusion,” because it is one of many “similarly worded marks,” so close variations are unlikely to infringe, and because it would not prevent competitors from using the word “booking” to describe their own services. The dissent doubted that other companies would adopt similar attitudes, citing preliminary injunction of the owners of “Advertising.com” against a competitor’s use of “Advertise.com,” and argued that even if ultimately unsuccessful, the threat of costly litigation will no doubt chill others from using variants on the registered mark and privilege established firms over new entrants to the market. The majority opinion also rejected this argument.

Finally, the majority opinion rejected the USPTO’s and dissent’s argument that owners of generic domain names enjoy additional competitive advantages due to the automatic exclusivity of domain names and the fact that generic domains are easier for consumers to find. The Court reasoned that these competitive advantages should not disqualify a mark from federal registration and are similarly inherent in all descriptive marks.

Summary prepared by Melanie Howard and Nathalie Russell