Booking.com Scores a Trademark Win at the Supreme Court, Opening the Door for Expanded Protection of Generic.com Domain Names
When you hear the term BOOKING.COM,[1] what comes to mind? Do you think of travel reservations in general, or is it a specific brand or company that pops into your head? While your answer may not seem especially consequential, this question recently came up in U.S. Patent and Trademark Office v. Booking.com, a Supreme Court case that will likely have a profound impact on trademark law and web domain names in the foreseeable future. Writing for the 8-1 majority in an opinion handed down on June 30, 2020, Justice Ruth Bader Ginsberg rendered a decision that substantially expands trademark protection for domain names and, as some believe, drastically alters a longstanding rule regarding generic trademarks.[2]
This case traces its roots back to Booking.com's efforts to register its domain name as a service mark with the U.S. Patent and Trademark Office (PTO). The PTO denied the registration, citing a longstanding rule that generic marks cannot be registered and generally are not protectable as trademarks even if the generic term has been used for a long period of time and consumers understand it as a brand name. A generic term is one that names a class of goods or services rather than any characteristic or feature capable of distinguishing the related good or service from other members of the class. For example, the standalone term "booking" is understood to mean making travel reservations and is therefore generic. The PTO went further, however, determining that a generic term combined with a ".com" suffix (referred to in the Supreme Court opinion as a "generic.com" term) simply yields another generic term. On that basis, the PTO denied the registration.
Booking.com sought review of the PTO's decision in the U.S. District Court for the Eastern District of Virginia, introducing survey evidence to show that BOOKING.COM had obtained secondary meaning among consumers. Specifically, the survey showed that 74.8% of respondents thought of BOOKING.COM as a brand name, and only 23.8% thought it was a generic name. Relying on this evidence, the District Court ruled that BOOKING.COM was not generic, even though the word "booking" is generic by itself. The District Court found consumers generally understand that BOOKING.COM does not refer to the genus of "booking" services. Rather, BOOKING.COM is descriptive of the booking services available on the website. A descriptive mark is a step up from generic marks on the scale of distinctiveness, but a descriptive mark is not by itself registrable or protectable. Rather, the descriptive mark must be found to have achieved distinctiveness among consumers. Relying on the survey evidence, the District Court found that the BOOKING.COM term had obtained distinctiveness and secondary meaning, and therefore the PTO's decision was overturned.
The PTO appealed the District Court's ruling. The Fourth Circuit Court of Appeals affirmed the ruling, rejecting the PTO's contention that a term combining a generic term with a ".com" suffix is necessarily generic. An appeal to the Supreme Court followed.
In her opinion, Justice Ginsburg reasoned that, whether BOOKING.COM is generic boils down to "whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services." In other words, if Booking.com were generic, people would understand sites like Travelocity to be a 'Booking.com,' or a traveler might ask someone to name their favorite 'Booking.com' provider.
Ultimately, the majority rejected the PTO's "nearly per se rule" that generic terms combined with a ".com" suffix are only capable of identifying a class of goods and services, and are therefore always generic. However, "generic.com" terms are not automatically non-generic and registrable either. The party seeking registration must demonstrate that the "generic.com" term has obtained distinctiveness among consumers. The test for whether a "generic.com" term is generic is whether consumers perceive the term as the name of a class, or as a term capable of distinguishing the associated goods or services from others within the same class.
In this case, the Supreme Court reasoned that consumers do not perceive BOOKING.COM simply as a class of services. Rather, they associate the term with a specific provider of hotel reservation services and the provider's website. Therefore, the Court found that the term is it not generic for federal trademark registration purposes.
On its face, it would appear likely that the Booking.com decision makes it easier for parties to obtain trademark protection for generic terms that included a ".com" suffix. The longstanding rule against trademarking a generic term no matter how much distinctiveness it has obtained seems to have been significantly weakened. However, parties seeking protection for a "generic.com" mark will still have to demonstrate that consumers perceive the mark as not being generic, but rather as a term that distinguishes from other members of the same class of goods and services. Based on the survey evidence used by Booking.com, it may be advisable for parties seeking trademark protection of a "generic.com" mark to obtain survey evidence regarding the mark and its perception among consumers.
[1] To distinguish between the mark at issue and the company seeking to register it, the mark BOOKING.COM will be written in all caps, whereas the company Booking.com will be written with only the first letter capitalized.
[2] U.S. Patent and Trademark Office v. Booking.com B.V., No. 19-46, WL3518365 (U.S. June 30, 2020).