In U.S. Patent and Trademark Office v. Booking.com B.V., the Supreme Court held that a term that combines a generic word with “.com” is not generic if consumers perceive the term to signify the source of a product and thus can be eligible for federal trademark registration.
The digital travel reservation company Booking.com B.V. sought to register the mark “Booking.com” for online hotel-reservation services. The U.S. Patent and Trademark Office (“PTO”) refused registration of the term on the ground that “Booking.com” is generic for the relevant services because “booking” means making travel reservations and “.com” merely signifies a commercial website.
Booking.com appealed and submitted new evidence demonstrating that consumers perceived “Booking.com” as a mark and not a generic term. The District Court sided with Booking.com, finding that unlike “booking,” consumers understand that “Booking.com” describes travel reservation services that are available at that domain name. The District Court further concluded that Booking.com’s marks have acquired distinctiveness (a prerequisite for registering a descriptive mark). The PTO appealed the finding that “Booking.com” is not generic. The Fourth Circuit Court of Appeals affirmed and the PTO appealed to the Supreme Court.
Supreme Court Decision
The PTO urged the Supreme Court to adopt a firm rule that, when a generic term is combined with a generic top-level domain name (e.g., “.com”) the resulting combination is generic. "In other words, every ‘generic.com’ term is generic according to the PTO.” The PTO specifically posited that adding “.com” to a generic term was like adding “Company” to the name of a business. “Company” conveys no additional meaning that would distinguish one provider’s services—from those of another. In support of this conclusion, the PTO cited an 1888 Supreme Court decision where the Court held that a generic corporate designation, i.e., “Company,” does not confer trademark eligibility when added to a generic term.1 Finally, the PTO warned of anti-competitive consequences if Booking.com prevailed because Booking.com will be able to stop others from using “booking” to describe competing travel reservation services.
Justice Ginsburg, writing for an 8-1 majority, declined to adopt the PTO's "unyielding legal rule." The Court noted that Goodyear is inapt because, unlike the “Generic Company” term in Goodyear, the “Generic.com” term “might also convey to consumers a source-identifying characteristic: an association with a particular website.” The Court also noted that the PTO’s proposed rule “entirely disregards consumer perception.” The Court concludes: “Whether any given ‘generic.com’ term is generic, we hold, depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.” Finally, the Court disputed the parade of horribles that the PTO argued will befall competitors if Booking.com obtained a registration, noting that “trademark law hems in the scope of [weak] marks short of denying trademark protection altogether,” such as providing weak marks a narrower scope of protection and shielding from liability certain instances of fair use. The dissent, penned by Justice Breyer, largely adopts the PTO’s reasoning, and warns that in practice the majority’s “fact-specific approach” will bestow automatic trademark eligibility for every “generic.com” domain name because it will be impossible to find evidence that consumers literally refer to the relevant class of online merchants as “generic.com.”
1. Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888).
2. 575 U. S. 138 (2015).
3. No. 18-1233, 590 U.S. __, __ S.Ct. __, 2020 WL 1942012 (Apr. 23, 2020).
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