In the case, both the USPTO and Booking.com agreed that “booking” is a generic term that many other reservation websites use. However, the issue in United States PTO v. Booking.com B.V. turned on whether the combination of a generic term and “.com” renders a company name ineligible for federal trademark registration. In 2016, the Trademark Trial and Appeal Board affirmed the trademark examining attorney’s denial of Booking.com’s trademark applications and held that “BOOKING.COM” was merely descriptive and lacked acquired distinctiveness. Booking.com challenged this decision in the U.S. District Court for the Eastern District of Virginia.
Siding with Booking.com, the district court ruled that the company had shown its name was not generic. It based that decision on Booking.com’s extensive nationwide advertising campaign, as well as evidence of surveys; “robust consumer sales; voluminous unsolicited media coverage; and a decade of exclusive use.” Booking.com v. Matal, 278 F. Supp. 3d 891, 923 (E.D. Va., 2017). The court stated that the evidence was more than sufficient to demonstrate that “in the minds of the public, the primary significance of ‘BOOKING.COM’ is to identify the source of the product rather than the product itself,” …and that “plaintiff's mark is entitled to protection for the services identified in Class 43, as a descriptive mark.” Id. The court ordered the USPTO to register two of Booking.com’s four trademark applications and remanded the other two.
In response to this order, the USPTO appealed this ruling to the Fourth Circuit.
The Fourth Circuit affirmed and maintained the company’s claim to trademark rights for BOOKING.COM. The holding stated that the trademark BOOKING.COM, as a whole, refers to “the company” and not to “general online hotel reservation services.” The court also rejected the USPTO’s argument that a combination of a generic name and “.com” could “never yield a non-generic mark.” Booking.com B.V. v. United States Patent and Trademark Office, 915 F.3d 171, 184 (4th Cir., 2019).
The U.S. Supreme Court granted certiorari and affirmed the Fourth Circuit ruling, rejecting the USPTO’s argument that “.com” does not contribute any additional meaning or distinguish services from a class of goods. Instead, the Supreme Court stated that “a ‘generic.com’ term might also convey to consumers a source-identifying characteristic: an association with a particular website.” Id. at 181. Writing for the majority, Justice Ruth Bader Ginsburg stated, “Thus, consumers could understand a given ‘generic.com’ term to describe the corresponding website or to identify the website’s proprietor. We therefore resist the PTO’s position that ‘generic.com’ terms are capable of signifying only an entire class of online goods or services and, hence, are categorically incapable of identifying a source.” United States PTO v. Booking.com B.V., 2020 U.S. LEXIS 3517, *14.
The ruling does not mean, however, all combinations of a generic name and “.com” will result in a trademark-eligible, source-identifying term. Instead, whether a combination will be trademark-eligible largely depends on how consumers perceive the mark. As the Court noted, “[w]hile we reject the rule proffered by the PTO that ‘generic.com’ terms are generic names, we do not embrace a rule automatically classifying such terms as nongeneric. 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.” Id. at *16.
In a separate concurring opinion, Justice Sonia Sotomayor agreed that there existed no “per se” ruling barring all “generic.com” combination. She was hesitant, however, to rely on consumer-survey evidence of brand recognition, given the existence of “[f]laws in a specific survey design, or weaknesses inherent in consumer surveys generally.” Id. at *21.
Justice Stephen Breyer dissented, writing, “In my view, appending ‘.com’ to a generic term ordinarily yields no meaning beyond that of its constituent parts.” Id. at *28. Breyer was the only justice who dissented.
Key takeaways
In finding that combination of a generic name and “.com” can be nongeneric, and thus eligible for trademark registration, the Supreme Court does not rule that all combinations will be nongeneric. Instead, whether a combination is nongeneric will depend largely on whether consumers perceive the term to refer to a class of generic items, or whether consumers recognize the term as “source-identifying,” referring to a specific service or good.
Generic names alone remain ineligible to trademark registration. However, this ruling gives companies that have generic term combinations, such as Booking.com, more opportunity to protect their brand and mark through trademark protection.
Client Alert 2020-454
