In U.S. Patent & Trademark Office v. Booking.com B.V.,1 the Supreme Court held, in an 8-1 decision, that a generic word combined with the top-level domain “.com” can be a federally protectable trademark if it has secondary meaning to consumers.
The Trademark Trial and Appeal Board (Board) of the U.S. Patent and Trademark Office (PTO) rejected travel website Booking.com’s attempt to register its name as a federal trademark, finding the name to be generic. But the U.S. District Court, Eastern District of Virginia, found “Booking.com” was a federally protectable descriptive trademark with secondary meaning to the relevant public, based on new evidence of consumer surveys indicating the mark was perceived as “descriptive of services involving ‘booking’ available at that domain name.”2
The U.S. Court of Appeals, Fourth Circuit, affirmed, and the Supreme Court affirmed the Fourth Circuit’s decision. Justice Ruth Bader Ginsburg wrote for the Court and said that whether “Booking.com” is generic depends on whether the term “taken as a whole, signifies to consumers the class of online hotel-reservation services.”3 The Court noted that consumers did not view “Booking.com” that way, and that the Board did not dispute this determination. “That should resolve this case: Because ‘Booking.com’ is not a generic name to consumers, it is not generic,” the Court held.4
The PTO argued that a generic term combined with a generic top-level domain such as “.com” necessarily creates a generic mark. But the Court said it found “no support for the PTO’s current view in trademark law or policy.”5
The PTO also asserted that “.com” trademarks are comparable to generic terms combined with generic corporate designations, which the Supreme Court ruled in Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co. were not eligible for trademark protection.6 The Court rejected this assertion:
That premise is faulty. A “generic.com” term might also convey to consumers a source-identifying characteristic: an association with a particular website. As the PTO and the dissent elsewhere acknowledge, 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. Thus, consumers could understand a given “generic.com” term to describe the corresponding website or to identify the website’s proprietor.7
The Court noted that “whether a term is generic depends on its meaning to consumers,” and that this “bedrock principle of the Lanham Act is incompatible with an unyielding legal rule that entirely disregards consumer perception.”8 According to the Court:
Instead, Goodyear reflects a more modest principle harmonious with Congress’ subsequent enactment: A compound of generic elements is generic if the combination yields no additional meaning to consumers capable of distinguishing the goods or services.9
The Court also rejected the PTO’s argument that federal trademark protection for “Booking.com” would provide a monopoly over the word “booking.” The Court remarked that the PTO’s concerns can be addressed in the traditional likelihood-of-confusion analysis for trademark infringement, since “Booking.com” would be considered a weak trademark because it uses generic components and is one of many similarly worded marks.10
In a dissenting opinion, Justice Stephen Breyer said the majority opinion was “inconsistent with trademark principles and sound trademark policy.”11 Justice Breyer said:
Like the corporate designations at issue in Goodyear, a top-level domain such as “.com” has no capacity to identify and distinguish the source of goods or services. It is merely a necessary component of any web address. When combined with the generic name of a class of goods or services, “.com” conveys only that the owner operates a website related to such items. Just as “Wine Company” expresses the generic concept of a company that deals in wine, “wine.com” connotes only a website that does the same. The same is true of “Booking.com.” The combination of “booking” and “.com” does not serve to “identify a particular characteristic or quality of some thing; it connotes the basic nature of that thing”—the hallmark of a generic term.12
Justice Breyer also said providing “generic.com” trademark protection threatens “serious anticompetitive consequences in the online marketplace.”13
In a concurring opinion, Justice Sonia Sotomayor agreed with the dissent’s observation that consumer-survey evidence “may be an unreliable indicator of genericness,” but noted that other evidence such as dictionary definitions and usage by competitors and consumers can be used to determine whether a trademark is generic or descriptive.14
Lessons and Ramifications
- The Court’s decision kept intact the “use in commerce” requirement. Accordingly, trademark applicants will still need to submit acceptable specimens for their “.com” marks to perfect their trademark rights. The specimen will have to show use of the mark as reflecting a source of origin for goods/services and not merely use as a domain name or URL.
- The Court reiterated that a number of sources can be used to determine whether consumers identify a mark as reflecting goods/services, including consumer surveys, dictionaries, current usage and the like.
- The Court also repeated that the “.com” mark must still be distinctive in order to receive trademark protection.
- Trademark infringement requires proof of likelihood of confusion. Thus, “.com” trademark owners will still need to provide such proof before being able to enforce such trademarks.
- In the end, the Court’s ruling is sure to increase “.com” trademark filings, registrations and litigation enforcing these types of trademarks in the future.
1 U.S. Patent & Trademark Office v. Booking.com B.V., 140 S.Ct. 2298, 2020 USPQ2d 10729, 2020 WL 3518365 (2020).
2 Id., 140 S.Ct. at 2303.
3 Id., 140 S.Ct. at 2304.
4 Id., 140 S.Ct. at 2305.
5 Id., 140 S.Ct. at 2305.
6 Id., 140 S.Ct. at 2305 (citing Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888)).
7 Id., 140 S.Ct. at 2306 (internal citations omitted).
8 Id., 140 S.Ct. at 2306.
9 Id., 140 S.Ct. at 2306 (emphasis added by court).
10 Id., 140 S.Ct. at 2307-08.
11 Id., 140 S.Ct. at 2309 (Breyer, J., dissenting).
12 Id., 140 S.Ct. at 2312 (Breyer, J., dissenting) (quoting Blinded Veterans Ass’n v. Blinded Am. Veterans Found., 872 F.2d 1035, 1039, 10 USPQ2d 1432, 1435 (D.C. Cir. 1989) (Ginsburg, J., for the court) (emphasis added by Breyer)).
13 Id., 140 S.Ct. at 2314 (Breyer, J., dissenting).
14 Id., 140 S.Ct. at 2309 (Sotomayor, J., concurring) (internal citations omitted).
Irah Donner is a partner in Manatt’s intellectual property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law.