Supreme Court Confirms “Booking.com” Entitled to Trademark Protection
On June 30, 2020, the Supreme Court ruled in United States Patent and Trademark Office v. Booking.com that adding the “.com” suffix to an otherwise generic and unprotectable word can make the new combination eligible for trademark protection. Rejecting the U.S. Patent and Trademark Office’s (USPTO)’s suggestion that adding “.com” to a generic term must make the resulting combination likewise generic, the Court relied upon a bedrock principle of trademark law, that consumer perception should, and does, govern whether an overall term is sufficiently distinctive to warrant trademark protection. This decision will likely have wide-ranging effects across many industries, including for example arts and entertainment. Brands like Movies.com and others whose trademarks depend entirely on specific protectable uses and designs can now expand their IP protection to include their brand name itself without particular stylization.
Booking.com was initially denied trademark protection by the USPTO for the BOOKING.COM mark in standard characters and in stylized form. The USPTO reasoned that “Booking.com” is a generic name for online hotel reservations, and thus not eligible for protection as a registered trademark. Booking.com argued that their company required a trademark registration to protect the brand and defend against potential copycat travel agencies and competitors from using the Booking.com name. The Court’s 8-1 majority opinion, delivered by Justice Ruth Bader Ginsburg, stated “We have no cause to deny Booking.com the same benefits Congress accorded other marks qualifying as nongeneric.” The Court also noted that a domain name can only be held by one entity at a time, and therefore consumers can perceive BOOKING.COM to indicate a particular source identifier, again consistent with the principles of trademark protection.
The case had been appealed from the USPTO to the U.S. District Court for the Eastern District of Virginia, and the Fourth Circuit Court of Appeals, both of which held that “Booking.com” is not a generic term, which the Supreme Court’s majority opinion affirmed. The Court provided:
“In accord with the first- and second-instance judgments in this case, we reject the [US]PTO’s sweeping rule. A term styled “generic.com” is a generic name for a class of goods or services only if the term has that meaning to consumers. Consumers, according to lower court determinations uncontested here by the [US]PTO, do not perceive the term “Booking.com” to signify online hotel-reservation services as a class. In circumstances like those this case presents, a “generic.com” term is not generic and can be eligible for federal trademark registration. “
One concern voiced by the USPTO is that trademark protection for a generic term such as “Booking.com” would hinder competitors. The USPTO fears that trademark protection for “Booking.com” could exclude competitors from using the term “booking” or hinder their attempts to adopt domain names like “ebooking.com” or “hotel-booking.com.” The majority opinion addresses the USPTO’s concern, noting that “The USPTO’s objection, therefore, is not to exclusive use of “Booking.com” as a mark, but to undue control over similar language, i.e., “booking,” that others should remain free to use.” Booking.com has acknowledged that variations of booking would be unlikely to infringe upon their trademark and that competitors are free to use the term booking to describe their services. As the Court correctly noted, this is true for other marks that are also descriptive, but does not preclude registration of the mark.
Moving forward, the USPTO will have to evaluate applications to register “generic.com” trademarks based on consumer perception of the mark, in keeping with a core principle of the Lanham Act that the meaning to consumers of a mark is the determining factor for generic or non-generic character. The ruling does still leave some room for interpretation as the Court acknowledged that not all “generic.com” terms will be classified automatically as non-generic. The USPTO will need to evaluate if the combined term offers “additional meaning to consumers capable of distinguishing the goods or services.”
The Court also appropriately noted that the USPTO has allowed registration of other “generic.com” trademarks. For example, ART.COM is registered for use with, inter alia, online retail store services offering art, and DATING.COM is registered for use with dating services. Had the Court ruled differently in this case, it recognized that such existing registrations for other “generic.com” marks might be put at risk of being canceled on genericness grounds.
The Court’s opinion confirms that BOOKING.COM may be a descriptive mark when used with booking services, but it is not a generic term, and therefore it is entitled to protection. By contrast, historically, certain companies have lost trademark protection due to their trademarks becoming generic through over-popularity. Terms such as “Aspirin” and “Yo-Yo” have lost trademark protection under U.S. Law due to the terms becoming genericized. This effect and the risk of losing trademark protection is the reason that brands like Band-Aid and Kleenex make sure to use their brands in conjunction with the generic descriptor (i.e., as Band-Aid adhesive bandages and Kleenex facial tissue). Such efforts have become even more important as brands navigate the modern digital age, where anyone with an internet connection can register a domain, and build a website. Mere registration of a domain name however does not establish trademark rights, and the Court’s ruling does not change that. One must still use the “generic.com” as a mark, just as Booking.com does on its website, so that consumers understand it is a brand and therefore entitled to trademark protection. The Court also included some discussion of the type of evidence that could be used to confirm that consumers understand the “generic.com” to be a brand, such as survey evidence to show that the “generic.com” has acquired distinctiveness.
The ruling is a victory for companies who have been denied registration for their brand by the USPTO on grounds that it is a generic term. Individuals and companies are now more clearly able to register “generic.com” marks, for example Movies.com and Music.com, so long as those marks are actually seen as a brand by consumers.