Last week, the Supreme Court of the United States issued an opinion in United States Patent and Trademark Office v. Booking.com B.V., No. 19-46 (June 30, 2020), holding “Booking.com” is not generic and is, therefore, eligible for federal trademark registration.
Booking.com filed four trademark applications each containing the mark “Booking.com.” The U.S. Patent and Trademark Office (PTO), affirmed by the Patent Trial and Appeal Board, denied all four applications. The PTO concluded that “‘Booking.com’ is generic for the services at issue and is therefore unregistrable.” Booking.com sought review in the U.S. District Court for the Eastern District of Virginia, which found that “Booking.com” is descriptive, not generic, and had acquired secondary meaning. The PTO appealed the district court’s determination that “Booking.com” is not generic. The Fourth Circuit affirmed, and the Supreme Court granted certiorari.
On review, the Supreme Court rejected the PTO’s urging to approve a bright line rule that “generic.com terms” are “necessarily generic” regardless of consumer perception. Rather, the Court explained, “whether ‘Booking.com’ is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services.” The Court concluded it does not. Among other considerations, the Court cited the fact that consumers do not “understand Travelocity… to be a ‘Booking.com,’” nor do they “ask a frequent traveler to name her favorite ‘Booking.com’ provider.” The Court held that, ultimately, “[b]ecause ‘Booking.com’ is not a generic name to consumers, it is not generic.”
The Court also rejected the PTO’s purported equivalency between “generic.com” marks and “Generic Company” marks. The Court explained that “.com” conveys meaning to consumers because “only one entity can occupy a particular Internet domain name at a time.” Therefore, “.com” in combination with an otherwise generic term informs consumers of “an association with a particular website” or “some specific entity.” Conversely, “Company” signifies nothing to consumers because there is no equivalent domain name system for business names. The Court further rejected the PTO’s characterization of the Goodyear decision, noting Goodyear merely stands for the principle that “[a] compound of generic elements is generic if the combination yields no additional meaning to consumers capable of distinguishing the goods or services.” Finally, addressing the PTO’s assertion that permitting registration of “generic.com” marks would have anticompetitive effects, the Court explained other doctrines of trademark law, such as fair use, protect against such an outcome. Justice Sotomayor concurred. Justice Breyer dissented.
This blog post was co-authored by Christopher McGillen & Rachel Zimmerman Scobie