Booking.maybe? Supreme Court to Weigh in

Jacob Kornman Introduction

On November 8, 2019, the Supreme Court granted certiorari to review the decision in Booking.com B.V. v. United States Patent & Trademark Office. At issue is whether “Booking.com” is a distinctive mark worthy of trademark protection or whether it is a generic name simply describing the service offered by the website. The Fourth Circuit affirmed the district court’s determination “that although ‘booking’ was a generic term for the services identified, BOOKING.COM as a whole was nevertheless a descriptive mark.”[1] The Fourth Circuit further upheld the district court’s determination that Booking.com met its burden (largely through survey evidence) of showing that the URL mark “had acquired secondary meaning, and therefore was protectable.”[2]

As the Fourth Circuit decision begins, “[t]rademark law protects the goodwill represented by particular marks and serves the twin objectives of preventing consumer confusion between products and the sources of those products, on the one hand, and protecting the linguistic commons by preventing exclusive use of terms that represent their common meaning, on the other.”[3] Terms that are generic or descriptive are not given trademark protection because they simply describe the good or service being offered rather than the source or producer of the good or service, and thus protection serves none of the purposes of trademark.[4] However, a descriptive term “may become, as a result of its use by a specific person, uniquely associated with that person's goods, services, or business” and thus gain a “secondary meaning” worthy of trademark protection.[5] The core question at issue is whether Booking.com did in fact acquire this secondary meaning.

BOOKING.COM V. U.S. P.T.O

The “.com” suffix is a recent addition to our lexicon and courts have not clearly decided how exactly it fits into the trademark inquiry. What happens when the “.com” suffix is added to an otherwise non-protected term? In the lower court and appeal, the United States Patent and Trademark Office (“USPTO”) advocated for a rule that “.com” (being a generic suffix) added to an otherwise non-protectable term (like Booking) is per se not protectable.[6] The district court suggested that “.com” as a URL signifier actually has “source-identifying significance” which the Fourth Circuit found too great a leap.[7] However, the Fourth Circuit found the district court’s inquiry into whether the composite term “Booking.com” had acquired secondary meaning to be appropriate and necessary.[8]

The district court relied heavily on survey evidence to support its ruling. Though other circuits have ultimately found that other website names—Hotels.com, Lawyers.com, and Advertising.com—had not acquired secondary meaning and were thus not protectable, their rulings have left room for the possibility that otherwise descriptive “.com” marks could be protectable with stronger evidence as to the public’s understanding of the marks.[9] The district court in Booking.com found that this strong evidence existed when surveys indicated “that 74.8% of respondents identified BOOKING.COM as a brand name, rather than as a general reference to hotel reservation websites” and determined that Booking.com had acquired a secondary meaning with the relevant public, and was, therefore, protectable.[10] Here, reviewing the case [for clear error], the Fourth Circuit found that the district court’s reliance on strong brand awareness—demonstrated mainly by survey evidence—amongst the relevant consuming public was reasonable.[11] The circuit’s reasoning indicates that other descriptive website names followed by “.com”, like Hotels.com, could easily have been granted a trademark with better evidence and that the district court has wide discretion in deciding what evidence is persuasive.[12]

The Need for Clarity

In granting certiorari, the Supreme Court should bring some clarity to twenty-first-century trademark law. One cannot trademark “grocery store” because consumers understand that to refer to any store that sells groceries. “Bagels,” “drug store,” and “piano” are all ineligible for trademarks because they refer to the goods they are selling generally and not the specific source of those goods.[13] But is this true for e-commerce? The nature of a full URL is that it is a specific address, but just because “.com” points you to a specific source in a web browser, is “.com” really any different than the suffixes “Company” or “Inc.”?[14] The Federal Circuit has suggested that they are analogous,[15] but the Fourth Circuit here felt that Booking.com could still attempt to meet its burden of secondary meaning and gain protection. The ultimate question for the Supreme Court to decide is whether its 1888 holding in Goodyear—that generic suffixes on generic terms cannot gain trademark protection—applies to domain name suffixes in the modern era, and if so, how.

Under the Fourth Circuit’s reasoning, strong survey evidence of brand awareness of a URL is basically enough to meet the burden of secondary meaning and overcome genericness. The Supreme Court could, as the USPTO advocates, adopt a Goodyear-esque per se rule or perhaps leave open the possibility of secondary meaning of generic terms in only extremely rare circumstances.[16] An affirmation of the Fourth Circuit’s reasoning (or something similar), would “create[] incentives for participants in online commerce to quickly apply to register "generic.com" domain names as trademarks with the USPTO. . . . Registration of such domain names as trademarks will discourage competitors from using the generic names of their goods or services in their own domain names.”[17]

Booking.com points out that even with a trademark, it will still need to meet its burden of proving consumer confusion to succeed on a trademark infringement claim.[18] While this may be true, the threat of legal action from a corporate behemoth and the complexity of trademark infringement defense give potential competitors who wish to legally use the generic term strong incentives to consider an alternative name.[19] Allowing secondary meaning to be proven through survey evidence potentially “allows Booking.com to have its cake and eat it too . . . [by] operat[ing] under a domain that merely describes the nature of its business [while] exclude[ing] its competitors from doing the same.”[20]

Conclusion

Perhaps the secondary meaning inquiry requires a more nuanced approach for websites to address the competing forces of protecting brand goodwill, avoiding consumer confusion, and preserving freedom of language in commerce. However, the current choice is binary, between (1) no trademarks for generically named websites and (2) if the generically named website is well-known, it can have the trademark. The USPTO has little sympathy for generically named websites, advocating for a system where these websites are per se not protected, but this ignores the valid trademark policy concern of avoiding consumer confusion. The reality of the public’s understanding of “Booking.com” may not be so black and white (would consumers think HotelBooking.com was from the same company as Booking.com?), and “.com” as a suffix is not exactly the same as “Company.”  Hopefully, in deciding Booking.com, the Supreme Court will provide guidance on how to apply trademark to websites in the twenty-first century.

 

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[1] Booking.com B.V. v. United States Patent & Trademark Office, 915 F.3d 171, 178 (4th Cir. 2019) (emphasis in original).

[2] Id.

[3] Id. at 176.

[4] 1 Anne Gilson LaLonde, Gilson on Trademarks § 2.02 (2019).

[5] Restatement (Third) of Unfair Competition § 13 (Am. Law Inst. 1995).

[6] The USPTO relies on 1888 SCOTUS precedent where the court ruled that a mark comprised of a commercial indicator like “Company” added to a generic descriptive term, like grocery, could not be trademarked. Goodyear's India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888).

[7] Booking.com, 915 F.3d at 185, n. 9.

[8] Id. at 186.

[9] Advertise.com, Inc. v. AOL Advertising, Inc., 616 F.3d 974 (9th Cir. 2010); In re Hotels.com, L.P., 573 F.3d 1300 (Fed. Cir. 2009); In re Reed Elsevier Props., Inc., 482 F.3d 1376 (Fed. Cir. 2007).

[10] Booking.com, 915 F.3d at 183.

[11] Id. The three-step test of determining genericness used was “(1) identify the class of product or service to which use of the mark is relevant; (2) identify the relevant consuming public; and (3) determine whether the primary significance of the mark to the relevant public is as an indication of the nature of the class of the product or services to which the mark relates, which suggests that it is generic, or an indication of the source or brand, which suggests that it is not generic.” Id. at 180. The court in Booking.com notes that consumer surveys are the "preferred method of proving genericness." Id. at 183 (quoting Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 970 (Fed. Cir. 2015)).

[12] Id. at 183–84.

[13] LaLonde, supra note 4.

[14] See supra note 6.

[15] In re Oppedahl & Larson Llp, 373 F.3d 1171, 1175 (Fed. Cir. 2004).

[16] Booking.com, 915 F.3d at 192–93 (Wynn, J., concurring in part and dissenting in part) (providing the examples of tennis.net and rom.com which, while generic, acquire secondary meaning by using the suffix as clever wordplay to enhance the mark).

[17] Petition for Writ of Certiorari at 26, USPTO v. Booking, Lexis 6782 (2019) (No. 19-46), 2019 Lexis 2423, at *46.

[18] Brief for Respondent at 39, Lexis 6782 (2019) (No. 19-46). 2019 Lexis 3231, at *39 (citing Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961)).

[19] Booking.com, 915 F.3d at 195–96 (Wynn, J., concurring in part and dissenting in part) (warning of the dangers of granting trademark protection to generic terms with a URL suffix).

[20] Id. at 189 (Wynn, J., concurring in part and dissenting in part).