The U.S. Supreme Court’s 2020 decision in United States Patent and Trademark Office (USPTO) v. Booking.com demonstrates the changing landscape for trademark law in the internet age. Here, the Court found that a term styled “generic.com” or any other domain name comprised of generic terminology appended by a top-level domain (TLD), such as “.com” or “.net,” may be trademarked if it has a source-identifying, non-generic meaning to consumers. [1]
Statutes and Relevant Cases
Under the Lanham Act, a mark’s eligibility for trademark registration turns on its capacity to distinguish goods and services in commerce. The distinctiveness of a mark is typically measured on an increasing scale: 1) generic; 2) descriptive; 3) suggestive; 4) arbitrary; or 5) fanciful. If a mark is categorized as either arbitrary/fanciful or suggestive, it is considered to be inherently distinctive.[2]
Generic marks include words that the public understands to be the common name of the product or service in question, such as if the mark FOOD was used for products of a company that sold food.[3] Generic marks are not eligible for protection because allowing companies to control them would grant allow for an unfair competitive advantage.[4]
Descriptive marks describe the products or services to which they are applied. For example, COCA-COLA is descriptive because it describes a beverage that is made with ingredients from coca leaves. Descriptive marks are typically not protectable unless it acquires secondary meaning and consumers come to identify the mark as being associated with a single source of origin for the product.[5] In the instance of COCA-COLA, the trademark application was successful because consumers associate the mark with a single source of origin for the product .[6] Factors such as the amount and manner of advertising, the volume of sales, and the length and manner of use may serve as circumstantial evidence relevant to the issue of secondary meaning.[7]
Background
In 2011, Booking.com, an online travel agency that consumers visit to book travel arrangements, sought to trademark its name with the USPTO.[8] Booking.com’s application was denied on the grounds that the term “booking” applied to a generic class of goods–travel services or, alternatively that it was merely descriptive and had not acquired distinctiveness.
Trademark Designs for BOOKING.COM[9]
The USPTO cited the 1888 case, Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., which held that “Goodyear Rubber Co.” was generic, and that appending terms such as “Co.” or “Company” to the end of a generic mark does not provide a sufficient level of distinctiveness to be eligible for trademark protection.[10] Booking.com appealed to the Trademark Trial and Appeal Board (TTAB), which affirmed the USPTO’s decision and to the United States District Court for the Eastern District of Virginia, which reversed the TTAB's decision, in favor of Booking.com.
The district court found that the term “booking,” when appended by “.com” becomes descriptive, rather than generic, and obtains its distinctiveness through its secondary meaning amongst consumers. Furthermore, the court found that the appellant, Booking.com, proved the secondary meaning of its mark through extensive evidence of consumer recognition.[11]
The PTO appealed only the District Court's determination that “Booking.com” is not generic. The Fourth Circuit affirmed, which upheld the District Court ruling in a 2-1 decision, and then the PTO petitioned the Supreme Court for review. Thereafter, The USPTO petitioned the Supreme Court for review. The Supreme Court granted certiorari. [12]
The Supreme Court analyzed the two issues of the case as: (1) whether “Booking.com,” when taken as a whole, “signifies to consumers the class of online hotel-reservation services”; and, (2) whether to adopt a “nearly per se rule” that “when a generic term is combined with a generic top-level domain like ‘.com,' the resulting combination is generic.”
Decision and Reasoning
Writing for the majority in an 8–1 decision, which affirmed the reversal of the TTAB decision, decedent Justice Ruth Bader Ginsburg reasoned that “[b]ecause Booking.com is not a generic name to consumers, it is not generic.”[13] Therefore, BOOKING.COM was eligible for trademark registration.[14]
However, Justice Ginsburg reasoned that where a generic term carries a secondary, distinctive, meaning to consumers, it may be eligible for trademark registration as a descriptive mark.
The Court responded to the appellant’s reliance on the Goodyear decision, finding that the legal premise of relying on this case was faulty because only one entity can occupy a particular Internet domain name at a time, meaning the fact patterns of the two cases were not comparable.[15]
Furthermore, the court rejected a per se rule that a generic term combined with a generic top-level domain, such as “.com,” results in a combination that is necessarily generic, reasoning that “[w]hether any given ‘generic.com’ term is generic ... 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.”[16] For example, the Court noted that the USPTO has granted other “generic.com” marks to the principal and supplemental registers, such as “art.com” and “dating.com.” In other words, whether a term is generic or descriptive with secondary meaning should be sensitive to an analysis of consumer perception.
In reaching its decision, the Court left undisturbed the circuit court’s finding that “.com does not itself have source-identifying significance when added to a [second-level domain] like booking.”[17]
In dissent, Justice Stephen Breyer expressed his qualms with the majority’s rejection of Goodyear’s application to the present case. Furthermore, Justice Breyer believes that the majority assigned too much weight to the consumer survey evidence, which he criticizes as reliant on flawed data. Finally, Justice Breyer believes that this decision is “inconsistent with trademark principles and sound trademark policy” and will have troubling anticompetitive consequences online.[18]
In her concurring opinion, Justice Sotomayor agreed that the majority should be cautious in relying on consumer surveys, which may be an unreliable indicator of genericness. However, she disagreed with Justice Breyer in his interpretation of the weight that the majority assigned to the surveys. She argues that the Court's opinion does not suggest that surveys are the be-all and end-all, and it relies on other sources such as uses by consumers and competitors as evidence of how consumers perceive the mark’s meaning. [19]
Impact
The outcome of this case provides a new avenue for trademark eligibility of domain names. As a result, brands seeking to register marks similar to Booking.com should keep in mind the holding of this decision when considering if their mark plus “.com” will now be eligible for registration based upon acquired distinctiveness. Furthermore, because the majority relied on consumer perception surveys, prospective trademark domain registrants may increase their focus on establishing brand awareness.[20]
When applying for registration of a generic.com mark on the Principal Register, in order for the Office to reject such a term as generic, the examining attorney is required to show that “the relevant consumers would understand the primary significance of the term, as a whole, to be the name of the class or category of the goods and/or services identified in the application.” In the aftermath of the SCOTUS Booking.com decision, if the USPTO examiner cannot demonstrate genericness, the proposed mark should be analyzed pursuant to descriptiveness and whether the generic.com term acquired secondary meaning.
Be advised that an applicant seeking registration under a claim of acquired distinctiveness must demonstrate strong evidence of the mark as a source indicator. Evidence submitted in support of the Trademark Act Section 2(f), 15 U.S.C. § 1052(f), claim may include consumer surveys; consumer declarations; declarations or other relevant and probative evidence showing the duration, extent, and nature of the applicant’s use of the proposed mark, including the degree of exclusivity of use; related advertising expenditures; letters or statements from the trade or public; and any other appropriate evidence tending to show that the proposed mark distinguishes the goods or services to consumers.[21]
The Court’s decision has already opened the door for a new wave of “.com” marks: In the year following the decision, nearly 200 “.com” applications were filed.[22] In response, the United States Patent and Trademark Office (USPTO) recently issued Examination Guidelines for examining such “generic.com” terms, stating that generic.com terms are potentially capable of serving as a mark and may be eligible for registration “upon a sufficient showing of acquired distinctiveness.” [23]
Since the decision, the USPTO has applied these instructions sparingly due to the high bar imposed by the secondary meaning requirement. For instance, the USPTO has approved marks such as WINE.COM, which would have been generic on its own, but was found to have acquired secondary meaning.
Over the past year, there have been trademark applications for LIQUOR.COM[24], POWERBIKES.COM[25], WINE.COM[26], LOTTERY.COM[27], and many other “generic.com” marks which may or may not be approved in the coming year.
Still, the non-competitive effects of the approval “generic.com” marks that Justice Breyer warned of have been untraced: it could become a larger issue as more website holders are approved for registration of their “generic.com” domains.
Thus, although USPTO v. Booking.com was limited to domain-related marks, this case will likely be extremely impactful in the internet age and place further emphasis on business generic TLDs acquiring secondary meaning.
Authors:
Dayrel S. Sewell, Esq., MPH (http://sewellnylaw.com/dayrel-s-sewell/)
Managing Principal, LAW FIRM OF DAYREL SEWELL, PLLC
Registered U.S. Patent Attorney
Mr. Sewell is a top litigation attorney with a focus on intellectual property law He is well-versed in prosecution matters before the United States Patent & Trademark Office and the United States Copyright Office. He has represented the spectrum of patent, trademark, and copyright owners, food and drug companies, business owners, non-institutional clients, and more.
Ariel Friedman, 2L Columbia Law School
Ms. Friedman is currently an intern at the Law Firm of Dayrel Sewell and is interested in intellectual property law. She also is a Staff Editor for the Columbia Science and Technology Law Review.
[1] U.S. Patent and Trademark Office v. Booking.com B.V., 140 S.Ct. 2298 (2020).
[2] Zatarain’s, Inc. v. Oak Grove Smoke House, Inc., 698 F.2d 785 (5th Cir. 1983).
[3] Vision Center v. Opticks, Inc., 596 F.2d 111, 115 (5th Cir. 1979) (holding that a generic term is “the name of a particular genus or class of which an individual article or service is but a member.”); American Heritage Life Insurance Co. v. Heritage Life Insurance Co., 494 F.2d 3, 11 (5th Cir. 1974) (holding that a generic term connotes the “basic nature of articles or services” rather than the more individualized characteristics of a particular product).
[4] Lanham Trade-Mark Act, § 14(c), 15 U.S.C.A. § 1064(c); William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526, 528, 44 S.Ct. 615, 616, 68 L.Ed. 1161 (1924).
[5] Lanham Trade-Mark Act, § 2(e)(1), (f), 15 U.S.C.A. § 1052(e)(1), (f); Vision Center, 596 F.2d at 115.
[6] Coca-Cola Co. v. Koke Co., 254 U.S. 143, 146 (1920).
[7] Vision Center, 596 F.2d at 119.
[8] Booking.com,140 S.Ct. at 2298.
[9] U.S. Trademark No. 6235719 (issued on Jan. 5, 2021); U.S. Trademark No. 79122365 (issued on Jan. 5, 2021).
[10] Id; Goodyear's India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 598 (1888).
[11] Booking.com v. Matal, 278 F.Supp.3d 891 (E.D. Va. 2017).
[12] Robert W. Zelnick, US Supreme Court Rules “BOOKING.COM” Can Be Registered As a Trademark, McDermott, Will, & Emery (July 8, 2020), https://www.mwe.com/insights/us-supreme-court-rules-booking-com-can-be-registered-as-a-trademark/.
[13] Booking.com,140 S.Ct at 2307-2305.
[14] U.S. Trademark No. 6235719 (issued on Jan. 5, 2021); U.S. Trademark No. 79122365 (issued on Jan. 5, 2021).
[15] Id. at 2298.
[16] Id. at 2305.
[17] B.V. v. United States Pat. & Trademark Off., 915 F.3d 171, 185 (4th Cir. 2019).
[18] Booking.com., 140 S. Ct. at 2313 (2020).
[19] Id. at 2309.
[20] Madeline Woodall, USPTO v. Booking.com: SCOTUS Expands Trademark Registration Options for Online Corporate Branding, Harvard Journal of Law and Technology (October 11, 2020), https://jolt.law.harvard.edu/digest/uspto-v-booking-com-scotus-expands-trademark-registration-options-for-online-corporate-branding.
[21] 37 C.F.R. §2.41; TMEP §§1212.06-1212.06(e)(vi).
[22] Michael D. Adams, Domains as Brands– Implications of U.S. Patent and Trademark Office v. Booking.com B.V., Mayer Brown (July 20, 2021), https://www.mayerbrown.com/en/perspectives-events/publications/2020/07/domains-as-brands-implications-of-us-patent-and-trademark-office-v-bookingcom-bv.
[23] Examination Guide 3-20: Generic.com Terms after USPTO v. Booking.com, USPTO (Oct. 2020), https://www.uspto.gov/sites/default/files/documents/TM-ExamGuide-3-20.pdf.
[24] U.S. Trademark Serial No. 90575380 (filed on Mar. 12, 2021).
[25] U.S. Trademark Serial No. 90873232 (filed on Aug. 9, 2021).
[26] U.S. Trademark Serial No. 90042589 (filed on June 11, 2021).
[27] U.S. Trademark Serial No. 90508162 (filed on Feb. 3, 2021).