On June 30, the Supreme Court, in an 8-1 decision, issued a highly anticipated decision in United States Patent and Trademark Office et al. v. Booking.Com B.V. answering the question whether a trademark consisting of a generic term and a generic top-level domain term could be eligible for federal trademark registration. Here, the mark was BOOKING.COM with and without stylistic elements. The Court held that the mark is registrable, so long as the mark as a whole is distinctive in the minds of consumers.
The case began at the US Patent and Trademark Office (USPTO), before which Booking.com filed three BOOKING.COM trademark applications for travel-related services. The USPTO refused registration on the basis that "booking.com" was generic, which was affirmed by the USPTO's Trademark Trial and Appeal Board. On appeal to the Eastern District of Virginia, Booking.com prevailed, with the district court holding that BOOKING.COM was registrable because Booking.com had met its burden of proving that the mark had acquired distinctiveness and was not generic, a determination that was affirmed by the Court of Appeals for the Fourth Circuit. The US Supreme Court granted certiorari on the issue of registrability, namely, whether BOOKING.COM is a generic term as applied to travel-related services.
The question whether "Booking.com" is a generic term depends on if, when viewed in its entirety, the mark signifies travel-related services generically to consumers. Borrowing the Court's illustration, if "Booking.com" were generic, it would be synonymous with online hotel reservation services, and one may "ask a frequent traveler to name her favorite 'Booking.com' provider."
In an opinion authored by Justice Ginsburg, the Court affirmed the lower courts' decisions. Justice Ginsburg wrote that a "generic.com" trademark is only generic if it is generic in the minds of consumers. In this case, "[c]onsumers ... do not perceive the term 'Booking.com' to signify online hotel-reservation services as a class." Therefore, the mark should not be barred from registration.
The Court adopted the district court's finding that consumers "primarily understand[] that BOOKING.COM does not refer to a genus[;] rather it is descriptive of services involving 'booking' available at that domain name" as evidenced by Booking.com's survey indicating that consumers refer to such websites as "booking sites." Both Justice Ginsburg and Justice Breyer (dissenting) noted the inherent uncertainty of using survey evidence to determine whether any term was generic.
Moreover, the Court rejected the USPTO's public policy argument, where it advocated a per se rule barring registration of "generic.com" marks as a means to prevent competitive harm. Justice Ginsburg found no trademark law or policy to support such a per se rule and dismissed the USPTO's arguments accordingly. Moreover, as the Court noted, because domain names are unique-a "generic.com" domain can only refer to a single website-they are less likely to be considered the generic name of a class of goods or services.
All in all, Booking.com serves as good news for many "generic.com" owners that may have faced difficulty in achieving federal trademark registration of their domain names in the past. Nevertheless, the decision does not necessarily mean that all "generic.com" marks are eligible for registration. On the contrary, a key factor in the decision seems to have been Booking.com's ability to show acquired distinctiveness in the minds of consumers. Any applicant of a "generic.com" domain may likewise need to make a comparable demonstration to achieve registration.
Following this decision, there is likely to be an uptick in "generic.com" filings. But trademark owners should not confuse the ruling to indicate that "cars.com" for buying cars or "wine.com" for buying wine will be protectable automatically.
That said, the USPTO will likely take a more cautionary approach to issuing genericness refusals in connection with "generic.com" marks. Such refusals may be replaced with descriptiveness refusals, and the USPTO may resort to additional use of its catch-all "failure to function" refusal, which has already increased in recent years to the distress of trademark applicants and their counsel. The type of refusal will of course depend on the facts of each case. But applicants should be prepared to face pushback from the USPTO despite the Booking.com decision.
Trademark applicants should be prepared to present evidence of acquired distinctiveness for "generic.com" marks. While surveys during prosecution are unlikely to become mandatory or standard and may, in fact, have limited utility, significant evidence of long-standing and continuous use, public acclaim, and large advertising and marketing expenditures may need to be submitted during the prosecution of the application.
Finally, Booking.com may open the door to registration of marks featuring other generic terms, such as "1-800" numbers and hashtags. Traditionally, the USPTO has not accorded weight to such elements, even though in some cases they too, like ".com", suggest that a single source is involved. While on their own, generic terms are incapable of indicating source, a "generic.com", and arguably "1-800-generic" or "#generic" terms can potentially indicate source as they may indicate a single source.
In conclusion, Booking.com marks a clear refutation of the USPTO's previous longstanding rule that "generic.com" trademarks are per se ineligible for registration. As such, all trademark owners who have a significant online presence and/or significant branding associated with their domain names, especially those using descriptive or generic terms in their domain names, will likely consider filing applications for their ".com" terms.
Originally published July 2, 2020.
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