July 14, 2020
As previously reported, on June 30 in United States Patent and Trademark Office et al. v. Booking.com, the U.S. Supreme Court held that a generic word can be granted trademark protection when it is part of a “.com” domain name, ruling in favor of Booking.com in its petition to trademark its name.
Booking.com filed four applications to register the Booking.com mark for a variety of travel-related services. Each of the applications were comprised significantly of the Booking.com mark. During examination, the USPTO held that each application was not entitled to registration because the mark is generic, identifying the genus of the services identified in each application. This decision was affirmed by the Trademark Trial and Appeal Board. The applicant then sought review before the District Court for the Eastern District of Virginia.
The District Court reviewed evidence of the consumer’s perception of the mark and held that the mark does not identify the genus of the services, but because of the consumer’s perception, the mark is descriptive of the services of the applicant. Because the applicant also provided evidence of secondary meaning, the court held that the descriptive mark was entitled to protection by the applicant in view of its acquired distinctiveness as a trademark of the applicant. This decision was affirmed by the Court of Appeals for the Fourth Circuit.
On review before the Supreme Court, the USPTO argued for a per se rule that would render any generic term when combined with a generic top-level domain such as “generic.com” to be generic, regardless of consumer perceptions. The Court here distinguished the prior ruling in Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., which essentially held that adding a corporate designation such as “Company” to an otherwise generic term renders the entire phrase generic. The circumstances with a domain name are fundamentally different in that only one holder can occupy any specific domain name. As a result, the domain name refers to a specific entity.
The Court went on to question the holding in Goodyear that as a matter of law, any generic term when combined only with a corporate identifier would be fully generic regardless of consumer impression. The Court recognized that under the Lanham Act, whether a term is generic depends upon the understanding attached to that term by consumers, stating, “Whether any given ‘generic.com’ term is generic, we hold, 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.”
In order to determine the meaning that consumers attach to a particular term, the Court recognized that the evidence can consist of consumer surveys, dictionaries, usage by consumers and competitors, or “any other evidence bearing on how consumers perceive a term’s meaning.”
With respect to the scope of protection, the Court addressed the concern of the USPTO that protection of “Booking.com” would hinder competitors from using terms such as “ebooking.com” or “hotel-booking.com.” The Court recognized that this is addressed by existing trademark law such as the scope of protection afforded to descriptive marks. Additionally, the doctrine of classic fair use can protect competitor’s use of generic terms in a fair-use manner.
The ultimate result is that the Supreme Court has expressly rejected the concept of a per se rule against registration of a “generic.com.” Instead the Court teaches to look to the perception afforded to that term by the consumer of those goods and services. With this decision, trademark applicants are entitled to a broader basis of argument for protection of any domain name mark that would otherwise be considered generic.
Time will tell the extent of the application of these principles beyond the domain name space; however, the application to the protection of domain names under trademark law will be considered significant. As a result, trademark owners, domain name owners, and even trade name owners are encouraged to review their existing trademark protection and consider expansion of those assets by obtaining registration protection. The members of Fitch Even’s Trademark and Brand Protection practice group are available to assist in this review.
If you have questions regarding the Booking.com ruling, please contact Fitch Even partner Joseph T. Nabor, author of this alert.
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