Is survey evidence regarding secondary meaning relevant when the trade mark is composed of only two generic elements? Is an 1888 precedent of the US Supreme Court useful when deciding whether a domain name can be registered as a trade mark? And, most importantly, is the whole greater than the sum of its parts? This Kat did not expect to find answers to all of these questions (and more) in a recent decision given by the US Court of Appeals for the Fourth Circuit in the case on the registration of the trade mark “BOOKING.COM”.
Amsterdam-based Booking.com B.V. sought to register the word mark “BOOKING.COM” with the US Patent and Trademark Office (USPTO) inter alia for online hotel reservation services (class 43). The USPTO found that the sign was generic as applied to the relevant services and rejected the application. The Trademark Trial and Appeal Board agreed, reasoning that--
‘booking’ generically refers to ‘a reservation or arrangement to buy a travel ticket or stay in a hotel room’ or ‘the act of reserving such travel or accommodation’; ‘.com’ indicates a commercial website; and consumers would understand the resulting composite BOOKING.COM to primarily refer to an online reservation service for travel, tours, and lodging, which are the services proposed in Booking.com’s applications.
The applicant filed a civil action against this decision with the US District Court for the Eastern District of Virginia. This avenue (instead of the alternative, filing an appeal with the Federal Circuit) allowed the applicant to submit further evidence, in particular a consumer survey, that purported to show that --
74.8% of consumers recognized BOOKING.COM as a brand rather than a generic service.
The district court found that although “booking” was generic for the claimed services, hotel reservation services, the mark “BOOKING.COM”, as a whole, was not. Based on the evidence, “BOOKING.COM” had acquired secondary meaning and was thus protectable. The USPTO appealed to the Fourth Circuit.
The Whole is Greater than the Sum of its Parts (Sometimes)
Under US law, genericness is an absolute bar to trade mark registration, as otherwise, as the Court of Appeals explains, “a competitor could not describe his goods or services as what they are”. Generic signs, contrary to merely descriptive signs, cannot acquire secondary meaning through intensive use, because they must remain available for use by all persons, including competitors. The only question before the Court was whether “BOOKING.COM” was generic or merely descriptive. If it is generic (as argued by the USPTO), it cannot be registered, while if it is descriptive, the survey evidence filed by the applicant would have established secondary meaning, rendering the sign protectable (as admitted by the USPTO).
As the Court noted, there is no evidence that consumers refer to online hotel reservation services as “bookings.com”, rather than using the term “booking website(s)” or the like. What is more,
Unlike ‘hotels’ or ‘lawyers’, ‘booking’ is used to describe a plethora of reservation services, including, for example, theatrical or musical engagements.
The Court lists two ways by which terms may be classified as generic: where the “term began life as a ‘coined term’ that had become generic through common usage” and where the term “was commonly used prior to its association with the products at issue”. Survey evidence, in principle prepared to establish secondary meaning of a descriptive sign, can however also be used as evidence of (non-)genericness in the former scenario, as acknowledged by the Court.
The USPTO contended that adding a generic TLD like “.com” to a generic word like “booking” necessarily results in a sign that is itself generic. It relied in particular on an 1888 precedent in which the US Supreme Court held that adding a commercial indication, such as “company”, to generic terms cannot be trademarked. The underlying question is, therefore, whether the sign as a whole is more than its component parts, i.e. whether the combination of a generic word with a generic TLD can result in something that is non-generic.
The Court of Appeals relied heavily on the requirement that genericness must be established by looking at the proposed mark “as a whole”, in particular what the public primarily perceives the term as a whole refers to. As a result, there is no general rule regarding the combination of two generic elements with respect to genericness of the combined sign as a whole.
Where, as the Fourth Circuit puts it, “evidence [in this case the consumer survey] demonstrates that the trade mark’s primary significance to the public as a whole is the source, not the product”, the combination should not be deemed generic. Considering the component parts of a domain name thus may not unambiguously point to the primary significance of the term taken as a whole. Even where a “domain-name-as-mark” technically describes the service provided, it does not necessarily follow that the public commonly understands the mark as referring to the service “broadly speaking”.
Based on the foregoing, the Court of Appeals affirms the District Court’s ruling that--
adding ‘.com’ to a [second-level-domain] can result in a non-generic, descriptive mark upon a showing of primary significance to the relevant public.
|This Kat should have booked her |
beach holiday on booking.com
Ok, now you got your trade mark. What do you want to do with it?
The Court nevertheless suggests (by way of obiter dictum) that once registered, the trade mark “BOOKING.COM” may well have a limited scope of protection, stating that it
would not necessarily preclude another company from using, for example, carbooking.com or flightbooking.com.
Whether this is indeed the case remains to be seen. It seems to this Kat that the primary interest of registering a domain name as a trademark is to prevent similar domain names from freeriding, such as “xxxbooking.com” where “xxx” is a generic word like “car” or “flight”. Given this, if the scope of the mark “BOOKING.COM” is indeed very limited, its value as a trademark will also be limited. If, however, the dictum of the Court of Appeals is rejected in future infringement proceedings, perhaps the results of this case may have consequences different from those intended.
BOOKING.COM – When does adding a generic TLD to a generic word make the sign non-generic? Reviewed by Peter Ling on Monday, February 18, 2019 Rating: