Breaking: US Supreme Court holds that "generic.com" marks are not necessarily generic - USPTO v. Booking.com

This morning, the US Supreme Court issued a long-awaited decision regarding the "Booking.com" service mark. In United States Patent and Trademark Office v. Booking.com, the Court held that a mark consisting of a term that is generic for the class of goods or services offered and ".com" is not necessarily generic. Rather, as in this case, if consumers do not perceive the mark as generic for the class, the mark may be distinctive and thus registrable. 

Justice Ginsburg authored the opinion of the Court, which eight justices joined. The lone dissent came from Justice Breyer; additionally, Justice Sotomayor wrote a separate concurring opinion. 

Background 

In order to register a mark for protection under the Lanham Act, the mark must allow consumers to distinguish the goods or services offered under the mark from the goods or services of others. Marks that lack sufficient distinctiveness are ineligible for trademark protection. The distinctiveness of word marks is judged on a scale:

1. Generic ('Booking' travel reservations)
2. Descriptive ('Park'N Fly' airport parking) 
3. Suggestive ('Tide' laundry detergent)
4. Arbitrary ('Camel' cigarettes) 
5. Fanciful ('Kodak' film)

Suggestive, arbitrary, and fanciful marks are inherently distinctive and "more readily" qualify for registration on the primary register under the Lanham Act. Descriptive marks may be registered only if the mark has "acquired distinctiveness" in the minds of the consuming public. By contrast, generic marks are ineligible for registration; any participant in the market may use the generic term to refer to the good or service it designates. 

"Booking.com"

Booking.com is a company that offers hotel reservations and similar services over the internet under the mark, "Booking.com"; booking.com is also the domain name of the company's website. The company filed four service mark applications containing the "Booking.com" term which were rejected by the United States Patent and Trademark Office (USPTO) as generic for the services offered.

On appeal, the PTO Trademark Trial and Appeal Board (TTAB) agreed with the USPTO examining attorney on distinctiveness, ruling that “customers would understand the term BOOKING.COM primarily to refer to an online reservation service for travel, tours, and lodgings.” The TTAB also ruled that the mark lacks secondary meaning, were it ruled to be descriptive.

On review of the TTAB ruling, Booking.com presented new evidence of consumers' impression of the mark to the U.S. District Court for the Eastern District of Virginia. The District Court, upon that evidence, ruled that "Booking.com" is not a generic mark; rather, the consuming public perceives it as descriptive of travel reservation booking services at that domain name. Additionally, the court found that the mark had acquired distinctiveness and thus was eligible to be registered.

The USPTO appealed only the ruling that "Booking.com" is a generic mark to the Fourth Circuit Court of Appeals, arguing that the combination of a generic term and ".com" is necessarily a generic mark, ineligible for registration. Rejecting the argument of the USPTO, the Fourth Circuit affirmed the ruling of the district court. The USPTO then appealed that decision to the Supreme Court, which granted certiorari in November, 2019.

Supreme Court

Generic Mark Test

Justice Ginsburg, writing the opinion of the Court, offered a simple test for generic marks as applied to "Booking.com". The opinion began with three premises, recognizing that (1) "generic" terms designate a class of goods or services, rather than an element of such a class, (2) compound marks are to be judged for distinctiveness as whole marks, rather than a collection of elements, and (3) the relevant meaning of a term is its meaning to consumers. 

Considering those principles, a term is generic when, taken as a whole, it signifies to consumers the class of goods or services offered under the mark. Were "Booking.com" generic, consumers may refer to competing, online travel reservation services as booking.coms. E.g. "Travelocity is my favorite booking.com!" Because consumers do not perceive booking.com as the class of online travel reservation services, generally, the Court ruled that "Booking.com" is not a generic mark.

Goodyear: .com vs Company

The USPTO had relied in its opposition upon Goodyear's India Rubber Glove Mfg. Co. v. Rubber Co. (1888), in which the Supreme Court held that the addition of "Company" to a generic term added no protectable meaning to the term as a mark; the term merely indicates that "parties have formed an association or partnership to deal in such goods," rather than serving any source-identification function. 

By contrast, the addition of .com can serve a source-identification function for the goods and services offered under a "generic.com" mark; if the mark is the same as the particular URL the consumer uses to reach the source of the good or service, the mark has a tendency to identify the source of the good or service. Additionally, a URL is a unique identifier, distinct from "Inc." or "Company." 

The Court noted that the USPTO was wrong to rely upon Goodyear to assert that generic company terms (including ".com") are "ineligible for trademark protection as a matter of law" regardless of consumer impression. Rather, the consumer impression of the mark determines whether or not the mark is generic. As a result, the Court held that marks consisting of a generic term and ".com" are not necessarily generic.

Although Justice Breyer, in his dissent (echoed by Justice Sotomayor in her concurrence) argued that the evidence presented to the district court may fail to show sufficient consumer impression of "Booking.com" as a distinctive mark, the majority narrowly tailored its decision to the issue presented. Affirming the decision of the Fourth Circuit, the Supreme Court held that combining a generic term with “.com” does not, as a rule, yield a generic composite.

Comment

This Kat believes that the Supreme Court came to the right decision today. The Booking.com Generic Mark Test is rooted in consumer protection and offers a straightforward analysis for courts to follow. The analysis that a mark is generic only if consumers perceive it, as a whole, to signify the class of goods or services offered under the mark is consistent with the notion that non-generic marks can become generic through shifting consumer perception (genericide). 

Concerns about the potential monopoly granted over a generic term appear overstated. Booking.com conceded that the mark is a weak, descriptive mark, entitled to a limited scope of protection. Booking.com, and similar generic + ".com" mark owners will have a difficulty establishing a likelihood of confusion as a result. Further, the registration of such a mark does not preclude competitors from using the generic term to describe their own products. Considering the limited protection afforded to the owners of such marks, only if those marks acquire distinctiveness, this Kat believes that the Court made the right call in this case.