REGISTRABILITY OF ‘GENERIC.COM’ MARKS – PART – I: THE MAJORITY OPINION IN USPTO v. BOOKING.COM
Recently, the Supreme Court of United States held that marks which are generic when combined with a top-level domain name may qualify as registrable marks provided the consumers do not consider them to be generic. The decision is in USPTO v. Booking.com B.V.. By an 8: 1 majority the matter has been decided against USPTO.
Due to an intriguing dissenting opinion by Justice Breyer and not to burden the readers with long posts, we have decided to publish the summary of this decision in two parts. First dealing with the Majority Opinion and Second dealing with the Dissenting Opinion (to follow soon).
The present write up deals with the brief facts, contentions and Majority Opinion.
UNITED STATES PATENT AND TRADEMARK OFFICE ET AL. v. BOOKING.COM B. V.
Date of decision: 30th June, 2020; Supreme Court of the United States
Nine Judges (Eight Hon’ble Judges affirmed the Decision of the United States Court of Appeal for Fourth Circuit and One Hon’ble Judge gave a dissenting opinion)
- Booking.com, an enterprise that maintains a travel-reservation website by the same name, sought to register the mark ‘Booking.com’.
- As per the PTO/USPTO the trade was generic for hotel-reservation services and thus unregistrable.
- As per the Trademark Trial and Appeal Board (TTAB) of USPTO the mark was generic for the relevant services as the term ‘Booking’ meant making travel reservations and ‘.com’ signified a commercial website. The Hon’ble Board further observed that customers would understand that the term ‘booking.com’ will primarily refer to an online reservations service for travels, tours and lodgings. As per the board, even if the mark was not generic it was descriptive and was not registrable as it lacked secondary meaning.
Round Two – US District Court of the Eastern District of Virginia
The trade mark applicant sought a review before the District Court of the Eastern District of Virginia wherein it invoked a mode of review to introduce evidence it did not presented to TTAB.
District Court concluded that the trade mark is not generic but descriptive and registrable on account of acquired secondary meaning.
As per the district court, the consuming public primarily understands that ‘booking.com’ does not refer to a genus, rather is descriptive of services involving ‘booking’ at that domain name.
Round Three – United States Court of Appeal for Fourth Circuit
The PTO appealed against the said decision only on the determination that ‘booking.com’ is not generic. The Court of Appeal affirmed the decision of the District Court.
Round Four – Supreme Court of the United States
The order of the Court of Appeal was challenged before the Supreme Court. Before the Supreme Court, there were certain principles on which both parties were ad idem/had commonality of understanding. The same are:
- A ‘generic’ term names a ‘class’ of goods or services, rather than any particular feature or exemplification of the class.
- For a compound term, the distinctiveness inquiry trains on the term’s meaning as a whole, not its parts in isolation.
- The relevant meaning of a term is its meaning to consumers.
- Eligibility for registration turns on the mark’s capacity to ‘distinguish goods in commerce’.
Contentions of the Patents and Trade Marks office:
PTO urged a nearly per se rule in the present matter, which was that when a generic term is combined with generic top-level domain name like ‘.com’, the resulting combination is generic. In simple words, the stance of PTO was that every ‘generic.com’ term is generic irrespective of customer/consumer perception except where generic words are combined with a domain name to form a word play such as ‘tennis.net’
In support of its contentions, the PTO argued:
- A generic corporate designation added to a generic term does not confer trademark eligibility as held in Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598 (1888).
- ‘Generic.com’ is like ‘Generic Company’ and is therefore ineligible for trademark protection.
- Adding ‘.com’ to a generic term like adding ‘Company’ conveys no additional meaning that would distinguish one provider’s services from those of other providers.
- Trademark protection for ‘Booking.com’ could exclude or inhibit competitors from using the term ‘booking’ or adopting domain names like ‘ebooking.com’ or ‘hotel-booking.com.’
- ‘booking.com’ has already seized a domain name which no one can use. The consumer when entering the word ‘booking’ in the search engine will proceed directly to ‘Booking.com’ which is a competitive advantage to ‘Booking.com’ and hence there seems no need for trade mark protection.
- Even if ‘Booking.com’ is generic, the applicant can seek recourse to unfair-competition law to prevent others from passing off their services as Applicant.
Interestingly, PTO did not dispute before the Supreme Court that the mark ‘Booking.com’ does not have a perception that the term taken as a whole signifies the class of online hotel-reservation services. As per the PTO, the consumer perception inquiry was unnecessary in the present case.
On testing the rule urged by PTO with past practices of PTO
PTO’s past practices do not reflect any such comprehensive as has been urged in the present matter. PTO has registered ‘ART.COM’ for ‘online retail store services’ offering ‘art prints, original art, and art reproductions’ and also ‘DATING.COM’ for ‘dating services’. These registrations will be at risk of cancellation if PTO’s current view is to prevail. We decline to adopt a rule excluding registration of ‘generic.com’ marks.
On Non-applicability of Goodyear (Supra) decision
The PTO’s reliance on Goodyear (Supra) is flawed. The PTO understands Goodyear to hold that ‘Generic Company’ terms are ineligible for trademark protection as a matter of law regardless of how consumers would understand the term. But, as noted, whether a term is generic depends on its meaning to consumers. That bedrock principle of the Lanham Act is incompatible with an unyielding legal rule that entirely disregards consumer perception. The primary significance of the registered mark to the relevant public shall be the test for determining whether the registered mark has become the generic name of goods or services.
On ‘generic.com’ mark to have the ability to convey source identifying characteristics.
A ‘generic.com’ term might also convey to consumers a source-identifying characteristic; an association with a particular website. As the PTO acknowledge, only one entity can occupy a particular Internet domain name at a time, so a consumer who is familiar with that aspect of the domain-name system can infer that ‘Booking.com’ refers to some specific entity. Thus, consumers could understand a given ‘generic.com’ term to describe the corresponding website or to identify the website’s proprietor.
On the contention that the registration will restrict competitors to choose marks comprising ‘booking’
The contention of the PTO that registration of the mark booking.com will lead to exclude competitors from using the word booking in their domain name can answered by the fact that:
- When a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the mark’s owner.
- In a crowded field of lookalike marks (e.g., hotel names including the word ‘grand’), consumers may have learned to carefully pick out one mark from another.
- Even where some consumer confusion exists, the doctrine known as classic fair use, protects from liability anyone who uses a descriptive term, ‘fairly and in good faith’ and ‘otherwise than as a mark’ merely to describe its own goods.
On the contention that booking.com has competitive advantage and trade mark protection is thus not required
Those competitive advantages, however, do not inevitably disqualify a mark from federal registration. All descriptive marks are intuitively linked to the product or service and thus might be easy for consumers to find using a search engine or telephone directory. The Lanham Act permits registration nonetheless.
On the contention of relief of unfair competition being available to booking.com
Federal trademark registration would offer Booking.com greater protection. Unfair competition law would oblige competitor at most to ‘make more of an effort’ to reduce confusion, not to cease marketing its product using the disputed term. Trademark rights allow mark owners to stop domain-name abuse through private dispute resolution without resorting to litigation. We have no cause to deny Booking.com the same benefits Congress accorded other marks qualifying as non-generic.
Rule laid down by the Majority
- While it rejected the rule canvassed by the PTO that ‘generic.com’ terms are generic names, it did not embrace a rule automatically classifying such terms as nongeneric. It held that whether 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. The Court further observed that Evidence informing that inquiry can include not only consumer surveys, but also dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning.
- There is no per se rule against trademark protection for a ‘generic.com’ term. USPTO has allowed registration of such terms in the past.
- Consumer surveys to determine genericness of the mark are not the be-all end-all. Sources such as dictionaries, usage by consumers and competitors and other evidences may have a bearing on how a consumer perceives a terms’ meaning.
 The United States Court of Appeals for the Fourth Circuit is a federal court located in Richmond, Virginia, with appellate jurisdiction over the district courts in the districts of Maryland, Eastern District of North Carolina, Middle District of North Carolina, Western District of North Carolina, South Carolina, Eastern District of Virginia, Northern District of West Virginia and Southern District of West Virginia
 U. S. Patent and Trademark Office
 GINSBURG, J., delivered the opinion of the Court, for ROBERTS, C. J., and THOMAS, ALITO, SOTOMAYOR, KAGAN, GORSUCH, and KAVANAUGH, JJ.
 KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U. S. 111, 122–123 (2004).
 Page 11 of the decision read with Footnote 6
 SOTOMAYOR, J.