REGISTRABILITY OF ‘GENERIC.COM’ MARKS – PART – II: THE DISSENTING 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 Hon’ble Justice Breyer and not to burden the readers with long posts, we had decided to publish the summary of this decision in two parts. First dealing with the Majority Opinion and Second dealing with the Dissenting Opinion.
The Part I of the post comprising of brief facts, contentions and Majority Opinion is accessible here. The part II consisting of Hon’ble Justice Breyer’s opinion is provided herein below:
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
Hon’ble Justice Breyer asks a fundamental question as to what is ‘Booking.com’. He is of the view that the Respondent provides an online booking service thus only providing the consumer with the nature of the business and nothing more. This is his primary disagreement with the majority opinion.
1. Hon’ble Justice Breyer’s opinion as to what is the prevailing law on generic names
He heavily relies on US jurisprudence of complete non-protectability of generic terms as trade marks irrespective if the generic term has become identified with a first user in the minds of the consuming public. The principle being that protection of such terms leads to anti-competitive practice and restricts a right of a competitor to describe their goods.
As per Hon’ble Justice Breyer generic terms fo nothing more than inform the consumer the kind of the product firm sells. His reasoning of dissent is completely based on Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., which held that combining a generic term with the words such Company or Inc. does not make the term capable of being registered as a trade mark as adding a corporate designation only indicates that parties have formed an association or partnership to deal in such goods and do one firm’s goods or services from all others. As per this opinion, a generic term combined with a Corporate designation, remains generic and the whole is not greater than the sum of its parts. This is the exact reasoning the Hon’ble Judge follows in this case.
Hon’ble Justice Breyer’s view is that the Lanham Act of 1946 does not disturb the basic premise that generic terms cannot be registered as trade marks and nothing in the said Act suggested that the Congress intended to overturn Goodyear (supra).
He finds that Lower Courts, TTAB, USPTO and Trade mark manual of examining procedure and treatises recognise Goodyear’s (supra) validity.
2. Applying prevailing law on the mark ‘booking.com’
Applying the above stated legal position on ‘www.booking.com’ Hon’ble Justice Breyer’s view is that the impugned mark is just such an ordinary ‘generic.com’ term that it is ineligible for trade mark registration. He states that the addition ‘.com’ has no capacity to identify and distinguish the source of goods or services and the message conveyed by the combination is only that the owner operates a website related to such items.
His analogy is, that just as a ‘Wine Company’ conveys that it’s a Company that deals in Wine. The domain name ‘www.wine.com’ connotes a website that deals with wine i.e. connoting basic nature of that thing which is a hallmark of a generic term. Thus, as per Hon’ble Justice Breyer any ‘generic.com’ mark will remain generic as its constituent parts.
He only provides an exception to the above mentioned findings. The exception is applicable when a generic term combine with a domain name in such manner that that the combination produces different meaning than the terms taken individually. Finding that exception is not present in the preset case, he holds ‘booking.com’ to be ineligible for trade mark protection.
He disagreed with the majority view whose premise is based on a fact that only one entity can hold rights on a specific domain name at a time. His view is that this might be true but does not take away the fact the impugned mark or any ‘generic.com’ marks remain generic.
He opines that a functional exclusivity provided by a domain name does not make the mark non-generic, i.e. does not lead to change of nature of the mark.
On the issue of consumer survey which found that majority of consumers do not use the impugned mark to refer to class of hotel reservation services, the Hon’ble Judge is of the view that despite this the generic nature of the mark does not change. Hon’ble Justice Breyer considers survey evidence to have little probative value in cases like these as survey evidence can demonstrate that it is possible for a generic term to achieve such an association—either because that producer has enjoyed a period of exclusivity in the marketplace or invested into the same, but this still does not change the generic nature of the mark. This is exactly the reason why some courts and the TTAB have concluded that survey evidence is generally of little value in separating generic from descriptive terms.
3. On the repercussions of the Majority view granting trade mark protection to ‘generic.com’ marks
As per Hon’ble Justice Breyer, trade mark protection to ‘generic.com’ marks will lead to serious anticompetitive consequences in the online marketplace as well as across the entire economy., over and above the already existing ones, such as:
1. Advantages to generic marks dehors trade mark protection
First, due to the generic mark being domain name, the owners already enjoy advantages of the business under a generic name.Second, a generic business may create an impression that it most genuine of the relevant good.
2. Additional a dvantages to generic.com marks dehors trade mark protection
Firstly, apart from these already existing advantages to the owner of generic marks (provided above), owner of generic domain names enjoy additional competitive advantage unique to the internet, i.e. exclusivity. Secondly, generic domains are also easier for consumers to find.
As per the Opinion, the owner of such domain names enjoy these benefits not because the goodwill or quality of their products/business, but because they were first to appropriate a valuable piece of online real estate.
As per the opinion, granting protection to such marks will allow the owners of such marks to claim additional exclusivity on these marks against entities such as ‘bookings.com’, ‘ebooking.com’ etc.
Hon’ble Justice Breyer’s view is that view is that the domain name system, already ensures protection to domain name and and unfair-competition law will often separately protect businesses from passing off and false advertising.
Hon’ble Justice Breyer did not found favour with Majority’s view that a Defendant can always resort to fair use doctrine in case of generic marks for the reason that the registration will create a threat of a costly litigation for a competitor to not even use such marks under the umbrella of fair use. In the opinion, the Hon’ble Judge views the registration of such marks as being capable of restricting new entrants to the market.
4. Closure by Hon’ble Justice Breyer
Quoting from the decision itself:
“In sum, the term “Booking.com” refers to an internet booking service, which is the generic product that respondent and its competitors sell. No more and no less. The same is true of “generic.com” terms more generally. By making such terms eligible for trademark protection, I fear that today’s decision will lead to a proliferation of ‘generic.com’ marks, granting their owners a monopoly over a zone of useful, easy-to-remember domains. This result would tend to inhibit, rather than to promote, free competition in online commerce. I respectfully dissent.”
 128 U. S. 598, 602 (1888)
 Opposite of what basic economic policy seeks to achieve.
 Advantages such as non-requirement of explanation to the consumer about the nature of business or product. Ease of remembrance ,thus leading to less effort and expense on part of the business owner to familiarize the consumer.