In United States Patent And Trademark Office, Et Al., v. Booking.Com B. V. (No. 19-46, Jun. 30, 2020), the Supreme Court held that the combination of a generic term with “.com”—referred to as a “generic.com term”–could be a protectable trademark.
Booking.com, an enterprise that maintains a travel-reservation website by the same name, sought federal registration of marks including the term “Booking.com.” But a generic name—the name of a class of products or services—is ineligible for federal trademark registration. Concluding that “Booking.com” is merely a generic name for online hotel-reservation services, the U.S. Patent and Trademark Office (PTO) refused registration. Booking.com sought judicial review, and the District Court determined that “Booking.com”—unlike the term “booking” standing alone—is not generic. The Court of Appeals for the Fourth Circuit affirmed, finding no error in the District Court’s assessment of how consumers perceive the term “Booking.com.” The intermediate appellate court also rejected the PTO’s contention that, as a rule, combining a generic term like “booking” with “.com” yields a generic composite.
The Supreme Court concurred, and in an 8-1 decision authored by Justice Ginsburg held that a term styled “generic.com” is a generic name for a class of goods or services only if the term has that meaning to consumers. But according to lower court findings (none of which the PTO contested), consumers do not perceive the term “Booking.com” to signify online hotel-reservation services as a class. Thus, in the circumstances of this case, a “generic.com” term is not generic and can be eligible for federal trademark registration.
The Court founded its analysis on core principles of trademark law. “A trademark distinguishes one producer’s goods or services from those of another.” Slip Opinion at 4. Thus, “[g]uarding a trademark against use by others . . . ‘secure[s] to the owner of the mark the goodwill’ of her business and ’protect[s] the ability of consumers to distinguish among competing producers.’” Id. (quoting Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U. S. 189, 198 (1985), and citing S. Rep. No. 1333, 79th Cong., 2d Sess., 3 (1946)). Building on the equitable and common law roots of trademark protection, the federal Lanham Act, 15 U. S.C. §1051 et seq. provides statutory protection, including an administrative system of trademark registration and judicial claims for equitable and monetary relief . Slip Opinion at 4.
Under the Lanham Act, “[t]he owner of a mark on the principal register enjoys ‘valuable benefits,’ including a presumption that the mark is valid.” Id. (citing Iancu v. Brunetti, 588 U.S. ___, ___ (2019) (slip op., at 2); & 15 U.S.C. §§1051, 1052). “The supplemental register contains other product and service designations, some of which could one day gain eligibility for the principal register.” Id. (citing 15 U.S.C. §1091. The supplemental register also provides the owner with the right to notify others that it is using the term as a trademark and is seeking exclusive rights to the term. Id.
To secure a federal registration a “mark must be one ‘by which the goods of the applicant may be distinguished from the goods of others.’” Slip Opinion at 5 (quoting 15 U.S.C. § 1052, and citing 15 U.S.C. §1091(a)). Distinctiveness generally is “expressed on an increasing scale.” Id. Thus, word marks may be
(1) generic;
(2) descriptive;
(3) suggestive;
(4) arbitrary; or
(5) fanciful.
Slip Opinion at 5 (construing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992)). “The more distinctive the mark, the more readily it qualifies for registration on the principal register.” Id. On the other end of the spectrum, merely “‘Descriptive’ terms, in contrast, are not eligible for the principal register based on their inherent qualities alone.” Id. Instead, for a descriptive term to be placed on the principal register, the term “must achieve significance ‘in the minds of the public’ as identifying the applicant’s goods or services—a quality called ‘acquired distinctiveness’ or ‘secondary meaning.’” Id. (quoting Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U. S. 205, 211 (2000)) (other citations omitted). “At the lowest end of the distinctiveness scale is ’the generic name for the goods or services.’” Id. (citing 15 U.S.C. §§1127, 1064(3), 1065(4)). Because a generic term is the name for the good or service itself, it does not function to distinguish the source of the good or service. Generic terms are not trademarks and cannot be registered. Id.
The Court was quick to conclude on the record evidence that “BOOKING.COM” was not generic. Justice Ginsburg reasoned:
Under these principles, whether “Booking.com” is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services. Thus, if “Booking.com” were generic, we might expect consumers to understand Travelocity—another such service—to be a “Booking.com.” We might similarly expect that a consumer, searching for a trusted source of online hotel-reservation services, could ask a frequent traveler to name her favorite “Booking.com” provider.
Consumers do not in fact perceive the term “Booking.com” that way, the courts below determined. The PTO no longer disputes that determination. See Pet. for Cert. I; Brief for Petitioners 17-18 (contending only that a consumer-perception inquiry was unnecessary, not that the lower courts’ consumer-perception determination was wrong). That should resolve this case: Because “Booking.com” is not a generic name to consumers, it is not generic.”
Slip Opinion at 7.
The Court declined to adopt a per se rule refusing registration of “generic.com” mark advocated by the PTO. The Court believed that such a rule was inconsistent with the PTO’s own past practice. Slip Opinion at 7-8, citing as examples:
- Trademark Registration No. 3,601,346 (“ART.COM” on principal register for, inter alia, “[o]nline retail store services” offering “art prints, original art, [and] art reproductions”);
- Trademark Registration No. 2,580,467 (“DATING.COM” on supplemental register for “dating services”).
However, the Court also expressly did “not embrace a rule automatically classifying such [‘generic.com’] terms as non-generic.” Slip Opinion at 13. “Whether any given ‘generic.com’ term is generic,” the Court held, ““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.” Id. Thus, whether or not a term is generic will depend upon the evidence presented. Evidence informing a secondary meaning inquiry can include consumer surveys, dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning.
In her concurrence in the Opinion, Justice Sotomayor expressed her view that “[t]he question before the Court here is simply: whether there is a early per se rule against trademark protection for a ‘generic.com’ term.” Slip Opinion at 17 (Sotomayor, J., concurring). The Court’s ruling correctly rejected such a finding, and whether the courts below erred in their analysis of the facts in this specific case was not at issue before the Supreme Court. Id. at 17-18.
In dissent, Justice Breyer contended that the Court’s holding that merely adding a “.com” to an otherwise generic term could yield a protectable trademark “is inconsistent with trademark principles and sound trademark policy.” Slip Opinion at 19 (Breyer, J., dissenting).