Have you ever used the website booking.com to make a hotel reservation? If you are familiar with this site and I asked whether you thought BOOKING.COM is a brand name or a generic term, what would you say? Odds are you’d say it is a brand name – 75% of people surveyed thought so.1
The United States Patent and Trademark Office (the USPTO) doesn’t challenge those survey results. However, it doesn’t think BOOKING.COM is entitled to trademark registration. It concluded that BOOKING is generic for an online hotel reservation service, and adding a top-level domain name (“.com” in this case) doesn’t change that, irrespective of survey results showing that consumers view it as a brand.
The owner of the trademark, Booking.com B.V. (“Booking”), appealed, and after grinding its way through the USPTO and the courts for eight years this dispute has arrived at the U.S. Supreme Court.
The issue presented to the Court is this: you can’t register (or enforce) a generic trademark. But what if you add a top-level domain name like “.com” to the generic term? Does that take the mark out of the generic category (making it “descriptive”) and open the door to registration, assuming the owner can prove secondary meaning?2
The courts — and the USPTO — have made something of a muddle of this issue. The USPTO asserts that there’s a circuit split on trademark protection for “generic.com” trademarks. There may be, but this is not as clear as it could be. To make matters worse, the USPTO has been inconsistent on the issue. It disallowed registration for BOOKING.COM in the current case, but it has allowed registration for other apparently generic marks, such as CHEAPTICKETS.COM, CHEAPROOMS.COM, UNIVERSITYJOBS.COM, DIAPERS.COM and BUYLIGHTFIXTURES.COM.
The Supreme Court now has an opportunity to straighten things out.
Booking, the plaintiff in the case now before the Supreme Court, owns the booking.com domain name, and claims BOOKING.COM as a trademark.
“BOOKING” is a generic term for hotel reservation services, or so the USPTO and the federal courts concluded. (link) There’s no question that if you started a brick-and-mortar hotel reservation business and called it BOOKING or BOOKING, INC., you’d be unable to register those terms or claim an enforceable trademark in them.3
However, Booking argues that under the Lanham Act’s “primary significance” test for generic marks the key issue is what the public understands the composite mark BOOKING.COM (“booking” + “.com”) to refer to. It relies on its survey evidence, which established that 75% of consumers view BOOKING.COM as a brand, and it argues that it’s logically and grammatically impossible to use the term BOOKING.COM as a generic term for anything.
The USPTO’s counter-argument is that adding “.com” to a generic term is analogous to adding “Inc.” to a generic term and, under long-established law, adding an identity-designation such as “Inc.” to a generic term does not convert it to a protectible mark. Just as no company could register a trademark in “BOOKING, INC.,” Booking should not be permitted to register a trademark in “BOOKING.COM.” The PTO asserts that the “.com” does nothing more than tell the public that the user operates an online business, much as “Inc.” tells the public that the user is a corporation. It does not create a “descriptive” (and therefore potentially protectable) trademark.
The outcome of this case is a close call. However, in my view Booking has the better side of the case. The USPTO’s central argument – that a top-level domain such as “.com” creates a commercial impression analogous to “Inc.” or “Corp.” – seems questionable. However, even if the Court does rule for Booking, the question remains whether the Court will place “GENERIC.COM” trademarks into the established category of “descriptive” trademarks (as Booking argues) or carve out a separate legal standard for generic.com marks (or a generic word paired with any other top level domain name). For example, the Court could require that generic.com marks meet a more rigorous, sui generis standard of secondary meaning to be eligible for registration.
If the Court does decide that GENERIC.COM trademarks are protectable, I expect that we will see many more of them – perhaps even a mini-gold rush to secure domain names with generic second-level domain names. And, companies that can establish secondary meaning, like Booking, will have stronger grounds on which to freeze out potential competitors who use close variants of generic.com marks. Imagine how Booking might respond to a competitive domain name such as HOTELBOOKING.COM or EBOOKING.COM. Very likely the owners of these domains would receive a cease and desist letter, followed by an infringement lawsuit if they didn’t comply with Booking’s demands.
The Fourth Circuit decision in this case and the cert. petitions are available on the case’s SCOTUS blog page. Eventually, merits briefs, amicus briefs and the Court’s opinion will be available there as well. (link)
- Consumers were given a so-called “Teflon survey,” which is widely accepted as valid in trademark litigation. In this type of survey respondents are given a primer on the distinction between the generic or common names and trademark or brand names, and then presented with a series of names, which they are asked to identify as common or brand names.
- Saying that a trademark has acquired secondary meaning is shorthand for saying that a descriptive mark has become sufficiently distinctive to establish a mental association in buyers’ minds between the alleged mark and a single source of the product.
- Booking argued that the word “booking” is not used in a generic manner for hotel reservations. However, one can imagine “booking” being used generically, as in “how will you arrange the booking for your trip to New York?”