SCOTUS Rules That Addition of “.com” to a Generic Term Can Create a Trademark
Written June 30, 2020
On June 30, 2020, the U.S. Supreme Court held that the addition of “.com” to a generic term can create a protectable trademark, affirming a decision by the U.S. Court of Appeals for the Fourth Circuit. United States Patent and Trademark Office v. Booking.com B.V., U.S., No. 19-46. In doing so, the Court rejected the United States Patent and Trademark Office's (USPTO) "nearly per se rule" that when a generic term is combined with a generic top-level domain the resulting combination is generic.
This decision is consistent with the position advocated in AIPLA’s amicus brief filed in this case.
Background
Booking.com B.V., a digital travel company and website, provides hotel reservations and related services under the brand "Booking.com." After filing four trademark registrations for travel-related services that each contained the term "Booking.com", both a USPTO examining attorney and the Patent Trial and Appeal Board (PTAB) concluded that the term “Booking.com” is generic for the services at issue and is therefore unregistrable.
Booking.com sought review in the U.S. District Court for the Eastern District of Virginia, and the district court concluded, upon hearing new evidence on consumer perception of the mark, that "Booking.com" is not generic because the consuming public “primarily understands that BOOKING.COM does not refer to a genus, rather it is descriptive of services involving ‘booking’ available at that domain name.”
The USPTO appealed only the District Court’s determination that “Booking.com” was not generic. Finding no error in the District Court’s assessment of how consumers perceived the term “Booking.com,” the Court of Appeals for the Fourth Circuit affirmed.
Opinion of the Court
Writing for an 8-1 majority, Justice Ginsburg first defined the areas of common ground between the parties that would act as guiding principles for the Court's argument: first, a “generic” term names a “class” of goods or services, rather than any particular feature of the class; second, for a compound term, the distinctiveness inquiry trains on the term’s meaning as a whole, not its parts in isolation; and third, the relevant meaning of a term is its meaning to consumers.
Accordingly, Justice Ginsburg explained, whether “Booking.com” is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services. And since the courts below determined that "Booking.com" is not a generic name to consumers, it cannot be generic.
Nearly Per Se Rule
The opinion suggests that USPTO argued for an almost per se rule, saying that whenever a generic term is combined with a generic top-level domain like ".com," the resulting combination must also be generic. Justice Ginsburg countered that the USPTO's own practices reflect no such comprehensive rule, as evidenced by trademark registrations for "ART.com" for art prints, and "DATING.com" for dating services. This proposed rule, she points out, would risk cancelling several existing registrations.
The USPTO argued that this rule follows from a common-law principle, applied in Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598 (1888), that a generic corporate designation added to a generic term does not confer trademark eligibility. The Office maintained that "Generic.com" is like "Generic Company" and is therefore ineligible for trademark protection, adding that ".com" and "Company" convey no additional meaning that would distinguish one provider's services from those of other providers.
The Supreme Court found this premise faulty, saying that a "generic.com" term might also convey to consumers "a source-identifying characteristic: an association with a particular website." Furthermore, Ginsburg notes, since only one entity can occupy a particular internet domain name at a time, consumers would likely infer that "Booking.com" refers to "some specific entity." She also found the USPTO'S interpretation of Goodyear flawed because the Office argues that the case holds that “Generic Company” terms “are ineligible for trademark protection as a matter of law”—regardless of how “consumers would understand” the term. This, she says, is incompatible with the Lanham Act because it wholly disregards consumer perception of the mark. Instead, she remarks that Goodyear holds that "a compound of generic elements is generic if the combination yields no additional meaning to consumers capable of distinguishing the goods or services."
Finally, the USPTO argues that trademark protection for a term like “Booking.com” would hinder its competitors. Ginsburg notes that this concern exists with any descriptive mark, and that trademark law hems in the scope of such marks because a "competitor’s use does not infringe a mark unless it is likely to confuse consumers." Booking.com B.V. itself concedes that the descriptive nature of its mark makes it harder for it to show a likelihood of confusion and that close variations are unlikely to infringe.
Concurrence
Justice Sotomayor accepted the dissent’s observation that consumer-evidence survey’s may be an unreliable indicator of genericness. “But,” she said, “I do not read the Court’s opinion to suggest that surveys are the be-all and end-all. As the Court notes, sources such as ‘dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning’ may also inform whether a mark is generic or descriptive.”
Dissent
Justice Breyer found that “Booking.com” informs the public of the basic nature of the business and “nothing more,” meaning the term is generic and ineligible for trademark protection. He says that the majority’s holding is inconsistent with trademark principles and “sound trademark policy.”