Dot-com Trademarks: Open for Booking?

On June 30, 2020, the U.S. Supreme Court ruled in a landmark decision in United States Patent and Trademark Office v. Booking.com B.V. that the travel aggregator site Booking.com should be allowed to obtain trademark protection for its name BOOKING.COM. The court found in an 8-1 verdict that the addition of dot-com to a generic term was not necessarily generic and could be allowed trademark protection.

The U.S. Patent and Trademark Office (USPTO) had opposed Booking.com’s trademark application, suggesting the site could potentially “seek remedies outside trademark law” to protect its name.

However, the since-deceased U.S. Supreme Court Justice Ruth Bader Ginsburg wrote in the majority opinion that there is “no basis to deny Booking.com the same benefits Congress accorded other marks qualifying as non-generic.”

At the time, there were concerns that the decision to allow generic dot-com trademarks would result in the Principal Register being flooded with weak trademarks, as well as overenforcement, encouragement of trademark bullying tactics, and a chilling effect of inhibiting rather than promoting fair competition in the U.S. and globally.

As the two-year anniversary of the decision nears, trademark lawyers in all jurisdictions are still chewing over its implications and how they compare with their own domestic perspectives.

High Burden Holds Back the Tide

Rebecca Tushnet, Frank Stanton Professor of First Amendment Law, Harvard Law School (US), said it is probably “too early to tell” if the case has prompted a rush to register generic.com domains.

“One other question, which still hasn’t seen much attention, is whether the doctrine of ‘de facto secondary meaning’ survives, allowing unfair competition protection for producers who have successfully associated themselves with a generic term but not allowing those producers to bar all use of that term by competitor,” said Ms.Tushnet. “It’s not a common question, so we may have to wait a bit longer,” she added.

Discussing whether the verdict had changed people’s filing behavior, Katherine P. Califa, partner at Foley & Lardner LLP (US), who was part of the team representing Booking.com, said while there has not been a deluge of filings, there have been more than previously.

These applications have been filed recently, so, Ms. Califa added, “Who knows if they are going to be able to overcome the descriptiveness refusals?”

The USPTO “still says that the burden is high, to prove that these descriptive dot-com terms are eligible for registration on the Principal Register, and that typically five years of use alone would not be enough,” she explained. “You would have to show evidence of acquired distinctiveness.”

In addition, Ms. Califa observed: “It will make it easier to register some of these dot-com names on the Supplemental Register, at least as a starting point. The marks can then move onto the Principal Register once there is significant evidence of acquired distinctiveness.”

Global Perspectives

Candice Kwok, partner at Marks & Clerk Singapore LLP (Singapore), said she did not think the case had made an impact there. In fact, Singapore’s intellectual property (IP) regime has been moving in the opposite direction.

“A mark like Booking.com would be almost impossible to secure as a trademark in Singapore. Unless, of course, you could show acquired distinctiveness through extensive use,” said Ms. Kwok.

The U.S. has always been more permissive, relative to Singapore, about what may be registered as a trademark, she explained. “The Singapore Registry considers itself independent and not bound by the decisions of other jurisdictions, in its consideration of what constitutes a distinctive trademark, and rightly so.

“In the past few years, it has been increasingly strict with what it considers to be distinctive, meaning that many marks that may have passed muster previously are rejected for being descriptive or non-distinctive,” said Ms. Kwok.

This has been difficult for practitioners to explain to clients, particularly those who are denied registrations similar to ones that their competitors secured a decade or more earlier, she said.

“The Registry’s threshold for distinctiveness has been raised to the point where it is now clear that such marks will be rejected,” she added.

Max Ng, managing director at Gateway Law Corporation (Singapore), said Singapore has not had an equivalent decision at its apex courts, but it if it did, it “would be interesting” to see how it would pan out.

There is perhaps one aspect of Booking.com that might be replicated, he pondered.

“The U.S. Supreme Court stressed that ultimately, whether a term will be construed as generic is contingent on how consumers perceive that term, that is whether that term can act to distinguish the source of goods from that of others. In this respect, Singapore’s courts would adopt a similar approach, in my view,” Mr. Ng said.

In Argentina, the ruling reinforced a trend that lawyers have been seeing since the early 2000s: the increase in domain name registrations as trademarks, said Gabriela Szlak, partner at Lerman & Szlak (Argentina).

Since the ruling, the country’s IP office, the National Institute of Industrial Property, has received over 870 applications for “.com” trademarks, and overall, there are more than 5,000 registrations in force with “.com” or “com.ar” terms, reported Ms. Szlak.

“Many of these applications include generic terms and have been granted and registered with no office actions from the Trademark Office. This shows that our Trademark Office generally allows for “.com” registrations, even when the mark includes generic terms,” she added.

Providing a South African perspective, Mariëtte Du Plessis, partner at Adams & Adams LLP (South Africa), said: “It would be fair to say that while the Booking.com decision has had an impact on the filing and prosecution of dot-com incorporating trademarks, I have not noticed any significant increase in the number of clients seeking to register a dot-com incorporating trademark in South Africa, as a result of this decision.”

However, she added that she has seen that the registration of dot-com and .co.za [the country code top-level domain name for South Africa]-incorporating trademarks, including descriptive or generic words, can bolster a client’s claim in instances of online trademark infringement.