It is rare to read an opinion of the US Supreme Court and a diametrically opposed dissent, and conclude that the reasoning in each is largely correct. But that may well be the initial takeaway from the Supreme Court’s ruling in United States Patent and Trademark Office (USPTO) v Booking.com, No. 19–46, (June 30, 2020).
The Supreme Court found that, although “booking” and “.com” were both generic, Booking.com was sufficiently recognised by the public to merit trademark registration. Few would dispute that Booking.com is known to consumers as a site that provides online booking services, and that is precisely what a trademark is supposed to be: a unique source-identifier in the minds of consumers.
As the majority opinion in the ruling noted: “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.”
Consumers do not in fact perceive the term ‘Booking.com’ that way, the Supreme Court determined.
“The USPTO no longer disputes that determination. That should resolve this case: because ‘Booking.com’ is not a generic name to consumers, it is not generic.”
However, there was no dispute among the parties that “booking” is a generic term that refers to making reservations. In addition, the “.com” top-level domain (TLD) denotes a commercial website address, and has long been disregarded when the likelihood of confusion is assessed.
In Brookfield Communications v West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999), the court ruled the differences between ‘MovieBuff’ and ‘moviebuff.com’ were “inconsequential in light of the fact that web addresses are not upper case-sensitive and that the ‘.com’ TLD signifies the site’s commercial nature”.
According to this rationale, the courts have upheld denials of registration by the USPTO where the mark was essentially ‘generic.com’. In In re Hotels.com, LP, 573 F.3d 1300, 1305–06 (Fed. Cir. 2009) the court found the generic term “hotels” “did not lose its generic character by placement in the domain name hotels.com”.
Similarly, in In re Reed Elsevier Properties, 482 F.3d 1376, 1379–80 (Fed. Cir. 2007) the court held that ‘lawyers.com’ is generic for services provided by lawyers for “providing an online interactive database featuring information exchange in the fields of law, legal news, and legal services” and encompasses the generic services provided by lawyers.
By allowing registration for the online reservation services of ‘Booking.com’, which consists solely of the generic word “booking” and the generic “.com” TLD, it could be argued that the Supreme Court upended more than a half century of Lanham Act jurisprudence by allowing the registration of a generic word as a trademark.
Indeed, Justice Stephen Breyer perceived the ruling as such in his dissent, where he pointed to the Supreme Court’s decision in Goodyear’s India Rubber Glove v Goodyear Rubber (1888); lower court opinions, including Judge Friendly’s summing up in CES Publishing v St. Regis Publications (1975); and the treatise in “McCarthy on Trademarks and Unfair Competition” (5th ed. June 2020 update)
In doing so, Breyer outlined how generic terms had never been entitled to trademark protection, even if they had become “identified with a first user”. He stated that combining generic terms does not create a protectable mark unless the combination of generic terms “conveys some distinctive, source-identifying meaning that each term individually lacks. If the meaning of the whole is no greater than the sum of its parts, then the compound is itself generic”.
Applying that well-established law to the case at bar, Breyer concluded that combining “booking” and “.com” to create a proposed trademark for a website for booking services yielded no meaning.
“The question at issue here is whether a term that takes the form ‘generic.com’ is generic in the ordinary course. In my view, appending ‘.com’ to a generic term ordinarily yields no meaning beyond that of its constituent parts. Because the term ‘Booking.com’ is just such an ordinary ‘generic.com’ term, in my view, it is not eligible for trademark protection.”
The problem with Breyer’s conclusion, however, is that the record suggested otherwise. Survey evidence submitted by Booking.com showed that consumers understood Booking.com to be a particular source of online reservation services, not a generic term for a website that offered reservation services.
So, regardless of its generic nature, ‘Booking.com’ had been transformed into a source-identifier, which the USPTO ultimately agreed with.
“Regardless of its generic nature, ‘Booking.com’ had been transformed into a source-identifier, which the USPTO ultimately agreed with.”
Diana Torres, Kirkland & Ellis
The decision has implications for a variety of business owners including, most obviously, those using generic.com websites. Survey evidence was pivotal in determining that Booking.com was not a generic term. As Breyer and former trademark practitioner Justice Sonia Sotomayor both noted, surveys may be flawed indicators of the descriptive nature of a mark.
Sotomayor noted that she did not view the Supreme Court’s opinion as suggesting that “surveys are the be-all and end-all” and that other types of consumer-perception evidence may be problematic. Nonetheless, given the role of survey evidence in this case, surveys will likely play an even greater role in attempts to show that a mark is not merely a generic term.
Consequently, it may be increasingly important for litigants to ensure their surveys are of high quality and support their position.
Second, not all ‘generic.com’ marks will pass the threshold from generic to source-identifying. To achieve that status and become registrable, it will be essential to have a successful marketing and promotional campaign.
While inexpensive viral and grassroots marketing campaigns have been successful, the owner of a generic.com website with the ability to substantially invest in advertising and marketing efforts is likely to have a significant advantage.
Third, there will be more litigation. The majority and the dissent both discussed the possibility that the decision would lead to the inappropriate monopolisation of generic terms. The majority dismissed the concern, noting the same risk was present with descriptive marks, and that existing doctrines of likelihood of confusion and classic fair use were sufficient to guard against inappropriate monopolisation.
The majority also focused on Booking.com’s open declaration that its mark is weak and unlikely to be used against competitors seeking to use close variations.
Such an admission in trademark litigation is highly unusual, and likely the result of a savvy lawyer priming his client to downplay the USPTO’s suggested horrible scenarios that will result from granting registration to a ‘generic.com’ trademark.
- 8-1: the majority decision of the court in Booking.com
It is unlikely that others with ‘generic.com’ trademarks will make such concessions to a court or the USPTO, unless they absolutely have to. Trademark registration provides the trademark owner with valuable rights, including presumptions that attach in litigation. It seems probable that owners of generic.com websites who obtain registrations will seek to protect their property rights from others attempting to use close variations of the “generic” aspect of their marks.
While it seems likely that many more ‘generic.com’ trademarks will be registered, this is unlikely to extend to other types of generic combination marks. Only one person or entity is entitled to that website address, and there can be only a single owner of a ‘generic.com’ trademark.
That is in contrast to other potential combinations of generic marks, such as ‘Generic Inc’, or ‘Generic Corp’, where multiple businesses can share the same name. Even when a state, such as California, prevents a corporate name being registered by more than one owner, that same corporate name may be registered in multiple other states or countries.
While there can be many companies called Fox Inc or Dove Corp, there can be only one user of ‘Booking.com’ in the entire world. This distinguishing characteristic makes it more likely that consumers will view a generic.com web address as a source-identifier whereas they would not view ‘Generic Corp’ as such.
Finally, the majority’s reasoning in Booking.com may dispel the notion that bright-line rules for what can and cannot qualify for trademark registration are appropriate. The USPTO advocated for a nearly per se rule that would preclude registration of any trademark that consisted solely of a generic word plus “.com”, regardless of the evidence of consumer perception.
The majority opinion flatly rejected that position, and pointed out times the USPTO had already violated its own per se rule. For trademark practitioners who have been denied registration on the basis of inconsistently applied trademark office rules, the Supreme Court’s embrace of a fact-specific, evidence-based registration determination should be welcome news.
Diana Torres is a partner at Kirkland & Ellis. She can be contacted at: email@example.com
Images (from top): Shutterstock.com / Jag_cz, Jacob Lund