On June 30, 2020, the United States Supreme Court issued a much-anticipated decision regarding the trademark application of Booking.com. In United States Patent and Trademark Office v. Booking.com, the Court held that a mark consisting of a term that is generic combined with “.com” is not necessarily generic. Rather, as in this case, if consumers do not perceive the mark as generic, then the mark may be distinctive and therefore registrable as a matter of a law.
In order to register a mark for protection under the Lanham Act, the mark must allow consumers to distinguish the goods or services offered under the mark from the goods or services of others. Marks that lack sufficient distinctiveness are ineligible for trademark protection. The distinctiveness of word marks is judged on a scale from generic to descriptive to suggestive to arbitrary and finally, to fanciful. Suggestive, arbitrary, and fanciful marks are inherently distinctive and are more likely to qualify for registration. Descriptive marks may be registered only if the mark has become distinctive in the minds of the consuming public. By contrast, generic marks are ineligible for registration.
Booking.com is a company that operates under the same domain name and offers hotel reservations and similar services. Over five years ago, the company filed trademark applications containing the “Booking.com” term, which were rejected by the United States Patent and Trademark Office (USPTO) as generic under the Lantham Act. After several appeals, the case arrived at the Supreme Court.
Justice Ginsburg, who wrote the majority opinion, offered a straightforward test for generic marks, which was then applied to this case. The opinion contained three premises, recognizing that (1) “generic” terms designate a class of goods or services, rather than an element of such a class, (2) compound marks are to be judged for distinctiveness as whole marks, rather than a collection of elements, and (3) the relevant meaning of a term is its meaning to consumers.
In applying Justice Ginsberg’s test, a term is generic when, taken as a whole, it signifies to consumers the class of goods or services offered under the mark. If “Booking.com” were generic, then consumers may refer to competing, online travel reservation services as booking.coms (for example, “Expedia is the best booking.com”). However, because generally consumers do not perceive booking.com as the class of online travel reservation services, the Court ruled that “Booking.com” is not a generic mark.
In its opposition to Booking.com’s trademark applications, the USPTO had relied upon Goodyear’s India Rubber Glove Mfg. Co. v. Rubber Co. (1888), in which the Supreme Court held that the addition of “Company” to a generic term added no protectable meaning to the term as a mark. The Goodyear Court went on to state that the addition of “Company” only indicates that “parties have formed an association or partnership to deal in such goods,” rather than serving any source-identification function. By contrast, the addition of .com can serve a source-identification function for the goods and services offered if the mark is the same as the URL the consumer uses to reach the source of the good or service.
The Court in the instant case noted that the USPTO was wrong to rely upon Goodyear to assert that generic company terms (including “.com”) are ineligible for trademark protection regardless of consumer impression. Rather, the consumer impression of the mark determines whether the mark is generic or whether it is not. As a result, the Court held that marks consisting of a generic term and “.com” are not necessarily generic.
Thus, the Booking.com Generic Mark Test is rooted in consumer protection. The analysis that a mark is generic only if consumers perceive it, as a whole, to signify the class of goods or services offered under the mark is consistent with the notion that non-generic marks can become generic through shifting consumer perception.
