No Reservations in Battle to Protect BOOKING.COM as a Registrable Trademark

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The Supreme Court finds that a “generic.com” mark can be a protectable trademark if there is evidence that consumers recognize it as a source indicator, i.e., the mark has achieved secondary meaning in association with the involved goods or services.
 

The Court declined to adopt a bright line test that any “generic.com” mark is generic and unprotectable as a mark. Although the decision provides a path for registrability for “generic.com” marks, in practice, only a small percentage of applicants may be able to establish the requisite amount of distinctiveness to demonstrate that a domain name functions as a trademark and identifies a particular source.

Arriving at a Decision

Booking.com B.V. sought registration for marks consisting of or incorporating BOOKING.COM in connection with online hotel reservations services. Its applications were refused by the United States Patent & Trademark Office (USPTO) on the ground that the combination of two generic terms – “booking” and “.com” – could not create a protectable and registrable trademark. The USPTO’s Trademark Trial & Appeal Board affirmed the decision.

On appeal, the United States District Court for the Eastern District of Virginia found that the mark BOOKING.COM was descriptive (not generic), and, as evidenced by a robust consumer survey, that it had acquired a secondary meaning with respect to online hotel reservation services. The court found that the mark BOOKING.COM was eligible for registration on the basis that the mark had acquired distinctiveness.

The USPTO appealed the decision only with respect to the finding that “BOOKING.COM” is not generic. The Court of Appeals for the Fourth Circuit affirmed and rejected the USPTO’s contention that a generic term plus “.com” or another generic top-level domain (TLD) is always generic.

On June 30, 2020, in an 8-1 decision, the Supreme Court affirmed the finding of the District Court and held that BOOKING.COM is not generic because consumers undoubtedly recognized the mark as an indicator of source.

The majority declined to adopt the USTPO’s per se rule that all “generic.com” marks are generic and may not be protected as trademarks. The USPTO argued that a generic word combined with a TLD like “.com” is analogous to a generic word combined with an entity designator like “company” or “limited.” In the case of entity designations, the Court in Goodyear’s India Rubber Glove Manufacturing Co. v. Goodyear Rubber Co. held that the addition of an entity designator to an otherwise generic mark does not render the combination distinctive because the entity designation is incapable of providing source-indicating significance to the mark as a whole. Today’s Court distinguished the Goodyear precedent, contending that unlike an entity designation, a TLD can distinguish source because the resulting combination – “generic.com” – directs consumers to a single, specific website, and domain names themselves can only be occupied by one entity at a time. Furthermore, the Court pointed out that the USPTO had previously allowed similar “generic.com” marks to register, which the Court perceived as inconsistent with the USPTO’s position in the case.

Finally, the Court asserted that there are inherent and fundamental principles of trademark law that would prevent BOOKING.COM and other “generic.com” marks from obtaining an undue monopoly in a generic term. In sum, the Court alluded to the concept that descriptive marks are inherently weak and have a narrow scope of protection such that even close variations may be unlikely to infringe.

An Unsuitable Destination?

Justice Breyer authored the lone dissent on both doctrinal and policy grounds. Justice Breyer argued that the addition of a TLD like “.com” does not transform an otherwise generic mark into a source indicator. TLDs, like corporate entity designations, have no capacity to distinguish source, in his view, because the TLD is simply a component of a web address just like an entity designation is a component of a trade name.

Accordingly, the resulting combination is one that is generic because the composite phrase BOOKING.COM merely identifies a commercial website for booking reservations. Justice Breyer cautions that in practice, this holding may have the automatic sweeping effect that the Court sought to avoid by declining to accept the USPTO’s position – automatic trademark eligibility for every “generic.com” domain name provided that applicants can provide sufficient evidence of distinctiveness through a survey or other evidence, which Justice Breyer asserts is an “unreliable indicator of genericness.”

In addition, Justice Breyer contends that there are important anticompetitive effects that may result from the grant of trademark protections to “generic.com” marks. In particular, Justice Breyer argues that ownership of a federal registration may provide generic domain name holders with the ability to enforce against minor variations in other truly generic domain names. Finally, Justice Breyer is not convinced that holders of these “generic.com” marks will exercise restraint in enforcement.

The Journey Forward

Although the holding affirms that “generic.com” marks may, in certain cases, be protectable trademarks, it will nonetheless remain an uphill battle to obtain federal registration for “generic.com” domain names. BOOKING.COM may be the exception and not the rule in that the entire brand is the domain name and the applicant made a significant investment in associating the domain name as a mark to consumers. For most other domain names that are used in the traditional sense (i.e., as web addresses), rather than as marks, it will be difficult to obtain a federal registration unless there is substantial evidence of secondary meaning. The Court noted that this evidence could come in the form of consumer surveys, dictionary definitions, evidence of usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning. Domain name holders seeking to take advantages of trademark protections that may now be available to “generic.com” domain names should understand that a significant investment in the domain name as a trademark is required and that a pricey consumer survey may be necessary to establish that the domain name is recognized as a source-identifying trademark by consumers.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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