On June 30, 2020, The Supreme Court of the United States issued its opinion in United States Patent and Trademark Office v. Booking.com B. V., holding that a mark consisting of a generic term combined with “.com” is not necessarily generic, and may be eligible for trademark protection. The 8-1 decision written by Justice Ginsburg held that such a compound mark is assessed on a case-by-case basis and is only generic when the mark, taken as a whole, signifies to consumers a particular class of goods or services, rather than the source of such goods or services.
The case arose after the U.S. Patent and Trademark Office (USPTO) rejected a trademark application filed by Booking.com, a digital travel company that offers online hotel reservation and other travel booking services through its website and under its brand, “Booking.com.”. Booking.com sought federal registration of its marks, including “Booking.com.” The USPTO rejected the application, relying on its precedent that “.com” alone is a generic term (like “Inc.” or “Co.”), and found that “booking” is a generic term for making travel reservations. As a result, the USPTO concluded that the combination of the generic terms “booking” and “.com” “is necessarily generic” and not eligible for trademark protection. Booking.com sought judicial review in the U.S. District Court for the Eastern District of Virginia, where it offered evidence that its use of “Booking.com” had acquired distinctiveness, also known as secondary meaning. In other words, Booking.com argued that consumers identify “Booking.com” as with a particular travel booking service, not as the combination of two generic terms. The District Court concluded that “Booking.com” had achieved secondary meaning as to hotel-reservation services and that the mark met the distinctiveness requirements for trademark registration. The USPTO appealed the decision to the Fourth Circuit, arguing that a mark composed of generic elements is necessarily generic, therefore “Booking.com” was generic. The Fourth Circuit rejected the USPTO’s proposed per se rule.
The Supreme Court agreed with the Fourth Circuit, holding that a mark composed of generic elements is only generic itself when the compound mark, taken as a whole, signifies to consumers a particular class of goods or services— as opposed to a specific source of goods or services. Incorporating the lower court’s finding that consumers do not perceive “Booking.com” to signify a class of hotel reservation services generally, the Supreme Court affirmed that “Booking.com” is not a generic mark.
The USPTO argued that its per se rule was consistent with the Supreme Court’s ruling in Goodyear's India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598 (1988), which held that adding a generic corporate designation like “company” to a generic term does not convey a source-identifying meaning and cannot transform a generic mark into a non-generic mark. Here, however, the Supreme Court reasoned that only one entity may occupy an internet domain name at a time, so adding a “.com” could certainly convey to consumers an association with a particular brand or website unlike merely adding a simple corporate form such as “company” to the mark. The Supreme Court found that such a connection between the domain name and the brand owner increases the likelihood of acquiring distinctiveness, which makes trademark protection more appropriate. More generally, the Supreme Court rejected the implementation of a per se rule that would disregard consumer perception, finding that such a rule would be inconsistent with the principles of the Lanham Act, which governs trademarks. The Court further recognized that such a rule was also inconsistent with the USPTO’s past practice and cited “Art.com” and “Dating.com” as examples of other similar marks approved for registration on the principal register. The Court noted that these marks would be at risk of cancellation under the USPTO’s proposed rule. In keeping with the Lanham Act principles focused on consumer perception, the Supreme Court stressed that it’s holding did not adopt a rule that automatically classifies “generic.com” marks as non-generic. Rather, the test is applied on a case-by-case basis and consumer perception will control in each instance.
Both the USPTO and the dissent claimed that protecting a “generic.com” mark would preclude competitors from using similar domain names, such as “ebooking.com.” The Supreme Court emphasized that such a concern accompanies any descriptive mark and that such marks are therefore afforded weaker protection, as there is a lesser likelihood of confusion in a crowded field. Consequently, the Court reasoned, Booking.com would not be afforded a monopoly on the term “booking,” nor would its competitors be precluded from using the term to describe their services.
The Court’s ruling offers important guidance for brands seeking to break into the e-commerce sphere, which — particularly with the restrictions of the COVID-19 pandemic — is playing an increasingly large role in the marketplace. Likewise, retailers with a signification e-commerce presence should consult with trademark counsel to assess whether their domain name may be eligible for trademark protection.