Supreme Court Decides United States Patent and Trademark Office, et al. v. B. V.

Faegre Drinker Biddle & Reath LLP

Faegre Drinker Biddle & Reath LLP

On June 30, 2020, the Supreme Court of the United States decided United States Patent and Trademark Office, et al. v. B. V., No. 19-46, holding that a generic term, like “Booking,” combined with “.com” does not necessarily yield a generic name unprotected by the Lanham Act. is an online company that provides booking services for hotel and other travel reservations. It does business under the brand “,” which also serves as the domain name of its website. sought to register marks with the United States Patent and Trademark Office (PTO) containing the term “” But the PTO concluded that the term “” is generic for travel services and therefore cannot be registered. In the PTO’s view, “booking” means making travel reservations and “.com” signifies a commercial website. Even taken together, the PTO held, the terms would not gain additional meaning in the mind of consumers.

The Lanham Act permits an applicant to seek review of PTO determinations in United States district courts and, in doing so, to introduce evidence not presented to the PTO. See 15 U.S.C. § 1071(b). did so, and the district court held, based in part on’s new evidence of consumer perception, that “” is not generic. The court found that consumers primarily understand that is descriptive of services involving “booking” available at that domain name.

The PTO appealed, contesting only the district court’s determination that “” is not generic. The Fourth Circuit affirmed and rejected the PTO’s position that the combination of “.com” with a generic term like “booking” “is necessarily generic.” 915 F. 3d 171, 184 (2019). The Supreme Court granted certiorari and affirmed the Fourth Circuit’s decision.

In affirming, three principles guided the Court — none of which the parties disputed. First, a “generic” term refers to a “class” of goods or services, rather than any particular feature or particular product of the class. Second, a compound term’s distinctiveness is judged by the term’s meaning as a whole, not its parts in isolation. And third, the relevant meaning of a term is its meaning to consumers.

Under the Lanham Act, a mark is eligible for registration, and the accompanying protections afforded by registration, based on the mark’s capacity to “distinguis[h]” goods “in commerce.” 15 U.S.C. § 1052. Accordingly, the basic question before the Court was whether, under the three principles outlined above, “” signifies to consumers the class of online hotel-reservation services or whether it signifies to consumers a specific provider of such services. The PTO did not dispute that consumers do not view as a class of reservation services. And in the Court’s view, the PTO’s concession should have resolved the case: “” is not a generic name to consumers, and therefore it may be registered.

Nevertheless, the PTO urged the Court to adopt a bright-line rule that “” names are ineligible for registration regardless of specific evidence of consumer perception. But even the PTO’s past practice conflicted with this rule. For example, “ART.COM” and “DATING.COM” are protected trademark registrations. The Court declined to adopt the PTO’s bright-line rule.

The Court also rejected the PTO’s plea to precedent. Under Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888), names like Wine Company or Grain Company are not distinctive and so are not eligible for trademark protection. Relying on this precedent, the PTO argued that “” is no different: It simply combines a generic term with a domain, just like Wine Company or Grain Company combines generic terms with a business marker.

The Court was not persuaded. First, domain names, unlike the examples in Goodyear, are one of a kind and direct consumers to a unique virtual location. Thus, consumers could come to understand that a “” term refers to a specific website or identifies the website’s proprietor. Second, Goodyear did not hold that “Generic Company” terms are ineligible for trademark protection as a matter of law. Rather, such terms are only ineligible if they do not distinguish the goods or services in the minds of consumers. As the lower courts found, and the PTO didn’t dispute, was distinguished in the minds of consumers. It was therefore not a generic mark.

Accordingly, the Court refused to deny the same benefits Congress accorded other marks qualifying as nongeneric.

Justice Ginsburg delivered the opinion of the Court, in which Chief Justice Roberts and Justices Thomas, Alito, Sotomayor, Kagan, Gorsuch, and Kavanaugh joined. Justice Sotomayor filed a concurring opinion, and Justice Breyer filed a dissenting opinion.

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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