By: Sarah Kelly & Emma Ng
The Lanham Act clearly defines that generic terms cannot be registered as trademarks. 15 U.S.C. § 1051 et seq. However, an upcoming Supreme Court case will ask if an online business can create a protectable trademark by adding a generic top-level domain—like “.com”—to an otherwise generic term?
While the Coronavirus Pandemic has caused the Supreme Court to postpone all oral arguments, the trademark world is patiently awaiting its decision in U.S. Patent & Trademark Office v. Booking.com B.V., No. 19-46 (July 2019).
If a consumer wants to make a hotel reservation online, they will likely be directed to http://wwww.Booking.com, the website for a travel and hotel accommodations company. The online reservation service, based in Amsterdam, began using its name globally in 2006, and filed several trademark applications in 2011 and 2012 for “BOOKING.COM.” The company sought to register both the word mark and stylized versions of the mark. An examiner rejected the applications, finding the marks generic. The United States Patent and Trademark Office (“USPTO”) rejected Booking.com’s attempts to trademark its name, arguing that the common terms “booking” and “.com” do not combine to create a unique and protectable mark. Alternatively, the USPTO concluded, the company had not shown that the marks acquired a secondary meaning, and the marks were merely descriptive. The Trademark Trial and Appeal Board (“TTAB”) affirmed these rejections.
The company successfully challenged that decision in the lower courts. Booking.com appealed to the U.S. District for the Eastern District of Virginia, arguing that BOOKING.COM was eligible for protection because it was descriptive or suggestive. That court agreed.
The USPTO then appealed to the Fourth Circuit. The USPTO urged the court to find that adding a generic top-level domain (e.g., “.com”) to an otherwise generic term could never generate a non-generic mark. However, the circuit court affirmed the district court, relying in part on evidence showing consumers recognized BOOKING.COM as a brand rather than a generic service. Now it is in line to be decided by the Supreme Court when the pandemic calms down and normalcy returns. The Court must decide if a generic domain, like “.com”, added to an otherwise common term, like “booking,” can create a protectable trademark.
In its petition for certiorari, the USPTO argued that “.com” when added to “booking” was sufficient to make the term protectable as a trademark, “so long as the relevant public would understand the combination to refer to a specific business,” is contrary to “established principles of trademark law, and it conflicts with decisions of the Federal and Ninth Circuits, the only other courts of appeals that have considered the protectability of ‘generic.com’ terms.” Petition for Writ of Certiorari, U.S. Patent & Trademark Office v. Booking.com B.V., No. 19-46, 12.
The petition further noted that the Federal Circuit has found in previous cases that marks including “HOTELS.COM” and “LAWYERS.COM” were not protectable “based on highly similar evidence.” Id. at 8. The USPTO contended that certiorari should be granted to clarify the circuit split.
In opposition to the cert petition, Booking.com emphasized in its brief whether a mark is generic is a question of fact, and the factfinder had determined that BOOKING.COM was not generic. As demonstrated by the evidence presented in lower courts, consumers understood the mark to represent a brand, not a generic service. Whether the pieces of the mark are generic in isolation is not the question, the company argued; what matters is whether the mark, considered as a whole, has source significance. The company further contended that the USPTO had registered analogous marks before (e.g., STAPLES.COM, WEATHER.COM, ANCESTRY.COM).
In reply, petitioner USPTO discusses Goodyear’s India Rubber Glove Manufacturing Co. v. Goodyear Rubber Co., decided in 1888, in which the respondent could not successfully register the trademark for the term “Booking Company” or “Booking Inc.” Reply Brief for the Petitioners,
U.S. Patent & Trademark Office v. Booking.com B.V., No. 19-46, 1 (citing 128 U.S. 598 (1888)). The term “booking” was held to be generic for the services at issue and “no matter how strongly the public” associated with the brand, the respondent could not gain exclusive rights and prevent others from engaging in “‘similar business to use similar designations.’” Id. Therefore, “BOOKING.COM” should not receive trademark protection when “Booking Inc.” could not without further reasoning distinguishing the cases, which the respondents failed to provide. While Goodyear was decided before the adoption of the Lanham Act, neither the Supreme Court’s “subsequent decisions nor the Lanham Act’s adoption” has resulted in Goodyear being overruled. Id. at 4.
On March 16, the Supreme Court postponed oral argument in U.S. Patent and Trademark Office v. Booking.com and other cases scheduled for March, and “will examine the options for rescheduling those cases in due course.”