The U.S. Supreme Court affirmed the 4th Circuit’s ruling in the closely watched Booking.com case this week, holding that the hotel reservation site’s BOOKING.COM name was not generic and could therefore obtain federal trademark registration. This makes registration possible for parties in any industry to register similar names as trademarks. Justice Ruth Bader Ginsburg delivered the opinion of the court rejecting the United States Patent and Trademark Office’s (USPTO) request for a per se rule that marks combining a generic word plus domain name suffix were generic. Justice Sotomayor wrote a brief concurrence, and Justice Breyer offered the only dissenting opinion in the case.
Booking.com, a travel reservation company that operates a website of the same name, sought to register BOOKING.COM as a trademark on the U.S. Principal Register with a claim of secondary meaning (i.e., that it had acquired distinctiveness by virtue of long-standing use and recognition). Both the examining attorney and the Trademark Trial and Appeal Board refused registration of the term as generic. On appeal to the U.S. District Court for the Eastern District of Virginia and subsequently to the Court of Appeals for the Fourth Circuit, both courts sided with Booking.com, finding that the combination of the generic word and the domain extension was not generic. To make this determination the courts relied on Booking.com’s evidence of consumer perception, concluding that the consuming public did not identify BOOKING.COM as generic, or as the name of a class of services.
In affirming the lower courts’ decisions, the Supreme Court emphasized the role of consumer perception, concluding that “if ‘Booking.com’ were generic, we might expect consumers to understand Travelocity—another such service—to be a ‘Booking.com.’” Since consumers did not use the phrase “booking.com” to reference online hotel reservation services, it was not a generic name to consumers. However, not surprisingly, the Court cautioned that the same consumer perception principle may also dictate that a similarly styled mark is generic. That is, if consumers perceive a so-called generic.com name as the name of a class of goods or services, then it may be refused as generic. In other words, the Court ruled that there is no per se rule against registrability of a generic.com trademark, but there is also no per se rule that such a trademark is registrable.
To distinguish the case from prior precedent regarding the use of generic words alongside generic corporate designations, the Court noted, “As the PTO and the dissent elsewhere acknowledge, only one entity can occupy a particular Internet domain name at a time.” This, the Court wrote, may result in a source-identifying characteristic. Specifically, consumers could understand that a generic.com term refers to a particular website or the proprietor of that site.
The Court also noted the USPTO’s own prior examination of generic.com names to make the point that the USPTO had not previously applied a per se rule against these types of marks.
The Court’s opinion addressed and dismissed several policy arguments the USPTO raised, chief among them the concern for the monopolization of generic words. Justice Ginsberg highlighted the guard rails that trademark law already places on descriptive terms, such as the fact that these are already afforded limited protection when used as trademarks, that any infringement case must turn on whether there is a likelihood of confusion, and the fact that some consumer confusion is tolerable where there is fair use.
Finally, the Court rejected the USPTO’s argument regarding the lack of necessity of trademark registrations for generic.com marks, noting that federal registration provided greater protection for mark owners. The Court also specifically cited an amicus curiae brief in the case, which argued that trademark registration would allow mark owners to resolve domain name abuse through private dispute resolution rather than litigation. For instance, fraudsters may use a generic.com brand in a “spoofed” email account, thereby inducing payments from customers. Brand owners can stop this conduct by requesting that the domain name registrar for the spoofed email account shut it down. However, in many cases registrars require brand owners to provide evidence of a trademark registration before they will take action. Similarly, many social media platforms will not take action against infringing accounts without the complaining party producing evidence of a trademark registration.
While the decision is a victory for companies that style critical brands in the form of generic.com, trademark filings are not necessarily appropriate for all generic.com marks. As is the case with any descriptive term like “booking” in this case, a showing of secondary meaning is necessary to obtain registration on the Principal Register. Furthermore, trademark owners should keep in mind that whether they are registering a generic.com mark on the Principal or Supplemental Registers, trademark use of the mark (i.e., use beyond a domain name) is necessary to establish source-identifying significance, and, more importantly, trademark owners should be prepared to show the Trademark Office that consumers recognize their generic.com as more than just a domain name.
Ultimately, however, the ruling is a win for marketing executives who want to brand around generic.com marks and the trademark prosecution attorneys who represent them.