In Booking.com Decision, the U.S. Supreme Court Holds Generic Website Names That Have Acquired Secondary Meaning May Be Registered as Trademarks
In an 8-1 decision, the U.S. Supreme Court upheld a Fourth Circuit decision overturning the Patent and Trademark Office refusal of registration of BOOKING.COM under Section 2(e) of the Lanham Act as being a generic designation.
The Patent and Trademark Office had initially refused registration of the BOOKING.COM designation as being descriptive. When Booking.com responded with a claim of acquired distinctiveness, the Examiner issued a refusal on the ground that the BOOKING.COM designation was generic such that no amount of purported acquired distinctiveness can turn a generic designation into a registrable mark.
The Patent and Trademark Office’s position was that “booking” identifies the genus of hotel reservation services and information, advice and consulting services related thereto, and the “.com” suffix is only a generic top level domain name. Finding that the public understands the BOOKING.COM designation to primarily refer to the genus of services, registration was precluded on the basis that the BOOKING.COM designation was generic.
In its Petition for Certiorari, the Patent and Trademark Office requested not only that the Supreme Court overturn the Fourth Circuit’s decision overruling the PTO’s genericness refusal under Section 2(e), but also urged the Court to establish a near per se ruling against trademark protection for generic terms combined with generic top level Internet domains (so-called “generic.com” marks).
Writing for the majority, Justice Ginsburg noted: "We have no cause to deny Booking.com the same benefits Congress accorded other marks qualifying as nongeneric." “[W]hether ‘Booking.com’ is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services. Thus, if ‘Booking.com’ were generic, we might expect consumers to understand Travelocity—another such service—to be a ‘Booking.com.’ We might similarly expect that a consumer, searching for a trusted source of online hotel-reservation services, could ask a frequent traveler to name her favorite ‘Booking.com’ provider. Consumers do not in fact perceive the term ‘Booking.com’ that way… That should resolve this case: Because ‘Booking.com’ is not a generic name to consumers, it is not generic.”
While the majority expressly declined to establish the per se rule that generic.com marks are always generic, the Court also declined to “embrace a rule automatically classifying such terms as nongeneric,” concluding that “whether any given ‘generic.com’ term is generic… depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.”
The sole dissent was by Justice Breyer, who offered the following summary of his position:
“What is ‘Booking.com’? To answer this question, one need only consult the term itself. Respondent provides an online booking service. The company’s name informs the consumer of the basic nature of its business and nothing more. Therein lies the root of my disagreement with the majority. Trademark law does not protect generic terms, meaning terms that do no more than name the product or service itself. This principle preserves the linguistic commons by preventing one producer from appropriating to its own exclusive use a term needed by others to describe their goods or services. Today, the Court holds that the addition of “.com” to an otherwise generic term, such as “booking,” can yield a protectable trademark. Because I believe this result is inconsistent with trademark principles and sound trademark policy, I respectfully dissent.”
Justice Breyer also quested the probative value of the survey evidence presented in the case, which showed a nearly ¾ majority of survey participants to consider “Booking.com” a brand name, and suggested that the survey data may merely reflect consumer familiarity with the name rather than a perceived distinction between generic and descriptive terms.
Justice Sotomayor addressed this concern in her concurrence, agreeing that consumer-survey evidence may be unreliable and noting that “sources such as ‘dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning’ may also inform whether a mark is generic or descriptive.”
There is already some discussion that the Supreme Court’s ruling will result in an increase in litigation surround arguably generic designations. As an interesting aside, the oral argument before the Supreme Court was the Supreme Court’s first-ever argument by phone, necessitated by the COVID-19 outbreak.
No doubt evidence of acquired recognition and meaning will be very important in judging whether other trademarks have grown from generic or descriptive into a protectible brand.