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SCOTUS Rules “Generic.com” Marks Are Eligible For Federal Trademark Protection

In a landmark decision, United States Patent and Trademark Office v. Booking.com B.V., the Supreme Court of the United States, by an 8-1 vote, affirmed the lower court’s determination that Booking.com could register BOOKING.COM as a trademark.  In so ruling, the Court held that whether any given “generic.com” term is eligible for trademark protection turns on whether consumers perceive the term as capable of distinguishing among members of a class of goods or services as opposed to being the generic name of a class of goods or services.  If the former, such terms are eligible for federal trademark protection.

The case began when the United States Patent and Trademark Office (“PTO”) refused to allow Booking.com, a digital travel company that maintains a travel-registration website by the same name, to register “BOOKING.COM” as a mark for those services. The PTO took the position that “booking.com” was a generic name for online hotel-reservation services and ineligible for trademark protection. Dissatisfied with the PTO’s ruling, Booking.com sought review of the refusal de novo in the U.S. District Court for the Eastern District of Virginia, and introduced evidence of consumer perception of its mark. Such evidence had not been presented during prosecution to the PTO and was not considered by the Trademark Trial and Appeal Board in its affirmation of the examiner’s refusal of registration.  Relying on Booking.com’s new evidence of consumer perception, the District Court concluded that “BOOKING.COM” was not generic because the consuming public primarily understands it to identify services available at that specific domain name.  After unsuccessfully appealing the District Court’s decision to the U.S. Court of Appeals for the Fourth Circuit, the PTO’s Petition for a Writ of Certiorari was granted by the Supreme Court.

In its arguments before the Supreme Court, the PTO contended that allowing “generic.TLD” domain names to be protected as trademarks would give companies such as Booking.com a monopoly over generic terms resulting in serious anticompetitive consequences.  Thus, the PTO advocated for a “nearly per se rule” that would bar from trademark registration any marks resulting from combining a generic term with a generic top-level domain, such as “.com” regardless of consumer perception.

The Court rejected the PTO’s “sweeping rule” and instead adopted a flexible approach for determining eligibility for trademark protection based on consumer perception.  Writing for the majority, Justice Ginsburg stated that “[w]hether any given “generic.com” term is generic, we hold, 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.”  That is, “[a] term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers.”  Accordingly, in this case “whether ‘Booking.com’ is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services.”  “Consumers do not in fact perceive the term ‘Booking.com’ that way” and “[t]he PTO no longer disputes that determination,” Justice Ginsburg wrote.  “That should resolve this case: Because ‘Booking.com’ is not a generic name to consumers, it is not generic.”  As such, “Booking.com” was found to be eligible for federal trademark registration.

In addressing the PTO’s concerns of anticompetitive consequences resulting from affording trademark protection for “generic.com” marks, Justice Ginsburg stated that such concerns were unfounded because trademark law principles, such as the likelihood of confusion test for generic or descriptive marks and fair use doctrine, would prevent such problems.  These doctrines, Justice Ginsburg wrote “guard against the anticompetitive effects the PTO identifies, ensuring that registration of ‘Booking.com’ would not yield its holder a monopoly on the term ‘booking.com.’”

Justice Breyer, the only dissenting Justice, largely agreed with the PTO’s anticompetitive concerns and also took issue with the use of consumer surveys generally for determining whether a “.com” mark is generic, as “an unreliable indicator of genericness.”

Although the Supreme Court has unequivocally opened the door for brand owners to obtain federal trademark protection for “.com” and other TLD trademarks, the type and amount of evidence of acquired distinctiveness and consumer perception needed to establish such eligibility remains significant. We have been successful in establishing such eligibility for our clients, and welcome the opportunity to be of assistance in this regard.

©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume X, Number 189

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About this Author

Susan Weller, Mintz Levin Law Firm, Washington DC, Intellectual Property Law Attorney
Member

Susan currently manages the firm’s Trademark & Copyright Practice. Her extensive experience assisting clients with securing and protecting IP assets spans the globe. She has worked with companies in a vast array of industries, ranging from pharmaceuticals, medical devices, software, and electronics to entertainment, fashion, finance, and education. Susan is a prolific writer and lecturer, is recognized as a leader in the field of IP and is frequently invited to comment on issues of trademark and copyright law. Susan is highly regarded for her professional and ethical...

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Vincent M. Ferraro, Mintz Levin, Patent Litigation Licensing & Technology Transactions Strategic IP Monetization & Licensing IPRs & Other Post-Grant Proceedings Federal District Court
Associate

Vincent’s practice focuses on patent disputes in Federal District Courts and before the U.S. Patent Trial and Appeal Board. With over 10 years of experience, Vincent has handled patent disputes involving telecommunications, cellphone and smartphone technology, digital photography, image processing, electronic circuitry, electrical components, computer software and hardware, LCD technology, data mining, financing, mechanical devices, medical devices and implants, consumer products, GPS technology, e-commerce, and Internet security. In patent litigation cases, he guides clients through all phases of the case, including pre-suit due diligence, claim construction, discovery, depositions, hearings, and trial.

Vincent also has significant experience representing clients in post-grant proceedings before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, including inter partes review (IPR) and covered business method (CBM) patent review proceedings. He has represented both petitioners and patent owners in these proceedings.

Vincent also regularly counsels clients on their IP portfolio strategies and assists them in developing design strategies for their products. He works closely with inventors, analyzes new inventions, drafts U.S. patent applications, and prosecutes patents before the U.S. Patent and Trademark Office in various high-technology fields and on consumer products. He also renders patent freedom-to-operate and validity opinions.

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