United States: Can Booking.Com Trademark Its Company Name? How Will The U.S. Supreme Court Resolve Whether A Generic Term Plus A Top-Level Domain Is Protectable?

The legal battle between Booking.com BV and the U.S. Patent and Trademark Office (USPTO) began more than five years ago and concerns whether the online hotel booking company can secure a trademark registration for its name. After filing for trademark protection, Booking.com commenced a federal lawsuit in connection with the USPTO's refusal to issue a trademark on the grounds that "BOOKING.COM" was too generic. Thereafter, the U.S. District Court for the Eastern District of Virginia held that the company's "BOOKING.COM" trademarks could be registrable as descriptive trademarks that have acquired distinctiveness. The district court reasoned that the trademark "BOOKING.COM" had the potential to be non-generic when the public understood the trademark in its totality to refer to Booking.com's brand. Significantly, the district court reviewed Booking.com's survey evidence to conclude that the consuming public did not associate "BOOKING.COM" with general online hotel booking services. Rather, the district court noted that survey evidence indicated that participants associated the trademark, which included the top-level domain ".COM" with the specific source of the services.

The U.S. Court of Appeals for the Fourth Circuit affirmed the lower court's ruling on this issue. The appellate court wrote that "when [".COM"] is combined with [a second term], even a generic [second term], the resulting composite may be non-generic where evidence demonstrates that the mark's primary significance to the public as a whole is the source, not the product."

The USPTO petitioned the U.S. Supreme Court to reverse the Fourth Circuit's affirmance that "BOOKING.COM" can be a valid mark because customers may identify the combined term as a brand name. Namely, the USPTO claimed that the Fourth Circuit's decision conflicted with earlier Courts of Appeals decisions, which held that the addition of a descriptive component alone to a generic term does not transform the generic term into a registrable trademark.¹ In November 2019, the Supreme Court granted certiorari on the issue presented and will soon decide whether adding a top-level domain such as ".COM" to a generic name can transform the resulting combination into a federally protectable trademark.

On January 6, petitioner USPTO filed its opening brief in connection with its appeal to the Supreme Court. A significant portion of the USPTO's brief was focused on an argument that existing trademark policy establishes that merely adding a top-level domain such as ".COM" to a generic term does not create a protectable mark. The USPTO argued that a result permitting a trademark registration of the company's name in this case would amount to the type of "language" monopolization that the Lanham Act discourages. Specifically, the USPTO argued that "treating ["BOOKING.COM"] as a protectable trademark would allow a single entity to monopolize the term 'booking' with respect to the relevant online services and impede the respondent's competitors from using it in their own domain names." The USPTO went on to outline the unique functionality of online domain-name systems which already prohibit competitors of Booking.com from selecting identical domain names for their own systems and businesses. Given this existing layer of internet-specific protection, the USPTO concluded that "registration of ["BOOKING.COM"] ... is likely to confer meaningful practical benefits on respondent only if it impedes rivals from using similar terms."

The USPTO's concern regarding potential anti-competitive consequences is a common theme in the petitioner's opening brief. The petitioner's opening submission illustrates the USPTO's position that any registration of the "BOOKING.COM" marks may produce a situation where online businesses are authorized to seek to register their own generic term domain names and where they may later seek to enforce their rights against online competitors. Similarly, it is evident that the USPTO believes that the Fourth Circuit's holding may discourage competitors from using the generic names of their goods and/or services in their own registered domain names.

Booking.com will file its responsive brief in February. It will be interesting to see how the respondent tackles the alleged anti-competitive consequences outlined by the USPTO that are unique in the online business setting. It is anticipated that Booking.com will rely heavily on the survey evidence introduced to the district court to illustrate its unique brand identification by a large fan base. Additionally, the respondent will likely argue that a reversal of the Fourth Circuit's decision will allow competitors to use various forms of its company name in false advertising and promotion to mislead its loyal customers.

Footnote

1 The Fourth Circuit held that the "BOOKING.COM" mark isn't generic, even though "booking" on its own is generic. The USPTO contends that the holding conflicts with decisions of two other appellate courts that have previously ruled against companies trying to register marks such as "HOTELS.COM", "MATRESS.COM" and "ADVERTISING.COM."

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