p>On June 30, amidst the traditional flurry of end-of-term opinions, the Supreme Court issued its decision in the first case to have been argued before it via teleconference, United States Patent and Trademark Office et al. v. Booking.com B.V. In addition to making history in the remote-work era, this case caught the attention of trademark lawyers and some mainstream media; after all, it concerns a relatively well-known brand and the intriguing question of genericness. Justice Ginsburg penned the 8-1 opinion, affirming the Fourth Circuit's decision finding that the term BOOKING.COM is eligible for federal trademark registration. In reaching this conclusion, the court determined that the analysis of whether a purported mark is generic should be based on consumer perception, rather than a "per se rule" that had been followed by the United States Patent and Trademark Office (the "PTO").
Booking.com, an enterprise that maintains a travel-reservation website by the same name and at the eponymous URL, had applied for federal registration of marks including the term "Booking.com." The PTO refused registration, relying on its rule that adding .com to a generic term – in this case, "booking" for online hotel-reservation services – does not result in a distinctive term capable of functioning as a source-identifying mark. Booking.com sought judicial review, and the District Court determined that "Booking.com," unlike the term "booking" standing alone, is not generic, a decision that the Court of Appeals affirmed.
The Supreme Court's majority opinion concluded that although a generic term – that is, the name of a class of products or services – is ineligible for federal trademark registration, a generic term plus .com may be protectable. In this case, according to the lower court determinations uncontested by the PTO on appeal, consumers do not perceive the term "Booking.com" to signify online hotel-reservation services as a class. Justice Ginsburg noted that "...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." But consumers do not perceive the term "Booking.com" this way. This fact, Justice Ginsburg concluded "should resolve this case: Because 'Booking.com' is not a generic name to consumers, it is not generic."
In discussing domain names generally, Justice Ginsburg noted that the way domain names work suggests a lack of genericness, as "only one entity can occupy a particular Internet domain name at a time, so '[a] consumer who is familiar with that aspect of the domain-name system can infer that "Booking.com" refers to some specific entity.'" Therefore, even if a term on its own is generic, "consumers could understand a given 'generic.com' term to describe the corresponding website or to identify the website's proprietor." The Court "therefore resist[ed] the PTO's position that 'generic.com' terms are capable of signifying only an entire class of online goods or services and, hence, are categorically incapable of identifying a source."
While we trademark lawyers are of course tickled to see SCOTUS weigh in on a substantive and approachable issue of trademark protection, we question whether this decision actually has much practical significance. Yes, Booking.com can now obtain a federal trademark registration and can use the ® symbol with its mark. But as Justice Ginsburg pointed out, Booking.com was already, as a function of how the Domain Name System ("DNS") operates, the only entity that can use "Booking.com" as a URL. It is difficult to imagine why any competitor would want to use "Booking.com" in other contexts, when doing so would only send consumers to Booking.com's website and would thus thwart the competitor's attempt to capitalize on Booking.com's goodwill. (While a competitor might wish to use the mark to engage in nominative fair use and comparative advertising, these are, of course, permitted despite a trademark owner's rights.)
Meanwhile, the word "booking" without the .com is still indisputably generic, so it is highly unlikely that Booking.com's registration of BOOKING.COM will enable it to prevent other parties from using marks or domain names consisting of "booking.somethingelse." Moreover, Booking.com already owns the domain names booking.net, booking.info, booking.biz, and booking.org, all of which redirect visitors to booking.com. In other words, Booking.com has already largely addressed the potential problem of "booking.somethingelse," via the DNS rather than trademark law.
Not to be too dismissive, however, this decision could conceivably embolden Booking.com to attempt to enforce its narrow trademark rights against use of marks and domain names containing "booking.com," e.g., HOTELBOOKING.COM, TRAVELBOOKING.COM, LUXURYCRUISEBOOKING.COM, and the like. While we would be seriously skeptical of claims of trademark infringement with respect to these and similar marks, the combination of a favorable SCOTUS decision and a large enforcement budget could enable Booking.com to scare off less sophisticated or well-heeled competitors.
More generally, this case may establish guideposts for future developments that could be more impactful. It indicates, for example, that consumer perception is the touchstone for genericness, suggesting that surveys and other evidence of consumer impressions may be increasingly important in establishing that a term is functioning as – and protectable as – a trademark. It may cast doubt on bright-line or per se rules at the PTO in general. And it may also open the door to protection for other terms created by combining a generic word with a common technological signifier, in contexts without a built-in safeguard against infringement like the DNS (e.g., #GENERIC or E-GENERIC).
We look forward to following these possible ripple effects, and in the meantime, we are gratified to see the Supreme Court paying attention to trademark law (and, we might add, arriving at what appears to be the correct outcome), even in the absence of an immediate meaningful impact on mark owners' rights.
Originally published by Foley Hoag, July 2020
To view Foley Hoag's Trademark and Copyright Law Blog please click here
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.