The U.S. Supreme Court is slated to review a case centering on whether combining a generic term with a generic top-level domain (“gTLD”) such as “.com” can ever act as – and be protectable as – an an indicator of source (i.e., as a trademark) in the same way as a company’s logo or a brand name without the “.com” designation. That is the question at the center of USPTO v. Booking.com B.V., a case that has been more almost a decade in the making. Regardless of how the Supreme Court rules, there will be repercussions for the future recognition of trademark rights in connection with “.com” domains, with the case, itself, being described as one that speaks the the core of competition and that is capable of changing the status quo of the workings of the web.
The case got its start in 2011, when Booking.com – a travel and hotel accommodations company – filed a number of trademark applications for Booking.com with the U.S. Patent and Trademark Office (“USPTO”). It sought to register both the word mark and stylized versions of its name, complete with the “.com” at the end for use in connection with “accommodation reservation services and resort reservation services,” among other things.
An examining attorney for the USPTO refused to register the marks on the basis that they are generic and therefore, unprotectable, noting that Booking.com had not shown that the marks acquired a secondary meaning, and the marks were merely descriptive. The USPTO’s Trademark Trial and Appeal Board agreed, prompting Booking.com to look the U.S. District for the Eastern District of Virginia, arguing that adding a gTLD to an otherwise generic term did not give rise to a non-generic mark.
When the district court and the Fourth Circuit Court of Appeals both sided with Booking.com, the USPTO asked the Supreme Court to take on the case, and in particular, the issue of whether, when the Lanham Act – the U.S. federal statute that governs trademark law –states generic terms may not be registered as trademarks, the addition by an online business of a gTLD (“.com”) to an otherwise generic term can create a protectable trademark.
In support of its practice of generally rejecting applications that seek to register generic “.com” trademarks, such as Booking.com, the USPTO claimed in furtherance of its appeal to the Supreme Court in July 2019 that registering generic terms combined with gTLDs creates monopolies over “common coinages,” thereby, restricting competitors from describing their products and services.
In its opposition to the USPTO’s petition to the Supreme Court, counsel for Booking.com argued that whether a mark is generic is a question of fact, and the factfinder had determined that Booking.com was not generic. “The company noted that it would be impossible to refer generically to anything using ‘Booking.com’ in a grammatically correct way,” as Finnegan’s Brooke Wilner, B. Brett Heaver, and Margaret Esquenet wrote, reflecting on the case. “And as demonstrated by the evidence presented in lower courts, consumers understood the mark to represent a brand, not a generic service.” Whether the pieces of the mark are generic in isolation is not the question, the company argued; what matters is whether the mark, considered as a whole, has source significance. The company further contended that the USPTO had registered analogous marks before (e.g., Staples.com, Weather.com, Ancestory.com).
If the the Amsterdam-headquartered travel booking company prevails, and the court finds that “Booking.com” is protectable as a trademark, it is the USPTO’s position that there may be a flurry of companies adopting domains consisting of generic words combined with gTLDs and trying to register them as trademarks, which stands to negatively impact competition in the market.
On the other hand, Booking.com claims that its “Booking.com” mark makes a distinctive commercial impression that is distinguishable from another’s use of the word “booking” on its own. In other words, its name, including the “.com” acts as a trademark and should be protected as such.
Ultimately, if the court sides with Booking.com, “it could serve to clarify under what circumstances it will allow a generic term combined with a gTLD to register and how broadly they can be enforced,” according to Priyank Patel an intellectual property associate at Fenwick & West.
Maybe even more significantly, though, such a decision would speak to the evolution – and the future – of trademark law in the digital landscape.
In arguing against trademark protection for generic “.com” domains, the USPTO relies on decade-old Federal Circuit decisions to deny applications for marks that combine gTLDs with generic terms (i.e., Advertising.com and Hotels.com). However, in the time since those cases were decided, Patel asserts that “online consumer activity has substantially increased at an unprecedented rate” in furtherance of a larger movement “that supports an assertion that domain names are becoming source-identifying for companies’ products and services since a growing number of online consumers are visiting websites to make purchases” even if the main term, itself, is generic.
Such a finding would seemingly be in line with 1938 Kellogg v. National Biscuit case in which the Supreme Court held that a mark is not generic when the “primary significance of the term in the minds of the consuming public is not the product but the producer.”
Patel argues that since domain names are unique in nature and drive consumers to a particular source of information, products or services, “they very well may acquire distinctiveness, regardless of how generic the second level domain appears without the gTLD.” This could see the court determine that “the USPTO’s position is no longer consistent with the realities of brand development and acquired distinctiveness on the internet.”
*This article was initially published in January 2020.