More than five years ago, a case that is being characterized as being capable of “changing the web as we know it,” got its start when Booking.com filed a trademark application for registration for its name. The seemingly run-of-the-mill application would swiftly become anything but that. Faced with a refusal by the USPTO to register the mark on the grounds that “BOOKING.COM” was simply a generic term to refer to its business, one that centers on online travel bookings, the U.S. arm of the Amsterdam-headquartered company filed a lawsuit, asking a federal court to overturn the trademark body’s decision.
In a case before the U.S. District Court for the Eastern District of Virginia, the court held that the company’s “BOOKING.COM” trademarks could, in fact, be registrable as descriptive trademarks that have acquired distinctiveness. The district court determined that the trademark “BOOKING.COM” had the potential to be non-generic if/when the public understood the trademark in its totality to refer to Booking.com’s brand.
Significantly, the district court reviewed consumer survey evidence provided by Booking.com, which concluded that the consuming public did not associate “BOOKING.COM” with general online hotel booking services. Instead, the district court noted that survey evidence indicated that participants associated the trademark – which included the top-level domain “.COM” – with a specific source.
Fast forward to February 2019 and 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.”
Hardly a done deal, 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, 2020, the USPTO filed its opening brief in connection with its appeal to the Supreme Court, much of which 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,” and 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 – and its 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 – was a common theme in its opening brief. Similarly, it was 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.
Jason S. Oliver is a partner at BakerHostetler, who counsels clients on patent, trademark and copyright infringement matters. (Edits/additions courtesy of TFL).