Case(s): USPTO v. Booking.com B.V., 140 S. Ct. 2298 (2020)
“A generic name – the name of a class of products or services – is ineligible for federal trademark registration,” the Supreme Court held on June 30, 2020 in its decision in the closely-watched booking.com case. However, while the nation’s highest court determined that such generic marks may not be registered with the U.S. Patent and Trademark Office (“USPTO”), adding a Generic top-level domain, such as “.com” to such a generic term is capable of changing the outcome, which is why “‘Booking.com’ – unlike the term ‘booking’ standing alone – is not generic” in the eyes of the court.
In its decision, which was authored by Justice Ginsburg, the court held that “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.” In other words, a term is not generic and can be eligible for federal trademark registration if it is capable of distinguishing the goods/services of one company from those of others – in furtherance of the goal of trademark law, which is to “protect the public so it may be confident that, in purchasing a product bearing a particular trade-mark which it favorably knows, it will get the product which it asks for and wants to get.”
District Court Decision
The case at hand got its start between 2011 and 2012 when Booking.com filed four trademark applications for the use of BOOKING.COM as a word mark and for stylized versions of the mark for use in connection with online hotel-reservation services with the U.S. Patent and Trademark Office. In the wake of the USPTO determining that “booking.com” was simply a generic term to refer to the company’s business, the U.S. District Court for the Eastern District of Virginia 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.
Fourth Circuit Appeal
In February 2019, the U.S. Court of Appeals for the Fourth Circuit affirmed the lower court’s ruling. 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 decision 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.
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.
Supreme Court Decision
Considering whether the “combination of a generic word and ‘.com’ is generic” as a whole, which is what the USPTO asserted when it refused to register Booking.com’s trademark, SCOTUS considered three “guiding principles:” (1) “a ‘generic’ term names a ‘class’” of goods or services, rather than any particular feature or exemplification of the class;” (2) “for a compound term, the distinctiveness inquiry trains on the term’s meaning as a whole, not its parts in isolation;” and (3) “the relevant meaning of a term is its meaning to consumers.”
With these three tenets in mind, the court stated that “whether ‘Booking.com’ is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services.” As such, Justice Ginsburg asserted, “If ‘Booking.com’ were generic, we might expect consumers to understand Travelocity – another such service – to be a ‘Booking.com.’” In that same vein, “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 in fact perceive the term ‘Booking.com’ that way,” she states, citing lower court findings. Because Booking.com “is not a generic name to consumers, it is not generic” from a trademark perspective, which “should resolve this case,” Justice Ginsburg held.