Trademarks pairing generic terms with top-level domains (i.e., BOOKING.COM) are not per se generic, the Supreme Court held earlier this week in U.S. Patent and Trademark Office v. Booking.com B.V.  These “generic.com” marks can serve as source identifiers and are registerable at the USPTO.  This decision protects hundreds, if not thousands, of existing federal trademark registrations for similar generic.com marks from cancellation on genericness grounds.  It also provides clarity to future applicants regarding the evidence necessary to obtain registration for their generic.com marks on the Principal and Supplemental Registers. 

In 2011 and 2012, Booking.com, a travel and hotel reservation company, filed four trademark applications for BOOKING.COM word and design marks.  The USPTO found the BOOKING.COM marks to be generic for online hotel reservation services because “BOOKING” is generic for travel reservations and “.COM” is generic for a commercial website and, as such, “customers would understand the term BOOKING.COM primarily to refer to an online reservation service for travel, tours, and lodgings.”  Alternatively, the USPTO held that even if BOOKING.COM is descriptive, not generic, it was unregisterable on the Principal Register because it lacked secondary meaning.  The TTAB affirmed these refusals.

Booking.com appealed to the U.S. District Court for the Eastern District of Virginia, which allowed for the introduction of extensive evidence related to consumers’ perception of the BOOKING.COM mark.  Relying upon this evidence, the District Court concluded that BOOKING.COM—unlike the term “booking” standing alone—is not generic, but descriptive of Applicant’s services.  As BOOKING.COM was held to be descriptive, the District Court was then able to rely upon the extensive evidence that consumers associate the BOOKING.COM mark with Booking.com and its website to find that the mark had established secondary meaning for hotel-reservation services and, as such, the mark was registerable on the Principal Register.   

The USPTO appealed the genericness decision to the Fourth Circuit, without contesting the secondary meaning finding.  The Fourth Circuit affirmed the decision, rejecting the USPTO’s contention for a per se rule that combining a generic term like “booking” with a generic top-level domain, like “.com” yields a generic composite.

Earlier this week, the Supreme Court affirmed the Fourth Circuit’s decision, finding no per se rule that generic.com trademarks are automatically generic.  Instead, these marks should be found generic only if consumers perceive them as such for an entire class of goods or services, without any source-identification function.  

As applied to the BOOKING.COM mark, the Court examined whether (1) consumers would “understand Travelocity—another such service—to be a ‘Booking.com’” or (2) consumers “searching for a trusted source of online hotel-reservation services, could ask a frequent traveler to name her favorite ‘Booking.com’ provider.”  As neither scenario applied, the Court concluded that BOOKING.COM is not generic. 

The Court went on to say that a per se, exclusionary rule finding all generic.com terms to be generic would be inconsistent with the USPTO’s own practice, because  USPTO rules require it to assess consumer perception of a term before finding it to be generic.  Such assessment of consumer perception is a question of fact, with the Court noting that the following evidence can be considered:  “consumer surveys, dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning.”  Justice Sotomayor’s concurrence questioned the reliability of certain evidence. 

The Count also pointed to the USPTO’s older registrations for other “.com” marks, like Reg. No. 3,601,346 for ART.COM and Reg. No. 2,580,467 for DATING.COM.  A per se rule finding generic.com marks to be generic would leave all such registrations vulnerable to cancellation on genericness grounds. 

Finally, in response to the USPTO’s fears (as echoed in Justice Breyer’s dissent) that trademark protection for BOOKING.COM could exclude or inhibit competitors from using the term “booking” or adopting similar domain names like “ebooking.com” or “hotel-booking.com,” the Court explained that general trademark principles address such concerns, as (1) descriptive and weaker terms are afforded a narrower scope of protection (i.e., “[t]he weaker a mark, the fewer are the junior uses that will trigger a likelihood of consumer confusion.”); and (2) the doctrine of classic fair use protects from liability anyone who uses descriptive terms fairly and in good faith to describe her own goods/services. 

The case is U.S. Patent and Trademark Office v. Booking.com B.V., No. 19-46, Slip Op. (S. Ct. June 30, 2020).