The Lanham Act makes it clear that generic terms cannot be registered as trademarks. 15 U.S.C. § 1051 et seq. But can an online business create a protectable trademark by adding a generic top-level domain—like “.com”—to an otherwise generic term?
That’s the question the Supreme Court will answer in U.S. Patent & Trademark Office v. Booking.com B.V., No. 19-46. The Court granted the USPTO’s petition for writ of certiorari on November 8 and will decide the case in this year’s term.
In 2011 and 2012, Booking.com, a travel and hotel accommodations company, filed four trademark applications for BOOKING.COM. The company sought to register both the word mark and stylized versions of the mark. Finding the marks generic and therefore unprotectable, a USPTO examiner rejected these applications. Alternatively, the USPTO concluded, the company had not shown that the marks acquired a secondary meaning, and the marks were merely descriptive. The TTAB affirmed these rejections.
Booking.com appealed to the U.S. District for the Eastern District of Virginia, arguing that BOOKING.COM was eligible for protection because it was descriptive or suggestive. That court agreed. Although “booking” itself was a generic term describing the types of services the company offered, BOOKING.COM had acquired secondary meaning and was therefore protectable.
The USPTO appealed to the Fourth Circuit, urging the court to find that adding a generic top-level domain (e.g., “.com”) to an otherwise generic term could never generate a non-generic mark. But the circuit court affirmed the district court, relying in part on evidence showing consumers recognized BOOKING.COM as a brand rather than a generic service. In other words, the appeals court held that if a mark comprised of a top-level domain added to a generic term has source significance to the relevant public, that mark is not automatically ineligible for trademark protection.
Earlier this year—eight years after Booking.com sought to register the first relevant trademark—the USPTO filed its petition for certiorari. The USPTO urged the Supreme Court to reverse the Fourth Circuit, citing decisions from other circuit courts that found similar marks (e.g., HOTELS.COM, LAWYERS.COM) generic as well as a 19th-century Supreme Court case that held that adding a generic corporate identifier (e.g., “company”) to a generic term could not create a protectable trademark. The USPTO contended that certiorari should be granted to clarify the circuit split.
In its opposition to the cert petition Booking.com emphasized 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. 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, ANCESTRY.COM).
In its reply, the USPTO argued that “.com” does not have any significance of its own, like generic corporate indicators such as “company” and Inc.” And if “Booking Company” or “Booking Inc.” could not be eligible as trademarks, then “BOOKING.COM” similarly should not be.
Oral argument has not yet been scheduled in the case.
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Finnegan is deeply saddened by the death of our colleague Donald R. Dunner, who passed away on October 16, 2019, after a life of dedication and inspiration to many in IP law. Don was in a category all his own with his talent and distinct knowledge of IP law. His direct approach and enthusiasm for work and life touched everyone who worked with him, and we will miss him dearly.