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Supreme Court Affirms Addition of .Com to Generic Term Renders Booking.com Registrable  

by Eric Fingerhut, Jennifer Fraser, Ryan Borelo

Published: July, 2020

Submission: July, 2020

 



In a decision contrary to current Patent and Trademark Office (“PTO”) rules, the United States Supreme Court has found the mark BOOKING.COM as a whole is not generic and that combining a generic term with “.com” does not necessarily result in a composite term that also is generic.


Background


Booking.com B.V. (“Booking.com”) sought to federally register the mark BOOKING.COM, and related variations, for travel services. During examination, the PTO refused registration, finding the mark was generic for travel services. On appeal, the Trademark Trial and Appeal Board affirmed the refusal. Booking.com sought review of the decision before the U.S. District Court for the Eastern District of Virginia, and the district court concluded BOOKING.COM was not generic.[1]The PTO appealed this decision to the Court of Appeals for the Fourth Circuit, which affirmed the district court’s holding and rejected the PTO’s assertion that combining “.com” with a generic term would result in a generic composite.[2]The PTO then petitioned the Supreme Court for review of the Fourth Circuit’s decision, and the Court granted certiorari.[3]


Decision


Writing for the majority, Justice Ginsberg began by outlining common principles that both parties adopted in their briefing.[4]First, a generic term designates a genus of goods or services.[5]Next, for a compound term, the distinctiveness determination focuses on the term’s meaning as a whole and not its separate parts.[6]Finally, the Court explained the relevant meaning of a term is its meaning to consumers.[7]


The majority explained that, based on these principles, for BOOKING.COM to be generic, consumers would have to understand other online hotel-reservation services to be a type of “Booking.com” or a “Booking.com” provider.[8]The Court found that consumers do not perceive the term in this manner and that the PTO did not challenge this finding by the lower courts.[9]Although the PTO argued that combining a generic term with a top-level domain (TLD) should generally result in a generic term, the Court observed that the PTO’s own practices were inconsistent because other generic TLD formatives are registered trademarks, such as ART.COM for art-related goods and DATING.COM for dating services.[10]


The PTO’s argument relied on a 19th-century case where the Court held that adding a business designation such as “Co.” or “Inc.” to a generic term is insufficient to confer trademark protection on the composite term.[11]The Court distinguished corporate designations such as “Co.” or “Inc.,” finding that, unlike a business identifier, a “generic.com” term may identify a specific website because only one entity can occupy a particular internet domain at a time, and a consumer could, therefore, infer that the domain Booking.com refers to a specific entity.[12]Despite finding that BOOKING.COM was not generic, the majority stopped short of creating a blanket rule that a “generic.com” mark can never be generic.[13]


Justice Sotomayor concurred with the judgment, observing that the majority cited various sources that could be used in determining a term’s genericness, and adding that whether BOOKING.COM is actually generic was not a question at issue in this case.[14]


Justice Breyer dissented and agreed with the PTO’s position that adding “.com” does not create a registrable, source-identifying mark, but instead merely indicates the owner acquired a website.[15]


Conclusion


Underlying the Court’s decision is the fact that Booking.com also established it had acquired distinctiveness in the BOOKING.COM mark, including through the use of survey evidence. While the scope of protection against competitors is likely narrow, the Court’s decision opens the door to registering marks consisting of generic marks with TLDs. After the Court’s decision, brand owners can expect the PTO to issue further guidance and Dykema can guide owners in proving acquired distinctiveness and navigating the PTO rules.


For more information about this decision, please contact Jennifer Fraser (202-906-8712 orj [email protected]), Eric Fingerhut (202-906-8618 or [email protected]), Ryan Borelo (210-554-5216 or [email protected]), or your Dykema relationship attorney.


 


 

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