On 30 June 2020 the Supreme Court affirmed the Court of Appeals for the Fourth Circuit's ruling in the closely watched Booking.com case, holding that the hotel reservation site's BOOKING.COM name was not generic and could therefore obtain federal trademark registration. This ruling makes registration possible for parties in any industry to register similar names as trademarks. Justice Ruth Bader Ginsburg delivered the court's opinion rejecting the US Patent and Trademark Office's (USPTO's) request for a per se rule that marks combining a generic word plus domain name suffix were generic. Justice Sotomayor wrote a brief concurrence and Justice Breyer offered the only dissenting opinion in the case.
Booking.com, a travel reservation company that operates a website of the same name, sought to register BOOKING.COM as a trademark on the Principal Register with a claim of secondary meaning (ie, that it had acquired distinctiveness by virtue of longstanding use and recognition). Both the examining attorney and the Trademark Trial and Appeal Board refused registration of the term as generic. On appeal to the US District Court for the Eastern District of Virginia and subsequently to the Court of Appeals for the Fourth Circuit, both courts sided with Booking.com, finding that the combination of the generic word and the domain extension was not generic. To make this determination the courts relied on Booking.com's evidence of consumer perception, concluding that the consuming public did not identify BOOKING.COM as generic or as the name of a class of services.
In affirming the lower courts' decisions, the Supreme Court emphasised the role of consumer perception, concluding that "if 'Booking.com' were generic, we might expect consumers to understand Travelocity – another such service – to be a 'Booking.com'". Since consumers did not use the phrase "booking.com" to reference online hotel reservation services, it was not a generic name to consumers. However, not surprisingly, the court cautioned that the same consumer perception principle may also dictate that a similarly styled mark is generic. That is, if consumers perceive a so-called 'generic.com' name as the name of a class of goods or services, it may be refused as generic. In other words, the court ruled that there is no per se rule against the registrability of a generic.com trademark, but there is also no per se rule that such a trademark is registrable.
To distinguish the case from prior precedent regarding the use of generic words alongside generic corporate designations, the Supreme Court noted that "[a]s the [USPTO] and the dissent elsewhere acknowledge, only one entity can occupy a particular Internet domain name at a time". This, the court wrote, may result in a source-identifying characteristic. Specifically, consumers could understand that a generic.com term refers to a particular website or the proprietor of that site.
The Supreme Court also noted the USPTO's prior examination of generic.com names to make the point that the USPTO had not previously applied a per se rule against these types of mark.
The Supreme Court's opinion addressed and dismissed several policy arguments raised by the USPTO, chief among them the concern for the monopolisation of generic words. Justice Ginsberg highlighted the guard rails that trademark law already places on descriptive terms, such as the fact that:
- these are already afforded limited protection when used as trademarks;
- any infringement case must turn on whether there is a likelihood of confusion; and
- some consumer confusion is tolerable where there is fair use.
Finally, the Supreme Court rejected the USPTO's argument regarding the lack of necessity of trademark registrations for generic.com marks, noting that federal registration provided greater protection for mark owners. The court also specifically cited an amicus curiae brief in the case, which argued that trademark registration would allow mark owners to resolve domain name abuse through private dispute resolution rather than litigation. For instance, fraudsters may use a generic.com brand in a 'spoofed' email account, thereby inducing payments from customers. Brand owners can stop this conduct by requesting that the domain name registrar for the spoofed email account shut it down. However, in many cases registrars require brand owners to provide evidence of a trademark registration before they will take action. Similarly, many social media platforms will not take action against infringing accounts without the complaining party producing evidence of a trademark registration.
While the Supreme Court's decision is a victory for companies that style critical brands in the form of generic.com, trademark filings are not necessarily appropriate for all generic.com marks. As is the case with any descriptive term such as 'booking' in this case, a showing of secondary meaning is necessary to obtain registration on the Principal Register. Further, trademark owners should keep in mind that whether they are registering a generic.com mark on the Principal Register or the Supplemental Register, trademark use of the mark (ie, use beyond a domain name) is necessary to establish source-identifying significance and, more importantly, trademark owners should be prepared to show the USPTO that consumers recognise their generic.com as more than just a domain name.
Ultimately, however, the ruling is a win for marketing executives who want to brand around generic.com marks and the trademark prosecution attorneys who represent them.
