Supreme Court Revises the Book on Generic Terms in Booking.com
The United States Supreme Court issued the long-awaited Booking.com decision on Tuesday. Justice Ginsburg delivered the 8-1 opinion of the Court, holding that a combination of a generic term and a top-level domain name, like .com, will not be deemed a generic term for a class of goods or services unless the combination is perceived as generic by the consuming public.
Genericism as a Bar to Registrability
In trademark law, a generic term — that is, a term that names the good or service itself — is ineligible for federal trademark registration. A fundamental tenet of trademark law is that a mark must serve to distinguish the goods or services of a trademark owner from those of others. Here, Booking.com is a digital travel company that provides hotel reservations and other services under the mark BOOKING.COM. At the United States Patent and Trademark Office (“PTO”), both the examining attorney and the Trademark Trial and Appeal Board (the “Board”) concluded that BOOKING.COM is generic when used for the services at issue and therefore unregistrable. The Board, echoed by the Court, observed that “booking” means making travel reservations, the services at issue, and “.com” simply signifies a commercial webpage.
On these facts, the Board decided that consumers would understand BOOKING.COM primarily to refer to online reservation services, not as a mark indicating a source of the services. The U.S. District Court for the Eastern District of Virginia, the Fourth Circuit Court of Appeals, and ultimately the Court, disagreed. At the district court, Booking.com introduced new evidence regarding consumer perceptions, including a survey that was notably absent before the Board. The survey indicated that 74.8% of survey participants thought that BOOKING.COM is a brand name, whereas only 23.8% believed it was a generic name. In contrast, 33% of participants believed that the made-up term “washingmachine.com” was a brand name or trademark, and 60.8% believed it to be generic. This evidence, the Court reasoned, established that consumers do not perceive BOOKING.COM as a generic term and thus BOOKING.COM is eligible for federal registration.
In Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888), the Court held that adding a generic corporate designation, like “Company” or “Inc.,” does not confer trademark eligibility on an otherwise generic term. The Court today distinguished Goodyear, noting that, unlike Goodyear, only one entity can occupy a particular Internet domain name at a time. So, according to petitioners as quoted by the Court, a consumer who is “familiar with that aspect of the domain-name system can infer that BOOKING.COM refers to some specific entity.”
“Other Limiting Principles”
The Court sidestepped the policy concerns raised by the PTO. The PTO in its decision below urged that allowing registration of BOOKING.COM and other “generic.com” marks would introduce a monopoly, hindering competition and prohibiting competitors from using terms (and domain names) like “ebooking.com” or “hotel-booking.com.” The Court, however, thought that trademark law has its own, internal limiting principles that prevent such a monopoly, including the rule that a competitor’s use of a term does not infringe a mark unless it is likely to confuse consumers. The Court also noted that, when a mark incorporates generic or highly descriptive terms, consumers are less likely to think that other uses of the common element (for example, “booking”) emanate from the mark’s owner. Less source recognition from the consumer means less confusion, and thus avoids a monopoly.
Justice Breyer Dissents
Justice Breyer begins his dissent with a question — “what is Booking.com?” Breyer points out that to answer, “one need only consult the term itself.” Breyer hinged his decision, in part, on the purpose of trademark law — namely, to “suppor[t] the free flow of commerce” and “foster competition.” B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138, 142 (2015). According to Breyer, when the Court allows registration of otherwise generic marks, as it has done today, the “linguistic commons” are at risk. To hold otherwise would grant the owner of a mark a monopoly, since a competitor could not describe his goods as what they are. According to Breyer, wine could not be labeled “wine,” haircuts could not be labeled “haircuts.”
What Does This Mean for You?
With a few notable caveats, Booking.com appears to open the floodgates for registration of “generic.com” or even generic terms combined with other distinctive (and maybe even not-so-distinctive) elements. Significantly, would-be applicants should know that Booking.com’s long march to registration was not easy. In reaching today’s decision the Court relied heavily on extensive (and expensive) consumer survey evidence. The holder of a mark that would otherwise be generic will still be faced with the task of establishing secondary meaning or source recognition in the eyes of the consuming public. Given the proliferation of top-level domains, it seems likely that we will see a number of new applications for generic terms combined with top-level domain suffixes besides .com. Indeed, what will consumers think when they see terms like “sushi.us”?
Vinson & Elkins monitors developments in trademark law and seeks to educate and assist businesses in taking action to mitigate risk while protecting assets. For more information on trademark prosecution, please contact Vinson & Elkins lawyers Scott Brown, Steve Borgman, and Briana Falcon.
This information is provided by Vinson & Elkins LLP for educational and informational purposes only and is not intended, nor should it be construed, as legal advice.