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United States Patent and Trademark Office v. Booking.com B.V. (2020)

Supreme Court Rules That Booking.com Is Not Generic and Declines to Impose a “Nearly Per Se” Rule of Genericness for “Generic.com” Trademarks

By Eric R. Moran —

Today, the U.S. Supreme Court issued a much-anticipated opinion in a trademark case directed to what it means for a trademark to be generic, and therefore not topic to registration, in United States Patent and Trademark Office v. Booking.com B.V.[1]  The query introduced to the Court was whether or not a web based enterprise’s addition of a generic top-level area (i.e., “.com”) to an in any other case generic time period can create a protectable trademark.[2]  The Court declined to impose a per se rule on this query, as urged by the U.S. Patent and Trademark Office (“USPTO”), and as a substitute held that “[w]hether any given ‘generic.com’ term is generic . . . depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.”[3]  Here, decrease court docket determinations established that Booking.com was not generic.[4]

Background of the case:

Booking.com gives on-line journey reservation companies underneath the Booking.com model and by way of its web site residing on the Booking.com area identify.[5]  Booking.com tried to register 4 “Booking.com” logos with the U.S. Patent & Trademark Office, all incorporating the time period “Booking.com.”[6]  For every, a USPTO Examining Attorney refused registration, discovering the marks generic for “an online reservation service for travel, tours, and lodgings.”[7]  After the Trademark Trial and Appeal Board affirmed the refusals, Booking.com appealed to the U.S. District Court within the Eastern District of Virginia.[8]

Because Booking.com appealed the USPTO resolution to the District Court, it was allowed to submit new proof, together with proof of client notion of the Booking.com mark.  The District Court, “[r]elying in significant part” on this new proof, “concluded that ‘Booking.com’—unlike ‘booking’—is not generic.”[9]  Consumers, in keeping with the District Court, primarily view Booking.com as being descriptive of reserving companies out there on the Booking.com area identify, slightly than as referring to a genus (or generic time period) for these companies.[10]  The District Court additionally discovered that the time period has “acquired secondary meaning as to hotel-reservation services” and was registrable as a trademark.[11]

The USPTO appealed the District Court’s willpower on the difficulty of genericness to the Court of Appeals for the Fourth Circuit, which discovered no error.  In so doing, “the appeals court rejected the PTO’s contention that the combination of ‘.com’ with a generic term like ‘booking’ ‘is necessarily generic.'”[12]

The U.S. Supreme Court granted certiorari to handle “whether there is a nearly per se rule against trademark protection for a ‘generic.com’ term.”[13]

The Court’s opinion:

Justice Ginsburg wrote the opinion for the Court and started by figuring out points on which the events agreed.  As an preliminary matter, the Court famous {that a} generic time period is the “name of a class of products or services” and is “ineligible for federal trademark registration” as a result of it can not serve to differentiate one celebration’s items or companies from one other celebration’s items or companies.[14]  Here, the events didn’t dispute that “booking” is generic for “hotel-reservation services.”[15]

The events additionally didn’t dispute that:

• “a ‘generic’ term names a ‘class’ of goods or services, rather than any particular feature or exemplification of the class”;
• “for a compound term, the distinctiveness inquiry trains on the term’s meaning as a whole, not its parts in isolation”;
• “the relevant meaning of a term is its meaning to consumers”; and
• “[e]ligibility for registration . . . turns on the mark’s capacity to ‘distinguis[h]’ goods ‘in commerce.'”[16]

The Court then addressed the correct check for precluding a generic time period from registration—a problem that was mentioned at size throughout briefing and at oral argument.  Although the Court declined to rule on that difficulty, it appeared to endorse Booking.com’s place that the correct check was present in 15 U.S.C. § 1064(3):

The major significance of the registered mark to the related public . . . shall be the check for figuring out whether or not the registered mark has grow to be the generic identify of products or companies.[17]

In doing so, the Court appeared to reject the USPTO’s place that the first significance check must be confined to potential cancellation of registered marks (because the check is present in that specific part of the Lanham Act).

In any case, the Court discovered that client notion prevails, and “whether ‘Booking.com’ is generic turns simply on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services.”[18]  In discovering that it doesn’t, the Court famous that we might not count on customers “to understand Travelocity—another such service—to be a ‘Booking.com'” or that “a consumer, searching for a trusted source of online hotel-reservation services, could ask a frequent traveler to name her favorite ‘Booking.com’ provider.”[19]  “Because ‘Booking.com’ is not a generic name to consumers, it is not generic.”[20]

The Court went on to refute a lot of the USPTO’s arguments, together with the excellent, per se rule urged by the USPTO as a result of it’s inconsistent with the USPTO’s personal previous practices of permitting registration of different “generic.com” marks.

In doing so, the Court discovered one in all essential instances cited by the USPTO, Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888), inapplicable to Booking.com.  The USPTO argued that Goodyear’s supported the place that “a generic corporate designation added to a generic term does not confer trademark eligibility.”[21]  The Court, nonetheless, said that:

A “generic.com” time period may also convey to customers a source-identifying attribute: an affiliation with a selected web site.  As the PTO and the dissent elsewhere acknowledge, just one entity can occupy a selected Internet area identify at a time, so “[a] consumer who is familiar with that aspect of the domain-name system can infer that BOOKING.COM refers to some specific entity.”[22]

Accordingly, the Court as a substitute restricted Goodyear’s utility to the proposition that: “A compound of generic elements is generic if the combination yields no additional meaning to consumers capable of distinguishing the goods or services.”[23]

The Court additionally addressed the USPTO’s argument that unique rights to the Booking.com mark would hinder Booking.com’s rivals from utilizing the time period “booking.”  According to the Court, nonetheless, such issues come up from the safety of any descriptive mark, and such safety can not preclude descriptive makes use of of descriptive phrases.[24]  In addition, a probability of confusion evaluation will assess the energy or weak spot of descriptive marks and whether or not confusion is probably going in mild of the scope of safety afforded such marks.  Further, if a mark exists in a “crowded field” of comparable marks, “consumers ‘may have learned to carefully pick out’ one mark from another.”[25]

Accordingly, the Court declined to undertake a rule {that a} generic time period mixed with a “.com” essentially yields a generic composite.  And in so doing, the Court declined to undertake a place that will “open the door to cancellation of scores of currently registered marks.”[26]

Justice Sotomayor authored a concurring opinion emphasizing factors associated to the usage of survey proof and clarifying that the query earlier than the Court was not whether or not the District Court erred find that Booking.com was not generic.[27]

Justice Breyer authored a dissenting opinion by which he would have held that “generic.com” marks are essentially generic as a result of they consist merely of a generic time period and a company designation.[28]  The majority’s holding, in keeping with Justice Breyer, dangers a “proliferation of ‘generic.com’ marks” that will grant monopolies over easy-to-remember domains to their homeowners.[29]  Such a end result would, he continued, “tend to inhibit, rather than to promote, free competition in online commerce.”[30]

United States Patent and Trademark Office v. Booking.com B.V. (2020)
Opinion by Justice Ginsberg, joined by Chief Justice Roberts and Justices Thomas, Alito, Sotomayor, Kagan, Gorsuch, and Kavanaugh; concurring opinion by Justice Sotomayor; dissenting opinion by Justice Breyer

[1] United States Patent and Trademark Office v. Booking.com B.V., No. 19-46 (S. Ct. June 30, 2020).
[2] See Petition for a Writ of Certiorari.
[3] Opinion at 11.
[4] Id. at 1.
[5] Id. at 4.
[6] Id.
[7] Id.
[8] Id. at 5.
[9] Id.
[10] Id.
[11] Id.
[12] Id.
[13] Concurrence at 1.
[14] Opinion at 1, 4.  As set forth by the Court, “Distinctiveness is often expressed on an increasing scale: Word marks ‘may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.'”
[15] Id. at 1.
[16] Id. at 6.
[17] Id. at 6-7 and n.3.
[18] Id. at 7.
[19] Id.
[20] Id.
[21] Id. at 8.
[22] Id. at 9.
[23] Id. at 10.
[24] Id. at 12.
[25] Id. at 12.
[26] Id. at 14.
[27] Concurrence at 1-2.
[28] Dissent at 5.
[29] Id. at 13.
[30] Id.

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