The USPTO gets a booking by the Supreme Court of the United States (SCOTUS): “Booking.com” – Generic? Or distinctive?

It is a well-established principle of trademark law that a generic identifier of goods or services cannot obtain trademark significance, registration and protection. But what if you use a generic term as part of a domain name? Does the addition of a top-level domain (TLD) as a suffix to a generic term render it generic too? These facts came before the Supreme Court in its June 30, 2020 decision in United States Patent and Trademark Office ET AL v Booking.com B.V.

The ultimate question the SCOTUS had to answer in this case was whether combining a generic term with a “.com” yields a generic composite mark, incapable of registrability?

In an 8-1 decision, the Supreme Court (opinion written by the Honorable Justice Ginsburg) concluded that the specific domain name, “Booking.com”, taking cognizance of the peculiar facts of this case, is not generic and can be eligible for federal trademark registration. This is so because the average consumer of the particular services of Booking.com B.V. perceives “BOOKING.COM” not as generic of the particular services but recognizes it as a source identifier of Booking.com B.V.’s online tourism industry booking services. The Court was not convinced that by allowing trademark registration for “Booking.com”, it would result in “undue control over similar language, i.e. “booking” that others should remain free to use.”

“Mathematically” speaking, the equation is: [generic name].[domain] + ADP = Registrable trademark, where –

  • “generic name” refers /signifies to consumers the name/genus of a particular class of goods or services;
  • Domain refers to one of the domains that form part of an internet-based address; and
  • ADP is what is known as “acquired distinctiveness” or “secondary meaning” to the power of the “public”.

The Court held that a compound term styled “generic.com” is a generic name for a class of goods or services only if the term has that meaning to consumers. Whether a compound term is generic turns on whether that term, taken in its entirety, signifies to consumers a class of goods or services.

It became common cause between the parties in this dispute that the pertinent public does not perceive the combined term “Booking.com” as generic, but indeed as source-identifying.

The SCOTUS would not yield to the USPTO’s contention that a per se rule be advanced by the SCOTUS to the effect that any generic term combined with a generic Internet-domain-name suffix, like “.com” results in the combination’s being held to be generic too.

Referring to Park ‘N Fly and Bayer Co. v United Drug Co., and carving out an exception to the well-known and oft-quoted judgment in Goodyear’s India Rubber Glove Mfg Co., SCOTUS restated well-known law (in relation to question of generic terms’ being registrable as trademarks) as follows:

  • A “generic” term names a “class” of goods or services, rather than any particular feature or exemplification of the class.
  • The distinctiveness inquiry for a compound term falls on the term’s meaning as a whole, not its parts in isolation.
  • The relevant meaning to be attributed to a term must be its meaning to relevant consumers.
  • Adding a generic term to a domain is not the same as adding a generic term to the suffix “Company”, because domain names are unique/exclusive and, therefore, a “significant portion of the public will always understand” a [generic name].[domain] term as referring to a particular business or organization.

Importantly, Justice Ginsburg noted that a competitor’s use of a trademark does not infringe same, unless it is likely to cause confusion amongst the relevant consuming public; and the distinctiveness (along the spectrum) would assist/hinder an outcome that there is a likelihood of consumer confusion. Effectively, the Court extended a disclaimer of the generic word “booking” from the combined trademark, “Booking.com”. Close variations of this mark are unlikely to infringe. This, along with the acknowledgment from Booking.com B.V. that the federal registration of “Booking.com” would not prevent other businesses from using the word “booking” to describe their own services.

So, What are the key takeaways from this judgment? What “test” would the SCOTUS lay down for us?

With the distinction between generic and descriptive marks and the possibility of opening the “floodgates” of cancellation proceedings against already registered composite [generic name].[domain] trademark registrations in the Trademarks Register in mind, the SCOTUS refused to adopt a general rule that would essentially exclude registration of “generic.com” or like marks.

The SCOTUS held that should the combined generic name + generic internet-domain-name suffix achieve significance “in the minds of the public” as identifying the source or sponsorship of the goods or services of a business or organization (something us trademark attorneys call “acquired distinctiveness” or “secondary meaning”), that combined term may be registrable as a trademark in the principal register, under the U.S. federal Trademarks Act. An otherwise descriptive term can gain trademark protection if it has acquired distinctiveness or secondary meaning.

The test for determining whether or not a generic name + generic internet-domain-name suffix of goods or services can be distinctive, and hence registrable, depends on the primary significance the relevant public attributes to such term, taken as a whole. Should the relevant public view the compound term as generic, i.e. as the name of a class of goods or services, then it is generic and unregistrable. However, if the compound term has acquired a “secondary” meaning, it should be registrable.

Without determining the scope of the primary-significance test’s application, the SCOTUS held that the undisputed principle that “consumer perception” determines the boundaries of a term’s meaning was sufficient to resolve this matter. Whether a term is generic (in whatever format) depends on its perception by the relevant consuming public.

The SCOTUS did not formulate an absolute rule that any given [generic name].[domain] term is non-generic. For this reason, it’s generally not recommended to rely on the current and potential, future use of a compound generic term with an internet-domain suffix when filing a trademark application in the USA. But if you do, make sure that it has attained the requisite “secondary meaning” or “acquired distinctiveness” amongst the relevant public such that it conveys a source-identifying trait, before filing. A “Teflon” consumer survey may assist in getting that answer.

 

One more “trick in the book” – something for the “bookmakers”

What was interesting was what only made the footnotes (obiter) of the main judgment of the Court – the possibility of a [generic name].[domain] implicitly having an additional meaning. The example given was the domain name “tennis.net”. The destination of this URL is to a company’s online website, selling tennis-related goods. In “tennis.net”, the word “tennis” is generic. If the generic name “tennis” was used with “.com”, “.org”, “.gov” or “co.uk”, the principles espoused in the Ebooking.com judgment would apply (as long as the applicant complies with the administrator’s requirements), namely, if the full domain name has acquired a secondary meaning amongst the relevant consuming public, the mark may be registrable.

Markedly, the combination of the generic name “tennis” and the domain “.net” expands the meaning of “tennis” simpliciter. The addition of the domain “.net” to the otherwise generic word “tennis” does not directly describe the goods on offer on its linked website. Other examples are “show.biz”, “ima.pro” and “weneed.jobs” (which might sit particularly well in the current economic climate and labour market).  Would this be enough for the company who owns this domain to obtain registration for it in the USA?

It is my opinion that, in the above examples, it may be possible to prove to an Examiner (or a court, where appropriate) that acquired distinctiveness is not required in order to obtain registration of the composite mark, and that an applicant may rely on the additional, separate meaning attracting to the composite mark, [domain name].[domain]. We’ll just have to wait and see whether this issue comes up again for decision before the TTAB or higher courts. There’s at least one more book still to read in this jurisprudential library.