{"id":2624,"date":"2020-08-05T06:39:33","date_gmt":"2020-08-05T06:39:33","guid":{"rendered":"https:\/\/sanlaw.legal\/?p=2624"},"modified":"2020-08-05T06:39:33","modified_gmt":"2020-08-05T06:39:33","slug":"booking-com","status":"publish","type":"post","link":"https:\/\/sanlaw.legal\/he\/booking-com\/","title":{"rendered":"The USPTO gets a booking by the Supreme Court of the United States (SCOTUS):  \u201cBooking.com\u201d \u2013 Generic? Or distinctive?"},"content":{"rendered":"<p>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 <em>United States Patent and Trademark Office ET AL v Booking.com B.V. <\/em><\/p>\n<p>The ultimate question the SCOTUS had to answer in this case was whether combining a generic term with a \u201c.com\u201d yields a generic composite mark, incapable of registrability?<\/p>\n<p>In an 8-1 decision, the Supreme Court (opinion written by the Honorable Justice Ginsburg) concluded that the specific domain name, \u201cBooking.com\u201d, 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 \u201cBOOKING.COM\u201d not as generic of the particular services but recognizes it as a source identifier of Booking.com B.V.\u2019s online tourism industry booking services. The Court was not convinced that by allowing trademark registration for \u201cBooking.com\u201d, it would result in \u201cundue control over similar language, i.e. \u201cbooking\u201d that others should remain free to use.\u201d<\/p>\n<p>\u201cMathematically\u201d speaking, the equation is: [generic name].[domain] + AD<sup>P<\/sup> = Registrable trademark, where &#8211;<\/p>\n<ul>\n<li>\u201cgeneric name\u201d refers \/signifies to consumers the name\/genus of a particular class of goods or services;<\/li>\n<li>Domain refers to one of the domains that form part of an internet-based address; and<\/li>\n<li>AD<sup>P<\/sup> is what is known as \u201cacquired distinctiveness\u201d or \u201csecondary meaning\u201d to the power of the \u201cpublic\u201d.<\/li>\n<\/ul>\n<p>The Court held that a compound term styled \u201cgeneric.com\u201d 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.<\/p>\n<p>It became common cause between the parties in this dispute that the pertinent public does <em>not<\/em> perceive the combined term \u201cBooking.com\u201d as generic, but indeed as source-identifying.<\/p>\n<p>The SCOTUS would not yield to the USPTO\u2019s contention that a <em>per se<\/em> rule be advanced by the SCOTUS to the effect that any generic term combined with a generic Internet-domain-name suffix, like \u201c.com\u201d results in the combination\u2019s being held to be generic too.<\/p>\n<p>Referring to <em>Park \u2018N Fly<\/em> and <em>Bayer Co. v United Drug Co., <\/em>and carving out an exception to the well-known and oft-quoted judgment in <em>Goodyear\u2019s India Rubber Glove Mfg Co.<\/em>, SCOTUS restated well-known law (in relation to question of generic terms\u2019 being registrable as trademarks) as follows:<\/p>\n<ul>\n<li>A \u201cgeneric\u201d term names a \u201cclass\u201d of goods or services, rather than any particular feature or exemplification of the class.<\/li>\n<li>The distinctiveness inquiry for a compound term falls on the term\u2019s meaning as a whole, not its parts in isolation.<\/li>\n<li>The relevant meaning to be attributed to a term must be its meaning to relevant consumers.<\/li>\n<li>Adding a generic term to a domain is not the same as adding a generic term to the suffix \u201cCompany\u201d, because domain names are unique\/exclusive and, therefore, a \u201csignificant portion of the public will always understand\u201d a [generic name].[domain] term as referring to a particular business or organization.<\/li>\n<\/ul>\n<p>Importantly, Justice Ginsburg noted that a competitor\u2019s 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 \u201cbooking\u201d from the combined trademark, \u201cBooking.com\u201d. Close variations of this mark are unlikely to infringe. This, along with the acknowledgment from Booking.com B.V. that the federal registration of \u201cBooking.com\u201d would not prevent other businesses from using the word \u201cbooking\u201d to describe their own services.<\/p>\n<p><u>So, What are the key takeaways from this judgment? What \u201ctest\u201d would the SCOTUS lay down for us?<\/u><\/p>\n<p>With the distinction between generic and descriptive marks and the possibility of opening the \u201cfloodgates\u201d of cancellation proceedings against already registered composite [generic name].[domain] trademark registrations in the Trademarks Register in mind, the <strong>SCOTUS refused to adopt a general rule that would essentially exclude registration of \u201cgeneric.com\u201d or like marks<\/strong>.<\/p>\n<p>The SCOTUS held that <strong>should the combined generic name + generic internet-domain-name suffix achieve significance \u201cin the minds of the public\u201d as identifying the source or sponsorship of the goods or services of a business or organization (something us trademark attorneys call \u201cacquired distinctiveness\u201d or \u201csecondary meaning\u201d), that combined term may be registrable as a trademark in the principal register<\/strong>, under the U.S. federal Trademarks Act. An otherwise descriptive term can gain trademark protection if it has acquired distinctiveness or secondary meaning.<\/p>\n<p>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 <em>primary<\/em> significance the relevant public attributes to such term, taken as a whole. <strong>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.<\/strong> However, if the compound term has acquired a \u201csecondary\u201d meaning, it should be registrable.<\/p>\n<p>Without determining the scope of the primary-significance test\u2019s application, the SCOTUS held that the undisputed principle that \u201cconsumer perception\u201d determines the boundaries of a term\u2019s meaning was sufficient to resolve this matter. <strong>Whether a term is generic (in whatever format) depends on its perception by the relevant consuming public.<\/strong><\/p>\n<p><strong>The SCOTUS did not formulate an absolute rule that any given [generic name].[domain] term is non-generic.<\/strong> For this reason, it\u2019s 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 \u201csecondary meaning\u201d or \u201cacquired distinctiveness\u201d amongst the relevant public such that it conveys a source-identifying trait, before filing. A \u201cTeflon\u201d consumer survey may assist in getting that answer.<\/p>\n<p>&nbsp;<\/p>\n<p><u>One more \u201ctrick in the book\u201d \u2013 something for the \u201cbookmakers\u201d<\/u><\/p>\n<p>What was interesting was what only made the footnotes (<em>obiter<\/em>) of the main judgment of the Court \u2013 the possibility of a [generic name].[domain] implicitly having an additional meaning. The example given was the domain name \u201ctennis.net\u201d. The destination of this URL is to a company\u2019s online website, selling tennis-related goods. In \u201ctennis.net\u201d, the word \u201ctennis\u201d is generic. If the generic name \u201ctennis\u201d was used with \u201c.com\u201d, \u201c.org\u201d, \u201c.gov\u201d or \u201cco.uk\u201d, the principles espoused in the <em>Ebooking.com<\/em> judgment would apply (as long as the applicant complies with the administrator\u2019s requirements), namely, if the full domain name has acquired a secondary meaning amongst the relevant consuming public, the mark may be registrable.<\/p>\n<p>Markedly, the combination of the generic name \u201ctennis\u201d and the domain \u201c.net\u201d expands the meaning of \u201ctennis\u201d <em>simpliciter<\/em>. The addition of the domain \u201c.net\u201d to the otherwise generic word \u201ctennis\u201d does not directly describe the goods on offer on its linked website. Other examples are \u201cshow.biz\u201d, \u201cima.pro\u201d and \u201cweneed.jobs\u201d (which might sit particularly well in the current economic climate and labour market). \u00a0Would this be enough for the company who owns this domain to obtain registration for it in the USA?<\/p>\n<p>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\u2019ll just have to wait and see whether this issue comes up again for decision before the TTAB or higher courts. There\u2019s at least one more book still to read in this jurisprudential library.<\/p>\n","protected":false},"excerpt":{"rendered":"<p>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 [&hellip;]<\/p>\n","protected":false},"author":1,"featured_media":2625,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"_monsterinsights_skip_tracking":false,"_monsterinsights_sitenote_active":false,"_monsterinsights_sitenote_note":"","_monsterinsights_sitenote_category":0,"footnotes":""},"categories":[1],"tags":[],"class_list":["post-2624","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-uncategorized"],"acf":[],"aioseo_notices":[],"_links":{"self":[{"href":"https:\/\/sanlaw.legal\/he\/wp-json\/wp\/v2\/posts\/2624","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/sanlaw.legal\/he\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/sanlaw.legal\/he\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/sanlaw.legal\/he\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/sanlaw.legal\/he\/wp-json\/wp\/v2\/comments?post=2624"}],"version-history":[{"count":1,"href":"https:\/\/sanlaw.legal\/he\/wp-json\/wp\/v2\/posts\/2624\/revisions"}],"predecessor-version":[{"id":2626,"href":"https:\/\/sanlaw.legal\/he\/wp-json\/wp\/v2\/posts\/2624\/revisions\/2626"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/sanlaw.legal\/he\/wp-json\/wp\/v2\/media\/2625"}],"wp:attachment":[{"href":"https:\/\/sanlaw.legal\/he\/wp-json\/wp\/v2\/media?parent=2624"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/sanlaw.legal\/he\/wp-json\/wp\/v2\/categories?post=2624"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/sanlaw.legal\/he\/wp-json\/wp\/v2\/tags?post=2624"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}