Booking.com Decision Potentially Opens The Floodgates For Federal Trademark Registration of “[Generic Term].com” Domain Names

Written by: Rex A. Donnelly

On June 30, 2020, the U.S. Supreme Court issued an 8-1 opinion finding “Booking.com” is not generic for online hotel-reservation services, expressly declining to adopt a per se rule urged by the United States Patent and Trademark Office (USPTO) that would have essentially excluded registration of all “[generic term].com” marks.

The USPTO had refused registration of “Booking.com” as generic, asserting that the combination of the generic term “booking” — for creating a reservation — with the term “.com” — a top level domain name (TLD) — yielded a generic term ineligible for registration for online hotel reservation services.  Rejecting the USPTO’s contention that a compound term formed of “.com” plus a generic term is necessarily generic, the Supreme Court upheld the decision of the District Court for the Eastern District of Virginia, affirmed by the Fourth Circuit Court of Appeals, that determining genericity of a mark must be based upon consumer perception.

Agreeing with the trademark applicant that the generic term “booking” can be distinctive and registrable when combined with the term “.com,” the Court noted that “if ‘Booking.com’ were generic, we might expect consumers to understand Travelocity—another such service—to be a ‘Booking.com,’” but found no such consumer understanding.  The applicant submitted unrebutted survey evidence showing that consumers perceived “Booking.com” to be a trademark associated with a specific source of services, and the Court urged that such a showing “should resolve the case.”  The Court distinguished adding “.com” after a generic term from adding “Company,” noting that consumers understand each domain name to correspond exclusively to a single entity.  Rejecting the USPTO’s argument that trademark protection was unnecessary because of this exclusivity, the Court characterized the connection between domain name and owner as making trademark protection “more appropriate, not less.” Finally, the Court pointed to the narrow scope of protection for descriptive marks as providing a sufficient safeguard against anticompetitive behavior, such as hindering competitors from fairly using the term “booking” or from using domain names with titles such as “ebooking.com” or “hotel-booking.com.”

The ruling is likely to result in a substantial change in how the USPTO applies the concept of genericity to future registration determinations. Specifically, as Judge Breyer’s dissent queried, what now “stands in the way of automatic trademark eligibility for every ‘generic.com’ domain?”  Arguably, nothing.  Neither the majority nor the dissent discussed the consequences of this decision on eligibility for registration on the Supplemental Register.  The USPTO maintains the Principal Register for distinctive marks, and the Supplemental Register for marks not yet considered distinctive.  To achieve registration on the Supplemental Register, a mark only “must be capable of distinguishing the applicant’s goods or services” in the future.

Seemingly, the USPTO now has a very high burden to produce evidence that a “[generic term].com” mark will never be “capable of distinguishing.”  The USPTO Trademark Manual of Examination Procedure (TMEP) currently guides examiners to determine “whether the relevant public would understand the term to be generic to refer to the genus of the goods/services.”  However, eligibility for the Supplemental Register turns on potential future distinctiveness, not present consumer understanding.  Showing what “the relevant public” understands today – particularly absent longstanding use of the proposed mark as a whole to refer to the specific genus of goods/services sought to be registered — will rarely predict the results of a consumer survey in the future, especially after years of extensive advertising by the mark owner.  The logic applied in this decision may not be limited only to domain names, but possibly also could extend to any combination of generic terms lacking strong evidence of genericity in the mark as a whole.  With more potential to obtain registrations consisting of descriptive combinations of generic terms, look for the scope of protection afforded such registrations to be the next battleground for mark owners and their competitors.  Meanwhile, common law users of such marks previously refused registration or considered incapable of registration may wish to revisit applying for registration.

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