Supreme Court’s Booking.com trademark ruling adds wrinkle to generic trademark debate

When can you add one generic thing to a second generic thing and create something nongeneric? Apparently, when the terms “booking” and “.com” are combined, as the US Supreme Court ruled on Tuesday.

This potentially groundbreaking ruling in United States Patent and Trademark Office v. Booking.com sheds new light on the issue of “genericness” in trademark law and has made strange bedfellows of those who oppose it.

The Booking.com logo is pictured at the International Tourism Trade Fair in Berlin, Germany, March 9, 2016 – via REUTERS

You may be familiar with Booking.com, a popular travel aggregator that offers reservations on hotels, flights, car rentals, and other tourist attractions. A competitor of sites such as Expedia, Travelocity, and Kayak, Booking.com sought trademark registration of its name, but the US Patent and Trademark Office (USPTO) rejected its application, concluding that because the separate terms “booking” and “.com” are too generic individually to warrant protection, the combination of the two was no more availing.

However, Justice Ginsburg, writing for an eight to one majority of the high court, found that:

A term styled “generic.com” is a generic name for a class of goods or services only if the term has that meaning to consumers. Consumers, according to lower court determinations uncontested here by the PTO, do not perceive the term “Booking.com” to signify online hotel-reservation services as a class. In circumstances like those this case presents, a “generic.com” term is not generic and can be eligible for federal trademark registration.

The Supreme Court’s reasoning was as follows: Trademarks
exists to protect the goodwill of those who use them in commerce and to
distinguish the goods and services marketed thereunder from their competitors.

The more distinctive a trademark is, the stronger the
protection it merits. For instance, “arbitrary” marks like Camel cigarettes, “fanciful”
ones like Kodak film, or “suggestive” ones like Tide laundry detergent are
inherently distinctive and deserve trademark registration.

In contrast, merely “descriptive” marks warrant protection
only if they acquire distinctiveness, or take on a “secondary meaning” in the
eyes of the public.

In further contrast, purely generic terms that lack any distinctiveness are ineligible for trademark protection.

The USPTO denied Booking.com’s trademark application, holding
that its name was merely a generic term, reckoning that “customers would
understand the term BOOKING.COM primarily to refer to an online reservation
service for travel, tours, and lodgings” and that the term had not acquired any
secondary meaning.

But the Supreme Court rejected this reasoning, finding instead that “if ‘Booking.com’ were generic, we might expect consumers to understand Travelocity — another such service — to be a ‘Booking.com.’” Yet Booking.com produced undisputed survey evidence that no consumers perceive the various travel-booking sites this way. Indeed, more generally (so to speak), an “XYZ.com” term “might also convey to consumers a source-identifying characteristic: an association with a particular website,” and the fact that only a single entity can occupy a particular domain name itself conveys a certain amount of distinctiveness.

Justice Stephen Breyer, the lone dissenter, asserted that “a top-level domain such as ‘.com’ has no capacity to identify and distinguish the source of goods or services” and instead “is merely a necessary component of any web address.” He also contended that “survey evidence has limited probative value in this context” because some courts have held that surveys cannot adequately distinguish between generic and descriptive terms.

The case also brought together some unlikely allies, including the Electronic Frontier Foundation (EFF), which often assails the USPTO for its patent practices. In a blog post entitled “Strange Bedfellows,” EFF argued that awarding a trademark to Booking.com would “hurt both consumer rights and competition” as companies with domain names such as “bookit.com” and “ebooking.com” would struggle to gain traction. It’s hard to know whether the EFF, the USPTO, and Justice Breyer are correct to predict that the high court’s ruling will trigger a series of trademark applications for “generic.com” terms or, if so, whether such terms will deserve protection. But the decision has certainly opened the door to that possibility.