Supreme Court Adds Booking.com Trademark Suit to IP Docket

SCOTUS Recently Granted Certiorari in United States Patent and Trademark Office v. Booking.com B.V.

The U.S. Supreme Court recently granted certiorari in United States Patent and Trademark Office v. Booking.com B.V.  The issue before the Court is whether the addition of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.

Generic Trademarks

Under the Lanham Act, a trademark is a “word, name, symbol, or device” used by a person “to identify and distinguish his or her goods” in commerce and “to indicate the source of the goods.”  Abercrombie & Fitch Co. v. Hunting World recognized and established a spectrum of trademark strength and categories of protection along that spectrum.  To determine whether a proposed mark is protectable, the USPTO and courts determine the strength of the mark by considering a variety of factors—e.g., the nature of the word, the type of design, and/or the associated product or services—placing the mark into one of four categories of trademark distinctiveness.  Those categories are, in ascending order: (1) generic, (2) descriptive, (3) suggestive, or (4) arbitrary or fanciful.

Generic terms are not entitled to trademark protection because trademarking a generic term would effectively grant the owner a monopoly over a term in common use.  That is, a mark is generic if it is the “common name of a product” or “the genus of which the particular product is a species.” OBX-Stock, Inc. v. Bicast, Inc., 558 F.3d 334, 339–40 (4th Cir. 2009).  Generic terms are not entitled to trademark protection because they do not identify the source of a product or service—they are effectively the name for the product or service itself.

Descriptive terms may be protected, but only if “the registrant shows that [the term] has acquired secondary meaning, i.e., it ‘has become distinctive of the applicant’s goods in commerce.’” Meanwhile, suggestive, arbitrary or fanciful marks are “automatically entitled to protection because they naturally serve to identify a particular source of a product.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992).

Booking.com Trademark Registration

Booking.com operates a Web site on which customers can book hotel accommodations. In 2012, the company filed four US federal trademark applications for marks that included or consisted of the term “Booking.com.” The applications sought registration for use of the marks in connection with “online hotel reservation services.”

The United States Patent and Trademark Office (USPTO) refused registration of the marks.  Instead, the USPTO concluded that the term “booking” is generic for the services for which Booking.com sought registration. Moreover, the addition of the generic top-level domain “.com” did not create a protectable mark.

On appeal, the U.S. District Court for the Eastern District of Virginia held that the term Booking.com was non-generic. The Fourth Circuit Court of Appeals affirmed. It held that the public’s understanding of Booking.com, taken as a whole, establishes it as a descriptive mark rather than a generic term. In support, it cited the USPTO’s lack of evidence demonstrating that the public uses “booking.com” generically. The Fourth Circuit also placed great weight on Booking.com’s Teflon survey, which found that 74.8% of respondents identified Booking.com as a brand name. According to the appeals court, “the survey is strong evidence that the public does not understand Booking.com to refer to the proposed mark’s generic meaning.”

In addition, the Fourth Circuit rejected the USPTO’s argument that adding the top-level domain “.com” to a generic second-level domain like “booking” is necessarily generic. “No circuit has adopted the bright-line rule for which the USPTO advocates—indeed, sister circuits have found that when ‘.com’ is added to a generic TLD, the mark may be protectable upon a sufficient showing of the public’s understanding through consumer surveys or other evidence,” the court wrote.

USPTO Seeking Supreme Court Review

The USPTO is asking the Supreme Court to overrule the Fourth Circuit. As the USPTO highlighted in its petition for certiorari, the Fourth Circuit’s decision conflicts with decisions of the Federal and Ninth Circuits, which have held on materially similar facts that Hotels.com, Advertising.com, Lawyers.com, and Mattress.com are all generic. For instance, the Federal Circuit held that the addition of “.com” does not create a protectable mark, because it conveys only that respondent “operates a commercial website via the internet.” In re Hotels.com, L.P. 573 F.3d 1300, 1304 (Fed. Cir. 2009).

The USPTO also argues that the Fourth Circuit’s decision conflicts with existing U.S. Supreme Court precedent. In Goodyear’s India Rubber Glove Manufacturing Co. ., 128 U.S. 598 (1888), the Supreme Court held that the addition of an entity designation like “Company” or “Inc.” to a generic term like “wine,” “cotton,” or “grain” does not create a protectable mark, but instead “only indicates that parties have formed an association or partnership to deal in such goods.” According to the USPTO, “just as no company could register a trademark in ‘Booking Inc.,’ respondent should not be permitted to register a trademark in ‘BOOKING.COM.’”

The Supreme Court has not yet scheduled oral arguments. Nonetheless, a decision is expected before the term ends next June.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.