Scarinci Hollenbeck, LLC
The Firm
201-896-4100 info@sh-law.comFirm Insights
Author: Scarinci Hollenbeck, LLC
Date: July 10, 2020
The Firm
201-896-4100 info@sh-law.comIn a landmark trademark decision, the U.S. Supreme Court held that Booking.com was entitled to federal trademark protection. In so ruling, the Court rejected the rule proffered by the U.S. Patent and Trademark Office (USPTO) under which combining a generic term with “.com” would yield a generic composite that may never be a valid trademark.
“Whether any given ‘generic.com’ term is generic, we hold, depends on whether consumers, in fact, perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class,” Justice Ruth Bader Ginsburg wrote on behalf of the Court in United States Patent and Trademark Office v. Booking.com B.V.
Booking.com operates a website on which customers can book hotel accommodations. In 2012, the company filed four federal trademark-registration 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. It concluded that the term “booking” is generic for the services as to 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 not 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 consumer 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.”
By a vote of 8-1, the Supreme Court affirmed. It held that a term styled “generic.com” is a generic name for a class of goods or services—and thus ineligible for federal trademark protection—only if the term has that generic meaning to consumers.
According to the Court, whether a compound term is generic turns on whether that term, taken as a whole, signifies to consumers a class of goods or services. The Court further concluded that consumers do not in fact perceive the term “Booking.com” that way. As Justice Ginsburg explained:
[W]hether “Booking.com” is generic turns on whether the term, taken as a whole, signifies to consumers the class of hotel reservations services. … Consumers do not in fact perceive the term “Booking.com” that way, the courts below determined. … That should resolve the case: because “Booking.com” is not a generic name to consumers, it is not generic.
In reaching its decision, the Court rejected the USPTO’s proposed per se rule that when a generic term is combined with a generic Internet-domain-name suffix like “.com,” the resulting combination is generic. Justice Ginsburg explained:
A “generic.com” term might also convey to consumers a source-identifying characteristic: an association with a particular website. As the PTO and the dissent elsewhere acknowledge, only one entity can occupy a particular Internet domain name at a time, so “[a] consumer who is familiar with that aspect of the domain-name system can infer that BOOKING.COM refers to some specific entity.” Thus, consumers could understand a given “generic.com” term to describe the corresponding website or to identify the website’s proprietor. We therefore resist the PTO’s position that “generic.com” terms are capable of signifying only an entire class of online goods or services and, hence, are categorically incapable of identifying a source.
The Court also dismissed the USPTO’s concerns that trademark protection for “Booking.com” could exclude or inhibit competitors from using the term “booking” or adopting domain names like “ebooking.com” or “hotel-booking.com.” As Justice Ginsburg noted, “That concern attends any descriptive mark.” Ginsburg went on to explain that several doctrines ensure that registration of “Booking.com” would not yield its holder a monopoly on the term “booking.”
Finally, the Court addressed the USPTO’s doubts that owners of “generic.com” brands need trademark protection in addition to existing competitive advantages. It found that any competitive advantages do not inevitably disqualify a mark from federal registration. “All descriptive marks are intuitively linked to the product or service and thus might be easy for consumers to find using a search engine or telephone directory. The Lanham Act permits registration nonetheless,” Justice Ginsburg wrote. “And the PTO fails to explain how the exclusive connection between a domain name and its owner makes the domain name a generic term all should be free to use. That connection makes trademark protection more appropriate, not less.”
Justice Stephen Breyer was the lone dissenter, arguing that the majority’s decision is “inconsistent with trademark principles and sound trademark policy.” He wrote: “By making such terms eligible for trademark protection, I fear that today’s decision will lead to a proliferation of ‘generic.com’ marks, granting their owners a monopoly over a zone of useful, easy-to-remember domains.”
The Supreme Court’s decision in United States Patent and Trademark Office v. Booking.com B.V. provides assurance to brand owners that the Trademark Office may not apply a per se rule to reject trademark applications for “generic.com” marks. Henceforth, each such trademark application must be evaluated to determine whether the applied-for term conveys a source-identifying meaning to consumers. The Court’s decision dramatically expands the availability of trademark protection for domain names. In addition, it significantly limits the number of such terms that will be deemed ineligible for trademark protection for being generic.
If you have any questions or if you would like to discuss the matter further, please contact the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.
No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.
Corporate transactions can have significant implications for a corporation and its stakeholders. For deals to be successful, companies must act strategically to maximize value and minimize risk. It is also important to fully understand the legal and financial ramifications of corporate transactions, both in the near and long term. Understanding Corporate Transactions The term “corporate […]
Author: Dan Brecher
Ongoing economic uncertainty is forcing many companies to make tough decisions, which includes lowering staff levels. The legal landscape on both the state and federal level also continues to evolve, especially with significant changes to the priorities of the Equal Employment Opportunity Commission (“EEOC”) under the Trump Administration. Terminating an employee is one of the […]
Author: Angela A. Turiano
While filing annual reports may seem like a nuisance, failing to do so can have significant ramifications. These include fines, reputational harm, and interruption of your business operations. In basic terms, “admin dissolution for annual report” means that a company is dissolved by the government. This happens because it failed to submit its annual report […]
Author: Dan Brecher
Antitrust laws are designed to ensure that businesses compete fairly. There are three federal antitrust laws that businesses must navigate. These include the Sherman Act, the Federal Trade Commission Act, and the Clayton Act. States also have their own antitrust regimes. These may vary from federal regulations. Understanding antitrust litigation helps businesses navigate these complex […]
Author: Robert E. Levy
If you’re considering closing your business, it’s crucial to understand that simply shutting your doors does not end your legal obligations. Unless you formally dissolve your business, it continues to exist in the eyes of the law—leaving you exposed to ongoing liabilities such as taxes, compliance violations, and potential lawsuits. Dissolving a business can seem […]
Author: Christopher D. Warren
Contrary to what many people think, corporate restructuring isn’t all doom and gloom. Revamping a company’s organizational structure, corporate hierarchy, or operations procedures can help keep your business competitive. This is particularly true during challenging times. Corporate restructuring plays a critical role in modern business strategy. It helps companies adapt quickly to market changes. Following […]
Author: Dan Brecher
No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.
Consider subscribing to our Firm Insights mailing list by clicking the button below so you can keep up to date with the firm`s latest articles covering various legal topics.
Stay informed and inspired with the latest updates, insights, and events from Scarinci Hollenbeck. Our resource library provides valuable content across a range of categories to keep you connected and ahead of the curve.
Let`s get in touch!
Sign up to get the latest from the Scarinci Hollenbeck, LLC attorneys!