Booking.trademark!

On Monday the Supreme Court issued a highly anticipated decision in United States Patent and Trademark Office v. Booking.com, ruling that a term is generic for a class of goods or services only if the term has that meaning to consumers, and rejecting the United States Patent and Trademark Office’s (“USPTO”) per se rule that a combination of a generic term and a generic top level domain like .com is necessarily generic.

Booking.com is a travel company that provides hotel reservations and other services under the brand Booking.com and at the domain name booking.com. The USPTO had refused registration of four of Booking.com’s trademark applications on the ground that the term was generic and therefore unregistrable. Unlike terms that can create trademark significance either through their inherent distinctiveness or acquired distinctiveness, generic terms are the name of the good itself and are ordinarily ineligible for protection as trademarks at all. Booking.com appealed the USPTO examining attorney’s decision to the Trademark Trial and Appeal Board who affirmed the refusal. Booking.com appealed that decision to the United States District Court, introducing additional evidence of consumer perception. In large part based on this additional evidence, the District Court reversed the USPTO decision. The Appeals Court affirmed the District Court and the case was eventually argued before the Supreme Court on May 4, 2020 by telephone conference as a result of the coronavirus outbreak.

In reaching its decision to allow registration of the Booking.com trademark, the Supreme Court noted three core trademark principles that were guiding its analysis. First, a generic term should name a class of goods or services, rather than any particular feature or exemplification of the class. Second, for a compound term the distinctiveness inquiry should focus on the term’s meaning as a whole, not its parts in isolation. And third, the relevant meaning of a term is its meaning to consumers. The Supreme Court refused to adopt the USPTO’s view that when a generic term is combined with a generic top-level domain, the resulting combination is generic. The Court noted that the USPTO had previously been inconsistent in allowing registration of marks like art.com or dating.com. The Court also pointed out that while a top-level domain may be generic, it has the added significance of referring to a specific website associated with the applicant. Consumers mildly familiar with the internet will understand the term to refer to some specific entity. Finally, the Court noted that allowing trademark protection for a term like Booking.com will not hinder competitors any more than a descriptive term would.

The Booking.com decision is an important one for trademark law although its impact is not likely to affect a large number of trademark applicants. Given the relative ease with which domain names can be registered and collected by third-parties, combined with the high demand for generic top-level domains, it is less likely that a trademark applicant will be able to acquire a domain for a generic word that identifies their business. The Booking.com site was created in 1996 at the beginning of the dot-com bubble – two years before Pets.com was created and three years before Napster was created. The internet is a different place now for better or worse. Also very significant to the Booking.com decision is the consumer perception that Booking.com had been able to create over the years through its advertising and marketing campaigns. The difficulty in creating that consumer awareness may somewhat limit the practical application of this recent decision. That impact remains to be seen – as does the question of whether Booking.com will announce any special travel deals to celebrate the victory.