Is the mark BOOKING.COM protectable as a trademark for online hotel reservation services?
In the United States Supreme Court
|Argument||January 14, 2020|
|Decision||June 30, 2020|
|Opinion Below||U.S. Patent and Trademark Office|
|Respondent Brief||Fourth Circuit Court of Appeals|
On June 30, 2020, the Supreme Court ruled in favor of Booking.com. The mark BOOKING.COM is protectable as a trademark.
Scroll down for our decision analysis.
July 2, 2020
Booking.com Can Register its Web Address as a Trademark
On June 30, 2020, the Supreme Court in U.S. Patent & Trademark Office v. Booking.com held that the mark BOOKING.COM is not generic and may be registered as a trademark.
Booking.com filed a trademark application for the mark BOOKING.COM in connection with online hotel reservation services. The U.S. Patent and Trademark Office (“USPTO”) rejected the trademark application because, in its view, the term BOOKING.COM is a “generic” term for online reservation services. A term is “generic” if it is the common name for a class of products or services. Generic terms are not registerable as trademarks because they do not distinguish a product or service from any other categorically similar product or service.
Booking.com and the USPTO agreed that “booking” generically refers to making hotel reservations for others. Booking.com and the USPTO also agreed that “.com” generically refers to a commercial website. However, they disagreed on whether the combination BOOKING.COM is protectable as a trademark for online hotel reservation services.
The Majority Opinion – Authored by Justice Ginsburg
Justice Ginsburg, writing for a majority of the Court, held that a mark is generic only when consumers use the mark as a generic descriptor.
The Trademark Statute in Section 1064(3) provides a test for evaluating whether a mark is generic based on consumer usage (the “primary-significance test”). Under the primary-significance test, evidence of how a mark is currently used by the public, such as survey evidence, is relevant to determine whether the mark is generic. Although Section 1064(3) is discussing procedures for cancelling a preexisting trademark registration, eligibility for trademark registration also depends on consumer usage and perception. The Court held that the primary-significance test governs cancellation of pre-existing registrations and whether a mark is registrable in the first place. In this case, the lower courts properly concluded, based on survey evidence, that consumers do not perceive BOOKING.COM as referring to the general class of online reservation services.
Furthermore, the majority said, only one entity can hold rights to a particular Internet domain name at a time. Therefore, a generic.com mark inherently conveys an association with a particular website and service provider. This distinguishes BOOKING.COM from marks such as “Wine, Inc.” or “The Wine Company” that were held to be generic. A mark composed of generic elements is itself generic only if the combination provides no additional meaning to consumers. However, in this case, the lower courts considered evidence demonstrating that consumers understood BOOKING.COM to refer to a specific, non-generic entity.
The Court rejected a rule that all generic.com marks are per se ineligible for trademark protection regardless of consumer perception. Principles underlying Trademark Statue require determining whether consumers in fact perceive a mark as a general description of a class of services or as a differentiator among members of the class. In this case, the mark BOOKING.COM is eligible for federal trademark registration because evidence shows that consumers do not use BOOKING.COM as a generic term for online reservation services.
Moreover, the USPTO’s has registered other arguably generic.com marks such as ART.COM and DATING.COM. Adopting a rule that BOOKING.COM or other generic.com marks are per se ineligible for trademark protection would put all those registrations at risk of cancellation.
The majority was not swayed by the USPTO’s concern that registering BOOKING.COM would hinder competition by allowing the trademark owner to exclude competitors from using similar terms like “ebooking.com” or “hotel-booking.com.” The majority argued that any such anticompetitive risks are small because, like any descriptive mark, potentially infringing use must be likely to cause confusion to infringe the BOOKING.COM mark. Marks like BOOKING.COM that incorporate generic or highly descriptive components are less likely confuse consumers into thinking that a competitor’s use of the common generic elements originate from the mark’s owner.
Concurring Opinion by Justice Sotomayor
Justice Sotomayor filed a concurring opinion to clarify that in this case, the only question before the Court was whether BOOKING.COM is generic solely because it is a composite of two generic terms.
Justice Sotomayor noted that survey evidence alone may not be determinative of whether a mark is generic. Various sources should be considered to determine whether a mark is generic. For example, the USPTO could have properly concluded BOOKING.COM is generic based on other evidence such as dictionaries or usage by competitors. However, consideration of other reasons for why the mark BOOKING.COM may or may not be generic was not before the Court.
Dissenting Opinion by Justice Breyer
Justice Breyer filed a dissenting opinion arguing that BOOKING.COM or any generic.com mark, is per se generic, as advocated by the USPTO. Prior cases recognized that corporate designations such as “Company,” “Corp.,” and “Inc.” do not distinguish one service provider from another. Like those corporate designations, a top-level domain such as “.com” is merely a necessary component of any web address and has no capacity to distinguish a source of goods or services. Just as “Wine Company” expresses the generic concept of a company that deals in wine, “wine.com” expresses the generic concept of a website that deals in wine.
Justice Breyer rejected the majority’s distinction of the corporate designation cases. That only one entity can hold rights to a particular domain name does not distinguish the corporate designation cases. A generic term is not eligible for trademark protection even if consumers associate the generic term with a specific source provider. Generic terms that describe the nature of a service provided must remain free for all to use. Granting trademark protection to such generic marks would allow the trademark owner to prevent competitors from describing goods as what they are.
Although survey evidence shows that consumers do not use the term BOOKING.COM to refer to reservation websites generally, Justice Breyer notes that consumers also do not use the term “Wine, Inc.” to refer to sellers of wine, generally. Nonetheless, the mark “Wine, Inc.” is generic because it inherently describes a company incorporated for that purpose. BOOKING.COM likewise describes the basic nature of online reservation services, and not a distinguishing feature, quality, or characteristic of the website provider.
Justice Breyer also points out that survey evidence presented in this case does not address whether BOOKING.COM itself is generic. For example, survey participants who identified BOOKING.COM as a brand may have done so because the company was first to market, based on company advertising efforts or other reasons. The mark BOOKING.COM does nothing more than inform a consumer that an online booking service is being provided. Trademark law does not protect marks that do nothing more than identify the service provided as opposed to identifying the provider of the service.
Additionally, Justice Breyer notes that there are anticompetitive consequences for granting trademark protection to generic.com marks. Domain name ownership confers automatic, worldwide exclusivity because there can be only one BOOKING.COM. Granting trademark protection to generic.com marks on top of this exclusivity allows owners to exclude others from using similar domain names. For example, a trademark registration would allow the owner of BOOKING.COM to threaten trademark lawsuits against competitors using domains such as “Bookings.com,” “eBooking.com,” “Booker.com,” or “Bookit.com.” Marks that inform the consumer of the basic nature of a business and nothing more must remain free for all to use.
For these reasons, Justice Breyer would have upheld the USPTO’s refusal to register BOOKING.COM and any other similar generic.com marks.