Booking.com: More Changes to Trademark Law

Things have been pretty exciting in trademark law over the last few years. The Slants won a case in the Supreme Court to protect their band’s name – overturning a longtime precedent of the USPTO barring trademark protection for “disparaging terms.” Now, the Supreme Court is at it again – ruling against the USPTO and their (somewhat) blanket rule of barring registration of generic terms with “.com” (or another TLD) added to them. Yes, I’m talking about “Booking.com.” This case is notable for a few reasons, read on for more information.

The USPTO’s Basic Argument

The basic argument the USPTO has historically used against granting trademarks of the “Booking.com” flavor is as follows:

“Booking” is a generic term when it is applied to an online reservation service (i.e. “Booking” [a reservation]) and adding “.com” (or another domain extension) onto a generic term does not (in almost all cases) change the generic outcome of the mark. The line between a “generic” term, which cannot be protected under trademark law, and a descriptive one (Holiday Inn, for example), which can be protected, is blurry – but the general rule has remained: generic marks are not eligible for protection, and adding “.com” to them does not change that (or increase their distinctiveness, even in the case of a descriptive mark).

The Supreme Court’s Rejection of the USPTO’s Argument

The Supreme Court rejected that argument on the basis of two important points. From the Court:

  1. 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. Pp. 6–14.(a) 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 courts below determined, and the USPTO no longer disputes, that consumers do not in fact perceive the term “Booking.com” that way. Because “Booking.com” is not a generic name to consumers, it is not generic. Pp. 6–7.(b)
  2. Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598. Goodyear, the USPTO maintains, established that adding a generic corporate designation like “Company” to a generic term does not confer trade-mark eligibility. According to the PTO, adding “.com” to a generic term—like adding “Company”—can convey no source-identifying meaning. That premise is faulty, for only one entity can occupy a particular Internet domain name at a time, so a “generic.com” term could convey to consumers an association with a particular website. More-over, an unyielding legal rule that entirely disregards consumer perception is incompatible with a bedrock principle of the Lanham Act: The generic (or non-generic) character of a particular term depends on its meaning to consumers, i.e., do consumers in fact perceive the term as the name of a class or, instead, as a term capable of distinguishing among members of the class. Pp. 8–11

What now? Why is this case noteworthy?

This case is noteworthy for a few reasons:

  1. The USPTO lost again! Another (mostly) blanket rule enforced by the USPTO was overturned. This is important since the USPTO interprets law, and creates policies and procedures its attorneys use to enforce the law. When those policies are questioned against the laws they are meant to interpret, its always exciting.
  2. Survey evidence is elevated! From a empirical perspective, the value of survey evidence is often questioned – How was the survey worded? What was the setting? How was the survey taken? In this case though, the Supreme Court cited survey evidence showing a 70\30 split of consumers who associate “booking.com” with a specific company, not a generic term. The outcome will be more parties relying on so called “Teflon” and “Thermos” surveys to show the distinctiveness of their marks, which is good news for some clients. (If you want to talk nerdy about Teflon and Thermos surveys, I’m available).
  3. Websites matter. The Supreme Court also elevated domain names and distinguished them from the Goodyear decision because only one person can have a website at a time (rather than many companies having “Corp.” appended to their names). I think the outcome here will be an increased value on control of domain names (a market that is already incredibly valuable).

Thanks for reading, and always feel free to reach out with questions.

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