United States Patent & Trademark Office v. Booking.com B.V., ___ U.S. ___, 2020 WL 3518365, No. 19-46 (June 30, 2020)

by Clyde Findley and Amber Orr | Intellectual Property | 

We used to question whether generic Internet domain names could be trademarked. Now, thanks to Booking.com’s unwillingness to take no for an answer, we know that in certain circumstances, they can.

Booking.com is a company that runs a travel website by the same name. Several years ago, it sought to register the name “booking.com” as a trademark. In response, the United States Patent & Trademark Office (the “PTO”) rejected the registration on the basis that “booking.com” is a generic term and therefore ineligible for federal trademark protection. Generic terms are words or symbols that communicate what type of product or service is being offered. Generally, United States trademark law does not permit generic terms to be trademarked, to prevent individuals or companies from having a monopoly in a broad (generic) business area.

The PTO’s rejection of “booking.com” set the stage for a battle. No one questioned the fact that “booking,” by itself, was a generic term that could not be trademarked, or that “.com,” by itself, was a generic term that could not be trademarked. The question was whether adding one generic term to another generic term could somehow transform the combination into a non-generic term that could be eligible for trademark protection.

The PTO’s answer to that question was no. Its reasoning was simple: combining one generic term with another generic term should never result in anything other than a new generic term. The PTO’s approach was logically attractive. It was clean and straightforward; and it could be enforced easily. Once a generic, always a generic.

Booking.com didn’t accept that logic, however. It appealed the PTO’s rejection by filing a lawsuit in the Eastern District of Virginia. That strategy allowed Booking.com to introduce evidence of consumer perception. In trademark law, consumer perception often carries the day, even when the result is messy and difficult to enforce. Indeed, the whole point of trademark law is to protect consumers from being confused by similar brand names. If consumers are not confused and if consumers understand that a mark identifies only one source and not a generic category of many sources, a mark can be deserving of protection.

The argument went like this: Even though “.com” is a generic term (there are many “.com” websites), and even though “booking” is a generic term (there are many booking companies), when you add “.com” to “booking” to create an Internet website name, there can be only one. On the Internet, domain names are unique, and in trademark law, if a mark is unique, it is difficult to simultaneously maintain that it is generic.

Skipping over the procedural wrangling in the District Court and the Fourth Circuit Court of Appeals, both of which ruled in favor of Booking.com, the Supreme Court agreed and concluded that “booking.com” is eligible for trademark protection, principally because the consuming public understands that “booking.com” does not refer to a category of travel agencies, but instead refers to single company corresponding to a specific domain name. In this way, the Supreme Court has paved the way for generic names to be trademarked if they are combined with a top-level domain name and if survey evidence demonstrates that the consuming public considers the combination to be unique and not generic.

Justice Ginsburg wrote the opinion of the Court. Justice Sotomayor offered a short concurring opinion.

Justice Breyer authored an interesting dissent. After first agreeing with the PTO’s position that a combination of two generic terms does not yield a non-generic term, he explained that consumer survey evidence should not be able to transform a generic term into a non-generic term because consumer survey evidence can only be applied to terms that are already eligible for trademark protection in the first place. Generic terms are not eligible, so consumer evidence is not relevant. Second, Justice Breyer argued that because the Internet domain name system already ensures that domain names are unique worldwide, a policy that allows a generic domain name to receive additional trademark protection would tend to inhibit, rather than promote, free competition because it would confer too much legitimacy on the generic name. In Justice Breyer’s view, this is exactly why generic names should not be eligible for trademark protection in the first place: they are inherently too broad. This was an insightful counterpoint.

Clyde Findley and Amber Orr are attorneys in the Intellectual Property Practice of Berenzweig Leonard. They can be reached [email protected] and [email protected].