Booking.com B. V. (the “Booking.com”), an enterprise that maintains a travel-reservation website, sought to register the mark BOOKING.COM.
Both a USPTO examining attorney and the USPTO’s Trademark Trial and Appeal Board concluded that the term BOOKING.COM is generic for the services at issue and is therefore unregistrable. According to the USPTO, since the word booking is generic for hotel-reservation services and .COM signifies a commercial website, then the combination of a generic word and .COM (“generic.com”) is likewise generic.
The U. S. District Court for the Eastern District of Virginia concluded that BOOKING.COM, unlike the term booking is not generic. The District Court found that the consuming public primarily understands that BOOKING.COM does not refer to a genus, rather it is descriptive of services involving booking services available at that domain name. Thus, the BOOKING.COM mark meets the distinctiveness requirement for registration.
The Court of Appeals for the Fourth Circuit affirmed the District Court’s judgment. The Supreme Court of the United States (the “Court”) granted certiorari and affirmed the Fourth Circuit’s decision.
BOOKING.COM is not generic
The Court held that there are three (3) guiding principles for generic marks, namely:
- A generic term names a class of goods or services, rather than any particular feature or exemplification of the class. A generic term is one that refers to the genus of which the particular product is a species;
- For a compound term, the distinctiveness inquiry trains on the term’s meaning as a whole, not its parts in isolation; and
- The relevant meaning of a term is its meaning to consumers, i.e., what do the buyers understand by the term?
Thus, BOOKING.COM is generic if, taken as a whole, it signifies to consumers the class of online hotel reservation services.
By way of example, the Court held that if BOOKING.COM was generic, then:
- A consumer would understand that Travelocity, a competitor of Booking.com, to be a “booking.com.”; and
- A consumer, searching for a trusted source of online hotel-reservation services, would ask frequent travelers to name their favorite “booking.com” provider.
Since this is not the case, the Court held that BOOKING.COM is not generic because it is not a generic name to consumers.
STATE OF THE REGISTER
Existing registrations in the Register are inconsistent with the USPTO’s position that a generic term that is combined with a generic top-level domain like .COM results in a generic mark.
For example, the Court pointed out that the trademark ART.COM is registered in the principal register for, inter alia, online retail store services and offering art prints, original art, and art reproductions, while DATING.COM is registered in the supplemental register for dating services. To rule otherwise would put these existing registrations at risk of being canceled.
A “GENERIC.COM” TERM CAN BE DISTINCTIVE
The USPTO argued that adding .COM to a generic term conveys no additional meaning that would distinguish one provider’s services from those of other providers.
The Court held that this premise is faulty. As discussed above, whether a term is generic depends on its meaning to consumers. It is possible that a generic.com term can also convey to consumers a source-identifying characteristic, i.e., an association with a particular website, especially since only one entity can occupy a particular Internet domain name at a time. Hence, a consumer who is familiar with that aspect of the domain-name system can infer that BOOKING.COM refers to some specific entity.
However, the Court pointed out that it does not automatically embrace a rule that generic.com terms are automatically non-generic. In the end, it would still depend on whether consumers perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.
PROTECTING GENERIC.COM TERMS AS TRADEMARKS IS NOT CONTRARY TO TRADEMARK LAW’S ANIMATING POLICIES
The USPTO’s principal concern is that trademark protection for a term like BOOKING.COM would hinder competitors, i.e., a BOOKING.COM registration could exclude or inhibit competitors from using the term “booking” or adopting domain names like “ebooking.com” or “hotel-booking.com.” Therefore, what the USPTO’s objects to is not to the exclusive use of BOOKING.COM as a mark but the undue control over similar terms, such as “booking”, which should remain free to use.
The Court held that a competitor’s use does not infringe on a trademark unless it is likely to confuse consumers. In assessing the likelihood of confusion, courts consider the mark’s distinctiveness. When a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the mark’s owner. And even where some consumer confusion exists, the doctrine known as classic fair use protects third parties who use a descriptive term to describe their own goods from liability.
These doctrines guard against the anticompetitive effects identified by the USPTO, ensuring that registration of BOOKING.COM would not give its holder a monopoly on the term “booking.”
A “GENERIC.COM” MARK IS NOT DISQUALIFIED FROM TRADEMARK REGISTRATION.
The USPTO argues that “generic.com” brands do not need trademark protection as it has already seized a domain name that no other website can use and is easy for consumers to find. However, the Court held that those competitive advantages do not inevitably disqualify a mark from federal registration.
While unfair competition law could prevent others from passing off their services as Booking.com’s, a trademark registration will offer Booking.com greater protection. In fact, Booking.com has expressed its intention to seek protections available to trademark owners under the Anticybersquatting Consumer Protection Act.
The entire decision is available [here]