Booking.com – an online travel company that provides hotel and other reservation services – filed four trademark applications for the mark “Booking.com” with different visual features. The United States Patent and Trademark Office (the “PTO”) and Trademark Trial and Appeal Board denied registration on the basis that “booking” is generic for travel reservations and “.com” merely signifies a commercial website.
The U.S. District Court for the Eastern District of Virginia reversed, finding instead that “Booking.com” was descriptive and had acquired secondary meaning sufficient to merit registration on the Principal Register. In doing so, the District Court held that the record, notably including the “absence of evidence that consumers or producers use the term ‘booking.com’ to describe the genera of services at issue, that is, hotel and travel reservation services” and a Teflon consumer survey, demonstrated that the mark was recognized as a brand, not a generic term, and that consumers identified the mark with a single source: Booking.com and its website uniquely available at that domain name. Booking.com B.V. v. Matal, 278 F. Supp. 3d 891, 914 (E.D.Va. 2017). The Fourth Circuit affirmed, holding that combining a generic term with “.com” could, under certain circumstances, create a non-generic mark. Booking.com B.V. v. Matal, 915 F. 3d 171 (4th Cir. 2019).
The Supreme Court, in a 7-1 decision, upheld the Fourth Circuit’s ruling. Delivering the opinion of the Court, Justice Ginsburg emphasized that marks must be examined as a whole and not “parts in isolation,” and “the relevant meaning of a term is its meaning to consumers.” Op. at 6. As the lower courts had determined that consumers did not perceive “Booking.com” as a generic term and the PTO did not dispute the findings relating to the consumer significance of the mark, the mark could not be generic. Otherwise, as Justice Ginsburg observed, “if ‘Booking.com’ were generic, we might expect consumers to understand Travelocity —another such service— to be a ‘Booking.com.’ We might similarly expect that a consumer, searching for a trusted source of online hotel-reservation services, could ask a frequent traveller to name her favorite ‘Booking.com’ provider.” Op. at 7. Ultimately, “whether any given ‘generic.com’ term is generic…depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.” Op. at 11.
In reaching its holding, the Court refused to adopt the nearly per se rule advanced by the PTO that every “generic.com” term is automatically generic and distinguished this case from Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598 (1888) that held “the term ‘Goodyear Rubber’ could not serve as a trademark because it referred, in those days, to ‘well-known classes of goods produced by the process known as Goodyear’s invention’” and the addition of the term “Company” did not confer exclusive rights. Op. at 8. Specifically, the Court noted that “a ‘generic.com’ term might also convey to consumers a source-identifying characteristic: an association with a particular website.” Op. at 9. The Court was also quick to note that the PTO had also not universally applied the rule it was advancing and had already allowed registration of marks like “ART.COM” on the Principal Register for, inter alia, “[o]nline retail store services” offering “art prints, original art, [and] art reproductions, and “DATING.COM” on the Supplemental Register for “dating services.”
The Court’s opinion rejects a categorical rule that denies registration for “generic.com” marks and instead focuses the determination of genericness on the consumer significance of the mark. As such, federal registration for generic terms coupled with top-level domains is possible if the “generic.com” term has developed secondary meaning.
This aspect is key as the decision is predicated on the lower courts’ finding, undisputed by the PTO, that the mark “Booking.com” had come to serve as a source identifier. Thus, the decision provides guidance to trademark owners seeking to protect “generic.com” marks, including the type of evidence that will be required to argue against a genericness challenge. While evidence from a properly designed Teflon survey can demonstrate that a mark is not generic, and that it has acquired secondary meaning, the Court noted that additional evidence such as “dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning” may also inform whether a mark is generic. Notably, the District Court commented on the absence of evidence of genericness as a compelling factor in its decision and as such, owners of “generic.com” marks should try to prevent and correct inappropriate generic uses of their marks by third parties.
Authored by Anna Kurian Shaw, Toni Cannady and Brendan C. Quinn