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SCOTUS Considers Whether Adding a Top-Level Domain Makes a Generic Term a Protectable Trademark

Posted in IP, Trademark Law

On Monday, May 4, 2020, the Supreme Court of the United States heard oral argument in United States Patent and Trademark Office v. Booking.com, B.V.  For the first time in the history of the Court, the argument was live streamed via multiple outlets, including CNN, enabling us trademark junkies to listen to the argument in real time. Although it was surely an unfamiliar circumstance for the Court and its litigants, the hearing was mostly without issue. Returning to the case at issue, in USPTO v. Booking.com, the Court addressed whether a business can create a registrable trademark by adding a generic top-level domain name like “.com” to an otherwise unprotectable generic term. Specifically, the Supreme Court addressed whether BOOKING.COM is entitled to trademark registration.

The dispute arose in 2012 when Booking.com sought to register BOOKING.COM as a service mark for its online reservation services. The USPTO’s examining attorney determined that “booking” is generic for hotel reservation services, relying upon dictionary definitions of “booking” and “.com” and the use of “booking” by various other third parties who offer similar services. The examining attorney ultimately refused registration arguing that combining a generic term like “booking” with “.com” simply communicates to consumers that the business offers its services online.

Booking.com sought review of the refusal in the U.S. District Court for the Eastern District of Virginia (“District Court”). The District Court agreed with the USPTO that “booking” is generic for the services provided, but unlike the USPTO, the District Court found that combining “booking” with “.com” results in a term that is descriptive, not generic. Because descriptive, unlike generic, marks are entitled to protection if the user can establish the existence of secondary meaning, the District Court considered evidence to determine if consumers recognize BOOKING.COM as a source of services rather than a type of services. After considering survey evidence and evidence of extensive advertising expenditures proffered by Booking.com, the District Court held that that BOOKING.COM is entitled to trademark protection. The decision was affirmed by the Fourth Circuit Court of Appeals. The USPTO petitioned and the Supreme Court granted certiorari.

In short, the USPTO has two arguments. First, it argues that the matter is controlled by Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, a pre-Lanham Act case from 1888. The USPTO argues that under Goodyear, Booking.com could not add a “corporate identifier” such as “Company” to a generic term to create a protectable trademark, and as such, it cannot simply add “.com” to a generic term to do so. According to the USPTO, the addition of “.com” to a generic term is nothing more than an identifier indicating that the company’s services are provided online. Second, the USPTO argues that the Fourth Circuit’s decision would permit businesses to monopolize language by registering generic terms as domain names, and then using those trademark rights to preclude competitors from referring to their products by the generic term.

On the other hand, Booking.com argues that Goodyear was superseded by the Lanham Act in 1946. Booking.com argues that, as amended in 1984, the Lanham Act requires courts and the USPTO to determine the primary significance of the mark to the relevant public when analyzing whether a trademark has become generic. Booking.com contends the same test should apply when analyzing whether a term is generic or descriptive, and that consumer surveys are the best way to assess primary significance. Accordingly, because Booking.com’s survey evidence indicates that the public recognizes BOOKING.COM as a trademark rather than a category of service, the mark should be deemed descriptive rather than generic. Therefore, Booking.com reasoned that, because Booking.com established secondary meaning in BOOKING.COM, the mark is entitled to registration, the Court should affirm the Fourth Circuit’s decision.

As usual, the Court had difficult questions for both sides during oral argument, with Justice Thomas even breaking his year-long silence to make inquiries to both parties. In my opinion, the Court had more difficult and troubling questions for the USPTO, but it would be inaccurate to say that the Court wasn’t concerned with the potential monopolistic advantages that could come with its affirmation of the Fourth Circuit’s decision. If I had to guess, I think the Court will affirm the decision, but I will write about the Court’s opinion when it is issued.