On June 30, 2020, Justice Ginsburg, writing for the Supreme Court, concluded that the addition of “.com” to a generic mark can be sufficient to elevate the mark beyond genericism and trigger federal trademark protection.
Previously, Booking.com was denied federal trademark recognition on the basis that it was a generic term, signifying a class of online hotel-reservation services rather than a particular brand or service of that class. Both the examining attorney and the Trademark Trial and Appeal Board (“TTAB”) concluded that the term “Booking.com” was generic for the services it provided and was therefore unregistrable. The TTAB, the PTO Appeal Board, analyzed the two components of the mark separately, concluding that “Booking” represented a generic term that was indicative of making travel reservations; and adding “.com” did not enhance the distinctiveness of the mark, it merely represented that the service is located on a commercial website. Booking.com sought review in the U.S. District Court for the Eastern District of Virginia, where that court relied on evidence of the consuming public’s understanding of the mark in determining that Booking.com met the distinctiveness requirement for trademark registration. The PTO did not appeal the District Court’s determination of how consumers perceived the term “Booking.com”, and instead only appealed that court’s holding that the mark was not generic.
A trademark distinguishes one producer’s goods or services from another; a chief purpose of granting trademark recognition is to further the ability of consumers to distinguish among competing producers. See Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 198 (1985). Among the conditions for registration, the mark must hold some level of distinctiveness; the more distinctive the mark, the more readily it qualifies for the principal register. A generic descriptive term is unregistrable if it signifies to the consumer only a broad class of goods or services rather than a specific one (i.e. coffee versus Starbucks, sport cars versus Lamborghini, luxury handbags versus Louis Vuitton). The Lanham Act, enacted in 1946, extended protection to descriptive terms; in order to be placed on the principal register, however, descriptive terms must achieve significance in the “minds of the public”. See Wal-mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 211 (2000). The public’s perception of a mark is a core principle of the Lanham Act; whether a term is considered generic depends on its meaning to consumers. Without a secondary meaning, generic descriptive terms may only be eligible for the supplemental register, which provides more modest benefits. Relying on this core principle, the Supreme Court found that if “Booking.com” was generic, consumers would understand other related services (i.e. Travelocity, Kayak, Expedia) to be a sub-species or sub-set of Booking.com, which is simply not the case.
The PTO maintained that when a generic term (i.e. booking) is combined with a generic top-level domain (i.e. “.com”), the resulting combination is inherently generic. The PTO urged that this exclusionary rule follows from a pre-Lanham Act common-law principle applied in Goodyear’s India Rubber Glove MFG. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888), holding that a corporate designation affixed to a generic term cannot confer trademark eligibility. The dissent joined in this argument, stating that “Generic.com” conveys that the generic good or service is offered online and nothing more. Writing for the majority, Justice Ginsburg refuted this argument, pointing to the PTO’s past practices in granting registrability of “art.com” and “dating.com”. If the PTO’s argument were successful, those existing “generic.com” trademarks would be at risk of cancellation. Relying on the reasoning in Goodyear, the Court pointed out that the PTO and the dissent disregarded a foundational principle of the Lanham Act, i.e. whether a term is generic depends on the meaning to consumers.
Additionally, the Court found it important that only one entity can occupy a particular Internet domain name at one time. Because of this, a consumer is likely to understand that any “generic.com” mark refers to a specific entity rather than a broad class of goods or services. This Internet real estate exclusivity sets the proposed marks apart from terms like “Wine, Inc.” and “The Wine Company”. For this reason, the Court resisted the PTO’s position that “generic.com” terms are only capable of signifying a class of goods and services and are incapable of identifying a single source provider, a requisite for trademark registrability.
Booking.com conceded that its mark is weak, and that federal registration of the term will not prevent competitors from using the word “booking” to describe their own services. That said, Booking.com can obtain federal registration of its “Booking.com” mark and will be afforded all of the trademark protections and perks that come with it. Good news for other “generic.com” marks. The Court’s decision, however, does not suggest that every generic term affixed to an Internet domain will be afforded the same protection. A company needs to advance a generic trademark term to the point where it is specifically and distinctively identifiable by the consuming public and serves to distinguish the company’s goods and services from those of its competitors to be entitled to federal trademark registration.
