United States Patent and Trademark Office v. Booking.com B.V.

United States Patent and Trademark Office v. Booking.com, decided June 30th, 2020. The Supreme Court affirmed the Fourth Circuit and held that adding "dot-com" to a generic term does not automatically make the whole term generic. A "generic dot-com" term is generic only if consumers actually understand it to name a class of goods or services. The vote was eight to one. Justice Ginsburg wrote for the Court; Justice Breyer dissented alone. Here's the brief.

Booking.com is a digital travel company that runs a hotel-reservation website under the same name. It applied to register several trademarks, each containing the term "Booking.com." A Patent and Trademark Office examiner and the Trademark Trial and Appeal Board refused registration. "Booking," they reasoned, is generic for hotel-reservation services, and "dot-com" signifies a commercial website — so the combination was generic too, and unregistrable.

Booking.com sought review in federal district court, where it introduced new evidence of how consumers perceive the term. The district court found that consumers do not understand "Booking.com" to name a class of services; the term was descriptive, not generic, and had acquired secondary meaning for hotel-reservation services. The Court of Appeals for the Fourth Circuit affirmed, finding no error in that assessment of consumer perception, and rejected the office's contention that combining a generic term with "dot-com" is necessarily generic. The Supreme Court granted cert.

The question was narrow: whether there is a nearly per se rule that a "generic dot-com" term is always generic, and so always ineligible for federal registration.

Trademark law sorts terms along a scale of distinctiveness — fanciful, arbitrary, suggestive, descriptive, and generic. Descriptive terms can be registered only once they acquire secondary meaning; generic terms — the name of the class itself — sit at the bottom and cannot be registered at all. The touchstone throughout the Lanham Act is consumer perception.

Three principles were common ground: a generic term names a class; a compound term is judged as a whole, not by its parts in isolation; and the relevant meaning of a term is its meaning to consumers.

Because the courts below found — and the office no longer disputed — that consumers do not perceive "Booking.com" as a name for online hotel-reservation services, that finding resolved the case. The term is not generic.

The Court refused the office's per se rule; it equally refused the opposite rule that every "generic dot-com" is automatically registrable.

The office rested its rule on Goodyear's India Rubber Glove Manufacturing Company v. Goodyear Rubber Company, an eighteen eighty-eight decision holding that adding "Company" to a generic name confers no trademark rights. The Court distinguished Goodyear. Unlike a corporate designation, which merely signals that some parties have formed an association to deal in the goods, only one entity can occupy an Internet domain name at a time.

And to the extent Goodyear was read as a rule indifferent to consumer perception, the Court said, it was incompatible with the Lanham Act — Goodyear stood instead for a more modest principle.

The Court also addressed the office's policy fear that protecting a term like "Booking.com" would let its owner monopolize ordinary language. Ordinary trademark doctrines, the Court answered, already keep a descriptive mark narrow: a competitor infringes only where its use is likely to confuse consumers, and classic fair use protects anyone who uses a descriptive term in good faith to describe its own goods.

Justice Sotomayor joined the Court's opinion in full and concurred, cautioning that survey evidence can be an unreliable indicator of genericness. Justice Breyer, dissenting alone, argued that a "generic dot-com" conveys only the nature of the business and nothing more, and should remain ineligible for registration.

Booking.com settled that there is no special rule for Internet-domain marks. A "generic dot-com" term stands or falls on the ordinary question that governs any compound term: what does it mean to consumers? The Court rejected a bright-line rule in favor of a fact-specific inquiry, and confirmed consumer perception as the bedrock of genericness under the Lanham Act. It left the harder questions — what evidence suffices, and how far protection for such marks reaches — to be worked out case by case.

United States Patent and Trademark Office v. Booking.com B.V., 591 U.S. 549, decided June 30th, 2020. I'm John Goodhue. Thanks for watching.