Trademark Pops the Dot Com Bubble: SCOTUS Approves BOOKING.COM
July 6, 2020
This week, the Supreme Court reaffirmed a central pillar of trademark law, namely, that consumers are the ultimate arbiters of whether a term is acceptable for federal trademark registration. The Court ruled in favor of the digital travel company Booking.com in its prolonged dispute with the U.S. Patent and Trademark Office regarding federal registration of the term BOOKING.COM. It deemed BOOKING.COM registrable, despite a consensus between the parties that “BOOKING” is a generic term for the online booking services that Booking.com offers, which ordinarily would be fatal to registration.
A trademark is a designation of source: it indicates to consumers the origin of a particular product so that consumers are able to distinguish between different providers of products without confusion. Functionally, it can be any word, name, symbol, device, or any combination thereof, which identifies and distinguishes the goods and services provided in conjunction with the mark from the goods and services of others. “Generic” terms are ineligible for protection under trademark law because they do not identify the source of a product and are merely common descriptions of the goods or services offered.
The PTO had rejected Booking.com’s applications to register BOOKING.COM as a trademark because “BOOKING” is a generic term for, well, booking. Before the Court, the PTO sought a ruling that the addition of “.COM” to an inherently generic term does not elevate that term beyond genericness.
Justice Ginsburg, delivering the opinion, rejected the PTO’s gambit for such a “sweeping” rule. Her analysis rested upon the impressions of consumers: “[a] term styled ‘generic.com’ is a generic name for a class of goods/services only if the term has that meaning to consumers. Consumers, according to lower court determinations uncontested here by the PTO, do not perceive the term ‘Booking.com’ to signify online hotel-reservation services as a class, but rather as a company that offers those services.” In other words, because consumers recognize BOOKING.COM to indicate the services of Booking.com specifically, rather than online booking services generally, the overall term BOOKING.COM therefore is not generic and is registrable as a trademark.
The Court also rejected the PTO’s comparison of “.com” to corporate designations such as “Company” because only one entity can own a particular Internet domain name at a time. As such, it reasoned “.com” adds a source-identifying meaning that corporate designations cannot. This would suggest that companies that promote their domain name as a trademark should consider registering the domain name with the PTO.
This ruling, however, does not mean that entities should be encouraged to adopt generic or even descriptive names for their trademarks. Justice Ginsburg was sure to point out that “[w]hile we reject the rule proffered by the PTO that ‘generic.com’ terms are generic names, we do not embrace a rule automatically classifying such terms as [non-generic]. Whether any given ‘generic.com’ term is generic, we hold, 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.”
In practice, this means an entity hoping to register a “generic.com” trademark will have to go through considerable time, expense, and advertising efforts to ensure that consumers identify its goods and services with the entity. But, for companies like Booking.com, the path to federal trademark protection remains open.
This memorandum is a summary for general information and discussion only and may be considered an advertisement for certain purposes. It is not a full analysis of the matters presented, may not be relied upon as legal advice, and does not purport to represent the views of our clients or the Firm. Scott W. Pink, an O’Melveny special counsel licensed to practice law in California and Illinois and Andrew M. Levad, an O’Melveny associate licensed to practice law in California, contributed to the content of this newsletter. The views expressed in this newsletter are the views of the authors except as otherwise noted.
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