A generic term combined with a non-source-identifying term is just a generic term, right? In United States Patent and Trademark Office v. Booking.com B.V., Case No. 19-46, 2020 U.S. LEXIS 3517, 591 U.S. ___ (June 30, 2020), the U.S. Supreme Court rejected a sweeping rule that the combination of a generic word with ".com" is automatically generic and, therefore, unregistrable per se.
Procedural History
Booking.com, a digital travel company that provides travel-related services under the brand "Booking.com," filed applications to register the mark "Booking.com." A USPTO examining attorney and the Trademark Trial and Appeal Board ("TTAB") concluded that the term "Booking.com" was generic for the services offered and denied registration. According to the Trademark Manual of Examining Procedure ("TMEP") (Oct. 2018), "[portions of the uniform resource locator ('URL'), including the beginning, ('http://www.') and the top-level Internet domain name ("TLD") (e.g., ".com," ".org," ".edu,") indicate an address on the World Wide Web, and therefore generally serve no source-indicating function." TMEP ' 1209.03(m). Because ".com" "generally indicate[s] the type of entity using a given domain name, and therefore serves no source-indicating function, their addition to an otherwise unregistrable mark typically cannot render it registrable." Id. TTAB found that "booking" was a generic term for "making travel reservations" and ".com" only served to identify a commercial website. It therefore concluded that "Booking.com" is unregistrable because it is generic or, in the alternative, descriptive and lacking secondary meaning.
The U.S. District Court for the Eastern District of Virginia and the U.S. Court of Appeals for the Fourth Circuit disagreed with the PTO. Generic terms are the "common name of a product or service itself." Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir. 1996). The District Court, relying on Booking.com's new evidence of consumer perception, concluded that the compound term "Booking.com," as opposed to "Booking," is not generic. Instead, consumer perception evidence indicated that "Booking.com" is descriptive and had acquired secondary meaning as to hotel-reservation services. The USPTO appealed only the District Court's ruling on genericness. The Fourth Circuit affirmed the District Court's determination that "Booking.com" is not generic, finding no error in its assessment of consumer perception and rejecting the USPTO's contention that combining a generic term with ".com" is "necessarily generic." The Fourth Circuit applied the three-step test for genericness: "(1) identify the class of product or service to which use of the mark is relevant; (2) identify the relevant consuming public; and (3) determine whether the primary significance of the mark to the relevant public is as an indication of the nature of the class of the product or services to which the mark relates, which suggests that it is generic, or an indication of the source or brand, which suggests that it is not generic." Booking.com B.V. v. United States Patent and Trademark...
