The U.S. Supreme Court on June 30, 2020, decided U.S. Patent & Trademark Office v. Booking.com B.V., handing a win to Booking.com and holding that whether a generic term combined with a “.com” domain name results in a generic composite term “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.”
Generic terms, which simply name a good or service rather than distinguish the source, are not eligible for protection as trademarks. Descriptive terms, which describe a feature or function of the good or service, are minimally protected unless the mark has acquired distinctiveness or secondary meaning. The PTO had refused to register BOOKING.COM, taking the position that the term “booking” is generic for online hotel-reservation services, and merely adding the top-level domain “.com” would not take the mark outside generic territory. To the PTO, generic + generic = generic.
The Supreme Court rejected that per se rule in the context of so-called “generic.com” trademarks — i.e., internet domains that combine generic terms with “.com.” First, the court focused on the fundamental principal that the strength of trademarks depends on how they are perceived by the consuming public. Second, the court distinguished “generic.com” from adding “Company” or “Corporation” to the end of a generic name, which the Supreme Court in Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888), held cannot confer trademark eligibility. The difference with the domain, the court explained, is that “generic.com” can refer only to the single corresponding website. If consumers know that “generic.com” is associated with only one website, operated by only one proprietor, then “generic.com” is not a generic name to consumers.
On July 2, 2020, the U.S. Supreme Court also vacated the ruling by the Fourth Circuit Court of Appeals that Booking.com pay the PTO’s attorney’s fees incurred when Booking.com appealed the PTO’s refusal to register BOOKING.COM to federal court. In December 2019, the Supreme Court had ruled in Peter v. NantKwest, Inc., 140 S.Ct. 365, that the Patent Act’s provision allowing the PTO to recover “expenses” when an applicant appeals to federal court does not include attorney fees. In light of that recent decision, the Supreme Court indicated that the nearly identical provisions of the Lanham Act would preclude the PTO from recovering attorney’s fees it incurred in Booking.com, and remanded this to the 4th...
