In the Eyes of the Consumer: US Supreme Court Rules “Booking.com” Is Protectable Mark
Crystal Broughan, Intellectual Property Attorney Jul 2, 2020 in Intellectual Property
Written by Guest Author, Marks Gray Summer Law Clerk Julianna R. Favale
On Tuesday, June 30, 2020, the United States Supreme Court, in an 8-1 ruling, upheld a lower court ruling that “Booking.com” is eligible for federal trademark registration. It was a long time getting there for the online travel company.
Beginning in 2012, Booking.com B.V. filed numerous applications to register Booking.com as a trademark with the United States Patent and Trademark Office. However, the USPTO refused, saying “Booking.com” was a generic term.
Why did the Court ultimately side with Booking.com?
Essentially, they agreed with a lower court ruling that the addition of “.com” to a generic term may allow it to be registered as a trademark or service mark when the term holds meaning with consumers.
Let’s dive a bit more deeply into each side.
Why would the USPTO say that “Booking.com” was generic?
Trademarks serve to distinguish one producer’s goods or services from another’s. Therefore, generic terms (such as “wine” or “haircuts”) are barred from being registered as trademarks. Because they don’t distinguish and designate the source of a product or service from another’s since they are the product or service.¹
The USPTO determined that Booking.com offered services for making reservations for hotels. And since “booking” was the generic service provided, it was not eligible to be a protectable mark.
The organization also relied on an 1888 case, Goodyear’s Rubber Mfg. Co. v. Goodyear Rubber Co.². They asserted that the addition of a top-level Internet domain name (i.e. .org, .biz, .com), does not add source-identifying significance to a generic term in the same way that the addition of the word “Company” generally does not add source-identifying significance to make a generic term distinctive.
United States Supreme Court’s Holding
Since the Supreme Court merely upheld the decision of the Fourth Circuit court³, let’s start there.
In that earlier case, the Fourth Circuit looked to consumer surveys which showed that “74.8 percent of respondents believed that Booking.com was a brand name.”
Because of this, the district court concluded that when a generic word like “booking” combines with a term like “.com”, it is no longer generic. Rather, it is transformed into a descriptive term that could potentially be protected. All that would be needed is an adequate showing that such descriptive term had acquired secondary meaning.
When the case came to them, the United States Supreme Court agreed, holding that
“generic.com” terms can be non-generic upon sufficient showing that consumers “perceive the term as the name of a class, or instead, as a term capable of distinguishing among members of the class.”
In effect, the Court held that USPTO’s per se rule is improper to the extent it disregards consumer perception. This is vitally important, because the “bedrock principle of the Lanham Act” is that “[t]he generic (or nongeneric) character of a particular term depends on its meaning to consumers”.
Additionally, the Court rejected the USPTO’s analogy to Goodyear by emphasizing top-level Internet domain names, unlike adding the word Company, are occupied by only one entity at a time. As such, consumer association with that particular website can accrue.
Ultimately, this decision is a victory for two kinds of brand owners:
- Those whose marks risked cancellation if the USPTO’s per se rule was adopted by the Court, and
- “Generic.com” domain owners who can build brand recognition and apply for a trademark of “generic.com” with a better chance of it being approved.
It should be noted, however, that the Court was careful to clarify that generic.com marks do not automatically confer non-generic status to the marks. The key is consumer recognition and perception.
Emphasis on Consumer Perception
This case highlights the importance of consumer perception in the registration and use of arguably generic or descriptive trademarks.
Justice Ginsburg, writing for the majority, holds that if “Booking.com” was truly generic, consumers would understand “Travelocity—another such service—to be a ‘Booking.com’. We…could ask a frequent traveler to name her favorite ‘Booking.com’ provider.” She went on to conclude that “[b]ecause ‘Booking.com’ is not a generic name to consumers, it is not generic”.
This case illustrates the Court’s acceptance of the “primary significance” test. Showing the Lanham’s Act’s emphasis on consumer perception, the Court held that “[t]he primary significance of the registered mark to the relevant public shall be the test for determining whether the registered mark has become the generic name of goods or services.”⁴
The test is whether the term, as a whole, has a significance to the relevant consumers. If this significance can be proven through consumer perception, the mark should be eligible to be protected as a trademark.
Ultimately, the Booking.com decision underscores the fact that the consumer is king when it comes to brand names.
Implications of Consumer Perception on Trademark Eligibility
Following this case, it is highly likely the introduction of evidence in regards to consumer perception will become increasingly important in trademark litigation.
In her concurrence, Justice Sotomayor, a former IP litigator, discussed how evidence such as consumer surveys, dictionaries, usage by consumers and competitors, and any other evidence bearing on how consumers perceive a term’s meaning will aid in proving non-generic status of a “generic.com” mark.
However, a word of caution: although consumer surveys can be helpful, they will need to be designed skillfully and interpreted properly.
Justice Sotomayor noted that the evidence in surveys may not be reliable to gauge “genericness” where there are flaws in design or inherent weaknesses. She was likely echoing the concerns put forth by Justice Breyer in his dissent that there will always be a subset of individuals who will hold that generic.com refers to a brand.
As such, when conducting consumer surveys, it is important to target the relevant consumers and to ask questions which adequately gauge what people think the name represents as well as if they associate it with a brand.
If you are considering filing a trademark application for the domain name of your business website, stop and consider a few factors.
- Are you using the domain name as a trademark — a source identifier of goods or services?
- Is the domain name featured prominently on your advertising, product packaging, and labeling?
If you are unsure, the IP lawyers at Marks Gray are here to assist you.
- 15 U.S.C. §§ 1052 et seq.
- 128 U.S. 598
- 19-46, 2020 WL 3518365, at *2 (U.S. June 30, 2020).
- 15 U.S.C. §1064(3).