June 30, 2020

Public Perception, Not Per Se Rules, Determines Registrability of Marks that Include Generic Terms

Today in UNITED STATES PATENT AND TRADEMARK OFFICE ET AL. v. BOOKING.COM B.V., the Supreme Court rejected the USPTO’s position that BOOKING.COM was unregistrable because it is merely a combination of a generic term and a top-level domain designator (i.e., “.com”).

The Supreme Court rejected the application of a per se rule against the registrability of compound marks based on generic terms, finding instead that consumer perception of the term should control. Judge Ginsberg noted that “[b]ecause ‘Booking.com’ is not a generic name to consumers, it is not generic.”

The Court distinguished Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598 (1888), where it held that a generic corporate designation added to a generic term does not confer trademark eligibility. The Court found the comparison faulty because of the nature of the internet — a “generic.com” term could convey to consumers a source-identifying characteristic, namely an association with a particular website.

The Court also rejected a per se rule that every generic term combined with a tld is automatically not generic, holding that whether any given generic.com term is generic “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.”

It will be interesting to see what the USPTO does with the application on remand. Will it require a disclaimer of the generic term “booking” and the tld “.com”?  If so, then the applicant will have disclaimed the entire mark apart from itself.

It will also be interesting to see what booking.com will do with its registration. No reasonable competitor would consider using “booking.com” as their own brand — to do so would only drive customers to booking.com. What would be the point? 

Can booking.com tie up “booking” combined with other tld’s? Booking.com conceded that booking.com would be “weak” (Tr. of Oral Arg. 66). Indeed they will get a registration only because of the association of the term with a particular website. What of a booking.online (which presently appears to be available)?  Would that create a likelihood of confusion, or would the fame of booking.com that won them a registration make such confusion unlikely?

Competitors are entitled to use the generic term “booking.” What remains to be seen is how.

All others interested in registering trademarks should note that you can build protectable domain name trademarks from generic terms, provided you simultaneously build public awareness.