A generic word combined with ".com” can create a federally protectable trademark, the U.S. Supreme Court ruled Tuesday in an opinion by Justice Ruth Bader Ginsburg.
In a case that was the subject of the high court’s first-ever remote oral argument, the Supreme Court affirmed the U.S. Court of Appeals for the Fourth Circuit’s ruling that the combination of the generic word “Booking” with the generic top-level domain ".com” could receive federal trademark protection even if “Booking” alone could not.
The decision axed the PTO’s bright-line rule against registering a generic word plus top-level domain combinations, and it opens the door for the owners of others to apply for trademarks.
Several trademark attorneys agreed with the ruling, including the justices’ stance on the importance of consumer perception in trademark law.
“I think that the court totally got it right. I think that the majority sort of hit the nail on the head when it said because Booking.com is not a generic name to consumers, it’s not generic,” trademark attorney Fara Sunderji of Dorsey & Whitney LLP said. “It’s all about consumer perception. It’s sort of a hallmark of this case, and a hallmark of trademark law.”
Attorneys also said the ruling will encourage litigation. In a manner “typical” of the Supreme Court, the ruling stated the rule but not how to implement it, trademark attorney Tyler J. “TJ” Mantooth of Hall Estill said.
“If I have an applicant, I would like to be able to tell them, ‘This is what we need, this is the evidence we need to prove this is not generic.’ It’s relatively daunting for a practitioner like myself to advise clients until this gets sorted out through the trademark office,” Mantooth said.
Mantooth said that “havoc” would extend to courts as entities wield costly litigation as leverage. While the Supreme Court said protection for marks like Booking.com may be narrow, companies could still end up “throwing around lawsuits” because evaluating domain marks’ validity and similarity would be fact-heavy questions difficult to resolve before trial, he said.
Trademark attorney of J. Kevin Fee of Morgan, Lewis & Bockius LLP agreed.
“Whenever the court rejects ‘per se’ rules and adopts fact-dependent analysis, it always invites litigation,” Fee said.
Consumers’ ‘Favorite Booking.com’
The opinion applied a broader trademark principle of considering the “primary significance” of a mark to the public to determine whether it’s generic, or merely refers to the product’s a class of goods or services. Consumers don’t see Booking.com as generic because they don’t see competitors like Travelocity as a “Booking.com” provider, the court said.
“Because ‘Booking.com’ is not a generic name to consumers, it is not generic,” Ginsburg wrote.
The Patent and Trademark Office argued that an 1888 precedent holding that a generic word followed by “Company” or “Inc.” couldn’t serve as a trademark also applied to the addition of a generic domain name. The Federal Circuit and the Ninth Circuit had agreed. But the high court said that unlike “company” or “inc.,” only one entity can own a particular domain, so it can be used to inform consumers of the source of a product.
The Supreme Court also dismissed PTO concerns about handing Booking.com a monopoly on a base term. Booking.com itself said the registration wouldn’t let it block other trademarks, including “booking,” just the whole mark, the court noted. The mark also may be considered weak under the standard analyses conducted under trademark law, the court said.
The ruling only deals with the question of the legitimacy of the PTO’s rule against registering generic domains. Booking.com would still have to show that consumers consider “Booking.com” a source of goods to be registered as a descriptive mark.
Booking.com praised the decision for showing the legal system’s ability to evolve to reflect the digital age and in a statement called it a “victory for any brand owner who has invested to build a brand.”
Justice Stephen G. Breyer dissented. Adding a top-level domain to a generic term “has no ability to identify and distinguish the source of goods and services,” he wrote. The precedent barring “Generic Co.” still applies, he said: A generic term can suggest association with a specific entity, but that doesn’t mean it’s not generic, he argued.
The ruling fit in with a recent spate of intellectual property decisions in which the high court rejected bright-line rules, Fee said. He cited a recent ruling striking down some circuits’ categorical rejection of awarding profits in trademark cases without a finding of willfullness. Fee said the ruling was an even bigger win than he expected for other owners of generic domains, one that could result in a “bit of a land grab” of registrations.
“I think this court laid out a pretty generous test for whether a arguably generic term plus a top-level domain is generic,” Fee said. “I was expecting the court to say Booking.com is an unusual case factually where consumers identify it as a source.”
Williams & Connolly LLP and Foley & Lardner LLP represented Booking.
The case is U.S. Patent & Trademark Office v. Booking.com B.V., U.S., No. 19-46, 6/30/20.