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INSIGHT: Trademark Rights Still Intact After High Court Booking.com Decision

July 22, 2020, 8:01 AM

In U.S. Patent and Trademark Office v. Booking.com B.V., the U.S. Supreme Court held 8-1 that “booking.com” is eligible for trademark protection.

The Supreme Court rejected the U.S. Patent and Trademark Office’s (PTO) argument that adding the generic top-level domain, “.com,” to a generic term ipso facto creates a “genericterm.com” that also is ineligible for trademark protection. Instead, it agreed with the U.S. Court of Appeals for the Fourth Circuit that the issue of whether the addition of “.com” to a generic term creates a “genericterm.com” that is eligible for trademark protection “turns on whether that term, taken as a whole, signifies to consumers a class of goods or services.”

If so, then the “genericterm.com” does not perform the source-identifying role of a trademark, and is not eligible for trademark protection; if not, then the “genericterm.com” is eligible for trademark protection.

The Day After the Decision

The day after the Supreme Court issued its decision in Booking.com, businesses and individuals alike filed applications with the PTO, seeking to register putative “genericterm.com” marks, including:

  • gungroup.com for an online forum/internet chatroom for guns;
  • legalupdates.com for providing news and commentary about the law;
  • patentassociate.com for attorney services, including a website that provides information about patents and patent applications;
  • rate.com for financial services, including mortgage origination and lending;
  • recruiter.com for recruiting services; and
  • translations.com for language translations and interpretation.

These recently filed applications highlight two aspects of trademark law that brand owners should not lose sight of following Booking.com, namely: (i) how to create trademark rights in “genericterm.com” marks, and (ii) the scope of trademark rights in “genericterm.com” marks.

In the U.S., filing an application to register a “genericterm.com” mark (or any other mark) with the PTO does not create rights in that mark. Nor does creating a domain name or displaying “genericterm.com” in a URL create rights in that mark.

This is because unlike nearly every other jurisdiction in the world, trademark rights in the U.S. flow from “use” of the mark in commerce, i.e.: using the mark as an attention-getting symbol that identifies the source of goods and/or services, and distinguishes those goods and/or services from others in the marketplace.

‘Use in Commerce’ Requirement Stands

The Supreme Court’s decision in Booking.com did not alter or remove the “use in commerce” requirement. Accordingly, before brand owners file an application with the PTO (even an intent-to-use application), they should ensure that they are using (or, at a minimum, have a bona fide intent to use) their applied-for “genericterm.com” mark in commerce, and not just as a domain name or URL.

Otherwise, the PTO will likely reject an application to register a “genericterm.com” mark on the ground that it does not function as mark but rather merely directs internet users to a website and/or conveys information about the nature of the website to which the domain name resolves.

Mark Still Must Be Distinctive

Brand owners also should not interpret the Supreme Court’s decision in Booking.com to mean that a generic term becomes eligible for trademark protection by appending “.com” to the term. In Booking.com, the Supreme Court reinforced the rule that, in addition to using a mark in commerce, the mark must be “distinctive” to receive trademark protection.

In the context of “genericterm.com” marks, “distinctive” means that consumers associate the “genericterm.com” with a brand/source of goods and/or services instead of simply a domain name or a website that contains information about the generic term.

Although not a guarantee, the most effective way to establish trademark distinctiveness is through a well-designed consumer survey. Consumer surveys are time-consuming and expensive—two luxuries that owners of small brands often cannot afford. Accordingly, after conducting a trademark and domain-name “clearance” search, many owners of small brands may decide to forego seeking registration of their “genericterm.com” marks.

Proof of Trademark Infringement Stays the Same

Finally, some owners of “genericterm.com” marks may interpret the Supreme Court’s decision in Booking.com as allowing them to stop others from using the generic term in general.

That would be a mistake. The Supreme Court did not change the well-settled rule that trademark infringement requires proof of (i) ownership of a valid mark that is entitled to protection, and (ii) conduct by the defendant that creates a likelihood of consumer confusion.

Regarding the latter, whether a likelihood of confusion exists is a multi-factor test that examines, among other things, the overall commercial impression created by the parties’ marks in the marketplace, whether the parties use their marks in connection with competing goods and/or services, and the sophistication of the relevant consumer base.

Thus, owning trademark rights in a “genericterm.com,” by itself, is insufficient to stop others from using the generic term in general. This is especially true if a third party uses the generic term, for its generic meaning, in connection with advertising and promoting its own goods and services.

Known as the affirmative defense of “classic” or descriptive fair use, this is a complete bar to liability for alleged trademark infringement—and the Supreme Court’s decision in Booking.com did not alter or remove the availability of this affirmative defense in the context of “genericterm.com” marks.

In short, the Supreme Court’s decision in Booking.com, did not change what many larger, existing brands, such as law.com, weather.com, hotels.com, wine.com, cars.com, and more already knew: consumers can—and often do—associate a “genericterm.com” mark with a brand instead of just a website that contains information about the generic term.

Nonetheless, all brand owners should be aware that the Booking.com decision did not change the requirements for establishing trademark rights, or, once established, the scope of those rights.

This column does not necessarily reflect the opinion of The Bureau of National Affairs, Inc. or its owners.

Author Information

A. John P. Mancini is a partner in Mayer Brown’s New York office and a member of the global Intellectual Property practice. He has served in various firm management roles, including a prior tenure as global co-chair of the Intellectual Property practice and as a past member of the firm’s Global Partnership Board.

Kristine M. Young is a partner in the Intellectual Property group of Mayer Brown’s Chicago office. She has a broad range of experience encompassing litigation in federal and state court, transactional work, and matters before the PTO, Trademark Trial and Appeal Board, and the WIPO Arbitration and Mediation Center.

Jonathan W., Thomas is a senior associate in the Intellectual Property group of Mayer Brown’s New York office.

Madelaine M. Thomas is an associate in the Intellectual Property group of Mayer Brown’s Chicago office.

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