On June 30, 2020, the U.S. Supreme Court ruled that Booking.com is not a generic term and is eligible for federal trademark registration. (1) With this 8-1 decision, the "comprehensive rule" of the US Patent and Trademark Office was abolished ("USPTO") that the combination of a generic word and .com is generic and therefore not applicable under US trademark law Trademark registration is authorized. Instead, in a statement written by Judge Ginsberg, the Court ruled: "A term labeled" generic.com "is only a generic name for a class of goods or services if the term has that meaning to consumers." Findings of lower courts, which the USPTO had not contested, did not consider Booking.com to be the generic term for online hotel reservation services in general.
This decision not only paves the way for additional ".com" brands, but also opens the door to arguments that any generic term can become a brand if consumers assume that it refers to a particular source of goods or services – one Decision uprooted for a long time. embedded brand principles.
The Court's opinion emphasized that consumer perception is the key element in determining whether a particular term is generic and that the relevant question was whether consumers considered “Booking.com” as the name for online hotel reservation services Felt great. Given that consumers did not consider Booking.com to have this meaning, the Court ruled that the term was not generic. However, the Court warned of a blanket rule and found that the correct term for a generic.com term was whether consumers perceived the term as identifying a class in general or a particular member of that class. If consumers saw generic.com as the identity of a class, the term would be generic.
By rejecting the USPTO's view that the combination of a generic term and a top-level domain (such as .com) is generic, the Court distinguished the 1888 judgment in Goodyears India Rubber Glove Mfg. Co. against Goodyear Rubber Co., (2) on which the USPTO relied heavily. In this case, the Supreme Court ruled that adding the word "company" to a generic term did not result in a trademark that could be protected. In the present case, the Supreme Court ruled that domain names, unlike company names, are necessarily unique because only one company can be assigned a specific domain name. As a result, the Court found that consumers understand that a given domain name can identify a unique source, rather than just a generic class of goods or services. The Court also found that Goodyear's understanding of the USPTO was "flawed" as it excluded consumer perception as a factor in determining whether a term was generic.
Justice Breyer's dissent emphasized the potential anti-competitive effects of the majority decision. Justice Breyer described the competitive advantages associated with short, generic domain names that are easy to remember and find on the web. Booking.com. As a result, the dissent found that granting protection for terms like Booking.com could “drive the economy in an anti-competitive direction” because holders of these registrations could exclude others from using similar domain names.
The dissent also found that the Goodyear principle that adding a company name was not sufficient to distinguish one company’s goods or services from another was “legally and logically sound”. Justice Breyer believes that a .com or other top-level domain corresponds to the company name in Goodyear and should not turn a generic term into a potentially protectable brand. The dissent therefore came to the conclusion that the term Booking.com "is as general as its components". Judge Breyer denied the majority's confidence in what he saw as "only partially conclusive" in this context because evidence of a consumer perception of a term does not negate the generic nature of a term.
In the majority response to the dissent, it was found that the USPTO did not protest against the exclusive use of Booking.com as a trademark, but rather granted a trademark owner "improper control" over conditions similar to "booking" that competitors and others are free should use without fear of injury. The Court pointed out other lessons that should protect against anti-competitive activities or monopolistic uses of basic concepts. These doctrines include the fair use of trademark doctrine, which allows the use of trademark terms in their generic / descriptive sense, as well as the fundamental principle of the trademark that "weak" trademarks do not have a wide scope of protection in the event of an infringement suit. The majority also found that Booking.com itself recognized that federal registration of the brand would not prevent competitors from using “booking” to describe their services.
Take that away: Booking.com is likely to usher in a new era of trademark registration for domain names that would previously have been rejected as generic. It can also promote the registration of "generic" brands that have been associated with a particular source of goods or services due to monopolies or strong market identification. Such results may well result in increased litigation or intimidation litigation and / or a new age of competition lawsuits over trademarks of domain names, as Justice Breyer predicted. Some commentators anticipate an increase in litigation from trademark bullies trying to expand the scope of their .com trademarks. The chances for these results are initially in the hands of the bookmakers.
(1) USPTO v. Booking.com, No. 19-46 (S. Court, June 20, 2020).
(2) 128 U.S. 598 (1888).