United States PTO v. Booking.com B.V.
140 S. Ct. 2298 (2020)
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Rule of Law:
A term composed of a generic word and a top-level domain like '.com' is not automatically generic. Its eligibility for trademark protection depends on whether consumers perceive the term as a whole as referring to a class of goods or services, rather than as a source-identifying mark.
Facts:
- Booking.com is a digital travel company that provides online hotel reservation and other travel-related services.
- The company operates under the brand name "Booking.com," which is also the domain name for its website.
- The word "booking" is a generic term for the service of making travel reservations.
- The top-level domain ".com" is a generic designator signifying a commercial website.
- Booking.com filed applications to register four marks, all of which contained the term "Booking.com".
- Evidence presented in the lower courts established that the consuming public primarily understands "Booking.com" to be a brand name that refers to a specific company, not a generic term for any online reservation service.
Procedural Posture:
- Booking.com filed applications with the U.S. Patent and Trademark Office (PTO) to register marks containing the term 'Booking.com'.
- A PTO examining attorney refused registration on the ground that the term was generic.
- Booking.com appealed to the PTO's Trademark Trial and Appeal Board (TTAB), which affirmed the refusal.
- Booking.com sought judicial review in the U.S. District Court for the Eastern District of Virginia.
- The District Court, acting as the court of first instance for judicial review, reversed the TTAB's decision, finding 'Booking.com' was descriptive and had acquired secondary meaning, and was therefore not generic.
- The PTO, as appellant, appealed the District Court's genericness finding to the U.S. Court of Appeals for the Fourth Circuit, with Booking.com as appellee.
- The Fourth Circuit affirmed the District Court's judgment.
- The U.S. Supreme Court granted the PTO's petition for a writ of certiorari.
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Issue:
Does the combination of a generic term and a top-level domain like '.com' automatically create a generic mark that is ineligible for trademark protection?
Opinions:
Majority - Justice Ginsburg
No. The combination of a generic term and a top-level domain like '.com' does not automatically create a generic mark that is ineligible for trademark protection. Whether a term is generic depends on its meaning to consumers. A term styled 'generic.com' is a generic name for a class of goods or services only if consumers perceive it that way. The bedrock principle of trademark law is that a mark's distinctiveness is determined by its meaning to the consuming public, a standard reflected in the Lanham Act's 'primary significance' test. The U.S. Patent and Trademark Office's (PTO) reliance on the pre-Lanham Act case Goodyear, which held that adding 'Company' to a generic term does not create a protectable mark, is misplaced. Unlike 'Company,' which merely indicates a business form, a domain name is exclusive to one entity at a time, which can convey a source-identifying function to consumers. Because the lower courts found that consumers perceive 'Booking.com' as a source-identifying brand rather than a generic class of services, the term is not generic.
Dissenting - Justice Breyer
Yes. The combination of a generic term and a top-level domain like '.com' ordinarily creates a generic mark that is ineligible for trademark protection. The addition of '.com' to a generic term like 'booking' is analogous to adding 'Company' or 'Inc.' as in the Goodyear case; it conveys no source-identifying meaning and only describes the nature of the business—an online commercial entity. The functional exclusivity of a domain name does not change the generic character of the term itself. The majority's reliance on consumer survey evidence is problematic because such surveys can demonstrate consumer association with a single source even for generic terms, particularly for a first-mover in a market, which conflates the test for secondary meaning with the distinct inquiry for genericness. Granting trademark protection to 'generic.com' terms creates serious anticompetitive consequences by allowing owners to monopolize a zone of useful, common-sense domain names and chill competition through the threat of litigation.
Concurring - Justice Sotomayor
No. There is no per se rule automatically rendering a 'generic.com' term ineligible for trademark protection. I agree with the Court's holding that no such comprehensive rule exists. However, consumer survey evidence, while relevant, may be an unreliable indicator of genericness in this context, and flaws in survey design can limit its probative value. Other sources of evidence, such as dictionaries and usage by consumers and competitors, are also critical. While the District Court may have erred in its factual conclusion that Booking.com is not generic, that factual question is not before this Court, which is only deciding the legal question of whether a categorical rule applies.
Analysis:
This decision rejects a bright-line rule for 'generic.com' marks, cementing a fact-intensive, consumer-perception standard for determining genericness in the digital age. By distinguishing the exclusive nature of domain names from generic corporate identifiers like 'Inc.', the Court provides a path for many internet-based companies with descriptive names to achieve federal trademark registration. This ruling will likely lead to an increase in applications for such marks and shift future legal battles toward the quality and interpretation of consumer survey evidence. The decision also signals that while these marks may be registrable, they will likely be considered 'weak,' meaning their owners may face significant challenges in proving likelihood of confusion when enforcing their rights against competitors using similar descriptive terms.
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