The Supreme Court, in an 8-1 decision, rejected the Patent and Trademark Office’s (PTO) “sweeping rule” that the combination of a generic word and “.com” remains generic, and thus ineligible for trademark registration. Booking.com was originally rejected from obtaining a trademark for its brand due the PTO rule.
Justice Ginsburg wrote the opinion of the Court which Roberts, Thomas, Alito, Sotomayor, Kagan, Gorsuch, and Kavanaugh joined. Justice Sotomayor filed a concurring opinion, and Justice Breyer was the lone dissenter. The case uniquely was the first case ever to have its oral arguments performed via teleconferencing due to the COVID-19 pandemic back in May.
The PTO originally maintained the standard that “[a] generic name—the name of a class of products or services—is ineligible for federal trademark registration.” Booking.com’s request to register “Booking.com” as a federal trademark was rejected by the PTO, so it sought judicial review where the Eastern District Of Virginia and the Court of Appeals both agreed that consumers do not view “Booking.com” as generic, and therefore unlike the term ‘booking’, “Booking.com” is not generic.
The PTO’s reasoning was “Booking” means making travel reservations and “.com” represents a commercial website. Therefore, the board ruled that “customers would understand the term BOOKING.COM primarily to refer to an online reservation service for travel, tours and lodging. Additionally, the PTO argued, if “Booking.com” is descriptive, not generic, it is unregistrable because it lacks secondary meaning.”
The Court laid out three “guiding principles” to rank a term as generic. First, a “’generic’ term names a ‘class’ of goods or services, rather than any particular feature or exemplification of the class.” Next, “for a compound term, the distinctiveness inquiry trains on the term’s meaning as a whole, not its parts in isolation.” Finally, “the relevant meaning of a term is its meaning to consumers.” From there, the Court stated, “whether “Booking.com” is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services.” However, the lower courts found that consumers did not perceive the term “Booking.com” that way, and the PTO no longer disputes that determination.
Disagreeing with that conclusion, the PTO pushed for the Court to follow a “nearly per se rule that would render ‘Booking.com’ ineligible for registration regardless of specific evidence of consumer perception.” Justice Breyer in his dissent agrees with the PTO in that “when a generic term is combined with a generic top-level domain like ‘.com’ the resulting combination is generic.” The Court rejected this view, but articulated “we do not embrace a rule automatically classifying such terms as nongeneric.” Finally, the court held whether a 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.”
Justice Sotomayor noted two “observations” in her very brief concurrence. First, that Justice Breyer’s dissent makes a strong point “that consumer-survey evidence ‘may be unreliable indicator of genericness.’” Second, the PTO could have properly concluded via dictionary and usage evidence, “that Booking.com is in fact generic for the class of services at issue,” but she states that was not the issue before the court.
Booking.com was represented by attorneys from Williams & Connolly, Debevoise & Plimpton, and Foley & Lardner.