The Supreme Court has heard oral arguments via public teleconferencing for the first time in its history, as a result of the COVID-19 pandemic. The first argument heard was in U.S. Patent and Trademark Office v. Booking.com, a case concerning whether a generic term with the addition of a domain, such as “.com,” can receieve trademark protection. The suit came after Booking.com tried to trademark is travel reservation website.
In 2012 Booking.com filed to register a service mark for its online reservation business, however, the USPTO argued that this term was generic and cannot be trademarked. The case went to the Supreme Court during the summer of 2019 after the writ of certiorari was filed by the USPTO. In March, the oral argument was postponed until May 4 due to the pandemic.
The question before the Court is: “Whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.” I
USPTO argued that “it is a fundamental principle of trademark law that no party can attain a trademark for a generic term like wine, cotton or grain… As the Lanham Act confirms, a generic term is never entitled to trademark protection matter no matter how much money or effort the promoter has used and what success it has achieved. In other words, secondary meaning or acquired distinctiveness is simply irrelevant to generic terms… It is undisputed that ‘booking’ is generic for the hotel reservation services Respondent provides… and Respondent could not federally register ‘booking.’” USPTO reminds the Court of its decision in Goodyear, which deemed that “no party can monopolize a generic term.” USPTO stated that allowing Booking.com to register its term would give them a monopoly on the term and similar terms and thus confer business advantages
Chief Justice Roberts countered that “Booking.com is not a generic term to describe those services” in reference to Travelocity, Priceline, and other similar sites. However, the USPTO held firm that Booking.com is generic because of “how consumers refer to it” and because of how the “public would understand a specific term” or entity. When asked by Justice Thomas if Booking.com could get a 1-800 number, such as 1-800-BOOKING, similar to a 1-800-PLUMBER, which has a 1-800 number, the USPTO agreed that technically this would be allowed. Justice Thomas also noted that like a 1-800 number, there can only be one Booking.com domain.
Justice Ginsburg questioned how many domains already have generic terms in their names, and thus should be cancelled under USPTO’s train of reasoning. Specifically, Booking.com used the example of Cheesecake Factory, which USPTO states “is not a literal factory producing cheesecakes, it is a restaurant.” Therefore, USPTO argued the mark was not generic.
The USPTO specifically took issue with Booking.com’s desire to monopolize the word “booking” online because “some of its competitors with longer names like ebooking.com and hotelbooking.com, can include booking.com.” Additionally, the booking.com domain name can be confusingly similar to other domains for customers. “Competitors will not want use these terms in marketing materials” to avoid promoting their competitor. USPTO raised antitrust concerns in relation to Booking.com, stating that “Respondent is looking for something it could not get in the brick and mortar world.”
The Justices questioned the USPTO’s comparison of this case to Goodyear, as that case predates the current trademark law by nearly a century. The Justices also felt that the test Goodyear addressed is not the same test that the Booking.com case is looking to address. However, Justice Alito noted that both the case and the Act predate the Internet age and the language of the Lanham Act must be reconciled with the internet.
