USPTO v. Booking.com is an appeal from the USPTO and TTAB’s rejecting registration of the mark BOOKING.COM.
As many readers may know — and therein lies the reason for the decision discussed here — Booking.com is an online service that, not surprisingly, facilitates making reservations for flights and hotel rooms. The applicant submitted BOOKING.COM to the US Patent and Trademark Office (USPTO) for trademark registration on the Principal Register. The USPTO rejected the application on the grounds that the mark was generic, and Booking.com appealed to the Trademark Trial and Appeal Board (TTAB), which affirmed the USPTO’s determination.
On the next level of appeal, the district court was able to review more evidence than the TTAB, and reversed the TTAB’s decision. On further appeal, the Fourth Circuit agreed, and ultimately the Supreme Court agreed as well. Justice Ginsburg wrote for the majority.
The issue was whether adding “.com” to “booking” made it a protectable trademark. It’s long been held that adding two generic terms together can only yield another, compound generic term.
The USPTO cited to Goodyear’s India Rubber Glove Mfg. Co., a decision from 1888. In that case, the application to register GOODYEAR RUBBER COMPANY was rejected because at that time, “Goodyear Rubber” was generic for goods produced by the process known as “Goodyear’s invention”. (Ah, the price of success: to be in such widespread use that the former brand becomes generic.) At that time, the Court reasoned that adding the generic word “Company” could not change the mark from being generic, and the combined words could not serve as a trademark.
In making its ruling (in 2020), the Supreme Court majority now reasoned that since Booking.com is a registered domain name, it starts with distinctiveness. That is, only one company can get any particular domain name. Additionally, no one suggested that anyone used the purportedly generic term as the means of identifying the services at issue. That is, the USPTO didn’t assert that anyone would say “What Booking.com are you using for your trip?”
But it was the survey evidence that proved pivotal: 73% of the people polled agree that Booking.com is distinctive of a particular brand. Apparently, this simple phrase DOES identify a unique source of services, at least to those who were surveyed.
When asked if the applicant for this trademark would stop other companies from signing up for booking.net, booking.org or other variations, Booking.com asserted “Booking” alone would be a very weak trademark, and it would not seek to enforce its rights in such fashion.
Justice Breyer’s dissent raised a number of insightful points. In addition to the reasoning set forth in the Goodyear Rubber case he described several problems he saw with the majority’s reasoning:
- The fact that only one entity has the contractual rights to a particular domain name means just that, and nothing more.
- As a case that turned on survey evidence, this decision will embolden large companies to appropriate otherwise generic terms for their exclusive use and pump money into generating “secondary meaning” as a so-called “brand.”
- Surveys are famously undependable. In the same study that showed recognition of BOOKING.COM as a brand, 33% of those surveyed also said that WashingMachine.com — which does not exist — was a brand and not generic.
- Even if Booking.com says it will not enforce its rights against other similar domain names, that doesn’t mean that others who follow will be so magnanimous. Why else does someone want or need trademark registration, if not to have the right to exclusive enforcement?
- The majority points to fair use and likelihood of confusion as valid defenses against abusive lawsuits to enforce relatively weak trademarks. However, mounting any such defense is prohibitively expensive for many companies. Justice Breyer predicted this ruling will create a chilling effect in which the very threat of litigation will drive businesses to give up the right to use a generic term to avoid litigation over a purported trademark.
The dissent raises excellent points, of course. In my humble opinion, 33% of those surveyed thinking that WashingMachine.com is a brand shows that both survey evidence and consumer intelligence are of limited value. However, I ultimately agree with the majority. A potential trademark is not necessarily generic simply because it combines a generic term and “.com.” This case isn’t about Generic.com, it’s about Booking.com — and in this case, like it or not, the applicant demonstrated that it had acquired sufficient secondary meaning to not be considered generic. Whether others will succeed in building up their reputations to serve as exclusive sources remains to be seen — and to be proven. At the same time, to be at the mercy of future surveys is an uncomfortable way to build a brand with any predictability.
