In United States PTO v. Booking.com B.V., the Supreme Court considered whether the trademark BOOKING.COM was generic for an online reservation system. United States PTO v. Booking.com B.V., 140 S. Ct. 2298 (June 30, 2020). The owner of the trademark operated a website at the address www.booking.com.
The owner attempted to register the website address as a trademark with the U.S. Patent and Trademark Office (“USPTO”). The examining attorney concluded that the mark was generic because it consisted of a combination of the generic terms “booking” and “.com” and rejected the application.
The trademark owner appealed the decision to the Trademark Trial and Appeal Board, which upheld the examining attorney’s decision. However, a district court judge overturned the decision when the trademark owner appealed the decision to a federal district court. The USPTO appealed the decision to the United States Court of Appeals for the Fourth Circuit, which upheld the district court’s decision.
The Supreme Court noted that the USPTO had created a “nearly per se rule” that treated a compound generic term as generic when that compound generic term included a generic Internet-domain-name suffix (e.g., “.com”).
One of the rationales for this “nearly per se rule” was based on a 19th Century Supreme Court decision (Goodyear's India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888)) that the USPTO contended held that the addition of the term “Company” to a generic term does not confer trademark eligibility. However, the Supreme Court was unpersuaded.
The Court reasoned that only one entity “only one entity can occupy a particular Internet domain name at a time, so ‘[a] consumer who is familiar with that aspect of the domain-name system can infer that BOOKING.COM refers to some specific entity.’” Booking.com, 140 S. Ct. at 2306.
The Court also rejected the “nearly per se rule” on policy grounds and returned the focus back on consumer perception. The main holding of decision appears to be that an internet address can only be a generic name for a class of goods or services if the term has that meaning to consumers.
The decision has implications for compound generic terms that include the term “.com” or other similar marks. Such marks, which were formerly thought to be generic, may be registrable under the holding of this Supreme Court decision.
You can read part 1 of this blog here.