U.S. Patent and Trademark Office v. Booking.com B.V.

Oral Argument


Facts of the Case

Booking.com operates a website on which customers can make travel and lodging reservations and has used the name BOOKING.COM since at least 2006. In 2011 and 2012, Booking.com filed with the U.S. Patent and Trademark Office (USPTO) four trademark applications for the use of BOOKING.COM as a word mark and for stylized versions of the mark.

Under the Lanham Act, marks must be “distinctive” to be eligible for protection, and generic terms are not distinctive. The USPTO examiner rejected Booking.com’s applications, finding that the marks were not protectable because BOOKING.COM was generic as applied to the services for which it sought registration (online hotel reservation services, among others).

The Lanham Act also allows protection for “descriptive” terms that have acquired secondary meaning, or a mental association in the minds of consumers between the proposed mark and the source of the product or service. In the alternative, the USPTO concluded that the marks were merely descriptive and that Booking.com had failed to establish that they had acquired secondary meaning as required for trademark protection.

Booking.com appealed to the Trademark Trial and Appeal Board, which affirmed the rejection of Booking.com’s applications. The Board found that BOOKING.COM was a generic term for these types of services and therefore ineligible for trademark protection. Because “booking” generically refers to “a reservation or arrangement to buy a travel ticket or stay in a hotel room” and “.com” indicates a commercial website, the Board reasoned that consumers would understand the resulting term “BOOKING.COM” to refer to an online reservation service for travel—the very services proposed in Booking.com’s applications. The district court reversed, ruling Booking.com had acquired secondary meaning. A panel of the U.S. Court of Appeals for the Fourth Circuit the district court's reversal.

Question

Does the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term create a protectable trademark, notwithstanding the Lanham Act’s prohibition on generic terms as trademarks?

Conclusion

A term styled “generic(dot)com” is a generic name for a class of goods or services—and thus ineligible for federal trademark protection—only if the term has that meaning to consumers. Justice Ruth Bader Ginsburg authored the 8-1 majority opinion holding that because the lower court determined that consumers do not perceive the term “BOOKING.COM” to signify online hotel-reservation services as a class, it is not a generic term and thus is eligible for federal trademark protection.

The Court first noted that a generic name is ineligible for federal trademark registration. The parties did not dispute that the word “booking” is generic for hotel-reservation services. The PTO, however, argued that the combination of a generic word and “.com” is also generic. The Court disagreed, finding that rule is not supported by the PTO’s own past practice or by trademark law or policy. 

Adding “.com” to a company name is different from adding “Company” in that only one company can occupy a particular Internet domain name at a time, so even a “generic(dot)com” term could convey to consumers an association with a particular website. Moreover, a strict legal rule that entirely disregards consumer perception is incompatible with a bedrock principle of the Lanham Act.

Justice Sonia Sotomayor authored a concurring opinion, observing that Justice Stephen Breyer’s dissenting opinion “wisely observes that consumer-survey evidence ‘may be an unreliable indicator of genericness’” and that the PTO might well have been correct in its assessment, but that question was not before the Court in this case. Instead, the Court considered only the validity of the per se rule the PTO adopted.

Justice Stephen Breyer authored a dissenting opinion, arguing that Booking.com’s company name informs the consumer of the basic nature of its business and nothing more. As such, the addition of “.com” to an otherwise generic term, such as “booking,” should not yield a protectable trademark because doing so would be inconsistent with trademark principles and sound trademark policy.