In U.S. Patent and Trademark Office v. Booking.com, No. 19-46, the Supreme Court held that styled "generic.com" names can get trademark protection. On June 30, 2020, the Supreme Court addressed the subject of generic trademarks for the first time since the operable Lanham Act (1946).
The case revolved around the question of whether "booking.com" was a generic term for booking services and, therefore, incapable of trademark protection. The parties agreed that "booking," standing alone, would be a generic term, but disputed whether the addition of the ".com" changed the analysis. In its decision, the Court held that the styled "The case revolved around the question of whether "booking.com" was a generic term for booking services and, therefore, incapable of trademark protection. The parties agreed that "booking," standing alone, would be a generic term, but disputed whether the addition of the ".com" changed the analysis. In its decision, the Court held that the styled "generic.com" names would be generic only if the full phrase - including the .com - was the generic name for a good or service. Thus, because, for example, consumers do not refer to making a reservation "through a The case revolved around the question of whether "booking.com" was a generic term for booking services and, therefore, incapable of trademark protection. The parties agreed that "booking," standing alone, would be a generic term, but disputed whether the addition of the ".com" changed the analysis. In its decision, the Court held that the styled "generic.com" names would be generic only if the full phrase - including the .com - was the generic name for a good or service. Thus, because, for example, consumers do not refer to making a reservation "through a booking.com," this term is not generic, and therefore may be subject to trademark protection.
The parties agreed that "booking" was generic as used in connection with booking services, so the dispute concerned whether the ".com" top-level domain rendered the mark at least descriptive. The United States Patent and Trademark Office argued that the addition of a top-level domain like ".com" to a generic term would still mean that the full phrase is generic. Booking.com, in contrast, asserted that consumers associated the "The parties agreed that "booking" was generic as used in connection with booking services, so the dispute concerned whether the ".com" top-level domain rendered the mark at least descriptive. The United States Patent and Trademark Office argued that the addition of a top-level domain like ".com" to a generic term would still mean that the full phrase is generic. Booking.com, in contrast, asserted that consumers associated the "booking.com" mark only with The parties agreed that "booking" was generic as used in connection with booking services, so the dispute concerned whether the ".com" top-level domain rendered the mark at least descriptive. The United States Patent and Trademark Office argued that the addition of a top-level domain like ".com" to a generic term would still mean that the full phrase is generic. Booking.com, in contrast, asserted that consumers associated the "booking.com" mark only with booking.com, and did not use it as a generic phrase to refer to reservation-booking websites.
Justice Ginsburg, writing for the majority, sided with booking.com, held that consumers did not understand the full phrase to be a generic term for booking websites, and that evidence such as survey results could be used to show relevant consumer understandings. The Court differentiated its prior precedent that had held that addition of the word "Company" or "Incorporated" to a generic term resulted in the combined phrase being generic. The Court noted that, while various companies could all call themselves "Generic Inc.," only one entity could own the "generic.com" URL at a time. The Court determined that any policy concerns arising from a company being able to own a "differentiated its prior precedent that had held that addition of the word "Company" or "Incorporated" to a generic term resulted in the combined phrase being generic. The Court noted that, while various companies could all call themselves "Generic Inc.," only one entity could own the "generic.com" URL at a time. The Court determined that any policy concerns arising from a company being able to own a "generic.com" name could be addressed by other doctrines. For example, fair use would allow any booking website to use the word "booking" in describing its services, such as: "This is a website that allows for booking hotel rooms."
In dissent, Justice Breyer argued that "booking.com" should be considered generic. Justice Breyer would have followed the Court's prior precedent to hold that ".com" serves only to indicate that a business is available online, and that the addition of the top-level domain to a generic URL renders the entire phrase generic. Justice Breyer quoted Justice Ginsburg's language from a prior case in which she said that generic terms, as compared to descriptive marks, do not serve to "identify a particular characteristic or quality of some thing; it connotes the basic nature of that thing." Justice Breyer would have found that "booking.com" does not describe particular characteristics of booking websites, but instead connotes the basic nature of such sites.
Commentary Dash Cole
The case represents a significant victory for owners of other generic URLs, such as "lawyer.com" or "The case represents a significant victory for owners of other generic URLs, such as "lawyer.com" or "wine.com." Although the Supreme Court argued against a per se rule, language from this opinion (such as the statement that only one entity can own a ".com" name at a time and therefore the public can associate the URL with one particular source) will likely be used to begin registering many names of this type. Another possible outcome will be that "generic.com" owners may begin to increase litigation against other entities, strengthened by having received registrations for their marks. The case was also notable because it was the first time the Court heard oral arguments via telephone conference.
Originally published July 02, 2020.
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