BOOK OF (GENERIC?) BUSINESS: USPTO v. Booking.com

The U. S. Supreme Court [hereinafter ‘the Court’] will soon resolve whether an undisputedly generic term, combined with a domain name locator, is entitled to trademark protection in the United States.  United States Patent & Trademark Office v. Booking.com B.V., _____ U. S. ___ cert. granted Docket No. 19-46 (2020) [hereinafter ‘PTO’ and ‘Booking.com’].  Under current PTO guidelines, a generic term combined with a domain name locator is never protectable as a trademark or service mark because the locator, such as .com, merely designates an internet address.

When Booking.com originally applied for federal trademark registration, the examiner denied registration for the term ‘Booking.com’ because this term is generic.  The trademark appellate court affirmed, and so Booking.com challenged this decision in federal district court. In contrast to the trademark tribunal, the court found that Booking.com was descriptive, not generic, had acquired secondary meaning,[1] and the Fourth Circuit affirmed the district court.

Now before the Court, the PTO relies upon Goodyear India Rubber Glove Manufacturing Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888) to oppose trademark registration of Booking.com. In Goodyear, the Court held that addition of a business designation such as ‘Company’ or ‘Inc.,’ when combined with the generic word for an actual product or service, does not create a protectable mark. According to the PTO, this decision is dispositive because a domain locator such as .com is completely analogous to a business entity designation. As such, recombination of a domain locator and a generic term such as ‘booking’ does not create a non-generic term.

The PTO further contends that reliance upon Booking.com’s survey evidence is wrong, because consumer recognition cannot turn a generic mark into a protectable mark. Otherwise, a party could register a specific generic term plus a domain locator, because this party invested significantly in advertising and promotion. This monopoly on a generic term would be an unfair advantage over business competitors who then could not use this generic term to describe their own products and services.

Booking.com maintains that Goodyear is not dispositive because it is superseded by the Lantham Act, because the Lantham Act incorporates a ‘primary significance test’ to determine whether a term is generic. Under this test if consumers associate a term with a specific source, and do not merely recognize the term for a general class of goods or services, then the term is descriptive and not generic. If the term is descriptive then it may be registered if there is evidence of secondary meaning, and which is provided the survey in this case. According to Booking.com, these particular surveys have been recognized as the standard for determining consumer preferences and were properly considered strong evidence in this case for trademark protection. [2]

Oral argument is scheduled in May 2020.

©2020 Adrienne B. Naumann, Esq., all rights reserved. Ms. Naumann does not sponsor or endorse the advertisements at adriennebnaumann.wordpress.com.

[1] Under U.S. trademark law, a descriptive mark may obtain protection if there is evidence that consumers recognize that this   mark designates a source of goods and/or services. This recognition is known as secondary meaning and a descriptive mark describes a characteristic(s) of those goods and/or services.

 

[2] Booking.com also does not accept that the law of unfair competition is a commercially satisfactory alternative, because unfair competition law does not provide the substantial benefits of trademark and service mark protection.

 

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