Brand Enforcement / 12.03.2019

All Eyes on Booking.com: Supreme Court Case Could Re-Write Trademark Law

By David Posteraro

trademark lawTrademark registration serves several functions. For the trademark owner, it protects the goodwill represented by the brand. For the consuming public, it prevents consumer confusion between products and the sources of those products. Not as often appreciated, but important nonetheless, it also prevents common words – words that each of us use to describe everyday things – from becoming the exclusive property of a single owner.

To decide whether a proposed mark is protectable by registration, the Trademark Office (the “USPTO”) and courts determine the strength of the mark by placing it into one of four categories of distinctiveness: (1) generic, (2) descriptive, (3) suggestive or (4) arbitrary or fanciful. Arbitrary and fanciful marks are afforded the most protection, while generic marks get none.

A term is generic if it is the “common name of a product” such as LITE BEER for light beer, or CONVENIENT STORE for convenience stores. Generic terms, by their very nature, do not distinguish the particular product or service from other products or services on the market. Accordingly, generic terms can never obtain trademark protection, as trademarking a generic term effectively grants the owner a monopoly over a common term used to describe the common object. If protection were allowed, a competitor could not describe his goods or services as what they are.

For almost as long as the internet has existed, the USPTO has taken the position that generic terms coupled with a generic top-level domain (“gLTD”) were unregistrable on either the Principal or Supplemental Registers. In its Trademark Manual of Examining Procedure (“TMEP”), the USPTO states:

[W]hen a trademark, service mark, collective mark, or certification mark is composed, in whole or in part, of a domain name, neither the beginning of the [uniform resource locator (“URL”)] (“http://www.”) nor the TLD has any source-indicating significance. Instead, those designations are merely devices that every Internet site provider must use as part of its address. Advertisements for all types of products and services routinely include a URL for the website of the advertiser, and the average person familiar with the Internet recognizes the format for a domain name and understands that “http,” “www,” and a TLD are a part of every URL.

The TMEP further states, “If a proposed mark is composed of a merely descriptive term(s) combined with a non-source-identifying TLD, in general, the examining attorney must refuse registration … on the ground that the mark is merely descriptive.” With respect to generic marks, the TMEP states, “[A] mark comprised of a generic term(s) combined with a non-source-identifying TLD is generic and without trademark or service mark significance.” In light of these USPTO policies, obtaining federal trademark registration on the Principal Register for a domain name mark has been challenging as applicants for the names “hotels.com” and “lawyers.com” have previously found.

Since 2006, Netherlands-based Booking.com has operated a website at www.booking.com on which customers can book travel and hotel accommodations. In 2011 and 2012, Booking.com filed four trademark applications for the use of “booking.com” as a word mark and for these three stylized versions of the mark:

trademark law

Booking.com sought registration for Class 43 services, which include online hotel reservation services.

The USPTO examiner rejected Booking.com’s applications, finding that the marks were not protectable because “booking.com” was generic as applied to the hotel reservation services. 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. After the examiner denied Booking.com’s motion for reconsideration, Booking.com appealed to the Trademark Trial and Appeal Board (the “TTAB”).

In three separate opinions, the TTAB affirmed the USPTO’s four refusals of registration concluding that “booking.com” was a generic term for the services offered and therefore ineligible for trademark protection. The word “booking,” the TTAB reasoned, generically refers to “a reservation or arrangement to buy a travel ticket or stay in a hotel room” or “the act of reserving such travel or accommodation”; “.com” indicates a commercial website; and consumers would understand the resulting composite “booking.com” to primarily refer to an online reservation service for travel, tours and lodging, which are the services proposed in Booking.com’s applications.

Booking.com appealed the TTAB decision to the Federal Court in the Eastern District of Virginia arguing that “booking.com” was, at the very least, a descriptive or suggestive mark eligible for protection. That court held that although “booking” was a generic term for the services identified in the applications, “booking.com” as a whole was nevertheless a descriptive mark. The district court further determined that Booking.com had met its burden of demonstrating that the proposed mark had acquired secondary meaning, and therefore was protectable, as to the hotel reservation services described in Class 43. The court therefore partially granted Booking.com’s motion for summary judgment, ordering the USPTO to register two of the marks and remanded for further administrative proceedings as to the other two.

Judge Wynn dissented, explaining that because “trademark law does not protect generic terms,” a business can choose a non-generic domain name like “Amazon.com,” and exclude competitors from using close variants of that name; or it can choose a generic domain name that identifies the goods or services it provides, thereby easily attracting customers on the Internet but forgoing the benefits of trademark protection. Wynn would have held that “booking.com” falls into the latter category. He further explained that the court of appeals’ decision undermined the rule that, no matter how much success the user of a generic term “has achieved in securing public identification, it cannot deprive competing manufacturers of the product of the right to call an article by its name” and that the court’s decision “unjustifiably empowers [respondent] to monopolize language” and “freeze out potential competitors,” who cannot “use the term ‘booking’ in their own website domain names” without “fac[ing] the risk of a costly, protracted, and uncertain infringement lawsuit.”

The USPTO filed a petition for certiorari with the U.S. Supreme Court on July 5, 2019. The question presented is, “Whether the addition by an online business of a generic top-level domain (‘.com’) to an otherwise generic term can create a protectable trademark.”

The Supreme Court agreed to take the case. Given the long history of the USPTO’s refusals to allow generic terms to be registered as trademarks when coupled with a gTLD and the hundreds of pending applications for generic terms coupled with”.com”, a decision by the Court in Booking.com’s favor will re-write trademark law and keep brand practitioners busy for years.

If you have any questions or would like to discuss further, please reach out to David Posteraro at 216.736.7218 or drp@kjk.com, or contact any of our Brand Enforcement professionals.

 

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