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The Supreme Court Rules that “BOOKING.COM” Is Not Generic and Is Entitled to Federal Trademark Registration

In an 8-1 opinion penned by Justice Ruth Bader Ginsburg, the United States Supreme Court rules that the mark “BOOKING.COM” is not generic and is entitled to federal trademark registration, in light of evidence that consumers perceive the mark as a source-identifier. Though the mark “BOOKING.COM” is composed of the generic combination of simply “booking” and “.com” for use in connection with providing online hotel reservation services, the Supreme Court ruled in United States Trademark Office Et Al. v. Booking.Com B.V. that because the evidence showed that consumers do not perceive the term “BOOKING.COM” as generic, it is therefore registerable.

A trademark is any word, slogan, or symbol which is used in commerce with goods and services to indicate their source of origin and to distinguish them from the goods and services of others. Marks are considered by strength and distinctiveness based on a scale from not distinctive at all, i.e., generic, to highly distinctive, such as an arbitrary mark. Under the federal trademark registration system established by the Lanham Act, the U.S. Patent & Trademark Office (“USPTO”) may not issue a federal trademark registration for weak, non-source identifiying marks, such as those that are deemed to be “generic.” Previously, applications for marks such as “LAWYERS.COM”, “HOTELS.COM”, “”MATTRESS.COM” were refused federal trademark registration on the basis that they were generic.

More distinctive than a generic mark is a mark that is considered “descriptive,” which also may be refused registration for not serving as a source-identifier. For weaker marks such as these, there is still a possibility to overcome the USPTO’s refusal and reach federal trademark registration upon a showing that the mark has acquired distinctiveness or reached “secondary meaning.” To establish acquired distinctiveness or secondary meaning, an Applicant my provide evidence that demonstrates that consumers are so familiar with this mark, that they perceive it to indicate the provider of the goods or services, and not a description thereof. If the applicant proves that a mark has acquired distinctiveness in the eyes of the consumers to the satisfaction of the USPTO’s Examining Attorney, then an application for a weaker mark may still be approved for federal registration on the Principal Register. 

While the parties agreed that “booking” by itself would be a generic and an unregisterable mark, contended that the combination of “booking” and “.com”, along with the evidence of consumer perception, edged the mark over to being descriptive, source-identifying, and therefore, registerable. The USPTO, on the other hand, took the position that where a generic term, such as “booking”, is combined with a generic top-level domain like “.com”, the resulting combination is generic and therefore unregisterable. The USPTO went so far as to urge the Supreme Court to adopt the position that every “” term is generic, absent an exceptional circumstance of being a play on words, such as “”

When the application for the “BOOKING.COM” mark was refused by the USPTO, sought review in the U. S. District Court for the Eastern District of Virginia, where it introduced new additional evidence as to the perception consumers have upon encountering the mark. This evidence included a consumer survey where respondents strongly the mark “BOOKING.COM” with the online hotel services rendered by, rather than a general type of genus of services. In concluding that the mark was not generic, the District Court found that the combination of “booking” and “.com”, along with the extensive evidence provided, established that the mark should be registerable as a federal trademark. The United States Fourth Circuit Court of Appeals affirmed the lower court’s decision, finding no error in the District Court’s assessment of how consumers perceive the mark, and also rejecting the USPTO’s rule that combining a generic term with a generic top-level domain such as “.com” makes the mark generic.

The Supreme Court affirmed the Fourth Circuit Court of Appeals, and held: “A term styled ‘’ is a generic name for a class of goods or services only if the term has that meaning to consumers.” While rejecting the ruled proffered by the USPTO that all “” terms are generic terms, at the same time, the Highest Court clearly cautioned that the holding does not make a blanket rule in the reverse: “[W]e do not embrace a rule automatically classifying such terms as nongeneric.” Indeed, the opinion explains that the test for whether any given “” term is generic, “depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.” Here, after considering consumer perception, the Supreme Court found the mark “BOOKING.COM” not to be generic but source-identifying, and therefore, eligible for federal trademark registration.

The Trademark Trial & Appeal Board Sheds Light on Federal Trademark Registration of Hemp-Based Products In Precedential Decision

In a recent precedential decision, In re Stanley Brothers Social Enterprises, LLC, the Trademark Trial & Appeal Board affirmed the refusal for the mark “CW” for use on “hemp oil extracts sold as an integral component of dietary and nutritional supplements” in International Class 5, finding such a sale of hemp products for dietary and nutritional supplements is unlawful in U.S. commerce. 

Trademark rights are built on lawful use in United States commerce. While some hemp-derived products may be legally sold in U.S. commerce, products that are to be ingested or swallowed by humans or animals, to be deemed “lawful”, must be first evaluated by the Food & Drug Administration before releasing the products to the public. Here, though the Applicant has used the mark “CW” in connection with selling hemp-derived oil as dietary and nutritional supplements since 2015, because the supplements are swallowed by consumers and the products have not been approved by the FDA, this use was deemed “unlawful” as a per se violation of the Food, Drug, & Cosmetics Act, and therefore, not registerable as a federal trademark.

However, this decision does not bar registration of all hemp-based products. Non-ingested hemp-based products that are categorized in other International Classes, such as smokable loose hemp flower in Class 34 or topical hemp-based pain cream in Class 3, may be registerable with the U.S. Patent & Trademark Office, where the product has no more than .3% of THC on a dry weight basis. Indeed, the USPTO has issued several registrations for marks for use on those types of products.

This is an important decision in the evolving area of law regarding hemp-based and cbd products. Though the Applicant had been using the mark “CW” since 2015 as part of a dietary and nutritional supplement, registration for this mark was not permitted as the use is still considered not lawful under current federal statutes. This suggests that even for a business that has sold ingestible hemp-based products for many years in connection with a mark, at this point, an application to register that mark with respect to those products, such as dietary and nutritional supplements, will likely be refused. However, if the same business uses the mark in connection with lawful products as well, such as smokable loose hemp flower or hemp-based pain cream, the business may still obtain a federal trademark registration with respect to those products.