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, Booking.com 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 “generic.com” term is generic, absent an exceptional circumstance of being a play on words, such as “www.tennis.net.”

When the application for the “BOOKING.COM” mark was refused by the USPTO, Booking.com 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 Booking.com, 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 'generic.com' 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 “generic.com” 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 “generic.com” 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.

Published in Trademark

When applying for trademark/service mark registration with the U.S. Patent and Trademark Office (USPTO), an examining attorney reviews the application to determine whether it complies with applicable statutes and rules. If there are any substantive, technical, or procedural deficiencies, the examining attorney will likely issue an Office Action letter explaining any of these refusals.  One of these refusals can be based on the proposed mark failing to function as a trademark because the proposed mark merely communicates information about the goods/services, uses widely used commonplace, social, political, or religious messages, or directly quotes passages or citations from religious texts. Some examples include: “I DC” for clothing items; “ONCE A MARINE, ALWAYS A MARINE” for various clothing items; “BRAND NAMES FOR LESS” for retail store services; and “PROUDLY MADE IN THE USA” for electric shavers.  

The U.S. Patent and Trademark Office (USPTO) recently issued a guide for aiding in the determination of whether a proposed mark functions as mark.  The guide creates categories for types of matter that may be considered merely informational, discusses when an examining attorney must refuse registration or require a disclaimer, provides applicant response options, and illustrates case law examples. For example, under applicant response options, should the applicant receive this type of refusal, the applicant must show that the public perception of the proposed mark is that of a source indicator.  Evidence of the applicant's use as a mark or exclusive use in the relevant marketplace for the goods/services under the mark can be supportive towards overcoming this refusal.

Published in Trademark