Recently the Supreme Court affirmed registration on the principal register for what appeared to be a generic term. In United States Patent & Trademark Office v. Booking.com B. V., 140 S. Ct. 2298 (2020), the Court affirmed registration of a trademark that used a generic term followed by the addition of the top-level domain moniker “.com” to the end of the mark. Specifically, the Court affirmed registration on the principal register of the trademark “Booking.com.” At first glance, this seems a radical departure from trademark law as generic terms are almost never permitted to be registered by a single entity and excluded from use by others. Can you imagine if the word “shoe” was trademarked and only one company could use the word “shoe” in advertising? A generic term such as “shoe” does not identify a single shoe company to the exclusion of others in the minds of the consuming public. The word “shoe” is generic and refers to the item being sold; it is open for use by all.
According to Justice Ginsburg, writing for the majority, the traditional sliding scale of the distinctiveness of trademarks still applies, and generic marks receive no protection. The Court reaffirmed that “Distinctiveness is often expressed on an increasing scale: Word marks “may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.” Generic marks receive no protection, while fanciful marks receive the most protection. The degree to which a mark is protected still rests on the perception of the mark and the impact the mark has on the consuming public. The court reiterated that the test to determine whether a mark has become the generic term for a good or service is the “primary significance” of the mark to the relevant public. If the public identifies the mark as the name for the goods or services rather than an identifier of the supplier, it has become generic.
In this case, the PTO argued that the term “Booking.com” was generic, as the term “booking” is generic and addition of the “.com” could not move it out of the generic category. The PTO relied on precedent that held addition of the term “company” to an otherwise generic term does not make the resultant mark protectable. However, the PTO did not provide evidence that the public associated the mark “Booking.com” with any entity besides the registrant. In fact, the PTO conceded that the public had come to associate the term “Booking.com” with the specific operator of that website. Thus, the elements necessary for concluding a mark has become generic were not met.
The Court found that the term “Booking.com” had acquired secondary meaning as to hotel-reservation services and identified the business that operated the web domain www.booking.com as the provider of the service on that website. The Court determined that the term “Booking.com,” unlike the term “booking,” was not generic; it identified a single entity. Thus, it could be registered as a mark. Further, the Court pointed out that the registrant provided evidence that the consuming public perceives the mark as applying to it to the exclusion of other online hotel-reservation companies. This association of the mark with a specific entity, the lynchpin of secondary meaning, allows an otherwise descriptive and non-registerable mark, to be registered on the principal register.
Ultimately the Court concluded that the mark was eligible for registration because it was not generic. Standing alone the term “booking” would be generic because it refers to something many entities do. In contrast, a top-level domain is operated by a single entity and, therefore, only one entity can operate the website located at www.booking.com. In its holding, the Court stated that “[w]hether any given ‘generic.com’ term is generic, we hold, 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.” In this case, the evidence accepted as true by the lower courts showed that the term “booking.com” was associated with a single entity in the minds of the consuming public. Since the term distinguished its owner from the other members of the class, it did exactly what a trademark is supposed to do and is eligible for registration on the principal register. While this ruling seems like a departure from standard trademark law, it is not. A term used in advertising, in this case “booking.com,” associates booking services available at a specific website to the exclusion of other websites. Thus, it is not generic.
What does this mean to business owners who operate on the web? It probably means that they should revisit whether or not they can get a registered trademark on their domain name. If a domain name uses a generic term but has acquired secondary meaning, the owner may be able to get a registration by incorporating the “.com” portion in the mark.