Supreme Court Rejects Per Se Rule That "generic.com" Is Generic

• Published date: 03 July 2020
• Subject Matter: Consumer Protection, Intellectual Property, Consumer Law, Trademark
• Law Firm: Pearl Cohen Zedek Latzer Baratz
• Author: Mr Clyde Shuman

The Supreme Court of the United States has rejected what it called the "sweeping" rule of the U.S. Patent and Trademark Office (PTO) that the combination of a generic word and ".com" is generic, specifically finding that the mark "Booking.com" is not generic. In United States Patent and Trademark Office v. Booking.com B. V., No. 19-46, the Court (in an opinion delivered by Justice Ginsburg), affirming the judgment of the U.S. Court of Appeals for the Fourth Circuit, held that 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. In this case, consumers do not perceive the term "Booking.com" to signify online hotel-reservation services as a class, the term. According to the Court, in circumstances like those presented here, a "generic.com" term is not generic and can be eligible for federal trademark registration.

By way of background, Booking.com is a digital travel company that provides hotel reservations and other services under the brand "Booking.com," which is also the domain name of its website. Booking.com sought to register four marks in connection with travel-related services, each mark containing the term "Booking.com." Both the examining attorney and the Trademark Trial and Appeal Board (TTAB) concluded that the term"Booking.com" is generic for the services at issue and is thus unregistrable. According to the TTAB. "Booking" means making travel reservations, and ".com" signifies a commercial website. The TTAB ruled that "customers would understand the term BOOKING.COM primarily to refer to an online reservation service for travel, tours, and lodgings." Alternatively, the TTAB held that even if "Booking.com" is descriptive, and not generic, it is unregistrable because it lacks secondary meaning.

Booking.com sought review in the U. S. District Court for the Eastern District of Virginia, under a mode of review that allowed introduction of evidence not presented to the PTO. Relying in significant part on Booking.com's new evidence of consumer perception, the district court concluded that "Booking.com"'unlike "booking"'is not generic. The court found, "[T]he consuming public primarily understands that BOOKING.COM does not refer to a genus, rather it is descriptive of services involving 'booking' available at that domain name." Having determined that "Booking.com" is descriptive, the district court also found that the term has acquired secondary meaning for hotel-reservation...