“Booking.com Corporate Identity” by German Kopytkov is licensed under CC BY-NC-ND 4.0
Mike Chernoff, Associate Member, University of Cincinnati Law Review
I. Introduction
Words, symbols, and phrases (hereinafter referred to as “marks”) can receive trademark protection in the United States when the mark is used to identify and distinguish products.[1] This protection does not extend to words that are deemed “generic,” that is, when the mark describes the category underlying the product.[2] However, the prevalence of internet based business has raised the question of whether adding “.com” to the end of a generic term could remove the generic label attached to the mark, and thus, become eligible for trademark protection. The Supreme Court will soon decide this issue in the upcoming case United States Patent and Trademark Office v. Booking.com B.V.[3] This article will analyze Booking.com’s trademark application and potential applicable law that will guide the Supreme Court’s decision.
II. United States Trademark Law Background
Trademark law protects the goodwill represented by particular marks and prevents consumers confusion between products and their sources.[4] Four categories of marks determine the amount of protection offered to a particular mark.[5] These categories include: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, and (4) generic.[6] Arbitrary, fanciful, and suggestive marks are considered inherently distinctive and are entitled to trademark protection as they are able to identify the particular source of a product.[7] Descriptive terms require certain showings to receive protection, while generic marks can never receive protection.[8] A descriptive mark describes a characteristic of the product and must acquire secondary meaning to receive trademark protection.[9] Secondary meaning is acquired by the mark when the term establishes a mental association in the public’s mind between the mark and the product or service.[10] A mark is generic if the mark is the “common name” of the underlying product.[11] When a mark is assessed for the proper category of protection, the entire mark must be considered, as the subsequent decision is dependent on the public’s understanding of the entire mark.[12]
Terms that include a generic term and end with a “top-level domain,” such as “.com,” have been found to be generic due to other longer domain names including the same generic term.[13] For example, the Federal Circuit found “Hotels.com” to be a generic term due to other domain names such as “all-hotels.com” and “web-hotels.com.”[14] However, some courts have have allowed consumer surveys to be introduced to prove that a “.com” site deserves descriptive mark status based on the results of a consumer survey.[15] A consumer survey is a common method for proving whether a term is generic in the eyes of the public and can help guide a fact-finder in determining the appropriate level of protection for a term.[16]
III. “Booking.com” Trademark Dispute
In 2011 and 2012, Booking.com, a travel booking website, filed four trademark applications with two seeking protection for the name “Booking.com” and two seeking protection for stylized logos featuring the company’s name.[17] These applications referenced services offered under the mark which included hotel reservation services for others, providing information about hotels, and similar hotel related booking related services.[18]
All four applications were initially rejected by the United States Patent and Trademark Office (“USPTO”) on the grounds of “Booking.com” merely being descriptive of the services that are provided by Booking.com.[19] After Booking.com argued that the mark had acquired distinctiveness, the USPTO issued a new refusal claiming the mark as generic because the mark was the same as the services provided and that the mark had failed to establish acquired distinctiveness.[20] Booking.com sought an appeal before the Trademark Trial and Appeals Board (“TTAB”). TTAB affirmed the registration refusals stating that “Booking.com” was a generic term for the services offered and “.com” did not negate the generic character of “booking.”[21] Alternatively, TTAB concluded that “Booking.com” is descriptive of the services provided and Booking.com “failed to demonstrate that the term has acquired distinctiveness.”[22]
Booking.com appealed TTAB’s decision arguing that “Booking.com” was a descriptive or suggestive mark that was eligible for trademark protection.[23] In support of this argument, Booking.com submitted a survey indicating that 74.8% of consumers recognized “Booking.com” as a brand and not a generic service.[24] The United States District Court for the Eastern District of Virginia ruled that as a whole, “Booking.com” was a descriptive, rather than generic, mark.[25] The District Court also held that Booking.com demonstrated that the mark had acquired secondary meaning and the term “Booking.com” was, therefore, eligible for trademark protection.[26]
The USPTO appealed this decision and argued that “Booking.com” was generic, but conceded that if the term was found to be descriptive, then the mark had acquired secondary meaning.[27] The Fourth Circuit upheld the District Court’s ruling and agreed that the mark “Booking.com” must be viewed as a whole in a generic analysis.[28] The USPTO petitioned the Supreme Court of the United States for an appeal and was granted a writ of certiorari on November 8, 2019.[29]
IV. Discussion
When the Supreme Court decides the result of this case, the Justices will be deciding whether the addition of a generic top-level domain, such as “.com”, to a generic term transforms the entire phrase into protectable mark. This decision should result in an affirmation of the Circuit Court ruling because of the nature of website domain names and the mindset of the consuming public.
The nature of internet domain names supports the notion that including a top-level domain in a website-based mark should receive a “descriptive” level of trademark protection. Every domain name on the internet can only lead to a single website. This specific and distinct website that is found by the associated domain name will inherently form a strong association in the mind of the consuming public with the associated domain name. When a consumer has typed in the entire domain of a website, the consumer is expecting to be brought to a specific website. This would be analogous to a consumer looking for a specific brand of a product in a store. When a consumer seeks a specific brand in this fashion, the mark is descriptive of the ultimate product and has acquired secondary meaning. Due to the increased differentiation in the marketplace by the addition of a top-level domain, this top-level domain should provide an opportunity for trademark protection.
A central purpose of a trademark is to distinguish one’s product or services from those of others.[30] Booking.com provided evidence that their company name had formed a connection in the minds of the consuming public by showing 74.8% of consumers recognized “Booking.com” as a brand rather than a generic service. The USPTO did not provide evidence that the consuming public would refer to an online travel booking service as a “Booking.com.” Had this been the case, then “Booking.com” would be a generic term for the service of online booking. However, this has not been shown to be the outlook of the public and “Booking.com” should not be declared generic as a result.
V. Conclusion
The Supreme Court has the opportunity to expand trademark protection for some marks incorporating domain names by holding that “Booking.com” is not generic. This decision would be in agreement with the purposes of trademark law and continue to protect consumers from confusion.
[1] 15 U.S.C. § 1127 (2019).
[2] Abercrombie & Fitch Co. v. Hunting World, Inc. 537 F.2d 4, 9 (2nd Cir. 1976).
[3] Booking.com B.V. v. U.S. Patent and Trademark Office, 915 F.3d 171 (4th Cir. 2019), cert. granted, 2019 U.S. LEXIS 6782 (U.S. Nov. 8, 2019) (No. 19-46).
[4] OBX-Stock, Inc. v. Bicast, Inc. 558 F.3d 334, 339-340 (4th Cir. 2009).
[5] Abercrombie & Fitch Co., 537 F.2d at 9.
[6] Id.
[7] Booking.com B.V., 915 F.3d at 177.
[8] Id.
[9] Abercrombie & Fitch Co., 537 F.2d at 9.
[10] George & Co. v. Imagination Entm’t Ltd., 575 F.3d 383, 394 (4th Cir. 2009).
[11] OBX-Stock, Inc. v. Bicast, Inc. 558 F.3d 334, 340 (4th Cir. 2009).
[12] Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 545-46 (1920).
[13] Booking.com B.V. v. U.S. Patent and Trademark Office, 915 F.3d 171, 182 (4th Cir. 2019).
[14] In re Hotels.com, L.P., 573 F.3d 1300, 1303 (Fed. Cir. 2009).
[15] Id.
[16] Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 970 (Fed. Cir. 2015).
[17] Booking.com v. Matal, 278 F. Supp. 3d 891, 896-897 (E.D. Va. 2017).
[18] Id.
[19] Id. at 897.
[20] Id.
[21] Id. at 898.
[22] Id.
[23] Booking.com B.V. v. U.S. Patent and Trademark Office, 915 F.3d 171, 178 (4th Cir. 2019).
[24] Booking.com v. Matal, 278 F. Supp. 3d at 915.
[25] Id. at 924.
[26] Id.
[27] Booking.com B.V., 915 F.3d at 179.
[28] Id. at 181
[29] Booking.com B.V. v. U.S. Patent and Trademark Office, 915 F.3d 171 (4th Cir. 2019), cert. granted, 2019 U.S. LEXIS 6782 (U.S. Nov. 8, 2019) (No. 19-46).
[30] Trademark, Black’s Law Dictionary (11th ed. 2019).
