Recently, the U.S. Supreme Court issued a much-awaited verdict in a trademark case directed to be generic, and hence not subject to registration, in United States Patent and Trademark Office v. Booking.com B.V.  The question before to the Hon’ble court was whether an online business’s addition of a generic top-level domain (“.com”) to an otherwise generic term can create a distinctive trademark. The Court dissented to impose a per se rule on this question, as put forth by the U.S. Patent and Trademark Office (“USPTO”), and instead delivered that “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.” 

Introduction

Booking.com, an online travel portal, used both as that name and that domain name. The company approached to claim the trademark on its name with the United States Patent and Trademark Office (USPTO). Subsequently, the USPTO denied the application on the grounds that the term “booking”, as applied is class of travel services, was a conventional practice name, and that Booking.com, proprietor, had failed to prove how their mark had gained distinctiveness. Booking.com appealed to the Trademark Trial and Appeal Board (TTAB), which upheld that “booking” was a generic term within the class of travel services, and simply appending “.com” did not change its generic nature.

Then, the proprietor approached the TTAB decision under the provisions of appeal to the United States District Court for the Eastern District of Virginia.

In the appeal, the court of United States District Court for the Eastern District of Virginia reversed the TTAB’s decision.

The court gave their verdict observing that the term “booking” was a general term related to arranging travel services, yet, the inclusion of the top-level domain (TLD) of “.com”, implying an online Internet commerce site, created a new concept that made it no longer generic. Further, the court observed the evidences presented by the appellant that the public recognized “Booking.com” as its brand through customer testimonials, including a survey of consumers in that market space where nearly 75% recognized “Booking.com” as a specific brand name for Booking.com’s services. Additionally, the court recognized that with domain names being unique, this furthered the uniqueness of the trademark.

Then the USPTO approached to the United States Court of Appeals for the Fourth Circuit, which in February 2019 upheld the District Court ruling in a 2-1 decision. A key issue raised on appeal was the consideration that the components of “booking.com” (“booking” and “.com”) were both considered generic, but as the Fourth Circuit upheld, when they’re read or seen together they were recognized by the public and costumers as a unique symbol pertaining to their services due the combination of booking and .com making it distinguishable from the range of other online portals and domain providing the same service, as to align with the prior decision from the Supreme Court case Goodyear’s India Rubber Glove Mfg. Co. v. Rubber Co., whereby simply adding “Company” to the end of a product name does not uniquely identify the company.

The judge who dissented the decision feared that the verdict will follow larger companies that had better resources to perform “Teflon surveys” and other consumer recognition tests could win out smaller companies in trademark dispute cases simply because of the domain name addition.

This case took another turn when the USPTO approached the Supreme Court for a review, which certified the case in November 2019.

The case was held for the oral arguments on May 4, 2020, which in-turn be the first ever to be held via teleconference for the Supreme Court as a result of the unprecedented time that the humanity is suffering in 2020, the coronavirus. During the submissions, the honorable judge raised questions of how an Internet address trademark different from a street address or phone number trademark which are identical and have been granted, as well as the impact if they reversed on how many trademarks would be invalidated.

The Court issued its ruling on June 30, 2020.

The decision of 8–1 affirmed the Fourth Circuit’s decision, holding 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.”

Justice Sotomayor authored a concurring opinion emphasizing points related to the use of survey evidence and clarifying that the question before the Court was not whether the District Court erred in finding that Booking.com was not generic.

Justice Ruth Bader Ginsburg wrote for the majority, joined by all but Justice Stephen Breyer.

Justice Breyer authored a dissenting opinion in which he would have held that “generic.com” marks are necessarily generic because they consist simply of a generic term and a corporate designation.

Ginsburg wrote “According to the PTO, adding ‘.com’ to a generic term—like adding ‘Company’—can convey no source-identifying meaning. That premise is faulty, for only one entity can occupy a particular Internet domain name at a time, so a ‘generic.com’ term could convey to consumers an association with a particular website.

Moreover, an unyielding legal rule that entirely disregards consumer perception is incompatible with a bedrock principle of the Lanham Act: The generic (or non-generic) character of a particular term depends on its meaning to consumers, i.e., do consumers in fact perceive the term as the name of a class or, instead, as a term capable of distinguishing among members of the class. Ginsburg concluded from this “We have no cause to deny Booking.com the same benefits Congress accorded other marks qualifying as non-generic.

My name is Siddarth Shrivastava and currently, I am enrolled in the 4th year of BALLB(Hons.) in Amity Law School Gwalior. With a keen interest in the field of Intellectual Property and trademarks, I chose to intern under the same subject and have authored the article thereby. Trademark Dukan

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