Supreme Court Books ‘Booking.com’ Trademark Dispute

Advertising Law

The Supreme Court has agreed to answer the question of whether the addition of “.com” can transform an otherwise generic term into a protectable trademark.

Booking.com operates a website for customers to book travel and hotel accommodations. It has been using the name “BOOKING.COM” since at least 2006 in connection with its online booking services. In 2011 and 2012, Booking.com filed four trademark applications the U.S. Patent and Trademark Office (USPTO) for the mark BOOKING.COM, as a word mark and stylized versions thereof, for various travel accommodation services including, but not limited to, online hotel booking services.

The USPTO refused to register the applications, finding that the marks were not protectable because BOOKING.COM is generic as applied to the services identified in the applications. The Trademark Trial and Appeal Board (TTAB) affirmed the refusals to register.

Booking.com appealed the TTAB’s decisions by filing a civil action against the USPTO in the Eastern District of Virginia. The district court reversed the denial of trademark protection, siding with Booking.com, and the U.S. Court of Appeals, Fourth Circuit affirmed the decision in February 2019.

The USPTO refused registration of the BOOKING.COM applications on the grounds that the mark is generic for the hotel reservation services identified in the applications. A mark is generic if it is the common name of a product, e.g., LITE BEER for light beer or CONVENIENT STORE for convenience stores. The Lanham Act expressly bars registration of marks that are generic terms for the applicant’s goods/services. Generic terms can never obtain trademark protection because they do not have source-identifying significance.

The USPTO argued that the word “booking” is generic for the hotel and travel reservation services in Booking.com’s applications. Further, courts and commentators have long stated that top-level domains (TLDs) are not protectable and generally serve no source-identifying function. Therefore, the USPTO contends that adding a TLD such as “.com” to a generic second-level domain such as “booking” is necessarily generic.

The Federal Circuit and Ninth Circuit have also rejected similar combinations of terms as generic, including, but not limited to, ADVERTISING.COM, HOTELS.COM and LAWYERS.COM. Nevertheless, the Fourth Circuit contends that these and/or other cases at least left open the possibility that in “rare circumstances” a TLD may render an otherwise generic term sufficiently distinctive to be protected as a mark. The inquiry, stated the Fourth Circuit, is whether the public primarily perceives the mark as an indication of (i) the goods/services themselves, which means the mark is generic, or (ii) the source of the goods/services or brand, which suggests that the mark is not generic.

The Fourth Circuit affirmed the district court’s finding that although “booking” is a generic term for the services identified, BOOKING.COM as a whole is nevertheless a descriptive mark, and therefore protectable. In finding BOOKING.COM was not generic in the public’s perception, the court relied heavily on Booking.com’s consumer survey evidence, which suggested that the public primarily understands BOOKING.COM to indicate the company, rather than the service.

The addition of “.com” to a second-level domain such as “booking” can “result in a non-generic, descriptive mark upon a showing of primary significance to the relevant public,” the Fourth Circuit wrote. “This is one such case. Based on the record before it, the district court properly found that the USPTO did not meet its burden of proving that ‘booking.com’ is generic.”

In response, the USPTO filed a writ of certiorari with the Supreme Court, which was granted. Oral argument will likely be scheduled for the spring, with a decision expected by the end of the term in June 2020 on whether the addition of “.com” to an otherwise generic term can result in a protectable trademark.

To read the Fourth Circuit opinion in Booking.com v. USPTO, click here.

Why it matters: If the Supreme Court rules in favor of Booking.com, the company will secure federal trademark registrations for its BOOKING.COM marks for hotel and travel reservation services. This raises a number of concerns ranging from antitrust issues to trademark bullying.

The USPTO argues that the Fourth Circuit opinion flies in the face of long-standing precedent, conflicts with rulings from the Federal and Ninth Circuits described above, and “is likely to have serious and immediate anticompetitive effects.” For example, there is concern that conferring registration of BOOKING.COM will embolden Booking.com to overreach its rights by attempting to block more variations of its competitors’ “booking” marks than it might have without a registration. Even if a court ultimately would narrowly construe Booking.com’s rights in BOOKING.COM—maybe even confined to just the identical mark—some competitors might not be able to absorb the costs of fighting a company the size of Booking.com.

If the Supreme Court sustains the registration of BOOKING.COM, it also likely will incentivize others to try to register their own “generic.com” domain names as trademarks with the USPTO and then attempt to monopolize certain terms with regard to the terms’ use by competitors.

Further, as the survey presented by Booking.com was critical to its case, the battle for “generic.com” domain names may be tipped in favor of big corporations. Surveys are expensive. Wealthy companies likely would have a better opportunity to demonstrate they meet the “rare circumstances” under the Fourth Circuit’s test where consumer perception of their “generic.com” name signifies a brand, and is therefore protectable.

If the Supreme Court rules against Booking.com, the company still can continue to use its BOOKING.COM marks for its online travel booking services. However, it may continue to be difficult, if not impossible, for Booking.com to prevent others from using BOOKING.COM and/or variations thereof to describe their own online booking services. That said, as Judge Wynn pointed out in the Fourth Circuit’s dissent, Booking.com likely selected the term “booking” intentionally, to attempt to attract customers who simply search the web for that service. The trade-off is that Booking.com must forgo at least some ability to exclude competitors from using variants of its BOOKING.COM name to describe their similar and/or overlapping services.

This case highlights the myriad considerations involved in selecting a trademark. Namely, it emphasizes the balance between investing in a strong, recognizable brand that can help you stand out from competitors versus other important business considerations such as the manner in which consumers search for goods/services online and your ability to enforce your rights against third parties. These are just a few of the considerations trademark counsel will use to guide you in selecting your name.

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