In a historic first, on May 4, 2020, the U.S. Supreme Court heard oral arguments via livestream in U.S. Patent and Trademark Office v. Booking.com B.V.  At issue in this case is the level of trademark protection, if any, that “booking.com,” an otherwise generic term, will be afforded. 

Domain names are critical to online commerce and their use is changing traditional trademark rules.  Trademarks are words or symbols that refer to goods and services from a single source.  Generic terms, however, refer to a category or genus of goods or services such as shoes, hats or cosmetics.  Generic terms are not subject to trademark protection, and any registered mark that is deemed generic is subject to cancellation at any time on the ground that it is or has become generic (for example, “aspirin”).  Trademark law, however, allows the registration of terms that describe qualities or characteristics of goods or services (i.e.“Creamy” for yogurt or “Coca-Cola” for a beverage made out of leaves of coca and cola nuts) as long as consumers associate the term with a specific product and producer.  When this occurs, it is considered that the term has acquired secondary meaning. 

U.S. Patent and Trademark Office v. Booking.com B.V.

In 2012, the United States Patent and Trademark Office (“USPTO”) refused to register the mark “booking.com”, determining that “booking” was generic for hotel reservation services, and the combination of the generic term “booking”, with the domain “.com”, did not change this fact. 

Booking.com B.V. (the company that owns the mark) argued that “booking.com” was a trademark because it was a descriptive term that consumers associated with their company, and not any other company in the market offering the same travel and hotel booking services.  The U.S. District Court for the Eastern District of Virginia agreed, and concluded that consumers associated “booking.com” with the source, rather than with the generic term for online hotel reservation services. The court relied on evidence of the company’s investments in marketing and advertising, as well as in customer surveys.  The District Court’s decision was affirmed by the U.S. Court of Appeals for the Fourth Circuit.

Before the Supreme Court this month, the parties made multiple arguments in support of their respective positions.  The USPTO argued that generic terms must never become registered marks, relying on an 1888 Supreme Court case, Goodyear’s India Rubber Glove v. Goodyear Rubber Co.., in support of this proposition.  The USPTO explained that if businesses are permitted to register “generic.com” terms, they would be able to prevent competitors from registering domain names that correctly describe their own goods or services, for instance hotelsbooking.com or ebooking.com.   

For its part, Booking.com B.V. maintained that “booking.com” is a descriptive mark with secondary meaning -- consumers identify the mark with Booking.com B.V., and not any other company in the market offering the same services.  Booking.com B.V, relied on a 1938 Supreme Court case, Kellogg Co. V. National Biscuit Co. 

If the Supreme Court adopts the “primary significance test” in this case, without creating some limitations as to the amount of protection afforded to domain names, the decision will provide a trademark owner with a monopoly over a generic term, depriving its competitors from their entitlement to use generic terms to describe their own products. 

Because consumer perception is key in trademark law, the Court will have the challenging task to decide whether certain brands overcome the general barriers to generic terms.  As long as there is evidence of a brand’s unique position of consumer recognition in a manner that avoids creating a monopoly, and decimating registered “.com” marks that are well-known brands by consumers, it is likely that “booking.com” will be allowed to register.