April 28, 2020
at 10:45 am
Editor’s note: This article was originally published on March 16, 2020.
US Patent and Trademark Office v Booking.com raises the question of whether a company can create a registrable trademark by combining a generic non-protectable term with a generic top-level domain name such as “.com”.
Trademarks and service marks are words or symbols that communicate the source of goods and services. The Lanham Trademark Protection Act provides rules for the registration of trademarks and for the protection of registered and unregistered trademarks. The law prohibits trademark protection for generic terms, such as “shredded wheat” or “rubber.” Generic terms cannot be registered as trademarks, and any registered trademark that is or has become the generic term for the product it identifies may be revoked at any time. The courts have explained that competitors need and have the right to use generic terms to describe their products to consumers, so this would undermine the competition policies embodied in trademark law to allow a business to operate. monopolize generic terms.
While the law does not allow the registration of generic terms, it does allow the registration of terms that were initially “merely descriptive” of goods or services if the public has come to understand them primarily as trademarks rather. as words or symbols that describe product qualities. The brand COCA COLA is protected even though it originally described a syrup made from coca leaves and cola nuts, as the name has come to mean a mark for a non-alcoholic beverage rather than a description of the characteristics of the product. A generic term, however, may not be a trademark protected even though a large advertising campaign or a long period of exclusive use has caused consumers to recognize the term as a brand name for a particular seller of the product. This increases the importance of the decision whether a term is merely descriptive (meaning it can become a protected trademark for the product it describes by gaining a secondary meaning) or is generic (meaning it does not cannot become a protected trademark for the product it describes). The law does not define the terms “generic” or “descriptive” and does not give much guidance on how to tell the difference. Courts have adopted a variety of rules of thumb, but the rules are neither consistent nor predictable.
The Patent and Trademark Office is responsible for the registration of trademarks and service marks. The bureau has long taken the position that top-level domain names such as “.com” or “.org” do not perform any independent source naming function, but rather tell consumers where to find an entity on the Internet. The practice of the PTO is to deny trademark registration to alleged trademarks that combine the generic name of the class or category of a product with the suffix “.com”. The PTO rule follows an 1888 Supreme Court case, Goodyear’s India Rubber Glove v. Goodyear Rubber Co., who considered that the combination of a generic term with a corporate name such as “Company” or “Inc.” did not create a protectable trademark. U.S. Federal Circuit and 9th Circuit Appeals Courts have agreed, upholding PTO’s refusal to record HOTELS.COM for hotel information and reservation services, ADVERTISING.COM for online advertising services and MATELAS.COM for the sale of bedding online.
In 2012, Booking.com SV applied to register BOOKING.COM as a service mark for online hotel reservation services. The PTO has determined that “reservation” is the umbrella term for hotel reservation services. In reaching this conclusion, the PTO consulted the dictionary definitions of the terms “reservation” and “.com”, examined the use of the term “reservation” by many websites to refer to reservation services, and reviewed the domain names and trade names used by third parties. parties. It refused the registration on the grounds that the combination of a generic term such as “reservation” with a generic top level domain name such as “.com” simply communicates to consumers that the company offers hotel reservations online. .
Booking.com has applied for review of the registration denial with the U.S. District Court for the Eastern District of Virginia. The tribunal agreed with the PTO that the term “reservation” is generic when applied to hotel reservation services. However, the court concluded that the combination of the generic term “reservation” with the top-level domain name “.com” results in a term that is merely descriptive rather than generic. The combination would therefore be registrable if Booking.com could show that consumers recognize the term as a specific brand. Booking.com presented survey data which tended to show that a majority of consumers recognize BOOKING.COM as a brand name rather than a category of products. The district court ruled that the evidence from the investigation and the evidence of Booking.com’s substantial advertising spending was sufficient to demonstrate this. A divided US appeals court for the 4th Circuit has been upheld.
Before the Supreme Court, the PTO puts forward two major arguments. The first argument is based on the 1888 Good year Case. While, as the lower courts have recognized, “reservation” is an umbrella term for hotel reservation services, Good year states that Booking.com was unable to register “Booking Company” as a trademark for its services. The same principle applies to adding “.com”, which only means that the company operates a commercial website via the Internet. The evidence from the Booking.com investigation does not change this result. Much like a survey showing that many consumers associate “Booking Company” or “Booking Inc.” with a particular entity would not make these terms federally registrable as trademarks, evidence from Booking’s investigation. com does not provide any basis to allow the federal registration of BOOKING.COM.
The PTO’s second argument is that the competition and consumer protection policies that underlie the rule that generic terms cannot be trademarks support its refusal to register the trademark. The distinction between the legal treatment of generic terms and its treatment of merely descriptive terms ensures that a generic term cannot be monopolized, even by a company that devotes substantial resources to persuading consumers that a generic term represents its particular brand. The lower court ruling would allow companies to monopolize the language by registering generic terms as domain names, then use their trademark rights to prevent competitors from calling their products by their ordinary names.
Booking.com maintains that Good year is no longer a good law because the Lanham Law, enacted in 1946, replaced it. The law (as amended in 1984) states that in deciding whether a formerly valid mark has become generic, the courts and the PTO should determine the primary meaning of the term for the relevant public. Booking.com argues that this test is also appropriate for deciding whether a term is generic or just descriptive to begin with, and that consumer surveys are the best way to gauge the primary meaning of a term to consumers. Applying the primary significance test would advance the objectives of Lanham Law by allowing brand owners to take steps to avoid consumer confusion whenever consumers understand that a term is a trademark or service mark. , and by rewarding companies for investing in their brands. Booking.com says its survey proves the public recognizes BOOKING.COM as a brand name rather than a category of products. Therefore, according to Booking.com, the term should be considered descriptive rather than generic. The company’s brief includes a long list of trademarks and service marks that it claims would be subject to revocation under the rule the PTO applied to its claim.
Booking.com does not dispute the conclusion that the “reservation” is generic for its services. The PTO does not dispute the conclusion of the lower court that if BOOKING.COM is properly treated as a descriptive rather than a generic term, Booking.com’s advertising spend and investigative evidence would be sufficient to show secondary meaning. The case will therefore boil down to the question on which the court granted certiorari: “If, where Lanham law states that generic terms cannot be”) an otherwise generic term may create a protectable trademark. ” In answering this question, the Supreme Court should articulate a test to distinguish generic terms from descriptive terms, and endorse or reject the long-standing rule that a generic term cannot be protected as a trademark for the product even though the applicant has evidence that consumers perceive the term as a brand name.