Our Associate, Madhurima Gadre discusses “US Supreme Court Holds That Booking.com Is Not A Generic Mark”
Recently, in an 8-1 ruling, the US Supreme Court held that BOOKING.COM is not a generic mark and is capable of acquiring a trade mark registration. Booking.com B.V., an enterprise that operates a travel reservation website, sought federal registration of four (4) marks including the term BOOKING.COM. The U. S. Patent and Trademark Office (“USPTO”) refused registration of the marks by concluding that BOOKING.COM is generic for online hotel reservation services. As per the USPTO, the term BOOKING is generic and .COM is merely an identifier for use on the Internet, and as such, the mark BOOKING.COM is also generic and not entitled to registration. In other words, the mark BOOKING.COM is incapable of acquiring secondary meaning as a trade mark.
Booking.com B.V. filed an appeal against the decision at the Trademark Trial and Appeal Board (“TTAB”), which upheld the USPTO’s decision. Booking.com B.V. appealed and the appellate court held that BOOKING.COM is not generic. The USPTO appealed. The Court of Appeals found no error in the District Court’s assessment of how consumers perceive the term BOOKING.COM. As such, the Court of Appeals rejected the USPTO’s contention that, as a rule, combining a generic term like BOOKING with .COM yields a generic composite. The USPTO filed an appeal at the US Supreme Court.
After hearing remote and live streamed oral arguments for the first time in history, Justice Ginsburg, on behalf of the US Supreme Court, wrote the 8-1 majority opinion. The court held that although BOOKING is a generic term for hotel reservation services, adding the .COM element rendered it a compound term that needs to be considered as a whole. The court noted that if BOOKING.COM were generic, one may expect Travelocity, another such service, to be a BOOKING.COM provider. The court repeatedly looked into consumer perception that BOOKING.COM identifies a particular source of travel reservation services and stated that “because ‘Booking.com’ is not a generic name to consumers, it is not generic”. The court also drew attention to the USPTO’s inconsistent application of its rule that a generic term paired with “.com” is generic and cannot function as a trade mark, given that ART.COM is registered as a trade mark for online retail store services offering art prints, original art and the like. Further, it noted that DATING.COM is also registered for dating services.
The court clarified that determination of a mark as generic depends on consumer perception, i.e., whether the public will assume the “generic.com” term is the name of a class of goods or services, or as a term capable of distinguishing among members of this class. In the latter situation, a term may be descriptive rather than generic, and even a descriptive term can gain significance as a trade mark if the public comes to associate it with a single source of the goods or services.
The US Supreme Court’s ruling is certainly encouraging to businesses operating under any “generic.com” brands, as they can now seek registration of such “generic.com” marks if they can demonstrate that consumers do not perceive the mark as generic.