IP Law Daily High Court to decide whether generic term plus ‘.com’ can be trademark
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Friday, November 8, 2019

High Court to decide whether generic term plus ‘.com’ can be trademark

By Thomas Long, J.D.

USPTO seeks reversal of Fourth Circuit decision affirming district court’s conclusion that BOOKING.COM was not generic for hotel reservation systems.

The U.S. Supreme Court has agreed to take a case addressing whether otherwise generic terms can be registrable as trademarks if top-level domain designations, such as ".com" are added to them. At issue is a decision of the U.S. Court of Appeals in Richmond, holding that the federal district court in Alexandria, Virginia, did not err in concluding that the trademark BOOKING.COM is registrable in connection with hotel reservation services because the term has acquired distinctiveness as a source of such services provided by Netherlands-based Booking.com B.V.

Netherlands-based Booking.com filed four applications under Section 66(a) of the Lanham Act for extension of protection in the United States of its mark BOOKING.COM for travel and tourist agency services in International Class 39 and hotel and resort reservations services in Class 45. The trademark examining attorney refused registration on the ground that the mark was generic for the applicant’s services, and alternatively, that the mark was merely descriptive and without acquired descriptiveness. The Trademark Trial and Appeal Board affirmed the refusals.

Booking.com appealed to the federal district court in Alexandria. The district court reversed the Board’s genericness finding, concluding that the term BOOKING.COM was descriptive. The district court then determined that BOOKING.COM was registrable as a matter of law, but only for hotel reservation services, because Booking.com produced sufficient evidence of acquired distinctiveness in relation to those service.

On appeal to the Fourth Circuit, the USPTO argued that the term BOOKING.COM is a generic term that can never be protected, and not a descriptive term that can be protected once it acquires secondary meaning. The appeals court noted that the USPTO conceded that if BOOKING.COM may properly be deemed descriptive, the district court’s finding that it has acquired secondary meaning was warranted. Thus, the only question on appeal was whether the district court erred in finding that BOOKING.COM is not generic. The Fourth Circuit concluded that the district court, as the trier of fact, did not err in finding that the USPTO failed to satisfy its burden of proving that the relevant public understood BOOKING.COM, taken as a whole, to refer to general online hotel reservation services rather than Booking.com the company. In particular, the USPTO failed to produce evidence demonstrating that the public uses "booking.com" generically to refer to booking websites or booking sites. In addition, Booking.com’s Teflon survey demonstrated that 74.8% of respondents identified BOOKING.COM as a brand name, rather than as a general reference to hotel reservation websites. The Fourth Circuit also expressly rejected the USPTO’s contention that adding the top-level domain ".com" to a generic second-level domain like "booking" can never yield a non-generic mark.

Circuit Judge James Wynn dissented from the panel majority’s conclusion that BOOKING.COM is protectable. According to Judge Wynn, under established trademark principles, the combination of a generic term with a generic top level domain designator does not make the combined mark less generic.

The USPTO filed a petition for certiorari on July 5, 2019. The question presented is, "Whether the addition by an online business of a generic top-level domain (‘.com’) to an otherwise generic term can create a protectable trademark."

In the petition, the USPTO contends that the Fourth Circuit’s holding is contrary to Supreme Court precedent, which recognizes that the addition of a corporate designation to a generic term does not render the combination non-generic. "The court of appeals’ analysis conflates the question whether a term is generic with the distinct question whether a party seeking to register a descriptive term has established ‘secondary meaning,’ i.e., an association in the minds of consumers between the term and the party’s business," the petition said.

The petition in USPTO v. Booking.com B.V., Dkt. No. 19-46, was granted November 8, 2019.

Attorneys: Noel J. Francisco, Solicitor General, for USPTO. Jonathan E. Moskin (Foley & Lardner LLP) for Booking.com B.V.

Companies: Booking.com B.V.

MainStory: TopStory TechnologyInternet Trademark

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