Introduction

Supreme Court Carves Out Protection for Generic Trademarks

On June 30, 2020, the United States Supreme Court in an 8-1 decision led by Justice Ginsburg affirmed the Fourth Circuit’s opinion that the term “Booking.com” is not generic, i.e. it is not the ordinary name of a service as perceived by consumers, and is therefore eligible for federal trademark registration. United States Patent & Trademark Office v. Booking.com B. V.

Supreme Court Carves Out Protection for Generic Trademarks

August 14, 2020

Josh Eichenstein

On June 30, 2020, the United States Supreme Court in an 8-1 decision led by Justice Ginsburg affirmed the Fourth Circuit’s opinion that the term “Booking.com” is not generic, i.e., it is not the ordinary name of a service as perceived by consumers, and is therefore eligible for federal trademark registration. United States Patent & Trademark Office v. Booking.com B. V., 140 S. Ct. 2298, 2301 (2020)

Trademarks Eligible for Protection

Generally, a trademark distinguishes one producer’s goods or services from another’s. Guarding a trademark against use by others, the Supreme Court has explained, “secure[s] to the owner of the mark the goodwill” of her business and “protect[s] the ability of consumers to distinguish among competing producers.” Park ’N Fly, Inc. v. Dollar Park; Fly, Inc., 469 U.S. 189, 105 S.Ct. 658, 83 L.Ed.2d 582, 198 (1985).

The more distinctive the mark, the more readily it qualifies for the principal register. The most distinctive marks—those that are “ ‘arbitrary’ (‘Camel’ cigarettes), ‘fanciful’ (‘Kodak’ film), or ‘suggestive’ (‘Tide’ laundry detergent)”—may be placed on the principal register because they are “inherently distinctive.” Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 210–211, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000). “Descriptive” terms, in contrast, are not eligible for the principal register based on their inherent qualities alone. E.g., Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 718 F.2d 327, 331 (CA9 1983) (“Park ’N Fly” airport parking is descriptive), rev’d on other grounds, 469 U.S. 189, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985). The Lanham Act, “liberaliz[ing] the common law,” “extended protection to descriptive *2303 marks.” Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 171, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995). But to be placed on the principal register, descriptive terms must achieve significance “in the minds of the public” as identifying the applicant’s goods or services—a quality called “acquired distinctiveness” or “secondary meaning.” Wal-Mart Stores, 529 U.S. at 211, 120 S.Ct. 1339 (internal quotation marks omitted); see § 1052(e), (f). Without secondary meaning, descriptive terms may be eligible only for the supplemental register. § 1091(a).

At the lowest end of the distinctiveness scale is the generic name for the goods or services. The name of the good itself (e.g., “wine”) is incapable of “distinguish[ing] [one producer’s goods] from the goods of others” and is therefore ineligible for registration. Indeed, generic terms are ordinarily ineligible for protection as trademarks at all. See Restatement (Third) of Unfair Competition § 15, p. 142 (1993); Otokoyama Co. v. Wine of Japan Import, Inc., 175 F.3d 266, 270 (CA2 1999) (“[E]veryone may use [generic terms] to refer to the goods they designate.”).

Lower Court Decisions

Here, both a USPTO examining attorney and the USPTO’s Trademark Trial and Appeal Board concluded that the term “Booking.com” was generic for the services at issue and is therefore unregistrable. “Booking,” the Board observed, means making travel reservations, and “.com” signifies a commercial website. The Board then ruled that “customers would understand the term BOOKING.COM primarily to refer to an online reservation service for travel, tours, and lodgings.”

However, Booking.com sought review in the U. S. District Court for the Eastern District of Virginia, invoking a mode of review that allows Booking.com to introduce evidence not presented to the agency. Relying in significant part on Booking.com’s new evidence of consumer perception, the District Court concluded that “Booking.com”—unlike “booking”—is not generic. The “consuming public,” the court found, “primarily understands that BOOKING.COM does not refer to a genus, rather it is descriptive of services involving ‘booking’ available at that domain name.” See United States Patent & Trademark Office v. Booking.com B. V., 140 S. Ct. 2298, 2303 (2020).

Supreme Court Analysis

Upon review from the Supreme Court, Justice Ginsburg wrote several guiding principles to analyze whether Booking.com was generic.

  • First, a “generic” term names a “class” of goods or services, rather than any particular feature or exemplification of the class. (“A generic term is one that refers to the genus of which the particular product is a species.”).
  • Second, for a compound term, the distinctiveness inquiry trains on the term’s meaning as a whole, not its parts in isolation.
  • Third, the relevant meaning of a term is its meaning to consumers. Bayer Co. v. United Drug Co., 272 F. 505, 509 (SDNY 1921) (Hand, J.) (“What do the buyers understand by the word for whose use the parties are contending?”).

Eligibility for registration, all agree, turns on the mark’s capacity to “distinguis[h]” goods “in commerce.” 15 U.S. Code § 1052. Evidencing the Lanham Act’s focus on consumer perception, the section governing cancellation of registration provides that “[t]he primary significance of the registered mark to the relevant public … shall be the test for determining whether the registered mark has become the generic name of goods or services.” 15 U.S. Code § 1064

Justice Ginsburg further wrote that “[u]nder these principles, whether ‘Booking.com’ is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services. Thus, if ‘Booking.com’ were generic, we might expect consumers to understand Travelocity—another such  service—to be a ‘Booking.com.’ We might similarly expect that a consumer, searching for a trusted source of online hotel-reservation services, could ask a frequent traveler to name her favorite ‘Booking.com’ provider.

            The Court was careful not to open the door to allow all “generic” names to get protection by adding a “.com.” “[W]e do not embrace a rule automatically classifying [“generic.com”] such terms as nongeneric. Whether any given “generic.com” term is generic, we hold, depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class. United States Patent & Trademark Office v. Booking.com B. V., 140 S. Ct. 2298, 2307 (2020). Furthermore, the Court noted that other competing businesses are still free to use the word “booking.”

In light of this opinion, brands that may seem to have generic names may have an avenue for protection if consumers perceive the term as distinguishable among its competitors.

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