SCOTUS Rules That Addition of “.com” to a Generic Term Can Create a Trademark

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By: Alex Butterman

Butterman is Senior Counsel and the Managing Trademark Attorney at Dunlap Bennett & Ludwig’s Leesburg Office.

[July 9, 2020] Is GENERIC.COM A Generic Mark? NO, according to the U.S. Supreme Court in an 8-1 decision issued on June 30, 2020, in the United States Patent and Trademark Office et al. v. Booking.com B. V., 591 U. S. ____ (2020) (BREYER, J., dissenting). Is this a significant change? Somewhat, as I will explain below. 

I had the privilege of working at the U.S. Patent and Trademark Office (“USPTO”) during the onset and midst of the “dot com” boom from 1997 to 2000, when “.com” and “.net” and other “top-level domains” (“TLD”) were established to host “websites” on the internet. This advent of websites and networks of multiple websites known as the “internet” revolutionized our world because these websites could comprise businesses where goods and services were offered and sold, and together, they essentially formed a whole new economy. At that time, the hottest thing since sliced bread was to purchase a “domain name” consisting of a known generic term combined with the .com TLD, the TLD for commercial use, for around $20 per domain and because the internet was set up so no other entity could own or use that same domain, these domains became like a parcel of real estate that once occupied could exclude others. The next hottest thing if backed by sufficient resources or investors, was to register the domain name as a trademark or service mark[1] and rely on the Lanham Act (U.S. trademark statute) legal protections to attempt to acquire or maintain exclusive rights to the domain name through legal enforcement.  

As with any law needing to catch up to a new technology, the USPTO as the registrar of trademarks under the Lanham Act had to develop rules and policies around these new types of trademarks. A famous formula for these new domain names that would seek trademark registration protection was the known generic name for a particular product or service combined with the .com TLD like pets.com, toys.com, hotels.com, and booking.com, to name a few. This formula was famous because generic terms were believed to be the first term that comes to a consumer’s mind to search for the goods or services, excluding competitors from being able to use this generic term to find a website were believed to be highly advantageous. 

A term or mark is “generic” if its primary significance to the relevant public is the class or category of goods or services connected with which it’s used.[2] By definition, a generic term cannot function as a mark because it is incapable of distinguishing one product in that category from another. Relying on an 1888 pre-Lanham Act case[3] that said that adding a corporate entity designation onto a generic term, like “company” onto “Goodyear Rubber,” would not alter the meaning of the underlying generic term and would merely inform consumers that applicant is a company making Goodyear rubber, the USPTO contends that adding a TLD like .com onto the generic word for the goods/services would not change the generic nature of the second-level domain, the word immediately preceding the TLD. 

On comes Booking.com B. V., owner of the popular www.Booking.com website and digital travel agency where one can “book” all sorts of travel reservations from airline flights to lodging, which wants to register its BOOKING.COM mark federally. The USPTO refuses to register the BOOKING.COM mark because it is allegedly generic and incapable of becoming a mark. The USPTO reasons that “booking” describes the genre or category of the services and .com is merely a TLD that tells consumers the service is a website and the mark as a whole merely identifies how to locate the website. Booking.com attempts to refute this USPTO determination by showing that its consumers do not view the primary significance of booking.com as a type or genre of website and instead view the mark as a brand of the website. 

After the USPTO Trademark Trial and Appeal Board upholds the examiner’s refusal on appeal, Booking.com seeks review in the U.S. District Court for the Eastern District of Virginia where it can introduce new evidence such as a consumer survey. Apparently, the results of that survey showed that 75% of participants thought Booking.com was a brand while only 33% of participants thought that the made up Washingmachine.com domain was a brand. That data persuaded the Virginia federal court and the Fourth U.S. Circuit Court of Appeals to overrule the TTAB and sustain that overruling.

Writing for the Court, Justice Ginsberg stated that the USPTO’s reliance on the pre-Lanham Act case was faulty and incompatible with the Lanham Act, which does not support a per se rule such as any TLD combined with a generic term has to be considered generic. Ginsberg emphasized that the determination of genericness must rest on the evidence of the actual perception of the relevant consumers, such as the survey evidence in the appellate record. Also, Ginsberg distinguished the 1888 case from the present case because an internet domain name like booking.com can only be used by the entity that registers the domain name, of which consumers are aware, and therefore consumers would ordinarily associate the domain name with one entity like a mark; the corporate name has no such restriction. 

Justice Breyers’ sole dissent supports the USPTO’s per se rule as predictable and sensible in that it does not allow an entity to exclude competitors from being able to use a necessary generic term combined with .com merely because the entity that adopts that term could have sufficient resources to advertise and market its generic.com term and later show that consumers will recognize that domain as a brand in a consumer survey. Breyer discounted the results of the survey stating that the comparison of the Booking.com domain to a made-up domain was not an even comparison. Breyer further expresses “serious concern” about an anticompetitive outcome from this decision such as, ultimately, “one firm per product” because one firm will be able to acquire the generic.com domain for their business and exclude others from using a similar domain or merely threaten to exclude others who will be sufficiently deterred by litigation costs.

While this decision was close to unanimous with only one Justice dissenting, the dissent is nonetheless interesting because I have observed professional colleagues disagreeing along the same lines as the majority and the dissent (not necessarily in the same proportion). Only time will tell which side, if any, is correct. One development that is clear from this decision, however, is that the USPTO has one less per se rule to follow and now must analyze all generic.com marks strictly by what the evidence of record shows the primary significance of the mark to the relevant public to be. 

Sources:

[1] Hereinafter euphemistically called “trademark” or “trademarks.”
[2] H. Marvin Ginn Corp. v. Int’ l Ass’n of Fire Chiefs, Inc., 228 USPQ 528, 530 (Fed. Cir. 1986)
[3] Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598 (1888)

Contact Dunlap Bennett & Ludwig at 703-777-7319 or email clientservices@dbllawyers.com. 

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Posted in: Intellectual Property - Trademarks, Litigation & Disputes

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