Isn’t It Generic: Supreme Court to Consider Whether Web Addresses Using Generic Terms May Be Trademarked

Isn’t It Generic: Supreme Court to Consider Whether Web Addresses Using Generic Terms May Be Trademarked

Legal Sidebari
Isn’t It Generic: Supreme Court to Consider
Whether Web Addresses Using Generic Terms
May Be Trademarked
June 2, 2020
What can be trademarked? On May 4, 2020, in its first telephonic oral argument ever, the Supreme Court
heard arguments addressing this question. General y, trademarks protect the goodwil that a company has
built in a “distinctive” name or mark. Whether a mark is distinctive can depend on a number of factors,
but, under long-standing trademark principles, a “generic” mark is never distinctive and therefore may not
be protected under trademark law. A mark is generic if it is the “common name of a product” or “the
genus of which the particular product is a species.” For example, one could not trademark the name
“LITE BEER for light beer, or CONVENIENT STORE for convenience stores.”
Booking.com, a hotel reservation company, applied to the U.S. Patent & Trademark Office (PTO) for a
trademark on its business name, BOOKING.COM. The PTO denied the application, but the U.S. Court of
Appeals for the Fourth Circuit (Fourth Circuit) held that BOOKING.COM is a protectable mark. In PTO
v. Booking.com, the Supreme Court is poised to address the question whether combining two generic
terms can result in a protectable, distinctive trademark. Specifical y, the case presents the question
whether “the addition by an online business of a generic top-level domain (‘.com’) to an otherwise
generic term can create a protectable trademark.” This Sidebar wil discuss the relevant legal background
before addressing potential implications for Congress.
Legal Background
Trademark law “protects the goodwil represented by particular marks.” These protections al ow
customers to recognize and distinguish between particular product sources. Because trademark law
restricts the words and images that can be used in commerce, however, it also implicates concerns
regarding free expression and fair competition. Trademark law protects this “linguistic commons” by not
offering protection for words that “do not identify goodwil attached to products or product sources but
rather are used for their common meaning or meanings not indicative of products and product sources. ”
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To determine whether a term is distinctive, courts general y analyze whether the term fal s into one of a
number of established categories, in descending level of distinctiveness: (1) fanciful; (2) arbitrary;
(3) suggestive; (4) descriptive; or (5) generic.
Certain categories of terms are considered inherently distinctive. Fanciful terms “are made-up words that
are invented to describe the product or source,” such as KODAK film. Arbitrary terms “are based on
existing words used in ways unconnected with their common meaning,” such as CAMEL cigarettes.
Suggestive terms connote, without describing, some attribute or feature of the product; for example, TIDE
laundry detergent. Arbitrary, fanciful, and suggestive terms are considered inherently distinctive and may
be eligible for trademark protection without further evidence, so long as they meet certain other
requirements.
By contrast, descriptive terms are not automatical y trademark eligible. Descriptive terms describe “the
qualities or characteristics of a good or service.” Descriptive terms may only be protected under
trademark law if the proponent can establish that the mark has established “secondary meaning” in
customers’ minds; in other words, that customers recognize it as relating to a particular product or
company. For example, “KENTUCKY fried chicken and AMERICAN airlines are geographical y
descriptive marks that have established secondary meanings in consumers’ minds, causing consumers to
recognize a brand or source of fried chicken or air travel, rather than the places, Kentucky and America. ”
Generic terms, however, may not be protected as trademarks where they are the “common name of a
product” or “the genus of which the particular product is a species,” because in that case they “do not
distinguish the particular product or service from other products or services on the market.” (Whether a
term is generic may depend on the relevant company’s market; for example, “Apple Company” may be
generic if the company sel s fruit, but may not be if the company sel s computers.) If generic terms were
protectable, “a competitor could not describe his goods or services as what they are.” Accordingly, even a
showing of secondary meaning does not necessarily render a generic term protectable as a trademark.
Case Background
Booking.com operates a website on which customers can book travel and hotel accommodations. In 2011
and 2012, it applied to the PTO for trademark protection of its company name, BOOKING.COM. The
PTO rejected the applications, concluding that “booking” is a generic term for reserving travel or
accommodations, “.com” is a generic term for a company website, and customers would understand the
combination to be “an online reservation service for travel, tours, and lodging”—the services that
Booking.com offers. The PTO also determined that even if BOOKING.COM is descriptive, the company
has not established secondary meaning.
Booking.com appealed the PTO’s decision by filing a civil action in the U.S. District Court for the
Eastern District of Virginia (the district court). The company argued that BOOKING.COM is descriptive
or suggestive, and submitted survey evidence that 74.8% of consumers recognize the mark as a brand.
The district court agreed that BOOKING.COM could be protected, holding that although “booking” is a
generic term for services, BOOKING.COM as a whole is a descriptive mark which the company
established had acquired secondary meaning.
The PTO appealed. The Fourth Circuit, in a divided opinion, found that the PTO had not met its burden of
proving that BOOKING.COM is generic. In performing this analysis, the court confirmed that the proper
analysis was evaluating how the public understands the proposed mark “as a whole,” rather than
independently analyzing the separate parts of the proposed mark. Under this analysis, the court held that
the PTO had not established 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.” The court
reasoned that the PTO had not introduced evidence that members of the public used “booking.com” to

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refer to booking websites general y, and found the survey evidence strongly indicated that the public
understands BOOKING.COM “as a brand name, rather than a general reference to hotel reservation
websites.” The court rejected the PTO’s argument that adding .com to a generic term like “booking” was
necessarily generic. The Court distinguished Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear
Rubber Co. (Goodyear)—an 1888 Supreme Court case that held that adding “Company” to a name did
not al ow for trademark protection—on the basis that it was decided before the current statute governing
trademark law (the Lanham Act) was enacted. Judge Wynn dissented, contending that although proposed
marks should be analyzed as a whole, BOOKING.COM is generic, not descriptive, and therefore not
protectable.
Arguments Before the Supreme Court
Before the Supreme Court, the PTO contends that Goodyear’s principle controls; namely, that adding
“.com” to a generic word like “booking” does not create a protectable mark. Just as BOOKING
COMPANY cannot be trademarked, the PTO contends, neither should BOOKING.COM. Although
Goodyear predates the Lanham Act, the PTO continues, the Lanham Act’s purpose was to codify existing
trademark law, such as Goodyear. The PTO notes that other courts considering the issue have held adding
.com to a generic term does not create a protectable mark. Moreover, the PTO contends that registering
generic .com marks is not sound policy because it bars competitors from using language needed to market
their products. For example, the PTO argues, many of Booking.com’s competitors use a website that uses
the phrase “booking.com” or is similar to it, such as ebooking.com. The PTO also argues that
Booking.com’s survey does not support registration because generic terms may never be protected as
marks, regardless of whether the public associates the generic term with a particular company.
Booking.com responds that customer perception controls what can be trademarked. Thus, “whether a
mark is generic depends on whether relevant consumers believe that the mark as a whole is the generic
name for the class of goods or services.” In other words, if the term’s primary significance to consumers
is as a name of a category of goods or services, then the term is generic. That rule controls the analysis of
al terms, according to Booking.com, even domain names. Focusing on how consumers perceive the
mark, Booking.com contends, “fosters competition and rewards investments in building brand recognition
by encouraging enterprises to use marks that consumers consider meaningful in differentiating among
brands.” Moreover, Booking.com contends that because the relevant inquiry is how the public views a
term, reliance on survey evidence is proper. Final y, Booking.com argues that, in enacting the Lanham
Act, Congress replaced Goodyear with a consumer perception standard.
If the Court adopts the PTO’s position, then trademarks of a “generic.com” format arguably may not be
registered. Booking.com argues that this wil lead to the cancel ation of other similar marks that the PTO
has already registered (e.g., WEATHER.COM and THE WIG COMPANY). The American Intel ectual
Property Law Association, which filed an amicus brief, contends that a per se rule risks barring future
brands that make use of other website names. Another amicus contends that if these brand names are not
protected, consumers wil ultimately suffer due to increased confusion in differentiating companies.
If Booking.com prevails, then generic.com trademarks wil be protectable (at least in certain
circumstances, depending on how broadly the Court decides this case). One amicus brief, authored by
several trademark law professors, urges the Court “to be cautious in resolving” the question, due to “the
risks to competition of overassertion of registered marks that are largely or entirely comprised of generic
elements.” In particular, the professors expressed concern that, if enforced aggressively, generic.com
marks could result in anticompetitive infringement litigation. Another amicus, the Electronic Frontier
Foundation (EFF), contends that al owing registration of generic.com trademarks would impair
businesses’ ability to use domain names to describe their offerings.

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Implications for Congress
A central question in this case is how Congress intended courts and the PTO to evaluate whether a
proposed website-based trademark is generic. Accordingly, the decision raises questions as to whether the
Court is interpreting the law as Congress intended. Should Congress disagree with the outcome of
Booking.com, it could abrogate the decision statutorily by specifical y setting forth whether and to what
extent .com terms may receive trademark protection, or more clearly establishing how courts and the PTO
should determine whether a proposed mark is generic.
Booking.com was argued on May 4, 2020. A decision is expected before the end of June.

Author Information

Kevin T. Richards

Legislative Attorney

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