USPTO v. Booking.com – Why we won't see a rise in generic.com Trademark Registrations
Written by Yashwardhan Singh
Associate Editor at Law & Order Fifth Year, BA. LLB. Symbiosis Law School, Pune
Source: Alternate Investment Coach Disclaimer: Please note that the views expressed below represent the opinions of the article's author. The following does not necessarily represent the views of Law & Order.
Internet domain names serve as an online pathway to direct a user to a particular website. However, today, they serve not merely as addresses of a website, but also as an indicator of a business’ brand. The way a particular domain name has been registered as a website can help us associate a particular product or service with it. A domain name such as ‘www.google.com’ denotes the website and the services provided by the company Google or ‘www.tatamotors.com’ denotes the website for the company of Tata Motors. Thus, domain names function very similarly to trademarks in this aspect. It is no surprise then, to note that domain names have been, on several occasions, successfully registered as trademarks.
However, it is a principle of trademark law that names which are generic in nature cannot be trademarked. Yet, on June 30th, 2020, the Supreme Court of the United States (SCOTUS) in the case of United States Patent and Trademark Office (USPTO) v. Booking.com B. V., allowed for the trademark registration of the generic domain name, “booking.com”. This article seeks to analyse this recent decision of the SCOTUS in light of the fact that it is the first judgement allowing for a generic term coupled with a top-level domain (TLD) to be allowed registration as a trademark.
A trademark is any word, symbol, phrase, shape, device, etc… which denotes and distinguishes one particular good or service from another good or service in the same market. Every such mark, however, is not eligible for trademark protection. The subsequent paragraphs explain what I mean by the preceding statement.
Under the United States’ Trademark Act of 1946, also called the Lanham Act, there are two basic requirements for a mark to be trademarked: distinctiveness and use in commerce. Thus, a mark which is not distinctive, i.e. one which is generic in nature, cannot be trademarked. For example, the term ‘vehicle’ cannot be trademarked due to its generic nature but the term ‘BMW’, which points to a brand of luxury vehicles, can be trademarked due to its distinctive nature.
The reason trademark law prohibits generic terms from being registered as trademarks is because such a registration would essentially grant a monopoly to the trademark holder. It is, however, possible to combine a generic term with a non-generic term or a generic term with another generic term, such that they point to particular goods or services, and get the same registered as a trademark. For example, the term ‘pizza’ cannot be trademarked due to its non-distinctiveness, but when combined with the term ‘hut’ to form the mark ‘Pizza Hut’, we immediately recognize the name of one of the most popular restaurant chains in the world.
The Conundrum of Generic Marks and Domain Names
Domain names are a valuable commodity for businesses and individuals alike. This is supported by the fact that the world’s most expensive domain name is valued at over USD 870 million (www.cars.com). Domain names are also unique in the sense that the same domain name cannot be registered in the same top-level domain (TLD) by another. A top-level domain (TLD) is that part of the domain name which comes after the dot, i.e., ‘.com’, ‘.org’, ‘.edu’, ‘.net’, etc.
However, disputes often arise on the use of a domain name due to the first-come first-serve system of being assigned domain names.
The uniqueness of domain names also does not entail them guaranteed protection under trademark law. For a domain name to be registered as a trademark, it must satisfy the same conditions which a normal mark would have to satisfy to be eligible for trademark protection: that of distinctiveness and of being able to act as a source identifier for a good or service. Thus, the domain name not only provides an address to a website but also serves as a business identifier.
Generic domain names are, thus, not eligible for protection as a trademark. The domain name has to show its distinctiveness and must be able to point to a particular brand or company through its name. The US Court of Appeals for the Federal Circuit in the 2009 case of In re Hotels.com, L.P., held that merely adding a “.com” after a descriptive word does not entail such a term to be registered as a trademark as it does not create distinctiveness. This case entailed seeking trademark registration of the generic domain name “hotels.com”. The Court further stated that adding the suffix “.com” after a generic term would not convert the same into a brand name.
Similarly, the Federal Court had also denied trademark registration in another case which attempted to trademark the domain name “mattress.com”. While the parties themselves did not disagree that the words “mattress” and “.com” are generic in themselves, the Court held that the combination of both the terms was also a generic mark.
In the case of Rubber Glove Mfg. Co. v. Goodyear Rubber Co., it was held that adding commercial indicators to a generic term, such as ‘Co.’ or ‘Company’, would not be able to express a source-identifying meaning (a “source-identifying meaning” means that the trademark must be able to identify the source of a good or service, that the good or service comes from a single source). The court held that the addition of the suffix of ‘Co.’ or ‘Company’ would not transform a generic term into a registrable trademark. This case, decided almost 60 years prior to the creation of the Lanham Act, is still taken by the US Courts as a standing precedent to hold that adding a ‘.com’ suffix to a generic name would not grant trademark protection to the new composite word.
The Supreme Court of the United States (SCOTUS) in the Booking.com case has moved away from the views expressed and accepted as the norm in Goodyear and examined how and when a generic domain name can be registered as a successful trademark.
The case of USPTO v. Booking.com B.V.
Booking.com is a successful travel agency running its services online and providing consumers with reservations for hotels and accommodations. It has been ranked as the number one site in the travel and tourism category, which goes to show the enormous brand the company has built. It is, therefore, not surprising why Booking.com would seek trademark protection of its brand. In 2012, Booking.com filed to register four different marks, all being graphical variations of the word ‘booking.com’.
Yet, despite the successful brand image the website has created, the USPTO refused grant of trademark to the domain name on the grounds that the same is a generic term, was descriptive and lacks any secondary meaning. The decision was upheld by the Trademark Trial and Appeal Board (TTAB).
However, in a surprising turn of events, the US District Court for the Eastern District of Virginia reversed the decision of the TTAB. On appeal by the USPTO, which was also affirmed by the Court of Appeals for the Fourth Circuit and both these decisions were challenged by the USPTO.
The reason the scales tilted in the favour of Booking.com was because of a survey evidence presented in the District Court, illustrating that almost 75% of the respondents understood Booking.com not as a generic domain name, but as a brand name.
In the 8-1 decision led by J. Ruth Bader Ginsburg, the majority opinion held that adding a TLD such as “.com” to a generic term can be considered as a protectable trademark, even if the generic term (‘booking’) cannot be registered by itself. The court explained that a generic term would only be called as generic if the consumers attach such a meaning to the name. Thus, if the consumers do not perceive a generic term or a generic domain name to represent a particular class of goods or services but a brand, such a name cannot be called ‘generic’.
On the count that the mark is actually descriptive, the court stated that although descriptive terms are not eligible for trademark registration, when they achieve significance in the minds of the public and start to identify the mark owner’s goods or services, they obtain the quality of “acquired distinctiveness”. Distinctive marks, unlike generic marks, are eligible for trademark protection.
The SCOTUS also gave an example that if Booking.com was not distinctive, one might expect the consumer to ask another person what his/her favourite ‘booking.com’ website is or expect the consumer to confuse another travel service website with a ‘booking.com’ website.
Finally, the court held that if Booking.com is not a generic name to consumers, it cannot be termed as generic at all.
J. Breyer, the only dissenting judge, however decided to rely on the Goodyear case and stated that a “.com” can in no way help in distinguishing between goods and services of the same class. Precarious over the fact that a generic domain name can give a competitive advantage to its owner, Justice Breyer wrote in his dissent that he feared the judgement would lead to a spread of ‘generic.com’ marks. It must be noted that Justice Breyer too acknowledged the fact that there can exist exceptions to the rule in Goodyear, specifically in light of the creation of new TLDs but, however, held that no such exception exists in the present case. Analysis – Why the judgement won’t lead to a rise in ‘generic.com’ marks
According to renowned trademark attorney Stacey Kalamaras, the judgement is one which is fact-specific. This essentially means that the judgement would not serve as a strong precedent for all those who seek to register their domain names as trademarks unless they are able to show a similar set of facts and circumstances in their case as well.
The highly distinguishing point of the Booking.com case was the wide popularity and awareness about the brand that the company enjoyed among consumers. The results of the survey placed in evidence before the court is what helped change the tide of this case in Booking.com’s favour.
Yet, we note that the majority opinion has not defined in clear terms the requirements for a generic domain name to be granted trademark protection. What we do understand is that the consumers have to identify such a generic domain name with a brand rather than as a generic term alone. How a brand can achieve to change this perception is what has not been talked about in the majority opinion. Since the present case adduced consumer perception on the basis of survey evidence, would future applications have to present the same? What should be the survey sample size? How would we be able to identify biases in such surveys? Besides, how reliable are such surveys?
Furthermore, the judgement does not set any guidelines for the USPTO to follow when considering the registrability of generic.com domain names. This essentially means that the effect of the Booking.com would stay limited to the case itself and would not transcend into an exceptional rule for the USPTO to follow. Yet, this in no way means that companies would not be able to apply for registration of their generic domain names; it merely means that the USPTO is not bound by the effects of this fact-specific judgement to register a ‘generic.com’ domain name.
It is for this reason that in all likelihood, we won’t be seeing a surge in the registration of ‘generic.com’ marks in the future, contrary to Justice Breyer’s rational fears.
The passing of this judgement has not disregarded the previous cases of In re Hotels.com and In re Mattress.com, but rather has given a fresh approach to the question of registering generic domain names, keeping in mind that if the consumers do not perceive a mark to be generic, the court would not be able to hold a decision to the contrary.
Trademark Protection of Domain Names in India
The Indian courts have long since recognised the importance of domain names and their eligibility for trademark protection. In Yahoo.com v. Akash Arora, it was held that a domain name is entitled to an equal protection as a trademark as it serves the same function as that of a trademark, that of identifying a particular service.
The first case relating to domain name protection as trademarks which was heard by the Supreme Court of India was Satyam Infoway v Siffynet Solutions (P) Ltd. The facts of the matter related to the registration of two highly identical domain names. Satyam Infoway had registered a website in the name of “siftnet.com”. Siffynet Solutions, however, registered its own website in the name of “siffynet.com”. The Supreme Court, holding that a domain name has all the features of a trademark, ruled in favour of the Appellants (Satyam Infoway) and stated that the respondent’s domain name would create confusion in the minds of the general public, thereby resulting in loss for the Appellants.
In Info Edge (India) Pvt. Ltd. v. Shailesh Gupta, the Delhi High Court on dealing with the question of infringement of the domain name ‘Naukri.com’, which is an anglicised form of the Hindi word meaning ‘job’, stated that the domain name had acquired significance and secondary meaning due to the reputation and goodwill of the company. More importantly, it held that even if a word is generic but has acquired distinctiveness and becomes associated with a business, the court will not deny protection to such a word.
The Indian courts dealt with the question of trademark registration for a generic domain name 5 years before the judgement of the Booking.com case in the 2015 case of Stephen Koenig v. Arbitrator Nixi and Anr. The complainant here had trademarked the generic word ‘internet’ in 2003 under Class 34 which dealt with ‘Tobacco, raw or manufactured, smokers articles, matches’. In 2005, a US resident named Koenig obtained the domain name ‘internet.in’. The complainant had thus filed for the cancellation of Koenig’s registration of the domain name ‘internet.in’ citing it to be confusingly similar to his own registered mark.
The Arbitrator, in his Award, held that while the domain name ‘internet.in’ was confusingly similar and identical to the complainant’s trademark, yet the complainant could not show any right or interest in the same. Neither the petitioner (Koenig) nor the complainant were given rights over the domain name as neither could establish their bona fide rights over it. The Delhi High Court concurred and held that the non-use of the complainant of his trademark ‘internet’ and the generalness attached to such a weak mark, the domain name could not be transferred to the complainant.
In the above case, the denial to transfer the domain name to the complainant by the Delhi High Court was reasoned not because the trademark ‘internet’ is a generic word, but because the complainant could not prove any actual use of the said trademark. Thus, there was no question of the mark having acquired distinctiveness. Had the mark acquired a distinct identity, the case may have tilted in the favour of the complainant.
The Booking.com case is an important decision not just for Booking.com, but also for the jurisprudence of trademark law as a whole. By seeking to protect a generic term as a registrable trademark, it upholds the value a trademark can hold for a successful business, just as any other physical property.
There can be no denial that ‘Booking.com’ is a weak mark. Not only is it generic, it is also descriptive in nature. Despite this, the hallmark of the Booking.com case, according to Fara Sunderji, a trademark attorney of Dorsey & Whitney LLP, is that the majority prioritised consumer perception. The consumers identify the ‘Booking.com’ mark to refer to a specific service rather than them identifying it to refer to a general class of goods or services.
What is interesting to note is that though the USPTO has lost this battle, in the sense that it could not stop a generic domain name from being granted trademark registration, it has not lost any of its powers to halt further generic domain names from being registered as trademarks.
The lack of any guidelines by SCOTUS and the case-specific nature of the judgement prevents other similar generic domain names from successfully trademarking their names,
unless and until they can show a similar fact-situation where their generic.com mark enjoys the same level of consumer perception as does Booking.com.
 Patent and Trademark Office v. Booking.com B. V., No. 19-46 (U.S. Jun. 30, 2020).  Section 2(1)(zb), Trade Marks Act, 1999 (India).  Trademark, Legal Information Institute (LII), https://www.law.cornell.edu/wex/trademark#:~:text=The%20Lanham%20Act%20defines%20a,%C2%A7%201127.&text=Trademarks%20are%20traditionally%20divided%20into,suggestive%2C%20descriptive%2C%20and%20generic  Joe Styler, The top 25 most expensive domain names, GoDaddy (June 18, 2019), https://www.godaddy.com/garage/the-top-20-most-expensive-domain-names/  Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd., AIR 2004 SC 3540. |  In re Hotels.com, L.P., No. 08-1429 (Fed. Cir. July 23, 2009).  In re 1800Mattress.com IP, LLC, Case No. 09-1188, Fed. Cir., Nov. 6, 2009.  128 U. S. 598.  Supra, Note 1.  Ibid.  Booking.com, Similar Web, https://www.similarweb.com/website/booking.com/, accessed: June 07, 2020.  Stacey Kalamaras, Supreme Court: Booking.com is Not a Generic Term, Kalamaras Law Office (June 30, 2020), https://www.klolegal.com/supreme-court-booking-com-is-not-a-generic-term/.  1999 PTC (19) 201.  (2004) 6 SCC 145.  98 (2002) DLT 499.  FAO (OS) 42/2012.  Kyle Jahner, Blake Brittain, Supreme Court Affirms Validity of ‘Booking.com’ Trademark (1), Bloomberg Law, https://news.bloomberglaw.com/ip-law/supreme-court-affirms-validity-of-booking-com-trademark.