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U.S. Supreme Court to Hear Booking.com Trademark Case
The Supreme Court of the United States issued an order on Nov. 8, 2019 granting certiorari in the matter of United States Patent & Trademark Office et al. v. Booking.com BV (No. 19-46). The issue is whether an applicant may obtain a trademark registration for a generic term by adding a top-level domain suffix to that term and demonstrating through a survey that the public considers the entire term to indicate the origin of applicant's services, rather than the genus of such services. Put another way, the Court will decide whether an applicant may appropriate a term that is generic for the services offered by the applicant by appending ".com" to that term and building up goodwill in that entire term.
Prior Cases Considering This Issue
Several cases have considered protection for a mark comprising a top-level domain, such as ".com," combined with a term that is otherwise generic for the relevant services. No case appears to have previously allowed registration or found such a mark protectable. In In re Hotels.com, L.P., 573 F.3d 1300 (Fed. Cir. 2009), the Federal Circuit considered the Trademark Trial and Appeal Board's rejection of applicant's HOTELS.COM mark as generic, because it was a combination of "hotels" and ".com," both of which it found to be generic based on evidence such as dictionary definitions and third-party websites for hotel reservations that also used "hotel" in their second-level domain. The TTAB found that the composite term HOTELS.COM communicates no more than the common meanings of the individual components (i.e., a website providing information on hotels), though the TTAB did note that if it were reversed on its finding of generic-ness and the mark were deemed descriptive, then the applicant's evidence demonstrated acquired distinctiveness such that the mark would be registerable. The Federal Circuit upheld the TTAB's refusal, finding that the generic "hotels" did not lose its generic character by placement in the domain name hotels.com, and deferring to the TTAB's weighing of the competitive uses of "hotel" in domain names as against a survey submitted by the applicant along with a number of customer declarations indicating that the consuming public understood hotels.com to be a brand indicating source. While finding the term to be generic despite evidence that it was recognized as a brand, the Federal Circuit nonetheless held open that some quantum of evidence of consumer recognition could hypothetically render an otherwise "generic.com" mark to be protectable. The Federal Circuit has decided other cases in a similar fashion, including, for example, In re 1800Mattress.com OP, LLC, 586 F.3d 1359 (Fed. Cir. 2009) (MATTRESS.COM) and In re Reed Elsevier Props. Inc., 482 F.3d 1376 (Fed. Cir. 2007) (LAWYERS.COM).
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