What's in a Name? Booking.com and Consumer Perception Evidence

The Court's decision, written by Justice Ruth Bader Ginsburg, rejected the U.S. Patent and Trademark Office's (USPTO) proposed per se rule that a generic term, when combined with the .com top level domain (i.e., a "generic.com" term), must automatically be deemed generic and is therefore ineligible for trademark protection. Rather, the Court held, whether a term is generic must be determined by reference to consumers' perception. As applied to this case, the Court explained that, whether BOOKING.COM is generic, "turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services." Because survey and other evidence showed that consumers perceive BOOKING.COM as a brand name, not a generic term, the Court concluded that Booking.com was entitled to its registration.

In rejecting the USPTO's proposed per se, the Court explained that such a rule finds no support in trademark law or policy. Moreover, the USPTO's past practice never embraced such a rule. For example, the Court pointed to trademarks such as ART.COM for online retail stores offering art, and DATING.COM for dating services, as examples of trademarks that the USPTO approved and registered (these marks, and many others, were included in the Appendix to Booking.com's Supreme Court brief). The Court recognized that adoption of the USPTO's proposed rule would have "open[ed] the door to cancellation of scores of currently registered marks," which include generic.com marks such as Cruise.com, Debt.com, Entertainment.com, Homes.com, Hotels.com, Law.com, Rentals.com, SaversGuide.com, Tutor.com, and Weather.com (a number of whom supported Booking.com's position with an amicus brief), as well as other marks like Home Depot, Salesforce, BodyArmor, TV Guide, Pizza Hut, and The Container Store (a number of whom also supported Booking.com's position with an amicus brief). These marks were registered, and are protectible trademarks, precisely because consumers understand them to be brand names rather than generic terms for goods and services. The Court's holding thus is fully consistent with the way the trademark system is intended to function, and in fact has functioned for decades.