Case No. 19-46 | 4th Cir.
May 4, 2020
Preview by Jacob Reiskin, Online Editor
The primary issue in Booking.com is whether a generic word combined with “.com” (a top-level domain), as in BOOKING.COM, is eligible for registration as a trademark under the Lanham Act.
Under the Lanham Act, entities may not register marks that are generic. 15 U.S.C. § 1051 (2018). “Generic” is one categorization for labeling the distinctiveness, and thus registrability, of a mark. To determine whether a mark is generic, courts apply the “primary significance” test. Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 113–14 (1938). A word is generic if it primarily refers to a class of goods as opposed to signaling to a consumer who the producer of the good is. This case originated in the United States Patent and Trademark Office (“USPTO”). The examining attorney refused to approve registration of the mark BOOKING.COM because the word “booking” is generic and adding “.com” does not create a protectable mark. The Trademark Trial and Appeal Board affirmed, finding that “booking” referred to a class of services. Booking.com appealed to district court, which held that BOOKING.COM was eligible for protection because top-level domain names are source identifying marks and eligible for protection upon acquired distinctiveness. The court relied on the results of Booking.com’s Teflon survey, a type of survey “which teaches survey respondents the difference between generic terms and brands, then asks respondents to identify terms as generic or as likely brands.” Brief for Respondent at 30, United States Patent and Trademark Office v. Booking.com B.V., No. 19-46 (U.S. filed Feb. 12, 2020). The Teflon survey concluded that 74.8% of consumers recognized the Booking.com brand. A divided Fourth Circuit affirmed, applying the “primary significance” test, relying heavily on the Teflon survey, and finding that the BOOKING.COM mark signaled the specific service provider, not just booking services generally. The dissent wrote that businesses always have a choice between picking a distinctive protectable name as opposed to a non-protectable generic name.
The USPTO now primarily argues that a per se rule is necessary to prohibit registration of “generic.com” marks, as the agency hopes to avoid allowing monopolization of certain classes of goods or services. Brief for Petitioners at 17–18, United States Patent and Trademark Office v. Booking.com B.V., No. 19-46 (U.S. filed Jan. 6, 2020). The agency rests chiefly on Goodyear, an 1888 Supreme Court decision holding that generic words are not registrable merely by adding “company” or “Inc..” Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602–03 (1888). The USPTO argues that even though that case precedes the Lanham Act, the Act was intended to unite common law through federal codification, and thus Goodyear is still good law. The agency also argues that Booking.com has plenty of protection because it owns the domain name and can register other stylized elements of the brand.
Booking.com argues that the lower courts’ reliance on its Teflon survey was well-founded because the survey demonstrates that BOOKING.COM is not generic under the “primary significance” test. Many of the amici similarly argue that a fact-specific analysis is more fitting than a per se rule for deciding whether a mark is generic. See, e.g., Brief of Trademark and Internet Law Professors as Amici Curiae in Support of Respondent, United States Patent and Trademark Office v. Booking.com B.V., No. 19-46 (U.S. filed Feb. 19, 2020). In addition to arguing the irrelevance of Goodyear in light of the later Lanham Act, Booking.com also argues that creating a per se rule would be an “extinction event” for other seemingly generic marks. Brief for Respondent at 46, United States Patent and Trademark Office v. Booking.com B.V., No. 19-46 (U.S. filed Feb. 12, 2020). This, it argues, would hurt consumers who have come to rely on marks that identify specific producers. Further, Booking.com added that domain names offer little protection from competitors.