Photo by Ian Hutchinson (Unsplash)
Tiffany Wang is an IPilogue Writer, IP Innovation Clinic Fellow, Intellectual Property Journal Editor, and a 2L JD Candidate at Osgoode Hall Law School.
In the midsummer of 2020, the Supreme Court of the United States rendered an unusual decision in its first telephonic oral argument. The case, United States Patent and Trademark Office v. Booking.com B.V., signals broader protections for trademarks vis-à-vis giving online companies latitude to trademark “generic” titles and disagreeing with the federal government’s restrictions.
In 2011 and 2012, Booking.com applied to register “Booking.com” as a trademark associated with hotel reservation services with the U.S. Patent and Trademark Office (“USPTO”). The USPTO’s Trademark Trial and Appeal Boards both denied the registration, underscoring that consumers will perceive “Booking.com” as overly generic. Generic words are not eligible for federal trademark registration.
Writing for the 8-1 Supreme Court, Justice Ruth Bader Ginsburg affirmed the U.S. Court of Appeals for the Fourth Circuit’s ruling that the amalgamation of the generic word “Booking” with the top-level domain “.com” may be subject to trademark protection even if “Booking” alone may not. Justice Ginsburg underscored that Booking.com is a distinctive business and that the public will not misunderstand the brand. Having acquired sufficient distinctiveness in the marketplace, “Booking.com” moves away from the generic category as a descriptive mark. The distinctiveness of a trademark is measured on the increasing scale of generic, descriptive, suggestive, arbitrary, to fanciful. In the case at hand, “Booking.com” carries a secondary, distinctive meaning for consumers.
This case finds a fine equilibrium between two factors: enhancing trademark protection and valuing consumer perception. Stronger trademark protection enhances Booking.com’s brand image and goodwill. Granting trademark registration to Booking.com simultaneously enhances the significance of consumer voices. “Because ‘Booking.com’ is not a generic name to consumers, it is not generic,” Justice Ginsburg voiced. Consumers are able to distinguish the services provided by Booking.com from those of other lodging competitors.
Practitioners may worry that this case opens the floodgates to trademark litigation. The Supreme Court blurred the bright-line trademark doctrine against registering a generic word. Additionally, Justice Stephen Breyer, in a sole dissent, questioned that the majority produced a decision “inconsistent with trademark principles and sound trademark policy”. Permitting the registration of “generic.com” domain names may lead to anticompetitive effects as generic terms enjoy credibility in the marketplace in addition to exclusive rights to the web-address.
In an increasingly digital arena, defying clear trademark doctrine may inevitably deplete the USPTO’s authority to prevent an influx of generic marks from entering the marketplace and diluting the value of more distinctive trademarks. The majority underscores that consumers perceive that Booking.com refers to a particular company, and not online hotel reservation services. Even if the majority reasonably valued consumer data, did the majority err in granting too much weight to public input?