Case Review: Patent & Trademark Office v. Bookings.com
On June 30, 2020, the Supreme Court issued a ruling which is likely to have a wide-reaching impact on the future of trademark law. The case of Patent and Trademark Office v. Bookings.com arises out of the question: what constitutes a generic term for the purpose of federal trademark registration? Bookings.com B.V. LLC filed an application for trademark rights for “Bookings.com” as used on their travel booking website. This application was rejected by the United States Trademark and Patent Office (USPTO). The rejection was affirmed by the USPTO’s Trademark Trial and Appeal Board. Bookings.com appealed and the case then traveled through the District Court (which found that “Bookings.com” is not generic and overturned the rejection) and the Court of Appeals (which upheld the District Court’s decision) before eventually arriving before the Supreme Court.
Before the specifics of this case can be discussed, we must first understand what generic means within the contest of trademark law. A trademark is a word, image, sound, color or other element that allows consumers to identify the source of a good or service (the “mark”). For example when a person sees , they associate it with Nike, Inc and assume that the product in question was made by that company. Nike has rights over both the term “Nike” and the swoosh. The USPTO grants federal registration of trademarks such as that held be Nike if the mark is sufficiently distinctive and if it does not conflict with a similar trademark already in use.
As discussed by Justice Ginsburg in the majority opinion, a mark: “may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful. Two Pesos, Inc. v. Taco Cabana, Inc., U. S. 763, 768 (1992). The more distinctive the mark, the more readily it qualifies for the principal register. The most distinctive marks— those that are “‘arbitrary’ (‘Camel’ cigarettes), ‘fanciful’ (‘Kodak’ film), or ‘suggestive’ (‘Tide’ laundry detergent)”—may be placed on the principal register because they are “inherently distinctive.” Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U. S. 205, 210–211 (2000).” The issue here is whether the mark “Bookings.com” falls into the category of descriptive or generic. “[A] mark is merely descriptive if it immediately conveys to one seeing or hearing it knowledge of the ingredients, qualities, or characteristics of the goods or services with which it is used.”
Descriptive terms can be registered as federal trademarks if consumers associate the mark with a particular source of goods or services (showing secondary meaning). For example, American Airlines is entitled to protection because while it is an American airline, the phrase “American Airlines” is associated with a particular company. In contrast, a term is generic if it is the name of the good or service. For example, shredded wheat and aspirin are the names of the products themselves rather than descriptions of said products. Generic terms cannot be registered by the USPTO.
Is “bookings.com” considered generic and therefore ineligible for federal registration? At first glance, this seems fairly obvious that it is. “Bookings” describes the service being provides (the booking of hotel rooms) and it seems odd that adding “.com” would save it from genericism. The USPTO asserted in its rejection that as a rule, “when a generic term is combined with a generic top-level domain like “.com,” the resulting combination is generic”. However, the District Court disagreed and held that bookings.com, unlike “bookings” on its own is not generic. It is descriptive, has acquired the requisite secondary meaning and is therefore eligible for federal trademark registration. “Relying in significant part on Booking.com’s new evidence of consumer perception, the District Court concluded that ‘Booking.com”—unlike ‘booking’—is not generic. The ‘consuming public,’ the court found, ‘primarily understands that BOOKING.COM does not refer to a genus, rather it is descriptive of services involving ‘booking’ available at that domain name.’” This was affirmed by the Court of Appeals and ultimately by the Supreme Court.
The majority (written by Justice Ginsburg) held that “Bookings.com” was not generic because (1) the mark describes the service being offered rather than naming the service itself (2) the mark should be viewed as a whole rather than as “bookings” and “.com” and (3) consumers associate the mark with a single source. The majority and dissent disagree on both reasons (1) and (2) largely because of differing opinions on what is considered naming as opposed to describing a good and how trademarks should be broken apart and analyzed. The majority appears to view the word “booking.com” a combination distinct from its constituent parts while the dissent (written by Justice Breyer) considers the adding of “.com” to be more in line with the “[a]ddition of corporation [which] is not enough to make something descriptive as opposed to generic.” In order to be a protectable a company would need to create a more distinctive combination. “For instance, ‘parties united to produce or sell wine, or to raise cotton or grain,’ may well ‘style themselves Wine Company, Cotton Company, or Grain Company.’”
The bulk of the disagreement between the majority and the dissent falls on how much weight to give to the final factor, the consumer’s association of the mark with a single source. Trademark law is traditionally viewed from both the consumer perspective (would or does the consumer associate the mark with a single source) and the competitor’s prospective (would other companies be put at a significant non-reputation related disadvantage if they were not able to use the term).
The majority focuses on consumer perception of the mark, stating: “whether a term is generic depends on its meaning to consumers.” In contrast, the dissent asserts that consumer perception of a mark as coming from a single source is not enough to save a mark being generic. As Justice Breyer states: “it is possible for a generic term to achieve such an association—either because that producer has enjoyed a period of exclusivity in the marketplace, e.g., Kellogg Co. v. National Biscuit Co., 305 U. S. 111, 118–119 (1938), or because it has invested money and effort in securing the public’s identification, e.g., Abercrombie, 537 F. 2d, at 9.” In neither case was said association found to negate the term’s generic nature.
The dissent’s argument is concerned more with protecting other producers than Ginsburg’s consumer focused approach. Breyer asserts that “granting trademark protection to ‘generic.com’ marks threatens serious anticompetitive consequences in the online marketplace as it would grant Bookings.com a monopoly over the word ‘bookings.’” Proponents of the registration of the mark dismiss this concern professing that Booking.com’s weak claim over the mark would protect those competitors who would use the word “booking” to identify their services. Yet, as the dissent points out, even a weak trademark claim may have a chilling effect on competitor’s use of the term if there is a threat of expensive litigation.
In addition to the theoretical differences, the majority argues that the USPTO’s current nearly per say rule against “generic.com” trademark registration does not protect against consumer confusion or promote competition in the real world because it is applied inconsistently. As the majority highlights: “The PTO’s own past practice appears to reflect no such comprehensive rule. See, e.g., Trademark Registration No. 3,601,346 (‘ART.COM’ on principal register for, inter alia, ‘[o]nline retail store services’ offering ‘art prints, original art, [and] art reproductions’); Trademark Registration No. 2,580,467 (‘DATING.COM’ on supplemental register for ‘dating services’).”
Will there be a deluge of ‘generic.com” marks, removing important generic terms from use in commerce? Will the relative weakness of the “generic.com” marks protect competitors who use the generic term to identify their services? Ultimately, the consequences of this ruling will depend on how it is applied by both the USPTO and federal courts.